Panama Jack Cancellation Proceeding – Proving Something Did not Happen

July 1, 2018

Panama JackOn 30 November 2016 Panama Jack International Inc  filed a request to cancel Israel TM No. 79829 for Panama Jack in class 25. The registered trademark, then owned by Grupp Internacional S.A.,  is shown alongside.

Back in March 2017, the Adjudicator of Intellectual Property Ms Yaara Shoshani Caspi issued an interim ruling  that since Grupp Internacional S.A., though represented by an Israel Law firm, did not file a response to the cancellation proceedings instituted by Panama Jack International Inc., Panama Jack can supply their evidence and she would rule on the cancellation proceeding if the arguments were persuasive.

On 2 April 2017, Panama Jack International submitted an Affidavit from Mr Erez Drucker, director of Access (Xes? Axes? Excess?) Private Investigators, to support their allegation that the mark was not in use by Grupp. Again Grupp failed to respond, despite having legal representation back then.

On 21 August 2017, Panama Jack International requested a decision despite the lack of response.  On 28 March 2018 they requested to add a further Affidavit, this time from Mr Ronen Menashe, director of “”Information Services of Israel”.  Again, the owner failed to respond.

(On 2 October 2017, Grupp’s attorneys requested to cease representing their client for various reasons that Ms Shoshani Caspi considers justified. On 10 October 2017 they submitted an affidavit to the effect that the client’s local attorney in Spain knew about the hearing. On 23 October 2017, Ms Shoshani Caspi assented to the request).

Now, on 23 May 2018, a hearing was held before Ms Shoshani Caspi, which Grupp and their representatives did not bother attending, despite knowing about the date thereof. Panama Jack International requested to withdraw the Affidavit by Mr Erez Drucker and to replace it with that of Mr Ronen Menashe who was available for questioning at the hearing. This request was granted. During the hearing, a recording of conversations between Mr Menashe and the Spanish office that was referred to in the Affidavit was also listened to.

Discussion and Ruling

The question in this instance is whether there is justification to cancel the issued mark. Section 41(a) of the Trademark Ordinance states:

  1. [a] Without prejudice to the generality of the provision of indicate sections 38 to 40, application for the cancellation of the Registration Madrid of a trade mark regarding some or all of the goods or classes of amendments goods in respect of which a trade mark is registered (hereinafter – goods regarding which the cancellation is requested) may be made by any person interested on the ground that there was no bona fide intention to use the trade mark in connection with the goods for which it is registered in connection with the goods regarding which there is a request to cancel the registration and that there has in fact been no bona fide use of the trade mark in connection with those goods in connection with the goods regarding which there is a request to cancel the registration, or that there had not been any such use during the three years preceding the application for cancellation. [b] The provisions of subsection (a) shall not apply where it is proved

Thus the relevant period regarding usage of the mark by Grupp is from 30 November 2013 to 30 November 2016 when the cancellation request was submitted.

In this instance, as stated above, the mark owner failed to respond to the cancellation request, and did not even request extensions. Panama Jack International, did however, submit their evidence.

During the hearing, Mr Menashe’s integrity was examined and from his evidence and responses, Ms Shoshani Caspi was assured that he was trustworthy. Mr Menashe’s opinion included a survey and investigation of the relevant markets in Israel (i.e. clothing and footwear) in an attempt to find stores that sold goods bearing the Panana Jack man in the relevant time-period. In addition, his office searched the Internet for evidence that goods bearing  the mark were available in Israel at the relevant time. He determined who owned the mark and the identities of the leading employees of the company to contact them directly to determine usage of the mark in Israel. Within the framework of Mr Menashe’s investigation, neither he nor his investigators found any indication of sale of goods under the Panama Jack trademark in the relevant time period.

It is established case-law that a registered trademark is a property right for all intents and purposes, that cannot be whittled away without cause. The burden of proof that a mark was not used lies with the challenger of the mark. See for example, Bagatz 476/82 Orlogd ltd vs. the Commissioner of Patents p.d. 39 (2) 148. During a proceeding, the burden of proof passes back and forth. Thus the requester for cancellation of a mark has to bring evidence that a mark is not in use. If this is proven, the burden of proof then falls on the mark owner to attack the challenger’s evidence and to establish that the mark is indeed in use.

The challenger has more than met the initial level of proof required to establish a prima facie case that the mark is not in use, and the mark owner failed to even attempt to rebut this position, and thus the apparent lack of use remains unchallenged.   The Adjudicator considers the evidence that the mark has not been in use for three years prior to filing the cancellation submission and thus it is fitting to cancel the mark.

In light of the above and in like of claims made at the hearing, it is clear that the mark owner has intentionally ignored the challenge to the mark and the cancellation proceedings submitted to the Israel Patent and Trademark Office.  In addition to concluding a lack of usage, one can only conclude that the mark owner is simply holding the mark for no purpose. One would expect the mark owner to acknowledge and respond to the cancellation proceedings by abandoning the mark, thereby rendering this proceeding unnecessary.

The mark is therefore cancelled. Using her authority under Section 69 of the Ordinance, Ms Shoshani Caspi has also issued relevant costs in the proceeding, based on the work done by the challenger, and rules 9000 Shekels costs, which the mark owner is informed of via the address in the register.


The Admissibility of Late Submitted Evidence

July 1, 2018

Competing Marks Proceeding – DMI Dental Supplies vs. DMI Innovative Medic al Technologies ltd.

