Freshly Squeezed

April 19, 2017

שחוטThis ruling concerns a cancellation request by the originator of a mark against a registered owner who bought the mark with other assets from a company that the originator had sold his business to that had subsequently gone bankrupt.

The grounds for cancellation request were alleged lack of use.

Israel Trademark No. 220623 is for a stylized logo including the phrase “סחוט טרי” transliterated as ‘Schut Tari’ which means freshly squeezed. The mark is owned by Schut Tari 2007 ltd and was registered for nonalcoholic drinks in Class 32.

 

Background

The manager of the Applicant for Cancellation, Mr Ohad Harsonsky set up a factory in the 1990s for producing fruit juices that were marketed under the Schut Tari brand.

orange jewsApproximately in the year 2000, Harsonsky set up the Shut Tari company that continued the activities of the factory. At the beginning of 2005, Harsonsky decided to sell the company and the factory to Pri-fer Natural Marketing and Distribution (2005) ltd. [MF – Pri is Hebrew for fruit. The name is a pun on prefer] which was established by MR Erez Rifkin to make the purchase. Mr Rifkin established Prifer Natural ltd, a company active in the fruit juice industry, in the early 21st Century.

phones-blackberry-orange-phone-fruit-demotivational-posters-1295112418Blackberry on Orange sketch.

After the purchase was concluded, Pri-fer changed their name to ‘Schut Tari Mitz’ Tivi ltd. (Natural Freshly Squeezed Juice ltd), and Schut Tari changed their name to Multi-Pri ltd. The Pri-fer Group started producing freshly squeezed juices and Multi-pri stopped all activities. The Pri-fer Group did not succeed in absorbing all of Schut Tari’s activities, and Pri-fer was late paying the sale price. A business disagreement developed and the Pri-fer Group and Multi-pri agreed to mediation in March 2006. A mediated agreement was given the status of a court ruling by the Ramallah Magistrate’s Court. The mediator was Haim Sodkovitz who represents Eco Alpha, the Applicant for Cancellation.

orange juice squeezerPri-fer and Mr Rifkin were unable to meet the negotiated payment terms that were agreed to in the mediation. Consequently, on 7 March 2007, Harsonsky and Multi-Pri used legal collection means. However, since Rifkin started bankruptcy proceedings and the Pri-fer Group is being disbanded, the bailiffs were unable to collect the debt. Read the rest of this entry »


A Storm in a Coffee Cup

March 20, 2017

This ruling relates to competing rights of different relatives to register and use trademarks for a family business that eventually split up. The marks were registered by a cousin living in Ramallah, and cousins living in East Jerusalem applied to have the marks cancelled on various grounds including passing off, misleading marks, inequitable behavior and lack of use.

234876 LOGOChain Stores of Izhiman Coffee Company own two trademarks: Israel Trademark No. 234876 for the logo shown alongside, and 234877 for the Arabic and English word mark
بن ازحيمان IZHIMAN’S COFFEE.

Maazen and Shapik Izhimian applied to have the marks canceled under Section 39 of the Trademark Ordinance 1972, and further under Section 41 for lack of use.

The marks were first applied for by Muhammad Musa H’alad Izhiman in January 2011, and after examination, were registered on 2 May 2012 for “coffee and coffee spices in class 30.” On 27 February 2014, the marks was assigned to Chain Stores of Izhiman Coffee Company, a Palestinian Company based in Ramallah that was owned by Muhammad Musa H’alad Izhiman and his two sons Kassam and Nasser.

On 5 March 2014, the brothers Maazen and Shapik Izhimian who own a Jerusalem based business in Bet HaBad Street, for marketing and trading in coffee and spices under the name “Izhiman’s Coffee” and who are cousins of Muhammad, submitted a cancellation request. In July 2014, the owners Chain Stores of Izhiman Coffee Company submitted their response.

The Background

EnjoyMuhammad, his three brothers and the Applicants for cancellation are all members of the same clan, that were involved in the family business established by Musa, Muhammad’s father, together with Mahmud, the father of Maazen and Shapik in the 1980s. The company had three addresses, the Ramallah address, the Jerusalem address now run by Maazen and Shapik, and a third branch in Abu Dis.

In 1994, Muhammad fell out with his brothers and nephews and received sole ownership of the Ramallah store. His three brothers and the nephews shared the Abu Dis and the Bet HaBad Jerusalem shops and opened a further outlet themselves in Ramallah. In 2000 the applicants for cancellation and Muhammad’s three brothers opened a fourth branch in Salah Shabati Salahadin Street in East Jerusalem. In 2008, these partners ceased to cooperate, and Maazen and Shapik were left with the Jerusalem Store in Bet HaBad Street.

love.jpgMaazen and Shapik submitted an affidavit written by Maazen and a second one from Riyadh Ghazi Halaq, the owner of a coffee shop near the Bet HaBad address that buys his raw coffee from them. The mark owners responded with an Affidavit by Nasser Muhammad Musa Izhiman, Partner and authorized signatory. At the end of September 2016, the Adjudicator of IP, Ms Yaara Shoshani Caspi held a hearing and the witnesses were cross-examined.
Read the rest of this entry »


Coexistence Agreement Rejected and Attorney Accused of Conflict of Interest

August 17, 2016

Kennedy Electricity and Assets Ltd filed Israel Trademark Application Number 246560 for “Belissima”.

Belissima

The application was filed on 15 May 2012 in class 8 for “hair straighteners, hair removers and hair curlers, electrical tongs, shavers et al.” and for hair dryers in class 11. The original application was for a somewhat wider range of goods, but this was narrowed in response to an office action on 31 July 2014.

Bellisima ImetecBefore this mark was registered, the Tenacta Group S.p.A. filed Israel Trademark Application Number 251952 for “Belissima Imetec”. The application was filed on 26 July 2012 under International Application Number 1140345 claiming priority from European trademark number 011073319, and was submitted for “Electric and electronic apparatus and instruments for curling, cutting, waving, straightening, styling, trimming hair; electric epilators; electric pulsed light epilators; electric razors; electric and non-electric apparatus for cutting nails; manicure sets, pedicure sets; electric apparatus for removing, softening nails, corns, bunions ; in class 10 for Ultrasound electric apparatus for medical purposes for cleaning the face and reducing wrinkles; electric radio-frequency apparatus for medical purposes for reducing wrinkles and toning the skin; electric apparatus for the care of skin and acne; electric apparatus for medical purposes which vibrates or rotates for the cleaning of the face, body and for massaging the body; electric apparatus for medical purposes for microdermabrasion and electrostimulators for toning the body”; in class 11 for “hair drying apparatus, electric; heated or LED apparatus for reducing blemishes or imperfections on the skin; electric apparatus for drying nail polish or for decorating the nails; steam facial apparatus (saunas)” and in class 21 for “Electric and non-electric apparatus for removing make-up; brushes and sponges for body care; combs”.

