HALLEY vs. HALEY

September 29, 2017

HalleyJordan based patent attorneys Qumsieh report filed an application in the Palestinian Authority (referred to by Qumsieh as the State of Palestine) for a trademark for Halley on behalf of their Client, Yildez Holding Anonim Sirketi, a Turkish company, on 25 June 2015 in class 30. The mark received the trademark number 27208. The application was published in the Palestine Official Gazette on 15 December 2015 subject to the opposition period of 3 months.

A Saudi Arabian company, under the name of Abdullah Al Othaim Markets, filed an opposition against our client’s application on the basis of it:

  • Being a well-known company in terms of commercialising food products;
  • Being the owner of the registered trademarks “Haley” in Latin and Arabic characters in classes 21, 29, 30, 31, and 32;
  • Prior registration of “Haley” in the home country and abroad since 2003;
  • Claiming their mark “Haley” as a well-known trademark, and
  • Commercialising their products under the trademark “Haley” on their website, which is known to consumers worldwide.

Qumsieh countered that:

  • Their client is also a worldwide,  well-known, company established in 1989;
  • Their client is the owner of the registered trademark  “HALLEY” in Turkey and worldwide in classes 29 and 30 since 1993;
  • The trademark “HALLEY” is well-known worldwide, and customers now associates this brand with Yildez Holding Anonim Sirketi, and
  • The trademark is widely used worldwide and in Palestine [sic].

After reviewing the matter, the Palestine Trademark Registrar allowed HALLEY to register.

COMMENT

We note that the stylized mark Halley is registered in Israel for plumbing products, namely: faucets, shower installations, shower cabinets, shower cubicles, bathtubs, water closets, sinks, wash-hand basins, urinals, sanitary apparatus in the form of squatting pans, toilet seat lids, toilet cisterns; all included in class 11.

If the Palestine Territory mark is also for sanitary equipment, and Haley (not registered in Israel) sells food products, there is indeed little likelihood of confusion.


Apple and WhatsApp’s Apps for Apps

September 14, 2017

272109 apple watch appOn 9 February 2015, Apple Inc submitted Israel trademark application no. 272109 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular background as shown.

280669

Before Apple’s trademark application was examined, WhatsApp Inc. filed Israel trademark application number 280669 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular speech bubble shaped background as shown.

 

 

Apple’s application was for Read the rest of this entry »


Chipsico – a Competing Marks Proceeding Where Both Marks were Refused

July 11, 2017

267474On 13 August 2014, the New Dubak Natsha ltd filed Israel trademark application no. 267474 in class 29 for chips (potato crisps). The stylized mark is shown alongside, and reads CHIPSICO Batates Modalaah – (Chipsico Crinkle-Cut Potato Chips).

The same day, the Halawani Industrial Company ltd filed two trademark applications for coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitute, flour and grain products, bread, wafers, cakes and sweets, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, tomato paste, seasoning mixtures, spices, frozen foods, snacks and crackers. The first application was Israel Trademark No. 267770 CHIPSICO and the second, 267772 was for شيبسيكو, which is Chipsico written in Arabic.

crinkle cutThe trademark department considered the marks as being confusingly similar and the parties failed to reach an agreement, so on 8 May 2016, a competing marks proceeding under Section 29 of the Ordinance was initiated and the parties were invited to present their evidence.

New Dubak Natsha ltd submitted: Read the rest of this entry »


Costs Award for Drink Point Competing Marks Proceeding

June 9, 2017

Where two parties file confusingly similar or identical trademark applications in Israel, such that both are co-pending, a competing marks proceeding ensues under Section 29 of the Trademark Ordinance 1972. More important that who filed first, are the issues of inequitable behavior and the scope of use.

On 20 May 2012 Assaf Nakdai and Benny Molayof submitted Israel trademark application no. 246704 for DRINK POINT covering business management and business administration; office functions; advertisements; sales promotion; sale of alcoholic beverages; included in class 35.

On the same day Drink Point LTD submitted the identical mark for services for providing food and drink; all included in class 43

250525Then on 9 October 2017, Drink Point LTD submitted an application for the same mark for business management, advertisements and sales promotion (including sale of alcohol); all included in class 35 and on 23 October 2017 Drink Point LTD submitted an application for the stylized mark shown alongside.

On 8 March 2017 Assaf Nakdai and Benny Molayof withdrew their application following a ruling by Judge Cochava Levy of the Tel Aviv – Jaffa Magistrate’s Court. Consequently on 12 March 2017, the Deputy Commissioner terminated the competing marks proceeding and allowed Drink Point’s applications to proceed to examination.

