Big Deal – The Long Awaited Decision.

January 12, 2017

ynet big-dealAt last we bring you the ruling concerning the registerability of Israel Trademark Application No. 234855 to Yidiot Internet, the website portal of Yediot Achronot in light of previous registered word mark for BIG DEAL owned by a chain of discount stores.

The main issues discussed are whether the existing mark can be considered as a well-known mark and whether there is a likelihood of confusion or evidence of actual confusion between the chain of discount stores and the Internet portal.

For those who’ve missed the earlier chapters in this exciting case, we first reported on this case back in 2014 see here. We then reported on an interim skirmish, and most recently, on a request to strike evidence in September 2016. This is the decision. However, we note that it may be appealed through the courts, so there could be sequels.

The mark was filed in Class 35 back in 2011 for promoting sales of third-party goods via coupons and the like. Ynet purchased the BigDeal.co.il for this purpose back in 2010.

big-deal-storeThe  mark was opposed by H.A.B.Trading Ltd which has run a chain of discount stores called Big Deal since 1993, that peaked at 14 stores and now includes 8 stores selling bargain goods. Since September 2009, H.A.B.Trading Ltd owns Israel Trademark 131862 for the word mark BIG DEAL, also in Class 35, for “stores selling toys, kitchenware, disposables, domestic goods, children’s clothes, books and drawing books”.

The Opposer’s Claims

The Opposer filed and received a trademark application for the term BIG DEAL in capital letters. This means that they have exclusivity to the words, regardless of stylization. They have used the mark and various stylized logos for years. The opposer’s registered mark is well-known, is identified with them and so the Applicant’s mark is not registerable under Section 11(14) of the Trademark Ordinance 1972. Read the rest of this entry »


Black Diamond Word Mark Successfully Opposed

January 11, 2017

black-starYunusov Timur Ildarovich, a citizen of the Russian Federation, requested Israel Trademark Number IL 273221 for BLACK STAR in classes 13 and 14 covering agates; diamonds; amulets [jewellery, jewelry (Am.)]; bracelets [jewellery, jewelry (Am.)]; charms [jewellery, jewelry (Am.)]; key rings [trinkets or fobs]; brooches [jewellery, jewelry (Am.)]; alarm clocks; pins [jewellery, jewelry (Am.)]; tie pins; pearls made of ambroid [pressed amber]; pearls [jewellery, jewelry (Am.)]; tie clips; cuff links; gold, unwrought or beaten; cloisonné jewellery [jewelry (Am.)]; works of art of precious metal; jewellery of yellow amber; semiprecious stones; spun silver [silver wire]; necklaces [jewellery, jewelry (Am.)]; rings [jewellery, jewelry (Am.)]; boxes of precious metal; medallions [jewellery, jewelry (Am.)]; precious metals, unwrought or semi-wrought; coins; gold thread [jewellery, jewelry (Am.)]; silver thread [jewellery]; olivine [gems]; osmium; palladium; platinum [metal]; silver, unwrought or beaten; earrings; ingots of precious metals; alloys of precious metal; statues of precious metal; figurines [statuettes] of precious metal; paste jewellery; ornaments [jewellery, jewelry (Am.)]; shoe ornaments of precious metal; hat ornaments of precious metal; ornaments of jet; chronometers; watches; wristwatches; spinel [precious stones].

The Application was the an Israel National entry of International Trademark Number 1239831.

On allowance, the allowance was reported to the International Office of WIPO as per Section 56vi of the Trademark Ordinance, providing detials of the Opposition period.

On 27 September 2016, an opposition in Class 3 was filed on behalf of Sea of Spa Laboratories Ltd under Section 24 of the Trademark Ordinance 1972 and regulations 35-46 of the 1940 Trademark Regulations. The Opposition was reported to WIPO, and the various deadlines passed without Ildarovich responding to the Opposition, so he is considered as having abandoned the application.

The mark is closed and no costs are awarded.

 


From Genesis…

January 9, 2017

232991

“Effec-tiv”  Leadership Creation, Organization Development and Training Ltd submitted Israel Trademark Application Number 23991 shown alongside for Education in class 41.

The text of the mark in the Assyrian text that is printed in blue on the stone  says “Leadership from Genesis”. The slogan alongside states “To learn from the past and to lead into the future”.

The From Genesis Spiritual Social Organization (M’Bereshit) opposed the mark under Section 24 of the Trademark Ordinance 1972 and regulations 35-46 of the 1940 regulations. A response was filed on 24 June 2012 wherein the Applicant stated that it would not stand for their right to the trademark registration. The Opposer filed their evidence and the Applicant did not file counter evidence.

 

As the Applicant had both stated that it would not defend the mark and had failed to submit counter-evidence, the mark is considered abandoned and no costs are awarded.