On 7 September 2015 the Trademark Department at the Israel Patent Office informed the applicants that in view of their not reaching agreement, a competing marks procedure would ensue under section 29 of the Trademark Ordinance 1972. On 21 September 2015 the parties submitted a joint statement to the effect that they did not consider the marks confusingly similar and would cooperate to prevent confusion and mistakes by the public. On the basis of this agreement the parties requested that the Section 29 objection be removed.

On 22 October 2015, the Examiner refused to retract the competing marks assessment and to allow coexistence, resulting in the case being transferred to the Commissioner for judicial review.

edward scissorhands

On 9 November 2015 the parties submitted their coexistence agreement to the Commissioner of Patents and Trademarks. The parties agreed between themselves that the marks could be registered in parallel. The Tenacta Group undertook to only use the term Belissima in conjunction with either Imetec or Italia to differentiate between the marks. The parties stated that the term Imetec is a trademark that is associated with  the Tenacta Group. Furthermore, the parties undertook to clarify any confusion, should it occur.

In her decision of 18 November 2015, the Deputy Commissioner Ms Jacqueline Bracha rejected the coexistence agreement. In that decision she ruled that:

From the agreement it transpires that not only is there no difference in the goods sold under the two marks, but that the first applicant (Kennedy Electricity and Assets ltd.) would be the distributor of the Tenacta Group’s products.

So the parties were invited to state their claims.

sweeneytoddOn 2 March 2016 the parties submitted a joint notice that the first applicant (Kennedy) will remove all goods in classes 8 and 11 from their application, and the Patent Office was asked to reconsider its ruling in light of this development.

In her ruling of 3 March 2016, Ms Bracha stated:

“After reviewing the details of the goods covered by the two marks it is possible to accept the coexistence agreement on condition that ‘combs’ are removed from the list of goods in class 21 for the 251952 mark and that the 246560 mark be combined with Kennedy’s logo and only used therewith. These conditions are intended to protect the public from confusion since the relevant public and the distribution channels are identical.”

Following this decision, the parties submitted additional notices. On 10 March 2015, the Tenacta group announced that its application was only for the stylized mark shown above that includes the term INTETEC and that its mark was for registration in classes 10 and 21 only, and that Kennedy was not attempting to register its mark for goods in those classes. Consequently there was no reason not to allow coexistence. However, Kennedy claimed in a notice of 13 March 2016 that it was not prepared to limit its application to goods carrying the Kennedy logo together with the stylized Belissima mark since it was not marketing the Belissima brand under the Kennedy logo, and they requested reinstatement of the competing marks procedure.

Following Kennedy’s submission, Ms Bracha gave the parties two months to submit their evidence. Some days later, the Tenacta Group again requested coexistence of the marks. On 18 April 2016 Ms Bracha again requested that the parties submit their evidence. On 19 April 2016, the Tenacta Group restated that the parties had reached agreement and that the marks could coexist. On 20 April 2016 Ms Bracha ordered the Tenacta Group to clarify how their notice fulfilled her request. In the same decision it was clarified that this clarification did not extend the deadline for submission of evidence. On 2 May 2016, the Tenacta Group detailed why coexistence was in order. Read the rest of this entry »


Swiss Military

July 15, 2016

278777

Israel Trademark Application Number 278777 is the national phase entry of International Trademark No. 1232972 filed under the Madrid Protocol. The mark is shown above.

The Application covers Watches of Swiss origin in class 14 and was submitted by Chron AG.

The Israel Trademark Department considered the mark non-registerable for two reasons. There is a registered Israel Trademark, No 88839 for “Swiss Army” for the same goods, and the mark is confusingly similar to pending Israel Trademark Application Numbers 260989 and 273129 “Swiss Military”to Schweizerische Eidgenossenschaft v.d. Armasuisse Eidg. Departement für Verteidigung, Bevölkerungsschutz und Sport, for perfumes and other toiletries in class 3, but also for watches in class 14, and so the correct way to proceed is via a competing marks proceeding under Section 29. Chrono AG transferred the Application to Schweizerische Eidgenossenschaft (the Swiss Army) and the section 29 objection was rendered moot, however the similarity to 88839 remained and the Applicants failed to overcome the objection under Section 11(9) that there was a likelihood of confusion.

During the Examination, the Applicant submitted evidence to support their claims, including a letter by Mr Peter Emch, the Chief Legal Counsel to the effect that the applicant is part of the Swiss Defense Department of the Swiss Government and is the body entitled to protect military trademarks, including Swiss Army, Swiss Military and Swiss Air Force.

Deputy Commissioner Ms Jacqueline Bracha noted that the Applicant claimed that there is a difference between Swiss Army and Swiss Military, since the term military is broader than army. The two marks look and sound different and the only commonality is the word Swiss which is a geographical adjective.

During the hearing it transpired that the word ‘military’ means ‘of or relating to the army’ and both the owner of the mark and the applicant use their terms together with the cross that is the emblem of the Swiss Federation and which further increases the likelihood of confusion.

Martin Shneider, Legal Counsel to the Swiss Army submitted an affidavit stating that it is the Swiss Army who are authorized by the Swiss Government to both the pending application and the issued mark to the third-party. The third party received a license from the Swiss government to register the term SWISS ARMY for watches and knives that are made in Switzerland and conform to quality standards.

In the circumstances, Ms Bracha did not think that the consumers would be confused regarding the source of goods carrying the requested mark or the issued mark as both are essentially owned and managed by the Swiss Army. Consequently the mark is registerable.

Ruling by Ms J Bracha concerning registerability of Israel Trademark Application Number 278777 “Swiss Military by Chrono”.

COMMENT

swiss-army-knife-funny

I think that in this case, the registered owner of the Swiss Army mark 88839 (Swiss Army Brand LTD, a Delaware Corporation), should have been contacted to confirm Mr Emch’s story, and that mark should be recorded as owned by Swiss Army and exclusively licensed to Swiss Army Brand LTD.

 

 


Chabad and Lubavitch – who owns the name?

June 9, 2016
chabad

Group photo of Chabad Emissaries

Israel trademark applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English) were submitted by two non-profit organizations: (1) The Chabad Hassidic Association in Our Holy Land, and (2) The young Chabad Association (Zeirei Chabad). The marks are for the words without graphic elements.The Commissioner refused to allow the marks as he considered the terms as referring to a lifestyle that anyone can adopt and that names of religious movements cannot be monopolized.

Background

Chabad is an acronym for “Chochma Bina Daat” meaning “wisdom, understanding and knowledge” which are the top three spheres of the Kabbalistic tree of life. It is the name adopted by Lubavitch, a cult Hassidic sect  that does wonderful work promoting Judaism to Jews of all levels of religiosity, and maintains Habad Houses – Outreach Centers offering religious services and hospitality around the world, which this non-Hassidic writer frequently visits for Shabbat hospitality when travelling. Chabad is Orthodox, Zionist and nationalistic. It differs from other Hassidic groups in that it is not insular, and sees a respondbility for and has a love for all Jews. However, their atitude is moe missionary than pluralistic. It has often said that “The movement does not recognize political or religious distinctions within Judaism. It has refused to cooperate formally with any identifiable organization or institution. It recognizes only two types of Jew, the fully observant and devout Lubavitcher Jew and the potentially devout and observant Lubavitcher Jew.”

messiah poster.jpg

The last ‘Rebbe’ (spiritual leader) saw signs of the Messianic Era approaching with the return to Zion, Jewish statehood and various other developments of the latter half of the 20th Century. Some of his followers considered him the obvious candidate Messiah, and, having suffered a stroke that affecting his speaking, wherther or not he was so inclined, the Rebbe was ineffective at persuading them otherwise. Rabbi Menachem Mendel Shneerson passed away in 1994, and some followers had problems coming to terms with this and got caught up in a Messianic fevor reminiscent of the Shabtai Zvi incident. Chabad is currently without a supreme leader, but most followers have come to terms with the Rebbe’s lack of immortality.

