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.