Where there are two competing pending trademark applications in Israel, unless the parties can agree to co-exist under conditions acceptable to the Israel Patent and Trademark Office (i.e. not confusing to the public), a special proceeding occurs under Section 29 of the Trademark  Ordinance 1972, to determine which application should be examined first, usually barring the other application from registration. The first to file is considered less important than the usage of the mark and the investment in promoting it. As always, inequitable behaviour trumps other considerations, and where proven, the mark of the guilty party is generally cancelled.

This interim ruling focuses on admissibility of late submitted evidence.

On 15 April 2018 there was proceeding under Section 29a of the Trademark Ordinance 1972 during which DMI Dental Supplies was ordered to produce an audited financial statement for 2017 showing sales of the company in Israel.

On 15 May 2018, DMI Dental Supplies submitted the document together with additional documentation not requested, including a balance sheet, profit and loss account and explanations.

The same day, DMI Dental Supplies submitted an urgent request to add further evidence. The evidence in question was a short statement from Mr Zaza Debershvilli that attempted to establish that the name was registered since 2012. This was appended to the Affidavit of Mr Alon, a witness for DMI Dental Supplies whose Affidavit was already on file. The affidavit itself was appended to the request to allow its submission.

On 21 May 2018, DMI Innovative Medic al Technologies ltd requested that this additional submission be removed from the file, or they be allowed to submit their balance sheet. Prior to obtaining permission, DMI Innovative Medic al Technologies ltd simply submitted their balance sheet.  DMI Innovative Medic al Technologies ltd opposed the additional submissions from DMI Dental Supplies claiming that they were attempting to strengthen their position and this was not allowable at that stage of the proceeding. Simultaneously they claimed that the additional evidence did not add anything new, and that its submission was acceptable if given negligible evidentiary weight as an affidavit that is not cross-examined, and that costs be awarded to them.

On 28 May 2018, DMI Dental Supplies responded to DMI Innovative Medic al Technologies ltd, objecting to the awarding of costs for the additional submission. Furthermore, they argued that since DMI Innovative Medical Technologies ltd’s balance sheet was not audited, it could not be considered as evidence, particularly as it related to foreign entity that was not a party to the proceeding.

Section 41 of the Trademark Ordinance 1940 states:

No party may submit additional evidence in any hearing before the Commissioner, however the Commissioner may, at any time permit the Applicant or Opposer to submit any evidence under conditions that he considers appropriate, regarding costs or other matters.

In general, parties should submit all their evidence in one go, and not in a trickle (Appeal 579/90 Rozin vs. Bin Nun, p/d/ 46(3) 738, 742 (1992), and Zusman, Civil procedures 509-510, 7th edition, 1995. Whilst it is true that the court can accept additional evidence during the proceeding and even during summations, (Appeal Shenzer vs. Rivlin, p.d. 45(2) 89, 95 (1991) and even during Appeal (Shenzer 95. Regulation 457 of the Civil Court Procedure Regulations, 1984).

Together with this, the court has to be very wary and careful when exercising this discretion “and in general should be careful to follow civil procedures, including the submission of evidence at the appropriate time” (Shenzer, page 95). The rationale for this principle is general efficiency of the handling of the case and of the court system in general.

There are four criteria to allow the submission of evidence at a different stage than that specified in the Civil Court Procedures:

  1. The most important is the importance of the evidence to ensure that justice is dispensed. This requires consideration of the new evidence in deciding the case, and the weight given to it, since it was not timely submitted.
  2. The amount of damage (evidentiary and with regard to the hearing) that would be caused to the opposing party if the evidence is accepted, which would alter the balance between the parties.
  3. The reasons why the evidence was not timely submitted and the responsibility of the submitting party for the lateness of the submission and whether they can be considered as acting inequitably by withholding the evidence until its late submission. (see Appeal Shasha Securities ltd vs. Adanim Mortgages and Loans ltd. p.d. 42(1) 14, 18)
  4. The damage to the effective management of the proceeding (re Rozin, page 743).

Applying these principles to the present case leads to the decision not to allow either party to submit additional evidence regarding the extent of their sales, since she does not consider that the evidence helps determine making a correct ruling or uncovering the truth. The deadline for the timely submission of evidence has passed, and neither party provided justification for their late submissions.  The evidence has been heard and the parties should be making their summations.

Ms Shoshani Caspi is less than enamoured with the behaviour of the parties, who chose to submit their additional evidence without waiting for authorization to do so. It is well-known that one should only submit late evidence after receiving authorization. Submitting the evidence together with the request does not accord with the Supreme Court ruling in Appeal 6658/09 Multilock ltd. vs Rav Bareakh ltd, 12 January 20110 on page 11 paragraph 12:

Until there is a judicial ruling allowing submission of additional evidence, a party to a proceeding is not allowed to relate to that evidence in his claims. Under the guidance 1/92 published by the Chief Justice, a request to submit additional evidence should “describe the purpose of the evidence without attaching it (section 1 of the guidance). This guideline attempts to strike a balance between the requirement not to expose the court to the additional evidence prior to being authorized to do so, and the need for the court to have an understanding of the nature of the evidence in order to consider whether it is relevant and significant.