I am aware that there are Israel IP practitioners and Examiners who affiliate with the movement. If you consider that anything I write here is inaccurate, offensive, or you  simply disagree, you are cordially invited to comment.

The trademarks

In Israel trademark applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English) were submitted by two non-profit organizations:
(1) The Chabad Hassidic Association in Our Holy Land, and (2)
The Young Chabad Association (Zeirei Chabad).
The marks are for the words without graphic elements.

The Applications cover a wide range of goods and services including Section 16 for pamphlets, advertising and guidance manuals; section 25 for clothing, shoes and head coverings; section 26 for embroidery and embroidered articles; Section 28 for toys and games; Section 29 for meat, fist, poultry, milk and milk products, section 30 for flour and grain based products; section 31 for fresh fruit and vegetables and live flowers; section 35 for advertisements, business management, services to business and office services; section 43 for finance and philanthropy; section 41 for education services and propaganda explanatory literature relating to religion and tradition; section 43 for Science and technology, research and design related to these services including design and development for computer software and hardware;section 43 for food, beverage and temporary accommodation, and section 45 for providing help and support for the needy.

As to the Chabad mark, the Israel trademark examiners found the mark non-registerable as they considered it contrary to Section 8(a) of the Trademark Ordinance 1972, considering the marks lacking distinctive character for the goods and services provided as they describe a movement or way of life that anyone can adopt. The Examiner noted that the acronym Chabad related to a Religious-Hassidic-Philosophical lifestyle originating in the 18th Century and that the name embraces many organizations, institutions and communities, and allowing one such organization to monopolize the name will prevent others from using it. This will confiscate something already in the public domain and thus is not allowable.

The Examiners also considered the marks to be non-registerable under section 11(5) of the Ordinance, as giving one organization a monopoly of the name would prevent others using it, and the name was for a way of life or religious movement and its registration as a trademark was contrary to public interest.  Similarly Lubavitch, as a synonym for Chabad, could not be registered, and it was also non-registerable under Section 11(11) of the Ordinance being a place-name in Russia.

The Applicants requested a hearing and, after various postponements, this was held on 20 May 2014, and, in addition to their legal representative, Adv Amnon HaLevi Gat, the organizations were represented by Rabbi Ariel Lemberg. The Applicants  main argument was that they acted under the direction of the 7th Lubavitcher Rebbe from 1951 to 1994, and if the mark is not registerable, it will damage the public as other organizations may call themselves Chabad. The Commissioner considered that many of the arguments raised were not relevant to trademark registration. At the end of hearing, the Applicants were given permission to address specific issues raised under Sections 8(a) 11(5) and 11(11).

three crates

Eventually, after further delays, on 28 January 2015, A Statement from Rabbi Lemberg was submitted together with three crates of appendices. The appendices included copies of hand-written instructions from the Lubavitcher Rebbe in which he requests or commands the Applicants to manage the movement in Israel; research on Chabad leadership in Israel, files of supporting letters from Chabad Emissaries in Israel, most of which followed a template, and various papers about Chabad institutions and associations and their activities, books, photo-albums, pamphlets and flags, packages of Shabbat candles, bags (for prayer shawls?) and other paraphernalia.

chchabad leadership

The Commissioner claims that the evidence was carefully and deeply considered. One document titled “Who did the Rebbe Authorize to lead Chabad in Israel?  – Fundamental Research and a Thorough Analysis of the Rebbe’s Writings and Archives on the Issue”. The document was authored by Menachem Bronfman. It was not clear where, if at all, the paper was published and, according to the ruling, it appears to have been prepared for the purpose of this Application .  This document included the literature submitted by Rabbi Lemberg. That as may be, the document cannot be considered as evidence as its provenance was not clarified, despite Applicants being given an opportunity to provide additional information. That as  may be, if any weight is given to the document, it clearly shows that there are other Chabad organizations beyond the two that applied for the marks. The Applicants consider that the other organizations are internal divisions and that they alone have the authority to represent the extended Chabad organizational structure to the outside world.  The Commissioner is skeptical that a divisional between internal and external organizations is relevant where trademarks are in rem. That as maybe, the Commissioner did not consider that the Applicants had shown that an up-to-date-list of official Chabad organizations had provided up-to-date authority to the two Applicants to represent them.

Rabbi Lemberg denied that the words Chabad and Lubavitch were in the public domain and argued that the terms where the property of the Applicants who had caused them to penetrate the public awareness through their activities during the past 80 and 70 years respectively.  He submitted that the requests should be considered attempts to anchor the rights of the Applicants in the Law, and not as attempts to take over names in the public domain.

Rabbi Lemberg considered that the last Rebbe, Grand Rabbi Menachem Mendel Schneerson, had commanded the two Applicants to manage everything with the Chabad seal on it, and that the seal means trademark. In this regard, he cited an open Responsa letter from the  Rebbe from 13 Kislev 5712  (1951 CE) where it is stated that:

“…there should be one representative of all the institutions, and this should be the Chabad Association which should represent all Chabad institutions in the Holy Land to the outside world, as and when required.”

The Commissioner notes that even if great weight should be placed on this instruction, the organization mentioned is called “Chabad Association”. The Applicants testify that they are the Chabad Association, but since there are other Chabad institutions, the Applicants should have provided evidence that they were the Chabad Association and have failed to do so.

Rabbi Lemberg claimed that there is consensus among all Chabad organizations that the commands and orders of the Rebbe are binding on all groupies members and extrapolates that the Applicants are the authorized parties to register the mark in their name. The young Chabad Association is the executive arm of the Chabad Hassidic Association in Our Holy Land (also not mentioned in the Rebbe’s letter) and  Chabad’s internal Rabbinic Courts have thus determined things (also not supported by any evidence submitted).

As to the authorization of the Rebbe during his lifetime as testified in a book published by  the Chabad Hassidic Association in Our Holy Land, the Commissioner failed to see the relevance of that or other books being published by the organization as proof of the Rebbe’s wishes or rights to the requested marks.