Ruling by Adjudicator of IP, Ms Yaara Shoshani Caspi re Israel TM Application Number 232991 “M’Breshit”

COMMENT

As the Applicant decided not to fight this, it is reasonable to consider them as having abandoned the mark. However, As Julie Andrews sang in the Sound of Music “Start at the very beginning. It’s a very good place to start”.  The M’Breshit organization may be doing laudable work, but that does not mean that they deserve a monopoly for the opening word of the Bible. In modern Hebrew usage From Genesis is somewhat like back to basics, or ABC and, to my mind, the rock and text makes a nice logo that seems to me to be imminently registerable.

 


Discovery In Israel Trademark Oppositions

January 9, 2017

L’Oreal filed Israel trademark application no. 261691 for CARMILANE in class 3 covering cosmetics for hair care, namely shampoos, gels, foams, balms, creams, powders, oils, waxes, serums, lotions, masks; hair straightening preparations; aerosol products for hair care and styling, hair spray, hair dyes and bleaching products, products for protecting dyed hair, hair waving and setting products and essential oils. The application is a national entry of 1187174 under the Madrid Protocol.

The mark was allowed on 30 April 2015, and it then published for opposition purposes.

Sano Factories opposed the mark issuing, and among other evidence, submitted a survey and opinion by marketing researcher Reuben Harari that, from the question asked as a multiple choice option, led L’Oreal’s counsel (Dr Shlomo Cohen & Partners Law Offices) to assume that there had been an earlier survey that produced less than favorable results and that the survey submitted was an attempt to frame the question more favorably. Sano based this assumption with reference to a survey of their own that led to very different conclusions.

L’Oreal’s counsel requested that Sano  and the survey provider “New Wave Surveys” provide full details of the earlier survey. Their initial position is that that the duty of disclosure in legal proceedings is wide and the parties are obliged to make all relevant documents of record. To substantiate this position, they cited widely from the case-law.

On 15 November 2016, Sano’s counsel, Seligsohn Gabrieli & Co, responded that the survey provider is not party to the proceeding and so could not be ordered to provide anything. By its nature, any prior research to the survey that was conducted on behalf of the client that is not submitted is covered by attorney-client privilege and should not be disclosed. They further noted that L’Oreal claimed to have ordered a different survey themselves and so there was no justification for providing any wider survey. Sano’s counsel Seligsohn Gabrieli & Co finally noted that the patent office could have ruled a full disclosure of all relevant documents at any time and never did so, and there was no reason to justify them doing so at this late stage.

Cohen reiterated that the market researcher is obliged to reveal all working papers and raw materials that led up to the survey. Partial revelations by the Opposer’s counsel were damaging to the Applicants procedural and substantial rights.  In this instance where only part of the survey related evidence is made of record, there is a duty of candid disclosure of the rest of it, and no confidentiality. He denied that L’Oreal had conducted a separate survey and considered this irrelevant as to whether Sano was obliged to reveal their survey results in full.

Ruling

Both parties accept that the Israel Patent Office can request disclosure of all documents for inspection in trademark opposition proceedings to enable the parties to relate to the issues with all cards played face up, however, this was contingent on legitimate concerns of the parties such as efficiency of the proceeding.

It should be remembered that the result of proceedings at the patent office, such as whether a mark be registered or not, has public interest in that a registered mark makes private property out of something hitherto in the public domain. This makes it desirable for all evidence to be in the open.

The considerations regarding the duty of disclosure of documents in trademark cases was ruled by the then commissioner, in Opposition to Patent 60312 Genentech vs. Bio Technology General Corp 24 June 1999 as follows:

The possible damage to the efficiency of the proceeding due to the time at which a request to make evidence available, the amount of evidence, its subject matter, the importance of the claim that the evidence is supposed to clarify, the evidential weight, the possibility that the opposing party can obtain the evidence himself and the aggravation it causes the opposing party.

In this instance, the evidence is market research which may or may not have been undertaken by the Opposer. The request is based on the Applicant’s assumptions that since the Opposer submitted one type of survey, there must have been another type that provided undesirable results. The adjudicator of IP rejects these assumptions as an appropriate basis for demanding disclosure of documents.

It is stressed that the parties are allowed to submit only positive evidence, so long as they submit each piece of evidence in its entirety and do not submit only parts of documents.  The Applicant is entitled to full disclosure regarding a market survey in terms of the questions asked, the breakdown of the population surveyed, the way the results were analyzed and so on. However, Ms Shoshani Caspi did not consider earlier preliminary surveys that may or may not have been conducted were ‘raw material’ that is indivisible from the survey submitted.