As to the additional affidavit that DMI Dental Supplies wished to submit, Ms Shoshani Caspi considers that it should be allowed, despite it being submitted prior to receiving authorization. This is since DMI Innovative Medic al Technologies clearly stated that they do not object to its submission. However, DMI Innovative Medic al Technologies are correct that it should be given little weight since they cannot cross-examine the witness. However, she does not agree that DMI Innovative Medic al Technologies should be allowed to continue to cross-examine, as the new evidence does not add anything new. Since DMI Innovative Medic al Technologies did have to relate to the new evidence, they are indeed entitled to costs.

In conclusion, DMI Dental Supplies cannot submit the new material. DMI Innovative Medical Technologies are not allowed to submit their balance sheet.  DMI Dental Supplies can submit their Affidavit and costs of 350 Shekels (just under $100) are ruled to DMI Innovative Medic al Technologies.

The period for submitting summations starts today, 29th May 2018.

Interim ruling by Ms Shoshani Caspi re DMI competing marks proceeding, 29 May 2018.


Kerem

June 10, 2018

CEREMKerem Natural Foods Industry A. L. ltd applied for Israel Trademark Application Number 266067 for Jellies, jams, dried fruit, coconut oil, , black cumin oil, sesame oil, almond oil and other edible oils; Coconut milk, cream and butter; spreads, soup powders produced by cooking and preparing extracts of meat and vegetables, and soup powders for seasoning; all included in class 29, Date syrup, molasses; Coconut sugar and flour, molasses, honey, date syrup, crisp cakes, crackers, spreads and sauces; sweeteners made of stevia or other plants extraction; coconut flour and coconut flour baked products; all included in class 30 and for Fresh and unprocessed Coconut and other tropic Fruits and its products; all included in class 31.

Kerem is Hebrew for vineyards.

On 28 February 2017, HaKerem – Alcoholic Beverages ltd  opposed the registration. On 8 June 2017, Kerem Natural Foods submitted their counter-statement. HaKerem – Alcoholic Beverages ltd had until 11 August 2017 to submit their evidence, but this deadline was extended twice, to 12 November 2017, but the evidence was not forthcoming and instead HaKerem – Alcoholic Beverages ltd withdrew their opposition.

Kerem Natural Foods Industry then submitted a request for costs of 62,450 Shekels accompanied by an agreement with their attorneys regarding their hourly rate and various receipts evidencing payment in practice.

HaKerem – Alcoholic Beverages objected to the costs requested. They prevailed in the Opposition proceeding and are entitled to costs under section 69 of the Ordinance which states that

In any hearing before him, the Commissioner is entitled to award reasonable costs.

The right of the prevailing party to receive actual costs incurred depends on the amount requested, that it is properly documented, and that it is reasonable, necessary and proportional. See for example, Bagatz 891/05 Tnuva vs. Ministry of Trade and Industry p.d. (1) 600, 615 (30 June 2005). However, the arbitrators are required to consider the case specifics and legal policy, and are not obliged to award full costs – see Appeal 6793/08 Loar ltd. vs. Meshulam Lewinstein Engineering and contractors LTD. 28 June 2009, at paragraph 19.

The case specific considerations do not form a closed list and each case should be considered on its merits. These include the behaviour of the parties. The way the case was handled, the complexity of the case, the time invested in the case, whether the case requires specific expertise, the importance to the parties, whether the case has public interest ramifications, and the like.

As to judicial policy considerations, as previously ruled in Patent cancellation procedures against Israel Patent numbers 179379  and 142896 Alkermes Pharma Ireland Limited Novartis Pharma Services vs. MEDICE Arzneimittel GmbH & Co.KG from 28 March 2018, the patent office has an obligation to serve the greater public interest. In this framework, when addressing cost requests, the patent office has to find the right balance between the encouraging trademark submissions – both to protect property rights in brands and to prevent misleading the public regarding sources of goods, and not to discourage the submission of oppositions against unreasonable trademark applications. Awarding high costs to applicant or opposer could create an obstacle to filing that shifts from this balance.

In the present case, the request for costs did not provide sufficient details to substantiate their claim, and did not explain the basis of the costs, the number of hours spent by their attorneys, etc.  Consequently there is a real difficulty to determine whether the costs requested fulfill the considerations laid out in re Tnuva.

The Adjudicator of Intellectual Property, Ms Yaara Shoshani Caspi does not accept the claim of the enormous amount of work preparing evidence immediately on the filing of the Opposition, prior to the opposing counsel submitting their evidence. The Applicant did not explain why the Opposer should have to bear the burden of the Applicant’s obliging himself to pay global legal fees regardless of the work required, and also to provide a ‘bonus’ if the case is dismissed. The Adjudicator does not find this type of arrangement fulfills the ‘reasonable and necessary expenses’ requirement.

In this instance, the Opposition was abandoned at an early stage, after the filing of the counter-statement of case.  The Applicant did not need to file evidence, there was no hearing and no summations were required. In such a case there is no justification to award costs of 62,450 Shekels as requested. Compare for example, the cost request for Cancellation of Israel Trademark No. 140219 BASF Poyurethanes GmbH vs. Pazker ltd, 12 September 2015.

Conclusion, by way of estimation, costs of 7000 Shekels including VAT are awarded, to be paid within 14 days, or interest will be accrued.


Speedo vs. Brooks A Non-Sporting Trademark Opposition

May 29, 2018

Brooks logoBrooks Sport submitted TM Application No. 238375 back in June 2011, for clothing, shoes and headgear in class 25.

speedo-logo

Speedo Holdings BV filed an Opposition the mark under Sections 11(6), 11(9), 11(13), 11(14), 11(5) and Section 39(a1) of the Trademark Ordinance 1972.

