Frankenstein’s Monster

February 6, 2017

265232.pngIt sometimes happens that a second applicant files a similar trademark application to a previously filed mark that is pending. in such cases, a competing marks proceeding is initiated. the first to file gets some credit for so doing, but the main issue in determining which mark goes on for examination is the amount of usage by the two parties and good faith, or rather bad faith.

If one party is guilty of inequitable behaviour, their application will almost certainly be stayed. Where there are genuine independent filings of two applications for the same or very similar mark by different applicants, such that the second mark is filed before the first one is registered and they are co-pending, then the more widely used, better known and more intensively advertised mark proceeds to examination, and only once this mark is allowed or canceled, does the second mark  proceed to examination, where, in all likelihood, the registration of the first to be examined mark will prevent the registration of the second mark.

frankensteinIP Factor was approached by Best Foods Ltd. to file the logo shown above as a trademark application in classes 29 and 30. An application was filed and received the Application Number  IL TM 265232.

Prior to this being allowed, a second applicant, a Mr Doron Frankenstein filed Israel TM Application 261955 for the identical mark in the identical classes and so, on 10 May 2015, a competing marks proceeding was initiated as per Section 29 of the Ordinance.

On 4 November 2015, the parties were given three months to file their evidence, and were informed that failure to do so would result in their application being considered withdrawn and their application canceled as per regulations 24 and 25.

Best Foods Ltd cooperated with us and we filed their evidence. However Mr Doron Frankenstein did not file evidence and on 1 January 2017, the Trademark Department of the Israel Patent Office gave his attorneys were given seven days notice to file their evidence or their application would be deemed withdrawn.

Essentially Regulation 22 provides a three-month period for providing evidence, and authorized the Commissioner to cancel the application if no evidence is filed, or to grant an extension if reasonable to do so. Regulation 24(b) states that if the conditions of Regulation 22 are not met, the Application is considered as canceled, and the Applicant is informed accordingly.

The period for providing evidence was 14 February 2016 which is long past, so Israel TM Application 261955 to Frankenstein is considered withdrawn, and costs of 2000 Shekels are awarded to Best Foods Ltd. Application Number  IL TM 265232 was examined and has now been allowed.

COMMENT
It seems that Mr Frankenstein was a distribution agent for Best Buy Ltd. It could have been interesting to see who would have prevailed in a competing marks proceeding in such a case, i.e. whether the distributing agent may be entitled to rights in a mark registered locally. However, in this instance, since no evidence was filed, the substantive issues were not addressed.


Halibo

December 25, 2016

Israel Trademark Application Nos. 262467 and 262468 are stylized marks in English and Arabic respectively, for Halibo, covering Milk and milk products; powdered milk; milk substitutes; all included in class 29. The applications were submitted by Sons of George Shukha Food Import and Marketing Ltd on 30 January 2014.

Israel Trademark Application No. 268703 is for the word mark in English (Halibo) and Arabic (حليبو). The application covers dairy and milk products, and was filed by Fareed Khalaf Sons Company, a Jordanian company, on 29 September 2014.

As the Sons of Shukha’s applications were still pending, a competing marks procedure ensued.

On 2 August 2016, the Sons of Fareed Khalaf successfully requested to stay responding to a final office action alleging that their mark was inherently non-distinctive and therefore contrary to Section 8a of the Trademark Ordinance due to the competing marks proceeding. On the same day, the two applicants filed a joint request for an extension to file their evidence in the competing marks proceeding which was approved, giving them until 17 November 2016. This was extended again until 24 November 2016. 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 »


Co-op Shop Again

August 15, 2016

Back in February we reported on the Co-op Shop Decision. Essentially, in light of an early registrations for Co-Op and Super Co-Op trademarks, both owned by Mega Retailers who had bought out Blue Square, the Co-op Israel Supermarket Chain LTD were unable to register their logo, TM co-opshop.