Ms Shoshani Caspi noted that the opposition had reached the end of the stage of submission of evidence and before the hearing, . She therefore considered that allowing the request would inevitably prolong the proceedings as the Opposer would be obliged to submit additional evidence. The Applicant would then wish to submit additional evidence and the Opposer would have the right to respond. This would inevitably drags things out and delay a ruling on the dispute. It may be assumed that the additional material is not extensive. However, it is not clear that this material (if it exists) has evidential weight regarding the market survey. The Applicant does not know if such a preliminary survey exists and if so, how it was conducted or what the results were so the Applicant cannot state with certainty that such a survey has evidential weight. Such a request creates unjustifiable work for the Opposer, as it damages their procedural and substantial rights.

The correct way to attack survey evidence brought by the opposing party is by conducting a counter survey. If one party considers that a survey was improperly conducted they should do a proper survey themselves to support their allegations. The present request seems to be a ‘fishing expedition’ for evidence.

 

The patent office considered that at the stage reached, it would create unnecessary and undesirable delays to allow such a request. In the scheduled hearing, the evidentiary weight of the surveys submitted will be considered and each side may attack the results of the surveys brought by the opposing party. The request is refused. No costs are awarded.


Israel Trademark No. 268867 to M Yildiz Saadettin Cancelled Following Challenge by the Polo/Lauren Company

January 8, 2017

The Polo/Lauren Company filed a request for an opposition ruling against Israel Trademark No. 268867 in classes 14, 18 and 25. The mark was filed by M Yildiz Saadettin as part of international application number 11451800 which listed Israel as one of the countries covered.

In accordance with Rule 56vi, on 7 July 2016 the Israel Patent Office wrote to the International Office of WIPO to the effect that the mark was accepted, and indicated that there was a three month period for opposition. A similar letter was sent to the Applicant’s representative.

On 5 October 2016 the Polo/Lauren Company submitted  a detailed opposition to the registration in all three classes, under Section 24 of the Trademark Ordinance and Regulations 35 to 466 of the 1940 regulations. Following this, the Israel Patent and Trademark Office informed the applicant that such a proceedings had been initiated, giving them the deadline for responding.   by filing a counter-statement of case. The Applicant had two months, until 4 December 2016 to respond.

Until the time of writing this decision on 25 December 2016, no response was received.


Requesting Enlargement of A Deposit of Costs

January 8, 2017

The Krasnyi Octybar and Rot Front Joint Stock Companies own four Israel trademarks: 184179, 182758, 182759 and 182763. Each covering a long list of goods in class 30, including such things as for 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.

Five companies including the Roshen Confectionery Corporation,  Dealer B&D International Ltd, Kjarkov Biscuit Factory, Dolina Group Ltd and Latfood Ltd have filed cancellation requests against these marks.

The marks owners have requested that the sum that the challengers are required to post as a guarantee against legal costs in the event that the mark owners prevail be increased by a further 130,000 Shekels, or by whatever sum the commissioner sees fit. The request was submitted together with 90 pages of appendices and a copy of an Affidavit from the legal counsel of the mother company, however the original Affidavit was not submitted. The challengers opposed the request to increase the guarantee. A hearing has been set for the 17th and 18th of January for cross-examining the various witnesses.

The background to the request for guarantees is two requests for cancellation of the marks. Roshen Confectionery Corporation and  Dealer B&D International Ltd have requested the cancellation of 184179, 182758 and 182759 trademarks, and the Kjarkov Biscuit Factory, Dolina Group Ltd and Latfood Ltd have requested cancellation of the 182763 mark.

Following requests for guarantees that were filed in March 2015, the Adjudicator of IP Ms Yaara Shshani Caspi ruled on 21 June 2015 as follows:

In light of the above, and considering all the circumstances of this case and the general considerations used to determine the magnitude of the appropriate deposit, the first two challengers are to jointly deposit 75,000 Shekels and the second group of three challengers are also to jointly deposit 75,000 Shekels, and this should be done within 21 days.

The present request includes suspension of the proceedings until the deposit is increased.

The Parties’ Allegations

The mark holder claims that increasing the deposit is required because following the original decision there have been changes in circumstances that warrant increasing the deposit. These new circumstances include the expectation of long and complex proceedings and a number of cross-examinations. Furthermore, the case is complex and it transpires that the costs are expected to be higher than originally anticipated. The additional costs are incurred by the two groups of challengers retaining separate counsel and making unnecessary requests. A further claim is that it was not previous clear but now is transparently so, that there will be a massive amount of evidence and documents and a hearing that will be conducted largely in Russian, requiring simultaneous translation. The mark owners nevertheless reiterate their opinion that the likelihood of challengers prevailing and the marks being cancelled are very slim. The amount of the deposit, standing at 150,000 Shekels, is too low and not proportional to the costs that will be requested if the cancellation attempts fail and so this is a classic example of where increasing the deposit is warranted.