The Opposition was based on the alleged similarity to three Speedo marks, registered on July 1993 and shown below.

Opposer’s (Speedo’s) Statement of Case

speedo

The Opposer claims to have been established nearly 100 years ago, and to being one of the leading sports clothing manufacturers, particularly for sea and pool wear. Since the Seventies, the company has used their logo on swimwear, goggles, swimming caps, pool footwear (flip-flops?) and the like, but also for clothing for wearing in fitness centers and during aerobic activities.

The Opposer claims that due to their wide advertising and marketing activities and the quality and reliability of their products and the Speedo image, their logo has received wide acclaim worldwide, including in Israel. Their sports goods all sport their logo which is thus well-known.

Speedo has registered trademarks in classes 25 (clothing) 28 (games and exercise devices) 12, 14, 18 and 5.

In this regard, the three logos depicted above, Israel Trademarks 76627, 76632 and 76637 are cited.  76627 is just for the graphic logo. 76632 and 76637 include the graphic logo with the word SPEEDO. All three logos cover all goods in class 25.

The Opposer alleges that these marks are to be considered well-known marks as defined by Law due to their wide usage worldwide in general and in Israel in particular, and due to the publicity and advertising. The Opposer alleges that their logo is identical or at least very similar to Israel TM application no. 76627 to Brooks Sport, which also covers goods in class 25.

The Opposer further alleges that composite marks including the logo of Israel TM application no. 76627 and wording are also confusingly similar to Speedo’s marks, since the graphic element is dominant. The Opposer considers that allowing Israel TM application no. 76627 to register would cause the mark to be confused with their marks and would thus mislead the public regarding the source of the goods.

Since their mark is a well-known mark, it provides protection for similar but not identical goods, and so the fact that Speedo specializes in swimwear and Brooks in sports shoes, is of no consequence, and the bar for widening the protection is low and Speedo easily overcomes it.

Applicants’ (Brooks) Statement of Case

Brooks claims to be a long established, large and well-known manufacturer of shoes and sports goods, established back in 1914.

brooks earlier markBrooks considers that the pending mark is only minimally different from their registered Israel TM No. 82353 shown alongside.

Brooks submits that, by analogy, the new mark can also coexist with Speedo’s marks.

Brooks also considers that their graphic mark and Speedo’s mark are significantly different and there is no likelihood of consumers being misled. They note that Speedo have not documented any instances of actual confusion due to the alleged similarity and there are thus no grounds for concluding a real danger of misleading.

Brooks further notes that their goods and Speedo’s are very different, are intended for different consumers and are marketed in different ways.

Finally, the Applicant notes that Speedo have failed to establish any reputation in their logo alone (without wording) and so the claim that their mark is well-known should be rejected.

The Evidence

To support their claim, the parties submitted their evidence as follows. On 26 April 2014, Speedo submitted evidence with an affidavit from Mr Andrew Michael Long. On 21 July 2014, Brooks submitted their evidence with an affidavit from Mr David N Bohan and Mr Ilan Benisti. On 10 July 2015, Speedo forewent submitting a counter-statement in response.

Following submission of evidence, a hearing was set for 21 January 2016. Not long before this date, Speedo (represented by Pearl Cohen) submitted various interim proceedings and requests to postpone the hearing. On 17 January 2016, Speedo forewent cross-examining Brooks’ witnesses. In a ruling of 18 January 2016, the Adjudicator, Ms Yaara Shoshani Caspi rejected the interim requests and ordered Speedo’s witnesses to be available for the hearing.

Despite this, Speedo’s representative did not attend the hearing and was thus not available for cross-examination. This raised the question of whether their witness’ statement could remain on file, and what its evidentiary weight should be considered as being. On 1 February 2016, the Adjudicator ruled that the Affidavit should remain part of the file, but should be given low evidentiary weight.

DISCUSSION AND RULING

We are dealing with an Opposition to a trademark registration proceeding in which the burden of proof that the mark IS registerable, is initially on the applicant. However, the Opposer has to bear the burden of proof required to establish their opposition. If they succeed in so doing, the burden of proof moves from one side to the other as the proceeding proceeds. See, for example, Opposition to Israel TM Applicant No. 17051 Orange Personal Communications Services Limited vs. Gemcom LTD. 11 October 2009, and Opposition to Israel TM Application Numbers 175808 and 175809 Gizeh Manufacturing Company Greek Cooperative Cigarette vs. Raucherberdarf GmbH S.A. Sekap S.A. 6 February 2012.

Are the marks well-known?

It seems indisputable that the wordmark Speedo is well-known in Israel, and the Applicant and their witnesses do not dispute this. However, the question remains whether Speedo’s logo is now well-known in Israel. Speedo considers this to be case and relies on the long and wide-scale usage and the significant sums spent on promoting the brand around the world.

The term well-known mark is defined in the Ordinance as follows:

“Well-known trade mark” – a mark that is well-known in Israel as a mark owned by a person that is a citizen of a member state. A permanent resident of such state or who has an active business or factory in such state, even if the mark is not a trade mark registered in Israel or if there are no users of the mark in Israel; for the purposes of determining whether a trade mark is a well-known in public circles relating to it and the extent to which it is known as a result of marketing, shall be taken into account, inter alia;

As known, the sight and sound test is the central test of the three, and it considers the appearance of the marks in their entirety, emphasizing the first impression made by the comparison. The importance of the first impression is due to the simple reason that consumers do not stop to consider marks in their entirety. See for example, Appeal 6658/09 Multilock ltd. vs Rav Bareakh Industries ltd. paragraph 9 (12 January 2010).