Applicants claimed that their activities as laid out in their charters as non-profitable organizations were authorized by the Rebbe. However, the charters were not submitted in their entirety.

tug of war

Rabbi Lemberg’s affidavit stated that the  Chabad Hassidic Association in Our Holy Land was authorized to : “Represent Chabadniks not other represented, mediate between institutions, externally audit Chabad institutions, to be aware of developments in Israel, to be responsible for Public Relations, to guard Chabad’s status as a non-political organization, to make contact with public figures and rabbis, to look after the form and opening of Chabad synagogues to the public, to provide funds and to strengthen Judaism, and to obtain manuscripts of the various Rebbes.

The second applicant,  the young Chabad Association is the representative arm of the Chabad Hassidic Association in Our Holy Land. The organization is responsible for outreach work in Israel, teaching the Jewish Heritage to children, youth and adults, disseminating Chabad Hassidic teachings, aid and help to the needy and lonely and providing rescue services.

According to the Commissioner, review of the lists and the exciting material submitted provides evidence of important and blessed activities by the two Associations. However, he does not see how one can prevent someone who believes in the lifestyle of Chabad; who puts the values of Wisdom, Understanding and Knowledge before him; but who does not follow the Applicants, from engaging in the activities listed and calling himself a Chabadnik.

As to Section 11(11), Rabbi Lemberg submitted that although Lubavitch is a place in Russia, the term has come to represent the Hassidic sect and is of no relevance to those identifying with Chabad Hassidim. For most of his life, the Rebbe lived in Brooklyn, New York, USA and earlier Rebbes also were not domiciled in the town of Lubavitch. That said, Rabbi Lemberg claimed that the association of the term Lubavitch with the organization was the result of 70 to 80 years activity by the Applicants.

In light of the above, the Commissioner was not convinced that the term Chabad was exclusively identified with the Applicants, nor was this claimed. The Applicants do not dispute that the terms Chabad and Lubavitch are  identified with a religious movement and faith-based lifestyle. Nevertheless, the Applicants consider themselves entitled to a monopoly over these terms when applied to a wide range of disparate commercial services and traded goods.

Since the marks are not necessarily uniquely identified with the Applicants, they do not fulfill the basic requirements of registration, which is inherent or acquired distinctiveness of the source of goods, as stated in Section 8 of the Trademark Ordinance:

8.—(a) No mark is eligible for registration as a trade mark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).

(b) In determining whether a trade mark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.

The marks Chabad and Lubavitch are not identified by the public  as originating with the Applicants, but are rather identified with a particular teaching and lifestyle. It is, however, also necessary to consider if these marks have acquired distinctiveness with the Applicants and this is also not the case. Here the Commissioner cited the Toto Zahav and ORT decisions. (The ORT case is about two philanthropic organizations each calling themselves ORT, based on their history, and is particularly relevant -MF).

The Applicant’s claim is really one of having the right to franchise the name to other service providers. This could be considered under Section 14, but in light of the other issues discussed is unlikely to be considered registerable under this either.

The Applicants claim is that their unique mandate as far as Habad activities in Israel are concerned, were bestowed by the Rebbe as the head of the movement. The problem is that Applicants themselves accept that from its founding in the 18th Century by Rabbi Schneur Zlaman of Liady, Chabad had six Rebbes prior to Rabbi Menachem Mendel Schneerson.

RebbeThere is no doubt that Rabbi Menachem Mendel Schneerson expanded the movement by an order of magnitude, but Chabad became a worldwide international movement prior to his reign and Chabad activity in the Holyland precedes 1951. With a 230 year history, not all of Chabad’s reputation can be ascribed to the Applicants.

During the hearing, the Applicants were referred to Haifa District Court Ruling No. 5969/04 Young Chabad Organization vs. The Tent of Menachem Lubavitch (in name of and under Presidency of the Lubavitcher Rebbe, the Holy Messianic King. That court found that:

There is no doubt that both parties are non-profit organizations of Chabad Hassidim. Te parties agree that there are many other non-profits established by Chabad. There are different non-profits since there are different shades of thought and intent among Chabad Hassidim.

Both the parties claim that the Rebbe of Lubavitch – who both sides follow – determined whilst he was alive and well, that they were the exclusive organization that would represent the Chabad Movement. The parties disagree but I cannot determine who takes precedence within the framework of this ruling. What I will say is that while the Applicant in this instance has shown that they were authorized by the Rebbe, they are not actively guided by the Rebbe and do not include the entire movement. COnsequently as far as this ruling is concerned, we are not dealing with arguments between branches of an inclusive organization with institutions that all members follow, but with different non=profits.. The significance of the distinction is that it undermines claims of sole representation of one body or another, such as a Rabbinic Court, and blurs its significance.

 In that ruling the Court refused to grant the plaintiff (who is one of Applicants in this instance) an injunction against the defendant using the names that are the basis of the present application.

From this ruling it is apparent that the Applicants DO NOT have sole discretion over the interests of the Chabad Movement in its widest sense and consequently do not sole rights over the terms Chabad or Lubavitch. for the range of goods and services requested. Despite the wealth of evidence submitted the Commissioner sees no reason to come to a different conclusion. The court ruling was from 2004 and the crates of evidence submitted in this instance do not provide a more up-to-date picture that indicates that the ranks have closed around the Applicants.

The Applicants further submitted that they enjoyed a unique status with the registrar of non-profit organizations and has the right to decide who could and could not use the terms Chabad and Lubavitch in their names. However, the Commissioner found that back in September 2011, the Registrar of non-profits stated “There appears to be a division in the Chabad Hassidic sect and the Applicant no longer represents all the variant streams within the sect”. 

The Applicant submitted lots of evidence to support their claims to the marks. However, much of the evidence is not dated although seems to be recent. It does seem that generally the term Chabad is used in conjunction with the full name of one or other Applicant, and sometimes with a graphic logo and the slogan “Wholeheartedly to All”. The Commissioner took this as evidence that the Applicants themselves felt the need to differentiate themselves from other Chabad entities, emphasizing that they didn’t or at least no longer had exclusivity to the terms.

The crates of evidence included contracts with emissaries who were enjoined to only use the term Chabad or Chabad House for certain activities and other activities were to be marketed under the Zeirei Chabad name. A letter from September 2005 stated that a certain Rabbi was responsible for Chabad activities on behalf of Zeirei Chabad in a certain community, and included a disclaimer that the organization (applicant 2) was not responsible for any communications or business transactions made in the name of Chabad. The Commissioner took this as evidence that the second Applicant differentiated itself from Chabad per se. and referred to itself by its full name. This undermines the Applicants claiming exclusivity to the term Chabad.

The Commissioner considered that even if the terms Chabad and Lubavitch could fairly be registered, it was not clear that the Applicants owned the marks. However, he was not convinced that the marks were registerable at all, and considered that the words alone were in the public domain and could be used by all.

In this regard, the Commissioner cited the Baal Hatanya Seligsohn  1973, page 22:

Marks that should stay available for trade are in a totally different category. Here one is not concerned with marks actually used in trade, but with marks that common sense or conscience obliges should remain non-monoplized and available to all.

 The Applicants allege that the marks are necessary to prevent third parties passing themselves off as Chabad without consent or supervision. Whilst it is true that the purpose of trademark registration is to prevent misleading the public (see 10959/05 Delta Lingerie, vs. Tea Board), in light of above, it is not clear that the concept of misleading is appropriate in this instance.