The Deputy Commissioner Ms Jacqueline Bracha accepted that the registered marks may not be in use and gave Applicants 30 days to file a cancellation proceedings, offering to suspend her final ruling, pending a decision of non-use should it be filed.

coop   super-coop

The marks were indeed challenged in a cancellation proceeding filed on 12 April 2016, and this ruling relates to the cancellation of TM 83846 and TM 98697 for Co-Op and Super Co-op which were registered in June and November 1996 respectively, both in class 35.

In the cancellation request, Co-op Israel alleged that the marks were not in use and had not been since 2003. Furthermore, there were no extraordinary circumstances justifying the non-use. Therefore the marks should be cancelled. However, Coop Israel did not provide any evidence supporting its allegations.Section 41a of the Trademark Ordinance 1972 states:

“...Any interested person may request that a trademark be cancelled on the grounds of lack of bona fide use and lack of bona fide intent to use the mark over the previous three years.”

It is a matter of case-law that trademarks are property rights in all respects, and these may not be simply nibbled away. There is a burden of proof that the mark owner did not use the mark that rests on the shoulders of the party requesting that mark’s cancellation. See Bagatz Orlogad Ltd vs. Commissioner of Patents, p.d. 39 (2) 148. 

The burden of proof shuffles back and forth: the party requesting cancellation of the mark has to bring initial evidence of non-use of the registered mark. If it is accepted as sufficient to make a case, the burden of proof shifts to the mark holder to refute the challenger’s evidence and to show that the mark is in use.Failure to show lack of use works in the interest of the mark owner. See Bagatz 296/89 Moorgate Tobacco Co. Ltd. vs. Philip Morris Inc. p.d. 41 (1) 485 page 493.

With respect to the order of the proceedings in a challenge to a trademark registration on grounds of lack of use, regulation 70 of the 1940 Trademark regulations states:

A request to correct the Register or to delete a trademark from the register should detail in duplicate, the applicant, the facts on which the request for cancellation are based and the desired correction. A copy of the request should be sent to the mark owner.

There is no indication that the request for cancellation was sent to the marks owner who is not represented in this instance.

According to regulation 71 one should act as follows:

With the filing of the request and sending a copy to the registered owner, the commissioner should inform the Applicant and the Applicant should submit his evidence within two months of the notification.

In light of that said previously, and in view of the absence of a statement of case by the mark owners, I give the requester of cancellation two months to submit their evidence.. similarly, and in the same time-frame, they are to provide proof of delivery of the application to the marks owner.

The Court secretariat will ensure that this decision is delivered to the non-represented marks owner.

Interim ruling re cancellation of TM 83846 and TM 98697 for Co-Op and Super Co-op, Ms Shoshani-Caspi, 26 July 2016.

COMMENT

red kingThis reminds me
of the Red King in Alice Through the Looking Glass noting how good Alice’s eyesight was for being able to see nobody on the road at a distance where he would have trouble seeing anybody. In other words, it is difficult to show that something is not happening. How can prove that a mark is not in use???

 

 

 


Big Deal

July 20, 2016

big deal

Israel trademark Application Number 131862 to H.A.B. Trading LTD is for the words “BIG DEAL” for Shop services for toys, kitchenware, disposable articles, houseware, clothing for children, and drawing books in class 25.

Yidiot Internet filed a request to have the mark canceled.

For those of you wondering what’s the big deal, the following images may help clarify:

H.A.B. Trading have stores of discounted goods and Yediot Internet (YNet) has an internet special offer website.

H.A.B. Trading LTD has now requested that Yidiot Internet’s counter-evidence be deleted from the file. Yidiot countered the request, but H.A.B. Trading did not respond before 15 June 2016 when Ms Yaara Shoshani-Caspi, Adjudicator at the Israel Patent Office gave the following decision.

The mark owner (H.A.B. Trading LTD) claimed that Yediot Internet were tardy and missed the deadline for filing their counter-evidence with the court and with the mark owner.Furthermore, the counter-evidence was unacceptable in that it was not provided as an affidavit, did not include a warning from the attorneys to tell the truth or suffer the consequences, and did not include the title “expert opinion”.