In the Opinion of the Adjudicator, the graphic symbol of the Opposer is Israel TM No. 76627 which is very similar to the applied-for mark.

The Adjudicator does not consider the fact that Opposers’ mark is filled and the Applicant’s mark is defined by an outline as sufficient to create distinctiveness and to prevent confusion between them, particularly as it seems that Brooks uses the filled-in symbol. Nevertheless, she does not consider that one can fairly consider the combination marks of symbol and word Speedo of the Opposer with the symbol of Brooks.

Distribution Channels and Customers

In this instance, the Applicant argues that the applied for mark and the Opposer’s marks are not used on the same goods. Their position is that although both Applicant and Opposer manufacture sports goods, their goods are nevertheless in different categories since the Applicant’s goods are for running, whereas the Opposer’s goods are for swimming and water sports. It would appear that there is no need to give this further consideration since the Adjudicator has already ruled that these are goods of the same type. However, since we are considering the likelihood of misleading under Section 11(9) one has to consider the details of the mark. From this consideration it transpires that the Opposer’s (Speedo) marks are registered for the entire class 25, covering clothing per se, whereas the Applicant (Brooks) have applied for only some of the goods in class 25. From this it is clear that there IS overlap between the applied for range of goods of the Applicant and the range of goods covered by the Opposer’s mark. Because of this, the Applicant’s point that the marks are used for a different range of goods in practice is not acceptable.  Any consideration of the goods bearing the mark HAS to relate to the range of goods covered by the mark.

As to the customers, it seems that both Applicant and Opposer market their goods to the entire spectrum of people who engage in sporting activities, both professionals and amateur. So the customer base is identical. Nevertheless, it is likely that professional sporting people will be careful about what goods they purchase and will know the logos well. They will be more alert as the matter is of importance to them, so it is not reasonable to assume that this population will be misled. See re Bank Igud page 676, 673. However, this is not the case with amateurs, who purchase goods without much consideration, particularly when dealing with sports goods. For these consumers, it is not inconceivable that they will not be sufficiently attentive and could be confused or misled. In this instance, due to the similarity in goods for which the Speedo mark has been registered, it is not inconceivable that the Opposer will widen the scope of their business and only use the graphic element without the word Speedo. This could create misleading regarding the origin of the goods of Opposer and of the Applicant, which are both for class 25 and for the same family of goods.

As to marketing channels, the evidence shows that the Applicant’s goods are sold in both brand stores and general retail stores; however Speedo’s products are ONLY sold in Speedo stores. However, the Opposer, having a registered mark, could widen their distribution and sell in regular stores as well. So this test does indicate a danger of consumer confusion. See Appeal 4116/06 Gateway Inc. vs. Soundtrack Advanced Technologies ltd. 20 June 2007.

 Other considerations and Common Sense

This test includes the other case-specifics that should be considered when determining the likelihood of consumers being mislead by the similarity between the Applicant’s and the Opposer’s marks.

In this regard, the Adjudicator was not persuaded that the Applicant’s mark had acquired such significant recognition that overcome the risk of confusion with the Opposer’s graphic mark. There is a strong similarity between the visual appearance of the marks and between the goods covered, the customers and distribution channels.

Furthermore, the Adjudicator does not accept that the mark should be registerable since the sports field includes other marks that are very similar. This claim contradicts the Opposer’s other claim that the graphic marks of the Applicant and Opposer are distinctive and different.

A further claim raised by the Applicant was that their mark and the Opposer’s mark carry a different conceptual message. See paragraph 21 of Bohan’s affidavit. Whereas Speedo’s mark conveys the message of hydrodynamics, the Applied for mark is like a path and is more rounded and gives a sensation of flexibility, solidity and movement. The comparison of marks in light of subliminal messages was discussed at length in Appeal 8441/04 Unilever Plc vs. Eli Segev 23 August 2006 (Dove). The Opposer considers that this difference, even if acceptable, is not sufficient to overcome the similarities between the marks.

The Adjudicator does not accept the claim that the marks conjure up different messages. As the court ruled in the Dove decision, such messages are of value to the extent that they create a linkage between the product and the idea in the eye of the customer. In this instance, the Adjudicator is not convinced that the consumer would identify the Applied for mark with flexibility, stability and motion, and certainly this is not proven to be the case.

The Adjudicator also does not accept the Applicant’s claim that in this instance there is no likelihood of confusion since, despite the usage of both companies, there has never been a complaint of being misled in practice. The Adjudicator does not consider this lack of a complaint to be significant in establishing that there never was confusion or that there never will be confusion.

In light of the above, the triple test leads to the conclusion that there is a likelihood of confusion similarity between Speedo’s graphic mark and the applied-for mark. So Brook’s mark is refused under Section 11(9) of the Ordinance.

It is noted that to reach the conclusion of non-registerability under Section 11(9), the Adjudicator did NOT rely on the evidence supplied by the Opposer.  The burden of proof of registerability lies with the Applicant. The Adjudicator did not consider that the Applicant supplied sufficient proof, and so the onus was not transferred to the Opposer who did not need to demonstrate that the mark could not be registered.

The grounds of Opposition under Sections 11(5) and 11(6) and section 39a1 are moot.

Conclusion

In light of the above, the Opposition to Israel TM No. 238375 is accepted.