That as may be, misleading the public is only one consideration. Another is freedom of occupation and freedom of speech. As the Supreme Court stated in 941/05 Wine Makers of Rishon L’Zion and Zichron Yaakov Cooperative vs. the Vineyard Company LTD p.d. 61(3) 350:

The Ordinance (new version) is intended to protect registered trade names as possessions where a person or entity has acquired the reputation through usage. in addition to the mark holders rights, the ordinance protects the public in two ways: the first is that the public should not be mislead by non-approved usage of the mark, and the second is that the public should not be put out by over registration of terms used in trade that should remain in the public sphere.

The balancing of these conflicting rights requires careful consideration. In sections 8, 9, 11 and 12 of the Ordinance, the legislators defined marks that the upset the balance between the different interests and details marks that cannot be registered. the main section is Section 11 which lists 14 exceptions to what may be registered.

One of the exceptions is 11(5) that states: marks that damage or are likely to damage the public interest.

Since the UK has joined Europe, the term ‘public interest’ in UK trademark law has been interpreted as meaning ‘accepted principles of morality” and “public policy” and is applied to marks that may upset a sector of society on basis of race, gender, faith, and general issues of modesty and bad taste. See Kerly’s Law of Trade Marks and Trade Names, 15th edition, 2011, page 248. This explanation was adopted in the decision concerning Israel trademark no. 146483 “Lenoplast” from 2005. [I can’t follow the relevance of this section – MF].

Now the Commissioner draws an analogy to Christian Science. Note he does not actually compare Chabad to the Church of Christian Science, but rather compares the present Application with a trademark cases ruled by the Supreme Court of the State of New Jersey, concerning a movement established in the 19th Century, whose central institution requested to register the name.

Mary_Baker_Eddy

As we have pointed out, the religion of Christian Science was founded at least thirteen, and possibly twenty-three, years before establishment of the Mother Church, the organization now centered in Boston. Although the Boston organization has now co-existed with the Christian Science religion for close to a century, an understanding of this case requires recognition of two significant, related facts: first, the religion and the organization are conceptually separate; and second, the religion pre-existed the organization.

If in the late nineteenth century, in the early, formative stages of both the religion and the Mother Church, the founders of the Plainfield Church had chosen to practice the religion of Christian Science by following the religious teachings of Mary Baker Eddy, but had decided that their church should not become a member of the Mother Church organization, it is certain that there could have been no restraint on their use of the name “Christian Science Church.” In fact, not even Mrs. Eddy, founder of the religion and of the Mother Church, would have been empowered by law to prevent defendants’ use of the name “Christian Science Church,” provided that name were truthful (in the sense that it accurately referred to the religion practiced by defendants).” (Christian Science Bd. of Directors of First Church of Christ, Scientists v. Evans, 520 A.2d 1347, 1352-1354 (N.J. 1987).

In another instance, the Appeal board of the USPTO considered the term Seventh Day Aventist:

 “…because the Seventh-day Adventist religion pre-existed the formation of the Seventh-day Adventist Church (as the General Conference is often informally referred to), it is clear that these proceedings involve a designation which was inherently generic rather than one which initially was a valid mark” (Stocker v. Gen. Conference Corp. of Seventh-Day Adventists, 39 U.S.P.Q.2d 1385, 1996 WL 427638, at 30 (T.T.A.B. Apr. 25, 1994))

The Applicants do not claim that third parties using the terms Chabad and Lubavitch do not act in accordance with the belief system of the movement. The claim is rather that such third parties are not necessarily connected with them and Applicants do not have control over the actions of such third parties.The Commissioner does not consider that this type of deception is that which the Trademark Ordinance is designed to prevent. The opposite is true. The ordinance does not prevent free speech and does not prevent religious freedom. These are covered by section (5)11 of the Ordinance which rules that such marks are against the public interest.

Religious streams are not tradable entities. Laws for commercial campaigns are not applicable for religious movements. With reference to the wide range of goods and services for which registration of the marks was applied for, it should be noted that a religious movement is not a commercial enterprise and its purpose is not to provide consumer goods.

The commissioner was not swayed by arguments that defective mezuzot (ritual Amulets for affixing to door posts, containing ninlical verses (Deuteronomy 6:4-9 and 11:13-21) which discuss the obligation, could be sold under the Chabad brand, or that non-authorized speakers could appear at army bases, and did not feel that a trademark registration could prevent someone claiming allegiance to one sect or another.

In light of the wide dispersion of the Lubavitcher Rebbe’s teachings and the widespread usage of the term Chabad and Lubavitch by the public, the words are generic and should remain in the public domain. There is nothing submitted that justifies removing the names from the public and making them controllable brand names.

In light of the above, the Commissioner does not think that additional material or a further hearing will help Applicants. He rules that the applied for marks are not registerable and the Applications are denied.

Asa Kling, 22 May 2016

COMMENT

A non-profit organization acting in a commercial world should be entitled to use trademarks to protect its branding. Chabad’s activities are largely supported by public donations. The public should know that money donated to someone collecting on behalf of Chabad is collecting for the organization and that there is some central control on what the money is being used for.

Chabad does indeed provide education services, philanthropy and humanitarian services, including looking after Jewish youth (now older) from the Chernobyl region in an institute in Kfar Chabad who suffered radiation effects after the nuclear disaster. I have three Chabad cousins (that I get along well with so long as we don’t discuss theology or Ritual practice). One of them will only eat meat from animals that were ritually slaughtered by members of Chabad. There are various laws governing fruit and vegetables such as ritual tithes (now symbolic), restrictions on fruit from trees and vines during the first four years and in some instances, the clock is restarted where trees are transplanted. Chabad emissaries are noticeable due to their unique garb. Children’s clothing and toys may include images of kosher animals like ducks and cows, but some members are strict about not allowing their kids to wear or play with images or toys of teddy bears, kittens and other non-Kosher animals. I can’t see anything on the list of goods and services that goes beyond what the movement might be interested in selling under Chabad supervision or authorization.

The Commissioner has ruled that Chabad is a religious movement, and, as such, its purpose is not commercial vending. This does not reflect reality. Judaism in general, at least orthopractic varieties, which are mainstream in Israel, is a way of life and governs every day activities. Chabad certainly does not see itself as a religion in a theological sense, but rather as an all-encompassing way of life. There is, therefore, a fundamental difference between a church and a Hassidic sect, and the Christian Science ruling in the US is of limited relevance when discussing Chabad.