Both group of challengers consider the request to increase the deposit should be refused since the ‘new circumstances’ were already fairly obvious when the original request for costs was made. The second group of challengers considers this to be a vacuous request filed in bad faith simply to stretch out the proceedings.

Ruling

Ms Yaara shoshani Caspi did not consider that the circumstances had changed since the original request for a deposit was ruled on. For example, where there are five parties challenging two groups of marks it is not unpredictable that there will be lots of witnesses to cross-examine. Since the challengers are Russian companies, it was always expected that their witnesses would testify in Russian and simultaneous translation would be needed, as is the fact that there are two groups of challengers. The massive amount of evidence was also expected and Ms Shoshani Caspi considered that these grounds were all considered by her in her original ruling regarding the size of an appropriate deposit.

With regard to the likelihood of the challenges prevailing and the marks being cancelled, there is no way to consider the likelihood or otherwise of the challenges be successful at this stage since the witnesses have not been heard and have not yet been cross-examined. At least this is the theoretical state of affairs. Since the challenges are on the basis of inequitable behaviour in the original filings, there is a high level of proof that the challengers will be required to submit to establish their case since they will have to positively show that many years ago the mark holders intentionally appropriated marks that were not theirs.

Nevertheless, the fact that the challengers have a difficult task ahead is not justification to increase the deposit that they have already placed. There are no unexpected circumstances not considered in the original ruling considering the size of the deposit.

The request to increase the deposit is refused. However, Ms Shoshani Caspi does not see the request as indicative of inequitable behaviour designed to make the trademark cancellation proceedings unnecessarily complicated. that said, the mark owners should nevertheless pay costs to the challengers for requiring them to respond to this request. The mark owners will therefore may 1500 Shekels to the first group of challengers and a further 750 Shekels to the second group and will do so by 15 January 2016 or interest will incur.

In cancellation proceedings concerning 184179, 182758, 182759 and 182763 trademarks, Ruling on increasing size of deposit by Ms Yaara Shoshani Caspi, 28 December 2016.


UNILAK

January 6, 2017

Israel Trademark Number 121683 to Industrias Titan, S.A. is for the word UNILAK covering paints, colours, varnishes, lacquers, enamels; all included in class 2. It was registered back in 1999.

On 16 October 2015, Israel paint company Nirlet LTD filed a request to have the mark canceled due to lack of use. A notice of the cancellation request was sent to Industrias Titan, S.A., but they ignored it, and did not respond in any way.

Nirlet claims that Industrias Titan has not used the mark in Israel over the past three years and there are no extraordinary reasons justifying this lack of use.

Section 41 of the Trademark Ordinance 1972 states that:

“…any interested in so doing can file a trademark cancellation request on the basis of there never being an intention for bona-fide use or that the there was no bonafide use during the three years prior to submission o

 

Trademarks are property rights that are not trivially

f the cancellation request.”disposed of, and the burden of proof lies with the requester for cancellation -see Bagatz 476/82 Orlogad vs. Commissioner of Patents, p.d. 39 (2) 148. This burden of proof switches from one party to another throughout the cancellation proceeding, but there remains a requirement for the requester of cancellation to bring supporting evidence of the alleged lack of use. Only if this burden of proof is met, does the onus transfer to the mark owner to overcome the evidence provided by the challenger and to show that the mark is indeed in use. Cases that are not clear-cut work in favour of the mark owner – see Bagatz 296/89 Moorgate tobacco Co. vs Philip Morris Inc, p.d. 41 (1) 485 on page 493.

Regulation 70 of the 1940 trademark regulations provides the procedural requirements:

A request to correct the register or to cancel a mark from the register will detail the interest of the requester, the facts and the requested change in two copies: one for the Commissioner and one for the registered owner.

The adjudicator of IP, Ms Yaara Shoshani Caspi, ruling on the case, was convinced that the mark owner was served the papers. Consequently, regulation 71 comes into effect:

With such a request, and a copy sent to the mark owner, the procedural arrangements of regulations 37 to 46 come into effect (with the necessary changes as appropriate):

The mark owner should have submitted a counter statement of case by 16 December 2016, but failed to do so. Consequently, regulation 71a comes into effect:

If the mark owner does not submit a response within two months, the patent office will give the challenger two months to file his evidence.

Thus in absence of a Counter Statement of Case from  Industria Titan, the challenger is given two months to file their evidence and to send a copy to the Industria Titan.

Interim Ruling re Cancellation of Israel Trademark 121683, Ms Shoshani-Caspi, 25 December 2016.