COMMENT

In general, the Adjudicator would be correct to give little weight to the fact that in the past, there has been not a single recorded case of customer confusion. However, in this instance, both Speedo and Brooks have a hundred year history.

nike

Not taking into account other marks has some validity, but in this instance, Brooks earlier registered mark is far closer to Speedo’s. Furthermore, there are a whole slew of other somewhat similar marks, such as Nike’s mark shown alongside.

Although Speedo has indeed registered their graphical mark for all goods in class 25 they do not make and have never made running shoes. The graphical mark was registered in 1990. 28 years later, if Speedo have not expanded into running shoes and there is no bona-fide indication that they intend to, Speedo’s registration should be amended to limit the range of goods to exclude running shoes. Possibly this should require Brooks and their representative to request this, but there is no overlap. There is no likelihood of confusion, and the marks are different.

In the circumstances, to rule that Brooks did not make a sufficient case to move the burden of proof to Speedo is frankly ridiculous.

 


Luistone, Bridgestone, what’s the difference?

May 27, 2018

GoldbergA Chinese man and his Jewish friend were walking along one day when the Jewish man whirled and slugged the Chinese man and knocked him down.
“What was that for?” the Chinese man asked.
“That was for Pearl Harbor!” the Jewish man said.
“Pearl Harbor? That was the Japanese. I’m Chinese.”
“Chinese, Japanese, you are all the same!”
“Oh!”

They continued walking and after a while the Chinese man whirled and knocked the Jewish man to the ground.
“What was that for?” the Jewish man asked.
“That was for the Titanic!”
“The Titanic? That was an iceberg.”
“Iceberg, Goldberg, you are all the same.”

Shandong Luistone Wheels Co submitted Israel Trademark Application No. 287968 for LUISTONE in Class 12. The Application was the National Phase of International Trademark (Madrid) Number 1309157.

On 18 October 2018, the International Bureau was informed that the mark was allowed subject to no oppositions being filed.

On 31 January 2018, Bridgestone Corporation opposed the mark under Section 24a of the Trademark Ordinance and regulation 35 of the trademark regulations 1940.

On 6 February, the International Bureau was alerted under Section 56(vi)b of the Ordinance, and provided with the timetable for submitting a response and counter-claims.

Under Regulation 37, the Applicants had two months to submit a counter-statement, and the final deadline was 6 April 2018. No counter-statement or request for an extension were received until 26 April 2018 when Arbitrator of Intellectual Property Ms Yaara Shoshani Caspi ruled that the mark could therefore be considered abandoned and the file closed. No costs were awarded.


Evangelical Television and Temporary Injunctions

May 9, 2018

voice of hope2

High Adventure Ministries sued Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe (presumably Taylor?) for using “the Voice of Hope” for spreading evangelical messages.

This case related to a Request to Appeal a refusal to grant a temporary injunction that was issued by Judge M Amit-Anisman of the Tel Aviv – Jaffa District Court on 27 November 2017.

The background relates to the parties’ activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.

The background relates to the parties’ activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.

high global

The Appellant, High Adventure Ministries, has used the mark for many years, and sued the defendants Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe in the Tel Aviv – Jaffa District Court claiming passing off, Unjust Enrichment and infringement of a well-known trademark albeit not registered in Israel.

During the proceeding, they submitted a request for a temporary injunction to forbid the defendants using the mark. This interim injunction (Case 65046-06-17) was refused by Judge M Amit-Anisman on 27 November 2017. She ruled that the Plaintiff had a case, at least under the tort of passing off, but considered that the significance of the case, the balance of convenience and justice considerations tilted the scales in favour of the defendants, stressing that:

  1. The defendants had used a radio station named Voice of Hope for a number of months and its establishment had required an investment of millions of dollars.
  2. The radio station broadcasts in Arabic and is directed to listeners in various Arab countries, whereas the plaintiff’s transmissions are in English and are directed to English speakers.
  3. The plaintiff had known about the intention to establish the radio station at least a year ago but had been tardy in filing a complaint and so was not deserving of a temporary restriction order.

voice of hope

The plaintiff claims that the defendants’ website includes English and so they also direct their efforts to English speakers. They argue that it is not proven that a temporary injunction will cause the defendants damage, however NOT granting a temporary injunction will do them damage, and they contested the allegation of tardiness. They argued that they had a good case and accused the defendants of inequitable behaviour. The defendants meanwhile, argued that the Court of First Instance was correct to refuse to grant a temporary injunction and did not consider that the case should be appealable.

This issue is one of temporary injunctions, which are relevant to trademark issues. In this field, the Court of First Instance that considers the case has wide discretionary powers and the Court of Appeal has limited authority to intervene where the Court of First instance has the information before it and hears witnesses and gets an impression of their reliability. There are, however, exceptional cases where intervention is justified, but is this one of them?
Antenna

Whether or not to grant interim injunctions depends on two main variables: the likelihood of prevailing, and the balance of convenience.

The court of first instance determined that there was a case to be answered. However, it was the balance of convenience and considerations of justice that tilted the scales into not issuing the temporary injunction. Thus despite considering that there was a case, it was the balance of convenience issue that was considered more important. Here, both sides argued that it was not proven that the other party would suffer irreversible damage. In this regard, Judge Handel emphasized two points:

Firstly, apart from general waffle, neither party provided concrete data supporting their suspicions that the damage they would suffer would be irreversible. For example, the defendants invested significant sums in establishing their radio station but did not show that much of that investment was in branding, and that changing the name of the channel temporarily would adversely affect their profitability. That said, since they are already broadcasting under the name Voice of Hope, there is no doubt that a temporary injunction would inconvenience them, not so much due to the start-up investment costs, but because a change of name could cause confusion and lose them listeners.