Drink Point LTD requested 14,200 Shekels in costs, alleging inequitable behavior and costs incurred in the corresponding court proceeding.

Ruling

In the ruling, the Deputy Commissioner reiterated the principle that the winning party were entitled to recoup their actual costs. However, she could only consider costs incurred in the competing marks proceeding, not those relating to the court ruling which should be addressed to that court. Furthermore, she was not convinced that Nakdai and Molayof had acted inequitably. The invoices submitted for Drink Point ltd’s lawyer’s fees were not sufficiently detailed to be considered. Therefore, she estimated an appropriate fee for the amount of work performed and ruled 7000 Shekels costs.


White Beer brewed by Different Monks Not Confusingly Similar

June 7, 2017

benediktineThe Bitburger Braugruppe GmbH applied for Israel Trademark No. 270167 for beer and non-alcoholic beverages in classes 32 and for education and catering services in class 43. The mark includes the words Benediktiner Weissbier and a picture of a Benedictine monk.

FranciscanBefore the mark was examined, Spaten-Franziskaner-Bräu GmbH applied for Israel Trademark No. 273567 for beer and non-alcoholic beverages in classes 32. The mark includes the words Franziskaner Weissbier and a picture of a Franciscan monk.

The Israel Trademark Department considered the marks as being confusingly similar and instituted a competing marks proceeding under Section 29 of the Trademark Ordinance.

Both sides presented their evidence as to who should prevail, but before a date was fixed for a hearing, they hammered out a coexistence agreement and agreed on steps to be taken to minimize the likelihood of the public being confused.

The Deputy Commissioner, Ms Jacqueline Bracha considered that the agreement was acceptable and the two trademarks could coexist.

The Benedictine beer (not to be confused with the liqueur that was a favorite tipple of the last Lubavicher Rebbe) is brewed in a brewery founded in 1609 and has a special recipe used by the monks. Since introduced into Israel in 2012, six million shekels has been spent on advertising and hundreds of thousands of liters were sold each year.

The Franciscan brewery claims to date back to the 14th century and that its label was designed in Munich in 1935. They have a registered trademark in Israel from 1936, and the applied for trademark has been used since 2008 for hundreds of thousands of liters.

Section 30 of the Trademark Ordinance allows for coexistence of marks for the same or similar goods where the Commissioner considers that marks are applied for in good faith.  Since the marks have coexisted for five years in Israel (and are known worldwide) and there is no grounds to conclude that one side or the other is trying to benefit from the competitor’s reputation.

The names sound very different when pronounced and the images of the monks are well established for beers.

The Deputy Commissioner then related to dove cosmetics and to the biosensor ruling and concluded that there was no likelihood of confusion.

Coexistence of the two marks is allowed.

COMMENT

This is a little like the joke about the Jew who was beaten up for sinking the Titanic… iceberg, Goldberg, what’s the difference?

Anyone with any sensitivity to monk habits would easily differentiate between Benediktine and Franciscan monks. Benedictine, being black friars would not be seen dead in brown habits. Franciscans, eschewing wealth, wear habits of peasant fabric, and being capucians, have distinctive hoods on their habits.

Perhaps more significantly, images of barley are generic for beer, and the term weissbier just means pale ale, or lager. Since beer has been brewed by monks for centuries, the image of a monk or someone holding a tankard is hardly distinctive. Even the most inebriated would realize that all the above simply indicate beer, and the it is specifically the terms Franziskaner and Benediktiner that indicate the flavour. Those unable to tell the difference would probably not care what they are drinking anyway.

Because of shipping costs, improrted beer from Germany is relatively expensive and these beers are considered as premium brands. the volume of sales is similar in each case and though adequate to demonstrate that they are established locally, their combined market sector is only a small fraction of beer sales. The Arab population does not drink beer at all, and those willing and able to purchase these lagers are generally well educated and discerning. Coexistence is a reasonable outcome in the circumstances. Furthermore, since the parties proposed coexistence, it is unlikely that anyone will appeal this decision.

 

 


Smash

May 7, 2017

smash3Talber Pop LTD owns Israel trademark number 240598 “SMASH” for Notebooks, stationery, diaries, binders; gift wrapping paper, paper gift wrapping bows, paper cake decorations, paper party bags, loot bags, cello bags, paper party decorations, paper party hats, paper tables cloths, paper napkins, banner made of paper and/or cardboards; all included in class 16, and Backpacks, sidepacks, back bags, side bags, sport bags, tote bags, book bags, school bags, food bags, pencil cases sold empty, wallets, waist packs, briefcases, bike bags, toiletry cases sold empty, fanny packs, suitcases, umbrellas, umbrella covers; all included in class 18. They also own a second Israel trademark number 241238 for SMASH in class 14 covering watches, chronometers and their parts.