Yediot Internet responded H.A.B. Trading LTD’s request for cancellation was niggardly and superfluous. They consider that the counter-evidence was timely filed, were in the appropriate form, and if the court rules otherwise, they should have an opportunity to repackage the response in an appropriate manner.

RULING

The correct way to present evidence in a trademark proceeding are given in regulations 38 and 40 of the trademark regulations 1940.

Regulation 38 states:

The opposer has to submit all his evidence within two months of receiving the applicant’s response.

Regulation 40 relates to the response to the opposer’s response to the applicant’s evidence and states:

In response, the opposer may submit counter evidence within two months and deposit a copy with the applicant.

Ms Shoshani-Caspi concluded that the last date for the applicant for cancellation to file counter-evidence was 6 April 2016,. The evidence was filed on 7 April 2016 – i.e. a day late. The mark owner only received a copy by registered mail on the 17 April 2016 .

The language of Regulation 40 should be understood as instructions for one party to provide evidence to the other party simultaneously with submitting the evidence to the patent office and not afterwards. However, as a matter of principle, disputes should not be decided based on procedural issues only where there is no irreversible damage to the opposing party. See 189/66 Asiz Sasson vs. Kedma LTD  – Car and Equipment Factory P.D. 20(3) 466, 479. In this instance, the procedural irregularities do not cause irreversible harm to the mark owner since the next stage of the proceedings is to fix a date for a hearing. The tardiness does not justify cancelling the proceedings.

That said, the document titled “Response to Dr Sarid’s Opinion has a signed blank sheet attached that casts aspersions regarding whether the signature belongs with the response, as there is no reason for the last page not to be signed. The document does not include the name of the expert who wrote it and is undated. It is also not endorsed by a lawyer. So whilst cancelling the evidence and closing the case on procedural grounds is a drastic step, this does not mean that anything is acceptable.

Consequently, the applicant for cancellation has 14 days to resubmit the expert opinion as a proper signed and dated affidavit with appropriate lawyer’s warning within 14 days, and to ensure that the trademark owner’s counsel receives a copy in this period as well. Interim costs of 800 Shekels + VAT are awarded to the mark owner, to be paid within 14 days.

 


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.

 

 


Competing Confectionary

April 10, 2016

The Krasnyi Octybar Joint Stock Company and the Rot Front Open Type Joint Stock Company have filed a Trademark Application No. 267652 as follows:

267652

Israel Trademark No. 267652

The mark covers almond confectionery; boiled confectionery; cachou [confectionery], other than for pharmaceutical purposes; chocolate confectionery; chocolate confectionery containing pralines; chocolate confectionery having a praline favour; chocolate confectionery products; chocolate decorations for confectionery items; chocolate flavoured confectionery; chocolate for confectionery and bread; confectionery for decorating christmas trees; clear gums [confectionery]; coated nuts [confectionery]; confectionery; confectionery bars; confectionery chocolate products; confectionery containing jelly; confectionery containing jam; confectionery having liquid spirit fillings; confectionery having liquid fruit fillings; confectionery having wine fillings; confectionery ices; confectionery in frozen form; confectionery in liquid form; confectionery in the form of tablets; confectionery items coated with chocolate; confectionery items formed from chocolate; confectionery made of sugar; non-medicated confectionery; non-medicated confectionery products; crystal sugar pieces [confectionery]; dairy confectionery; dragees [non-medicated confectionery]; flavoured fillings for confectionery; flavoured sugar confectionery; bread; pastries; ices; flour confectionery; fondants [confectionery]; frozen yoghurt [confectionery ices]; fruit drops [confectionery]; frozen yogurt [confectionery ices]; fruit jellies [confectionery]; ice confectionery; ice confectionery in the form of lollipops; ice cream confectionery; non-medicated iced confectionery; liquorice [confectionery]; liquorice flavoured confectionery; lollipops [confectionery]; lozenges [confectionery]; lozenges [non-medicated confectionery]; mallows [confectionery]; marshmallow confectionery; non-medicated mint flavoured confectionery; non-medicated chocolate confectionery; non-medicated confectionery containing milk; non-medicated confectionery in jelly form; non-medicated confectionery candy; non-medicated confectionery containing chocolate; non-medicated confectionery having a milk flavour; non-medicated confectionery having toffee fillings; non-medicated confectionery in the form of lozenges; non-medicated confectionery in the shape of eggs; non-medicated confectionery for use as part of a calorie controlled diet; non-medicated flour confectionery; non-medicated flour confectionery coated with chocolate; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing with chocolate; non-medicated flour confectionery containing imitation chocolate; non-medicated mint confectionery; non-medicated sugar confectionery; nut confectionery; orange based confectionery; pastilles [confectionery]; pastry confectionery; peanut butter confectionery chips; peanut confectionery; peppermint for confectionery; peppermint pastilles [confectionery], other than for medicinal use; potato flour confectionery; prepared desserts [confectionery]; rock [confectionery]; sherbet [confectionery]; sherbets [confectionery]; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; snack bars containing dried fruits [confectionery]; snack bars containing grains [confectionery]; snack bars containing nuts [confectionery]; snack foods consisting principally of confectionery; stick liquorice [confectionery]; non-medicated sweets in the nature of sugar confectionery; truffles [confectionery]; rum truffles [confectionery]; wafers; pastries; caramels [candy]; sweetmeats [candy]; chocolate; pralines; pralines made of chocolate; chocolate wafers; chocolate caramel wafers; bean-jam filled wafers (monaka); rolled wafers [biscuits]; cocoa; marzipan; crackers; rusks; gingerbread; sandwiches; muesli; popcorn; tarts; halvah; chocolate beverages; coffee; tea; tea-based beverages; coffee-based beverages; honey; corn flakes; oat flakes; chips [cereal products].

