Knipex-Werk and C Gustav Putsch KG opposed Israel trademark application nos. 279193 in class 7 and 283268 in class 8, which were both filed by Ohev Zion LTD (Ohev Zion, is Love Zion). The marks are shown alongside.
Furthermore, Knipex-Werk and C Gustav Putsch KG filed Israel trademark application no. 289408 in class 8 for the word COBRA, for water pump pliers and pipe wrenches.
On 25 June 2017, the parties submitted a notification to the effect that after long and continuous negotiation, they had reached a coexistence agreement regarding the registration and usage of the marks in Israel, with intent to prevent misleading or confusing Israeli consumers, and the Opposition was thus closed with both parties agreeing to pay their own costs. A copy of the coexistence agreement was appended to the notification.
The parties stated that they were unaware of any actual events of confusion resulted by their usage of the marks in Israel, and that endorsement of the coexistence agreement would protect the public interest, prevent confusion and misleading the public and protect the interests of both parties, acquired through use of their marks in Israel.
In the framework of the agreement, the Applicant and the Opposer agree to a number of conditions, designed to protect the Israeli consumers. In addition to restricting the range of goods in the Applications, as detailed below, the Applicant will only use the stylized COBRA mark, and not the word alone. The Opposer will not use the stylized mark. Both parties undertake not to use their marks with respect to goods that the other party has applied for, and thus there is no likelihood of customer confusion.
In accordance with the agreement, the parties have requested that Application number 279193 be restricted to “electric, electro-mechanical or chargeable pliers, wrenches and pipe wrenches”, and that Application no 284368 will actively disclaim “pliers, wrenches and pipe wrenches”.
The parties request that opposed Israel trademark application nos. 289408 in class 8 for “water pump pliers and pipe wrenches” be immediately examined and allowed and the Opposition be considered dropped only on publication of the 289408 application as allowed. Should any of this agreement not be allowable, the parties requested that a hearing to be attended by their legal representatives be scheduled as soon as possible.
There are three trademark applications. The Applied for marks are stylized and the Opposer’s mark is a simple word mark.
In light of the agreement before her, the Adjudicator, Ms Yaara Shoshani Caspi does not consider that it is sufficient for the Opposer to agree to refrain from using the Applicant’s stylized mark. Also it is insufficient for both parties to refrain from applying for Cobra marks for goods that the other party sells. The Adjudicator considers this insufficient to create the desired difference between the two Cobra marks.
As to correcting the list of goods, the Adjudicator is only partially satisfied.
The list of goods of Israel trademark application no. 279193 in class 7 is as follows:
“Machines and electric and chargeable hand tools, such as electric drills and electric saws; electric and motorized gardening tools, such as choppers, fence trimmers, leaves blowers; air compressors; vacuum cleaners; welding machines; water-pressure washing machines; and electric machines and machine tools for making, processing and cooking food and beverages, namely food processors, meat grinders, blenders, juice press, vegetable peeling and slicing apparatus; coffee grinders; kneading machines, devices for grinding, milling, crushing and chopping food; electric can openers, electric meat grinders, garbage disposals; vacuum-cleaners; water pressure cleaning devices, steam cleaning devices; and parts and accessories for all the above; all the aforementioned goods excluding electric, electromechanical or chargeable pliers, wrenches and pipe wrenches; all included in class 7.”
The Adjudicator was willing to allow the suggested restriction which disclaims the articles listed by the other party in Israel trademark application no. 289408. However, the agreed list of goods for Israel trademark application no. 284368 in class 8 is not acceptable. That list is as follows:
“Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels, razors, electric and non- electric hair clippers and beard, trimmers, scissors to trim hair, nail clippers, electric irons and steam irons, electric hair stylers; parts and accessories for all the above; all the aforementioned goods excluding pliers, wrenches and pipe wrenches; all included in Class 8.”
This is unacceptable since Israel trademark application no. 289408 also includes: “Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels”, so the amendment to Israel trademark application no. 284368 is not acceptable.
If, however, Israel trademark application no. 284368 is amended to exclude “Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels”, the marks will be considered allowable and the coexistence agreement will be endorsed. The parties have until 19 July 2017 to accept this. There does not seem to be a point in holding a hearing whilst the parties are negotiating, and if the parties fail to come to an agreement, the Opposer should submit their evidence within two months, i.e. by 5 September 2017, with the appropriate fees.
Interim Ruling by Ms Yaara Shoshani Caspi re coexistence of COBRA trademark applications, 6 July 2017.