Whether or not the evidence submtted proves it or not, Chabad is less fragmented and more unified behind mainstream leaderships than it was in 1994. Those with strong Messianic beliefs seem to have toned their comments down. Actively viewing the Rebbe as Messiah and seeing his death as a temporary state prior to imminent resurrection is more difficult as time goes by and noone under the age of 25 remembers the Rebbe’s passing.  The real problem that mainstream Chabad faces, is the Messianic offshoots that are reminiscent of early Christianity or at least of Shabtai Zvi. A careful reading of the Seder haggadah seems to show Rabban Gamliel and others making statements as to what is and is not the Passover Sacrifice and teaching away both from Christian interpretation of the Last Supper, and from Rabbi Akiva’s support of the Bar Kochva Messianic rebellion against the Romans that proved futile. Certainly no longer a mass movement of improtance, there are still  small communities of Christians, Moslems and Jews in Turkey that consider shabtai Zvi to be the Messiah.

grumpy

It is difficult for me, as an outsider, to gage the extent that different types of Chabad followers, that I’d conveniently classify as Classic Chabad, Messianic Chabad and Chabad Lite each consider the previous Rebbe as actually being dead in the conventional sense, or alternatively as being in some positive limbo state as various legends, is Merlin, Jesus and Elijah.  I don’t know to what extent self-identifying Chabadniks consider the last Rebbe as the Messiah, or take note of the Maimonides discussion of Bar Kochba in the Laws of Kings, where he points out that since he died without rebuilding the Temple, it was clear that he wasn’t in fact the Messiah.

Rabbi Yosef Aharonov, the former head of Zeirei Chabad (one of the Applicants) is currently in an Israeli jail for pocketing 3.5 million shekels donated to Chabad. This may go a long way to explain the days in producing evidence, and also illustrates that the possibility of Chabad representatives engaging in activities that are beyond what the organizations rightfully consider acceptable is not beyond the realm of possibility and there does therefore seem to be justification for central control over who can use the term Chabad for fundraising and other purposes.

I assume that the Commissioner did not actually compare Chabad to the Church of New Science in any meaningful Theological or even socialogical way, but rather noted similarities regarding trademark disputes in a fragmented religious group.

These issues do not only affect Chabad of course.

In this spirit of comparative IP in religion, without drawing wider parrallels, I note that the Catholic Church has issued unique copyrights for the Papal figure. They want to control what is seen as official doctrine. Chabad no longer has a living Pope Rebbe who can issue guidance with Supreme authority, although this doesn’t seem to be preventing guidance from the Rebbe from being published as if he was alive – which may be the point for registration of the marks.

There was a power struggle in the Bobov dynasty which led to one faction submitting a range of marks to the USPTO. See here. it was argued the USPTO is not the correct court to decide who is the Rebbe and who is the pretender. Other Hassidic sects have split and fragmented. Vishnitz is a good example. There are different Vishnitz Rebbes in different towns. They all seem to be part of the same Hager clan but don’t have a Supreme Rebbe. I predict that at some stage, there will be a breakaway Satmar sect that will realize that in the light of subsequent history. Rabbi Yoel Teitelbaum was wrong. Already 25 years ago, I met a Satmar Chassid who was studying in Har Ezion, a Religious Zionist Hesder Yeshiva.

The commissioner is correct that once upon a time, many years ago, there was a Chabad organization led by previous Rebbes. However, this is not relevant. It does not affect current branding. There may have once been restaurants run by tartan wearing, bagpipe playing McDonald clansmen but that does not mean that now such a McDonald, opening a restaurant, should not have to face IP issues with the golden arched hamburger flippers.

Allowing the marks would not create a limitation on public usage of the name. It will merely provide some centralized control of what can legitimately be considered provided by Chabad and what cannot. It will mean that only someone selected by a committee can open a Chabad House and not anyone who likes the beards. I see this as a good thing. When in Orlando for INTA, I had a discussion with the Chabad Kashrut supervisor who had a problem with a restaurant in Orlando receiving Kashrut supervision from a Chicago Rabbinic court. I wondered if the issue was loss of protection money supervision revenue or a real problem with supervision. (The supevisors tales of rennet and pigs milk in non-supervised milk in America in the Sixties I take with a pinch of salt. I heard similar things from fundamentalist teachers in high school in the UK, and I assume that Rabbi Feinstein would have become aware of such issues and revised his ruling). In Israel, in addition to private Kashrut licenses, there is a state kashrut supervision and every restaurant calling itself Kosher has to have a certificate from the local, state authorized Rabbinic Council. I do not see a problem with Chabad as a movement wanting centralized control. Personally, I think they should appoint a Rebbe, but that is up to them.

Nowadays, no new Chabad emissary is being appointed by the Rebbe who has been inactive since 1991. There are new Chabad Houses being opened around the world, and I’ve visited them in different cities, including Cambridge, England, Rio de Janeiro, Shanzhen, Honk Kong, Shanghai, San Diego and Orlando. They each serve a slightly different purpose and different crowd. None of the Rabbis seemed as scholarly as Rav Shteinzaltz or the Late Rav Zevin. One was embarrassingly ignorant but  may, nevertheless, be providing Jewish services and serving a valuable purpose. Should anyone be able to open a Chabad House? If a dynamic and charismatic Chabad Rabbi writes books about Kosher Sex and becomes the spiritual leader of the late Michael Jackson, shouldn’t  the organization have the power to decide that he can not consider himself Chabad?

Autobiographical Footnote

Me? I do not have the temperament to be a Hassid. I benefitted from studying in a Talmudic college with two spiritual heads who were culturally very different, with different personalities and character traits. It taught me that noone has a monopoly on the truth and that Judaism is multifaceted. Whilst studying there, I used to travel to a nearby town to hear a third Rabbi who I still try to listen to before Pesach and Yom Kippur, and collect and read his books. I also enjoy the teachings of the previous UK Chief Rabbi and collect and read his books with great enjoyment. I never had one spiritual leader but seem to be at the liberal, intellectual end of the Orthodox spectrum. I admire Chabad’s outreach work immensely but find their philosophy less than unattractive. I don’t have the temperament to be a Hassid.


Competing Trademark Applications for Epilaser

May 16, 2016

Epilaser

Epilady 2000 LLC filed Israel Trademark Application No. 258887 for “Epilaser” covering Domestic hand-operated cosmetic apparatus, namely, electronic aesthetic hair removal and skin treatment devices using multiple light sources such as lasers and LED’s based devices. The Application was submitted on 1 September 2013.

Epilady’s application was examined on 21 January 2015, but prior to allowance, on 4 February 2015, Mr Yitzhak Dwek filed Israel Trademark Application No. 272079 also for “Epilaser” covering Apparatus and instruments for hair removal by laser; all included in class 8 and Cosmetic services; hair removal services; beauty care for human beings; all included in class 44. Mr Dwek requested expedited examination and for some reason the Israel Patent Office failed to notice the competing mark.

The second mark was accepted for expedited examination and the Trademark Department informed Epilady that a competing marks procedure was initiated.

The parties failed to come to an arrangement and submitted their evidence for a Patent Office ruling. Both parties argued that their case should take precedence. Epilady submitted an Affidavit by Mr Yehuda Levi, the head of Epilady’s legal department, and Mr Dwek submitted an Affidavit as well.

Mr Levi submitted that Epilady had 30 years reputation for epilatory services and used the mark Epilady and derived marks.He further denied ever having come across Mr Dwek’s marks. Epilady further claimed to have spent hundreds of thousands of Shekels marketing Epilaser in Israel and abroad, over the period from 31 October 2014 to 3 February 2015. The Epilaser mark had been submitted for registration by Epilady in the US, EU and Japan.

