ENVY

December 20, 2017

276449Bacardi & Company LTD filed Israel Trademark Application Number 276449 consisting of a stylized mark comprising a pair of wings and the words ANGEL’S ENVY, the mark is for alcoholic beverages, except beers in class 33. They also filed Israel Trademark Application Number 275692 for North American whiskey; alcoholic beverages based on, or flavoured with North American whiskey.

ENVYLa Fée LLP filed Israel Trademark Application Number 278588 for ENVY as shown. The mark covers Spirits; absinthe; alcoholic beverages containing spirits; alcoholic beverages containing absinthe in Class 33.

(Absinthe  is an anise-flavoured spirit derived from botanicals, including the flowers and leaves of Artemisia absinthium (“grand wormwood”), together with green anise, sweet fennel, and other medicinal and culinary herbs. In other words, it seems to be a type of Arak,

angel's envyBacardi’s marks were filed on 31 March 2015, and La Fée’s marks were filed on 27 July 2016, before Bacardi’s marks were examined. As the marks were co pending, a competing marks proceeding ensued. On 26 June 2017 the parties were given three months to submit their evidence regarding their rights to the marks.

On 13 September 2017, La Fée LLP submitted an unclear communication that related to priority. On 14 September 2017 the Israel Patent Office requested clarification and asked if the submission was a type of evidence. However, La Fée did not respond. On 26 October 2010 after requesting and obtaining extensions, Bacardi submitted their evidence. In view of the lack of response from La Fée, on 7 November 2017, the patent office sent them a letter giving a grace period of a week to submit their evidence. However, La Fée LLP did not respond.

Section 67 of the Trademark Ordinance 1972 states that

Subject to any regulation under this Ordinance, evidence is proceedings before the Registrar shall be by affidavit under section 15 of the Evidence Ordinance (New Version) 5732 -1971, or by declaration made abroad under the law of the place where it is made, so long as the Registrar does not otherwise direct; but the Registrar may, if he thinks fit, take oral testimony in lieu of or in addition of written evidence, and may permit the deponent or declarant to be cross-examined.

In this instance, La Fée did not submit any affidavit and there does not seem to be any justification for them failing to do so.

Consequently, regulation 25(b) applies:

If the Applicant fails to submit a detailed response within three months of the invitation to do so, the Applicant will consider the Application as cancelled under Section 22 of the Ordinance and a notice to that effect will be sent to the Applicant.

Since La  Fée chose not to submit evidence at all, and not to respond in any way to the Queries from the Court of the Patent Office, the Adjudicator, Ms Yaara Shoshani Caspi ruled that filed Israel Trademark Application Number 278588 for ENVY be considered abandoned, and Bacardi’s marks proceed to examination.

Using her powers to rule reasonable costs under Section 69 of the Ordinance, noting that Bacardi did exert effort in responding and Le  Fée’s behavior, she ruled that le Fée pay 15000 Shekels costs (excluding VAT) to Bacardi within 14 days or the costs will be index linked and bear interest until paid.

Competing marks ruling concerning 276449, 275692 and 278588, Yaara Shoshani Caspi , 16 November 2017.


A forest of Sequoias

December 19, 2017

SequoiaBalboa Apps attempted to register Israel Trademark Application Number 271170 for SEQUOIA in class 9 covering Computer software for Internet search and browsing, e-mail, electronic messaging, and application development; computer operating system software and computers. The mark is a stylized word mark in capital letters in a serif font as shown along side.

The Examiner refused the mark on the basis of Section 11(9) of the Trademark Ordinance 1972 due to its similarity to Israel Trademark No. 227696 for SEQUOIA CAPITAL THE OWNER’S CODE and to Israel Trademark No.  227697 for SEQUOIA CAPITAL THE FOUNDER’S CODE both in class 42 and covering technology consultation and research in the fields of computer hardware, computer software, networking, telecommunications, e-commerce, content distribution, financial services, health care, energy, clean technology and outsourcing; all included in class 42.

Sequoia capital

271338

sequoia 271339

271339

A separate issue was a Section 29 (competing marks proceeding) with reference to  Israel Trademark Numbers 271338 for Sequoia Capital and 271339 for Sequoia in classes 35, 36, 38, 41 and 42.

On 2 January 2017, the Applicant responded to the Office Action by noting that the requested mark was successfully registered in many other jurisdictions; that the application was for a different class than that of the cited marks and the services and goods are likewise different, and the difference in the marks are clear and self-evident and not similar enough to cause confusion. These arguments were not considered persuasive by the Examiner and Applicant’s representative requested a hearing before the Commissioner, which was held on 16 July 2017.

In this regard, the Applicant requested under paragraph 8 of Circular 013/2012 to leave the competing marks issue under Section 29 (competing marks) until the Section 11(9) (similarity of marks) issue was ruled on.

Ruling

The Applicant’s mark is the word Sequoia in a serif font, and the registered marks are for SEQUOIA CAPITAL THE OWNER’S CODE and SEQUOIA CAPITAL THE FOUNDER’S CODE in San-serif font. The Applicant’s mark is for computer software under section 9, whereas the registered marks are for consultation regarding computer software and hardware, telecommuniication as and other things in class 42.

Section 11 states that:

  1. The following marks are not capable of registration:

(1)…

(9) a mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;

 Section 2 states:

  1. Save as otherwise provided, the provisions of this Ordinance which apply to trade marks shall apply mutatis mutandis to service marks, and every reference in this Ordinance to a trade mark or to goods shall be deemed to include a service mark or a service.

Thus before considering the similarity of the marks, and whether the registration of the mark in question could deceive with regards to the registered marks, it is necessary to determine whether the various marks are for goods and services of the same type. If it can be established that the requested goods and services are of a different type, Then Read the rest of this entry »


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.