 

267862

Israel Trademark Application No. 267862

The Roshen Confectionery Corporation  filed Israel Trademark Application Number 267962 for confectionery; candies; all included in class 30.

271092

Israel TM Application No. 271092

270633

Israel TM numbers 270633

and the Kjarkov Biscuit Factory filed Israel Trademark Application Numbers 271092 and 200633 for biscuits; pastries; cakes; cookies; crackers; all included in class 30.

Roshen and Kjarkov have filed for other Krasnyi Octybar marks to be canceled for lack of use. These include Israel Trademark No. 182758, 182759, 184179 and  covering Waffles; confectionery for decorating Christmas trees; cakes; pastries; peanut confectionery; almond confectionery; pasty; cocoa; cocoa products; caramels [candy]; sweetmeats [candy]; liquorice [confectionery]; peppermint sweets; coffee; crackers; meat pies; farinaceous foods; candy for food; fruit jellies; marzipan; custard; honey; ice cream; sherbets [ices]; muesli; mint for confectionery; cocoa beverages with milk and coffee beverages with milk; coffee-based beverages, tea-based beverage, chocolate beverages with milk, chocolate-based beverages, cocoa-based beverages; lozenges; petits fours [cakes]; biscuits; pies; fondants; pralines; gingerbread; chewing gum, not for medical purposes; sugar; cake paste; confectionery; rusks; sandwiches; almond paste; tarts; cakes (Edible decorations for-); halvah; bread; tea; all included in class 30.

Kara Lum

182758

182759

182759

184179

184179

182763

182763

All these registered marks that are under attack are for similar long lists of confectionary in Class 30. To complicate things still further, the various importers are also parties of the three way competing marks proceeding.

Back in January 2015, the Adjudicator of Intellectual Property, Ms Yaara Shoshani Caspi, refused to allow the competing marks proceedings and the cancellation proceedings to be combined as she considered that contradictory claims were made.

The parties appealed this decision to the District Court and the appeal was rejected by Judge Schitzer after the parties reached an agreement. However, the parties do not agree on what agreement they reached. Ms Yaara Shoshani Caspi notes that it not for her to interpret the agreement reached by the parties in the other forum and thus declined to address this issue. Since, however, the request to suspend the cancellation proceedings until after the competing marks ruling was rejected by the District Court, she sees no reason NOT to proceed with the competing marks proceedings.

The parties are given 21 days to challenge this decision, and then two months to present their evidence regarding the competing marks.