Mr Dwek claimed usage since 2006 via his company Air Bus [MF – no explanation is given as to why Mr Dwek is using the name of a well-known European airplane manufacturer]. During that period, Mr Dwek claimed to have ordered 200 home use hair removal units from South Korean manufacturers. These units were sold in Israel under the Epilaser name. Mr Dwek further affirmed that from 2008, the mark was more widely used and that the TV sales chnanel had committed to purchasing 100 units under the Epilaser brand from him.

In cross-examination, Mr Levi further added that Epilaser is a natural development of their very well known main mark [MF – I think he means that the name Epilaser is a variation of Epilady, not that using lasers to remove hair is natural]. Epilady claimed to have used a foreign law firm to do an availability check for Epilaser prior to submitting their trademark application. Furthermore, the Epilaser mark was registered by a sister company, S&Y in Hong Kong.

The parties summarized their cases in writing. Epilady submitted additiional evidence of sales and orders in their summary, but Mr Dwek opposed this being added in the summation stage, and the Deputy Commissioner agreed that this evidence could not be considered.

Discussion

section 29a states:

If different persons independently submit identical or confusingly similar trademark applications for the same goods or for goods in the same category, and the second application is filed before the first application is allowed, the Commissioner may allow the parties to negotiate an arrangement and endorse this agreement, or may, if the parties fail to reach an agreement or if the agreement is unnacceptable, decide which mark takes precedence, giving his reasons for so-doing.

There considerations are given in the case-law and include which application was first submitted, the amount of usage and considerations of equitable behaviour. See 2498/97 Robby Boss vs. Hugo Boss PD 52(5) 665, 2498/97 Bacardi vs Registrar of Trademarks PD 25(2) 87, 91, and 8778/04 Yotvata vs. Tenuva 30 April 2007.

Since these marks are identical and cover identical goods, they cannot be registered in parrallel and so that option, given in Section 30 can’t be implemented. Furthermore, the parties did not request this.

Filing Date

Epilady’s request was the first to be filed. |However, this is a relatively minor cosnideration.

Equitable Behaviour

Mr Dwek provided a coherent and convincing explanation for why Epilady selected the Epilaser mark and filed applications in various jurisdictions. The Deputy Commissioner is in no doubt that Epilady is not trying to free-ride on Mr Dwek’s reputation in the mark. Back when Epilady filed their application, there is no indication that Mr Dwek was using the mark Epilaser and there is no doubt that Epilady is a very well known mark.

In 2006, Mr Dwek ordered 200 Epila Hair Removers which he sold under the Homepilaser brand. That was the name mentioned in advertisements from September 2008 and the communications with the TV sales channel also related to HOME PILASER.

In December 2014, Mr Levi wrote to the Ostra company about usage by Mr Dwek of the Epilaser name., and it transpires that in 2014, Mr Dwek was still using the Homepilaser mark for epilatory equipment. It was only after the communication with the Ostra company that Mr Dwek sought to register the Epilaser mark which was not then in use.

During this period of the end of 2014 and the beginning of 2015, Epilady was already using the Epilaser mark and had ordered a Facebook page, hoardings and a TV advertising campaign.

 

Thus it transpires that Mr Dwek filed his application knowing that Epilady was using the mark and had done so for 18 months or more. Apart from Mr Levi’s letter there is no evidence that Mr Dwek was using theEpilady mark.

In the circumstances, it appears that Mr Dwek’s application was not made in good faith.

Usage of the mark

Mr Dwek indeed sold 300 laser epilation units, but did so under the name Homepilaser. it is not clear whether the units ordered for the TV Sales channel included these. In the absence of contrary evidence it appears that the units advertised in 2014 are included in this number. In respect to all of these sales, the name Homepilaser and not Epilaser was used.

Epilady used the mark from 2013 and started advertising it heavily in 2014, spending over 1.5 million shekels in so-doing.

In his summary, Mr Dwek alleged that the advertisements themselves were not submitted, whereas as he himself was not cross-examined, his evidence was not challenged. As to the lack of cross-examination, Ms Bracha refers to paragraph 94 of the 4584/10 Israel vs. Regev Shovar ruling from 4 Dec 2012 and states that her conclusions were based on the evidence submitted:

As a general rule, there is an established ruling that failure to cross-examine works against the party that gives up this right. However, this does not mean that the evidence not challenged is accepted at face value and even if a party decides not to cross-examine the witness, the court is not obliged to accept the witness’s testimony if there is good reason not to do so. (see Kedmi on Evidence part 4 1953, (2009). For example, if the party not cross-examining brings additional evidence, the judge does not have to accept the testimony merely because it was not challenged.    Thus failure to cross-examine works against the party that does not use this right, but does not result  in the testimony being automatically accepted.

Thus Ms Bracha sees no reason to accept Mr Dwek’s evidence merely because it was not challenged by Mr Levi. Furthermore, since Mr Levi’s statement regarding advertising costs was backed by tax invoices, it may be accepted as being true.

Conclusion

In weighing the evidence, it appears that Epilady’s case is the stronger one in all three tests. Consequently it is allowed to register and Mr Dwek’s is refused. Since Epilady was only represented by inside counsel and did not incur additional legal expenses, they are not entitled to costs. See 166631 Unipharm vs. Neurocrine Biosciences LTD. 

COMMENT

Dwek means priest, and like his attorneys, Cohen-Zedek from Pearl Cohen, the name implies belonging to the priestly caste. This does not imply honesty or integrity, but we note that in Temple times, the priests did epilate.

Epilady is a market leader for epilatory devices and has been for decades. They are not entitled to monopolise the prefix epil since it is descriptive, but I am not sure that in Israel, many people using epilatory systems at home (as opposed to professional beauty salons) are aware of the word epilatory. That as mat be, the mark was not given due to Epilady having a similar mark, but this fact was merely used to collaborate their claim for choosing the mark in good faith. In this case, Dwek did not have a case and one wonders why he fought the opposition?

 

 

 


YALA and YA’LLA TOURS Can Coexist in Tourism Industry – No Likelihood of Confusion

May 11, 2016

The word YALA is Hebrew slang for ‘Get a move on!’

The Fattal chain of Israel hotels filed Israel Trademark number for the stylized mark “YALA” shown below. The mark covers advertizing and hotel related services in classes 35 and 41.

265772

The Applicant filed for expedited examination and was allowed, but a copy of the Notice of Allowance was sent to Ronen Paldi who owns Israel trademark 97324 and who duly filed an Opposition. Ronen Paldi has a very different looking stylized mark for YA’LLA TOURS shown below. The mark is in class 39 and disclaims the word tours.

97324 Ya'alla

The Opposer claims to organize tours in Israel and to work with Israeli hotel chains. He claimed that Fattal’s application was confusingly similar and lacking in distinctiveness and allowing it was against the public interest since the filing was based on inequitable behaviour. The Applicant denied this and claimed that there was no confusing similarity between the two marks because the services provided under the marks was different. The Opposer’s advertising was mostly in the US and under the Ya’lla Tours USA mark and not under the mark as registered. The Applicant went on to note the different distribution channels and customer base.