The plaintiff Appellant did not indicate why failure to grant a temporary injunction would cause him damage. Here the emphasis is on the fact that the radio station broadcasts in Arabic, whereas those of the plaintiff Appellant are in English. So the target audience is different, and there is no support to the claim that the plaintiff Appellant will suffer damage, and thus no support that he would suffer irreversible damages. In this regard, Judge Handel considered the claim that the plaintiff Appellant had a world-wide reputation as the Voice of Hope, but as the District Court stated, in the request for a temporary injunction, the plaintiff Appellant failed to provide the factual basis for the claim that Arabic speakers are familiar with the Voice of Hope and would link the defendants’ station with the Israeli body that uses that name. Thus even if Judge Handel would accept the claim that the name Voice of Hope is indeed a well-known mark around the world that is associated with the plaintiff Appellant, that would not be a sufficient basis to grant the temporary injunction.  See for example, the Opposition to Israel Trademark Application Number142266 “No limits eyewear” (2 May 2004). It is noted that the burden of proof is on the plaintiff who wants the temporary injunction, expect for one exception, and here the second consideration comes into play.

Secondly, the defendants’ Internet site gives the impression that the radio station is the one established in 1979-2000 that no longer broadcasts, For example they state:  

“In 2014 we reestablish the VOICE OF HOPE radio station which had broadcast from South Lebanon from 1979-2000 The airwaves have been silent for 17 years, until today!

In other words, the defendants are glorifying themselves as reestablishing the station that the plaintiff had owned. Since the word mark is the same for the two stations, and the dove logo is similar, there is indeed likelihood that English speakers would erroneously conclude that the defendants’ station is associated with the plaintiff.  Similar erroneous messages are found in other English advertisements used by the defendants, appended as annexes 4-8 of the Appeal.

This suspicion of misleading the consumers throws a special light on this proceeding which relates to trademarks. Unlike other civil disagreements such as contract law, with regards to intellectual property, there is a third wheel to the conflict – the public.

The purpose of the Law of is not merely the narrow interest of the parties, but also the public interest who have a place in the story (see for example 8127/15 The Associate of Israeli Industrialists vs. Dohme Corp and Merck Sharp, 15 June 2016), and in trademark matters,  see also the request to register Israel Trademark No. 164702 LENGO, paragraphs 6-9 and the references there.

This is true for main trademark proceedings, such as registration of a mark in the trademark register, but it is also true for temporary injunctions. Just as it is important to consider the public in the main rulings, it is also important to consider them when considering issuing temporary injunctions since temporary injunctions are designed to serve the main ruling. The extent that NOT granting a temporary injunction would lead to the public being misled should be considered when considering temporary injunctions.

It will be noted that the first point emphasized the commonality of civil law including trademarks, whereas the second point emphasized the uniqueness of trademarks. This is not contradictory. Just as one has to consider the likelihood of a proceeding being successful in prevailing with regard to a specific law, one has to consider the uniqueness of trademark law where the specific law is the Trademark Ordinance. The difference is that one also has to relate to the third wheel – the public. This is the commonality with Administrative Law, although the public interest is different in the two areas. Whereas trademark Law is still personal law, in this regard it is on the seam between personal private law and public law.

In this instance, the existence of two entities transmitting Evangelical Christian messages under the same trademark, where one body publicises itself as related to the other body before the same target group, is likely to mislead the English listening demographic. This has an independent weight in both the considerations of public interest and in the balance of convenience. The risk is not that the listening public will be confused, as the transmission languages are different. The risk is in the advertisements in English. In these circumstances, it is fitting to not allow the appeal apart from with regards to one point.

That is to say, that the District Court was correct to refuse to grant a temporary injunction to the extent that it would be inappropriate to interfere, due to the large investment, the different target audience and language and the delay – even if it resulted from a lack of clarity regarding the defendants’ intentions following exchanges of letters and it is not clear if there was tardiness, or if the plaintiff thought things were resolvable without going to court, but the findings of the Court of First Instance were reasonable.

Together with this, the Court of First Instance was wrong with regard to the request to remove advertisements that create an association between the defendants and the plaintiff. The defendants are required to remove all references to the historic Voice of Hope channel belonging to the Appellant, and similarly to cease and desist from any publication that implies a connection between the parties. Alternatively, the defendants are allowed to leave the advertisements in place, but to add a clear and unequivocal clarification that they are not related to the English Voice of Hope, so that advertisers will not be misled. If the parties are not happy with this, they are invited to raise their claims with the Court of First Instance, but it appears that the parties can settle this between themselves without referring back to the courts.

In Judge Hendel’s opinion, this is the correct balance between the plaintiff, the defendants and the public. The defendants can continue broadcasting in Arabic under the name Voice of Hope to the residents of Lebanon and Syria since, in the framework of the request for a temporary injunction, no risk was substantiated that Arabic speakers would be misled regarding a relationship with the plaintiff’s station that closed in 2000, and so there is no risk of damaging that station. This considers the target audience of the radio station, and the minor differences in the marks, See Nazareth Civil Action 613/95 Arditi Americano vs. Harush, paragraph 6 (17 March 1996), and also considering that no evidence was produced to substantiate the claim that the mark was well known amongst Arabic speakers. As to English speakers, only the plaintiff transmits in English, and the defendants admit that their usage of English is only for written advertising purposes. Thus there is no likelihood of confusion regarding the transmissions themselves, but only with regard to the advertisements and these are mitigated by the steps ruled above.