On 30 December 2017, Smash Enterprises Pty LTD submitted a request to cancel the marks or to allow their marks to be co-registered. On 2 March 2016, Talber Pop responded with their Counter-Statement of Case.

The request for cancellation followed an attempt by Smash Enterprises Pty LTD to register their Israel Trademark Application 274301. After various extensions were authorized, on 26 January 2017 the parties submitted a joint request for coexistence based on a civil court ruling under which they undertook to differentiate their services and goods.

Smash Enterprises Pty LTD’s mark was in class 21 and covered containers for household or kitchen use; household or kitchen utensils; containers for beverages; containers for food; heat insulated containers for beverages; heat retaining containers for food and drink; insulated containers; lunch boxes; isothermic bags; bottles including water bottles (containers); beverage coolers (containers); drinking containers; portable coolers; ice containers; ice packs; plastic containers (household utensils); lids for household or kitchen containers; tableware, including plates, dishes, drinking glasses, bowls, cups, saucers, mugs and jugs, all being of plastic materials; cooking utensils for use with domestic barbecues; storage boxes, baskets and containers for household use; household rubbish containers (bins); glassware for domestic use; ceramic tableware; baking trays; storage jars; cooler bags; thermally insulated bags for food and drink.

Essentially, the two parties are interested in co-registration of Israel TM 274301 to Smash Enterprises together with those registered by Talber Pop LTD. (Smash Enterprises did have a second application in class 18, but seem to have abandoned that, as to allow the same mark for similar goods in the same class is particularly difficult).

The Commissioner can allow co-registration under Section 30a for identical or similar marks for identical or similar goods if the application to do is filed in good faith or if there are extenuating circumstances that allows coexistence.

The wording of Section 30(a) is as follows:

Where it appears to the Registrar that there is honest concurrent use, or where there are other special circumstances which in his opinion justify the registration of identical or similar trade marks for the same goods or description of goods by more than one proprietor, the Registrar may permit such registration subject to such conditions and limitations, if any as he may think fit. (b) A decision of the Registrar under subsection (a) shall be subject to appeal to the Supreme Court. The appeal shall be filled within thirty days from the date of the decision of the Registrar. In the appeal, the Court shall have all the powers conferred upon the Registrar under subsection (a). 

The Applicant for coexistence has to prove that he is acting in good faith. Furthermore, he has to establish that despite the marks being identical or apparently similar to those registered, there is no practical risk that the consumer will confuse between the marks. In this regard, in the 87779/04 Yotvata vs. Tnuva ruling it is stated that:

In rulings [based on Section 30a of the Ordinance] the emphasis will be on the equitable behavior of the parties adopting the mark and on the need to protect the public from similar marks that might create misleading or unfair competition (Friedman p. 431).

See also 48827-03-14 Biosensors Europe SA vs. Commissioner of Patents from 22 February 2015:

The burden of proof that there is no likelihood of confusion falls on the two companies interested in the co-registration, and they have to prove that for many years they used the marks in Israel without the public being confused.

In this regard, the main thread running through the Ordinance is that identical or confusingly similar marks should not be registered if they will mislead the public. Thus in  10959/05 Delta Lingerie S.A.O.F vs Cachan Tea Board, India :7.12.06 :

Confusion and the risk of misleading is the living breath of the Ordinance. This is the main danger that we have to deal with. The various options of Section 11 that list marks that may not be registered reflect different types of confusion, and way to prevent them.

Where marks are more confusingly similar, the level of evidence that is required to show that there is no danger in their both being registered by Commissioner discretion under Section 30a is higher. See for example, the ruling concerning Israel TMs 24886 and 233056 Orbinka Investments LTD vs Now Securites Ohr Yehuda 1989 ltd., 24 July 2015 and 252115, 244719 Gaudi Trade SPA vs. Guess, Inc., 27 July 2016.

Alternatively, the Commissioner has to consider whether there are other special considerations that allow identical or similar marks for identical or similar goods.