The parties filed their evidence. The Opposer  filed a statement in which he laid out his factual claims. The Applicant filed a statement of Mr Nadav Fattal who is the Digital Advertising Manager of the Fattal group.

OPPOSER’S CASE

Mr Paldi testified that he had established his company in 1993; originally as a tour pilgrimage organizer and later as  an organizer of tours to the Middle East, the Persian Gulf, Greece and Turkey. The mark was chosen back in 1993 since it reflects the Middle East but is recognizable to Western ears. Mr Paldi stated that he uses his mark on coaches used to carry tourists in Israel and on publicity and Internet materials distributed in Israel and elsewhere. Over the 23 years since founding the company, the business has company has done some 20 million shekels worth of business in Israel. Mr Paldi also owns the Internet domain http://www.yallatours.com.

APPLICANT’S CASE

Mr Fattal stated that his intention was to use the mark to advertise last-minute hotel deals. The company runs hotels in Israel and Europe and the App. was intended for use by Israelis, whereas the opposer’s services were aimed at foreigners abroad and any usage in Israel was with service providers and not end users. The App. had been downloaded 80,0000 times and had generated sales of 1.5 million shekels.

RULING

Citing the Bible Seligsohn, “Trademark and Related Laws”, p.p 20-21, 1973, the Deputy Commissioner Ms Jacqueline Bracha noted that ‘lack of distinctiveness’ is assessed objectively with regards to the distinctiveness scale, to ensure that words that should remain in the public domain are available for use by the public. ‘Lack of distinctiveness’ is not with respect to specific competitors marks. She did not consider the word descriptive for tourism services and rejected the argument that the mark lacked distinctiveness.

As to whether the mark is confusingly similar to the competitors, citing Taam Teva vs Ambrosia, and the Family Magazine ruling, she noted that this should be examined by applying the five six part triple-test of:

  1. appearance
  2. sound
  3. customer base
  4. sales channels
  5. everything else of relevance
  6. common sense

Sight and Sound

Whilst making due note of the first impression, dominant elements and everything else, the marks look very different, since one is monochrome and the other is very gaudy. The graphical elements are different.

However, the dominant word is Yala (Ya’alla). Citing the Clearasil – Stayclear decision, the Deputy Commissioner ruled that despite the word ‘tours’ being generic, one still has to consider the mark in its entirety.  Although the visual similarity is negligible, there is some audible similarity. As clarified in Appeal 5066/10 Angel vs. Berman (30 May 2013):

The relative consideration given to the visual and audio aspects of a mark depend on a number of variables, including the type of product in question. Thus with products removed by the customer from the shelf, the visual aspects are given more weight, but with goods ordered over the counter, the sound of the name is more important.  

The applicant’s mark is used as an App and the visual aspect dominates. The Opposer’s mark is different in that tourist services are referred to by name and the sound of the mark is thus as, if not, more important than its appearance.

Furthermore, one cannot separate the audible and visual aspects of a mark. As stated in “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 313:

“So, for example, it is possible that a mere phonetic similarity between trade marks may create a likelihood of confusion. On the other hand, the degree of phonetic similarity will be of less importance if the goods are marketed in such a way that the relevant public will usually see the trade mark, or if one of the marks has a clear conceptual meaning. All will depend upon the global assessment.”

Anyway, the appearances of the marks are very different and the pending mark is unlikely to be heard whereas the registered mark to the opponent is likely to be sen and said. Ms Bracha concludes that the visual aspect is dominant and the likelihood of confusion is negligible.

Services and Customers

The tests for assessing the types of services and customers is given in Seligsohn, “Trademark and Related Laws”, p.p 82-83, 1973, based on the British case-law as follows:

  1. What is the nature of the goods and their constituents?
  2. How are the gods used?
  3. What are the regular distribution channels?

 If any of these are similar it is fair to conclude that the goods are similar but the third consideration appears to be less weighty than the others.

As per the Omni ruling, where the marks compete, one should consider if they are offered on the same shelf (metaphorically as well as literally).

There is a vast difference between last-minute hotel deals and organized tours. The services do not compete in the sense that one is unlikely to take advantage of a last minute hotel vacancy in Israel or choose a tour of Turkey that is advertised in the US.

The marks are not even complimentary in that the same customer is unlikely to purchase both services.

The App is aimed at Israelis and is in Hebrew.  Apart from words like deluxe, the interface is in Hebrew and so although technically a Norwegian tourist on a tour could download and use the App in practice this would not happen.

The Opposer lives in the US, offers services in the US and trades under the name Yalla Tours USA. Business in Israel is confined to ordering from the Israel tourism industry. The goods and distribution channels are very dissimilar.

Everything Else

The Opposer claims that the Applicant was aware of their registered mark and selected the application to build on the Opposer’s reputation. The Deputy Commissioner did not find this argument persuasive since the customer base is so different. Even if the Applicant was aware of the Opposer’s mark the claim of building on their reputation is not substantiated.  Furthermore, the cross-examination demonstrated that Mr Fattal, whilst ultimately providing the Opposer’s company with services, does it through local tour operators and claimed to be unaware of the Opposers’ services.

The Opposer’s arguments are rejected and the Deputy Commissioner concludes that the  marks are not confusingly similar. As an afterward, although the Opposer claimed that their mark was well-known, this claim was unsubstantiated.

Verdict

The opposition is rejected and the Opposer is ordered to pay 30,000 Shekels costs within 30 days or interest will be incurred.

Ruling re 265772 “YALA”, Ms Bracha, 20 April 2016

COMMENT

There is a judicial concept of related goods. It is not inconceivable for one service provider’s service to be associated with an other. Frankly I think that in tourism, the service provider is rarely of interest. People look at destination, what they are getting, and the cost they are paying. Although either or both can expand their services or branch out into similar services.Whilst current usage by the parties could change, trademark rulings can always be revisited for ever, as marks can be renewed for ever.  The decision looks radical prior to being analyzed, but is nevertheless convincing.

One final point. the Deputy Commissioner is aware that American tourists who book tours do not know if they will be staying in Fattal hotels and Mr Fattal may indeed not know that a group has booked via Ya”alla Tours since local tour operators mediate. However the tourists see Ya”alla Tours on their buses. Certainly Jewish tourists from the US may subsequently live here. People seeing Ya’alla tour buses mighty identify them with the App. There is room for consumers to assume a connection and for the activities of one company to impact the reputation of the other. Possibly this will be symbiotic and positive and to the advantage of both. One company chose a word because it means ‘get a move on’ and they are offering last-minute special deals. The other company chose the word since it is Arabic and is easily memorized to Westerners. It is not like Jihad and does not have negative connotations, and is noy like Hummous which is actually pronounced differently by Westerners than by Arabs, and doesn’t have connotations of coming in a plastic container and must be kept refrigerated to avoid stomach upsets. In other word, the two parties chose the same term for slightly different reasons.