Domino's pizzaPizza Domino

Such intermediate rulings are possible in trademark case which can result in two similar marks coexisting where there is a ruling that creates a difference that mitigates the likelihood of confusion, such as with regards to Israel TM no 6140 Domino Pizza which then Commissioner Michael Ophir Z”L allowed to coexist with Pizza Domino, in light of the different colour schemes, signage and newspaper articles stressing the lack of connection between the two chains. This is not a common occurrence, but it is fitting in a temporary injunction, as it balances the three interests, including that of the consumers.

All of the above only relates to the temporary injunction. It does not nail down the final ruling. The parties disagree regarding many factual matters, such as whether the plaintiff has a reputation, and the extent of that reputation, how well the Voice of Hope is known around the world and so on. Although these issues are considered with respect to whether a temporary injunction is appropriate, this in no way decides the trademark issue or nails down the main ruling, but merely attempts to minimize damage to both sides before the full ruling issues. See Appeal 4196/93 Shefa Bar Management and Services 1991 led.vs Shefa Restaurants Production and Marketing of Prepared Meals 1984 Ltd. p.d. 47(5) 165 (1993). The appropriate temporary injunction and the appropriate main ruling have different considerations. The Court’s main consideration with respect to temporary injunctions is to enable the main proceeding to take place without creating irreversible damages, whilst noting that the apparent facts and working hypotheses are liable to change, as is the perceived public interest, throughout the case, and the Court will have to make a final ruling in due course.

The Appeal for a temporary injunction is partially accepted and the costs awarded against the plaintiff by the Court of First Interest are cancelled. The defendants will bear the plaintiff’s costs and legal expenses of 18000 Shekels.

High Adventure Ministries vs. Strategic Group and the Voice of Hope LTD; ruling on interim injunction by Judge Hendel 7 May 2018.

COMMENT

2567555-David-Ben-Gurion-Quote-The-test-of-democracy-is-freedom-ofI think this ruling is balanced. It is in stark contrast to the en banc decision in the Bagatz ruling on the legality of the lex-specialis Arutz Sheva where the Supreme Court overturned a Law that legalized the station, basing themselves on the spurious argument that allowing the station would interfere with other stations being able to attract advertising revenue, alleged to be a fundamental right under the quasi-constitutional Basic Law – Freedom of Occupation, whilst ignoring the fact that the appellants acted in bad faith (Yossi Sarid was simultaneously campaigning for Abu Nathan to get the Nobel Peace Prize for the Voice of Peace),  and with no mention of the other quasi-constitutional right, that of Freedom of Speech, defended successfully by Judge Agranat in 73/53 Bagatz Kol HaAm vs. Ministry of Interior, 1953 where Ben Gurion’s attempt to silence a communist newspaper was thwarted well before the ‘legal revolution’. Aharon Barak creatively misinterpreted the basic Laws of 1991 to give the courts unprecedented and anti-democratic powers to overthrow Knesset legislation and widened the definition of legal standing to allow the courts to intervene at the request of legislators, non-profits and others.
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Supreme Court Adds Sauce to Temporary Injunction

April 25, 2018

Back in February, we reported regarding a temporary injunction that Barilla obtained in the Tel Aviv District Court against Rami Levy, requiring them to remove packages of pasta that came boxed in blue boxes with cellophane windows and similar packaging to Barilla’s range of pastas.

The image above shows Rami Levy’s packaging under the Olla own-brand on the left, and the Barilla packaging on the right.

Whilst it is true that the Olla packaging does state Rami-Levy – Shivuk HaShikma (Sycamore Packaging), and the name of the pasta is written in Hebrew, it is also true that both brand-names end with the syllable and letters lla, and the fonts are italicized and slope to the right.

Rami Levy appealed the decision to the Supreme Court but Judge Solberg upheld the temporary injunction pending a full trial and ruling, and also widened it to cover pasta sauces, noting that like Barilla, Rami Levy uses glass jars with blue lids for their tomato sauces. Costs of 40,000 Shekels were awarded to Barilla for having to deal with the appeal.

Comment 

We note that Rami Levy has a further own-brand packaging for dried pasta (on the right), where Taaman (whose own packaging is blue) package their pasta for Rami Levy in cellophane bags that seem inspired by Osem’s Perfecto range (on the left) so they can simply pour out the boxes and bag in cellophane, at least until Osem sues them.

steaks

We also note that Rami Levy (on the left) recently jumped into the frying pan with minute steaks, using a packaging scheme not vastly dissimilar from Baladi’s (on the right), and that Judge Avrahami of the Petach Tikveh District Court granted a temporary injunction requiring Rami Levy to adhere a sticker that is not red, white or black to their frozen meat package of minute steaks that should be at least 11 cm by 8.5 cm, that is clearly printed and which states that the product is under Rami Levy’s own label. The sticker must not include the price or the words “Special Offer”, that could dilute the effect of differentiating between the products. The sticker is to be applied to the front of the packaging at the top, under the term “Maadaniyah” (delicatessen).

Appeal 1065/18 and 1521/18 Rami Levy vs. Barilla, 22/4/2018