In this instance the parties have reached a coexistence agreement following arbitration before Adv. Gai-Ron, and the Arbitrator of IP prefers constructive discussion and compromise rather than judicial ruling that are all or nothing. Nevertheless, the mere fact that the parties are interested in co-existing is insufficient to allow it where the is a likelihood of confusion. The Commissioner has the sole authority and responsibility to ensure that the Israel public are not confused by such marks, and such agreements are no more than an indication that must be weighed up with other considerations before allowing co-existence. See 1611/07 Micha Danziger vs. Shmuel Mor, 23 August 2012: 

The desire of the parties that grow and market Gypsophila is one thing. The registration of confusingly similar marks is something else. Furthermore, and this is the important point – we are not relating to the parties’ consent, but to the balances in the law. The prohibition to register the requested mark is based on the need to protect consumers that were not party to the agreement between appellant and defender, (although such agreements may be indicative as part of a general analysis).

Thus it cannot be disputed that the Commissioner is not obliged to follow agreements between the parties. Nevertheless, in appropriate circumstances and where such agreements are valid, the Commissioner may allow co-existence based on such agreements – see 10105-05-16 Campalock ltd vs Commissioner of Patents, Trademarks and Designs 4/12/16.

In this instance, the parties submitted a two paragraph laconic request for co-existence stating that they had reached an agreement. However it is not enough to negotiate an agreement that serves the interests of the parties. A request to allow two pending applications to coexist or for a new application to be registered alongside an existing one must be justified by a detailed explanation showing why the public will not be confused.

There is no way to relate to whether the sides behaved equitably since the case should be closed before a hearing is conducted. The parties did not even address this issue in their request. The  marks are identical for the word SMASH and there is certainly a similarity between schoolbags in class 18 and food bags and drink containers in Class 21 since these goods could be sold in the same retail outlets and there is therefore a room for confusion between goods in classes 18 and 21.

The Examiner reached a similar conclusion when she objected to the 2743011 mark under Section 11(9), and mere consent of the owner of a mark cited against a pending mark is insufficient to overcome a Section 11(9) objection.

The agreement does list the steps that the parties have undertaken to take, but this is insufficient. Firstly, the mark owner of the registered marks undertakes not to use a logo similar to that of the Applicant for cancellation, but the logo is not appended. An agreement not to use the same graphic is too narrow since the degree of similarity that is allowed is not related to. The registration would cause the register to be different from that happening in business.

Under the agreement, the side requesting cancellation would have the sole right to use the mark for boxes and containers for storing food and drink and the mark owner would be prohibited from so-doing. However, the mark owner’s registration 240598 (group 18) includes “food bags”. Food bags are essentially food storage bags. There is thus an overlap which creates confusion.

Thus the Arbitrator Ms Shoshani Caspi finds herself considering two identical marks for the word SMASH for two different entities that cover inter alia the same goods which creates a strong risk of confusion.

Consequently, as part of their joint submission. the parties should have provided a detailed explanation why TM 274301 in class 21 should be registerable together with TM 240598 in class 18. This wasn’t done, and the parties have provided no explanation as to how to avoid confusion. The request for coexistence is refused. The parties have until 1 June 2017 to inform whether they wish to conduct a cancellation proceeding.

Smash ruling, Ms Shoshani Caspi, 26 April 2017.

Comment

The ruling is solid and both parties were represented. The parties are interested in compromising. The Patent and Trademark Office have to consider the public interest and to prevent confusion, but nevertheless one wonders why the arbitrator did not simply request that the parties relate to a list of issues that their agreement does not address, rather than to refuse the request.

 


More Coffee!

March 23, 2017

EdenFollowing on the heels of the Izhimis family feud, we now report on a competing marks proceeding between Abu Shukra Import Export and Marketing Ltd and Strauss Coffee B.V.

Again, this relates to Turkish coffee. On 2 May 2013, Abu Shukra filed Israel TM application number 255526 in class 30 shown alongside.

This ruling relates to all over packaging designs being used as trademarks and to branding concepts. To my mind, it also raises issues of monopolies and market abuse, but this is beyond the competence of the adjudicator and commissioner to relate to, although I think judges might see things differently.

22263EliteOn 16 July 2014, but before Abu Shukra’s mark was examined, Strauss filed Israel TM Application No. 266680 for Coffee, roasted coffee, roasted and ground coffee and coffee substitutes, all in class 30, and also Israel TM Application No. 266683 for Turkish coffee, roasted Turkish coffee, roasted and ground Turkish coffee and Turkish coffee substitutes, all in class 30. Strauss Coffee’s marks are shown alongside.

[At this stage we note that Strauss Coffee owns the Elite brand among many others. Strauss employees 14,000 people in 20 countries. The empire was built on their Turkish coffee brand, but they also now own Sabra, the leading hummus brand in the US, are partners with Yotvata dairies and Yad Mordechai Honey – MF]. Read the rest of this entry »