Coffee Whitener Trademarks in the Gaza Strip

November 6, 2017

city creamerClients sometimes ask about whether or not it is worth registering trademarks in the Gaza Strip. Recently, we’ve been handling the destruction of fake plumbing goods destined to Gaza, that were stopped at the Israel Port of Ashkelon. Delivering papers in Gaza is not easy. It can, however, be done.

Qumsieh is a Jordan firm of patent attorneys that handles IP registration across the Middle East. On 20 May 2014, Qumsieh submitted a Gaza Trademark Application for City Creamer, a coffee whitening milk substitute that comes in powder form, on behalf of their client, Bilal Mohammad AL Hamwi, in class 29. The application was assigned number 18963, then published in the Official Gazette number 54 on 28 May 2015.

coffee mateSociété des Produits Nestlé S.A. (“Nestlé”), the owner of trademark “Coffee Mate” filed an opposition against our AL Hamwi’s mark based on their earlier registrations for “Coffee Mate” based on the following grounds:
An alleged Similarity between “City Creamer” and “Coffee Mate” in terms of appearance and general look;
Coffee Mate is a well-known trademark worldwide;
Registration of the opposed mark will mislead the public about the origin of the products and will confuse the consumers between both products, and
Due to the above, allowing the registration of “City Creamer” contradicts local Trademark Law.

In their response, Qumsieh noted that “City Creamer” has no counterpart “mug design” mark to that of Nestlé’s mark, however Nestlé argued that this was irrelevant. Opponent dismissed as irrelevant. Qumsieh also argued that the figurative elements illustrated the differences in the imagery, which far outweighed the alleged similarities.

The Gaza Registrar ruled that the “City Creamer” mark could be registered. Apparently Nestlé appealed said decision before the Gaza Supreme Court, which affirmed the decision of the Registrar.

COMMENT

The colour schemes of the two marks are similar, but coffee is a product that is generally drank warm and the orange-red colour implies a warm cosy feel. The term creamer, like coffee, is generic. Showing a powder additive for coffee as a spoon for adding to coffee seems to me to be descriptive, and despite the similarities which are probably not coincidental, I think that the Gazan authorities made the right decision. It is worth comparing this ruling to the Israeli rulings concerning energy drinks and the Eden Turkish Coffee.


Increase in Official Publication Fees in Syria

October 3, 2017

200px-Flag_of_Syria.svgOn 28 August 2017 the Syria Minister of Internal Trade issued Ministerial Decree No. 2133 announcing an increase in the official publication fees for new trademarks and renewal applications, as well as for publication for recordals of assignment, mergers and changes of name and address.

The decree will become effective on 15 October 2017 affecting applications pending publication, as follows:

Item Old Price New Price
Publication fees for accepted applications in the Official Gazette (for a list of goods of 10 words) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees after registration in the Official Gazette (for a list of goods of 10 words) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications before acceptance (for applications filed or renewed before April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications after issuing the renewal certificate (for applications filed or renewed before April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications after acceptance (for applications filed or renewed on or after April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Fees for additional group of 10 words in the list of goods and services SYP 500
USD 1
SYP 1500
USD 3
Publication fees for the recordal of assignment SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of merger SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of change of name SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of change of address SYP 25000
USD 50
SYP 50000
USD 100

Renewals of trademarks filed or renewed before April 2007 will be published twice, the first time after acceptance and the second time after the issuance of the registration or renewal certificate. Trademarks filed or renewed after April 2007 will only receive one publication notice, after acceptance.


HALLEY vs. HALEY

September 29, 2017

HalleyJordan based patent attorneys Qumsieh report filed an application in the Palestinian Authority (referred to by Qumsieh as the State of Palestine) for a trademark for Halley on behalf of their Client, Yildez Holding Anonim Sirketi, a Turkish company, on 25 June 2015 in class 30. The mark received the trademark number 27208. The application was published in the Palestine Official Gazette on 15 December 2015 subject to the opposition period of 3 months.

A Saudi Arabian company, under the name of Abdullah Al Othaim Markets, filed an opposition against our client’s application on the basis of it:

  • Being a well-known company in terms of commercialising food products;
  • Being the owner of the registered trademarks “Haley” in Latin and Arabic characters in classes 21, 29, 30, 31, and 32;
  • Prior registration of “Haley” in the home country and abroad since 2003;
  • Claiming their mark “Haley” as a well-known trademark, and
  • Commercialising their products under the trademark “Haley” on their website, which is known to consumers worldwide.

Qumsieh countered that:

  • Their client is also a worldwide,  well-known, company established in 1989;
  • Their client is the owner of the registered trademark  “HALLEY” in Turkey and worldwide in classes 29 and 30 since 1993;
  • The trademark “HALLEY” is well-known worldwide, and customers now associates this brand with Yildez Holding Anonim Sirketi, and
  • The trademark is widely used worldwide and in Palestine [sic].

After reviewing the matter, the Palestine Trademark Registrar allowed HALLEY to register.

COMMENT

We note that the stylized mark Halley is registered in Israel for plumbing products, namely: faucets, shower installations, shower cabinets, shower cubicles, bathtubs, water closets, sinks, wash-hand basins, urinals, sanitary apparatus in the form of squatting pans, toilet seat lids, toilet cisterns; all included in class 11.

If the Palestine Territory mark is also for sanitary equipment, and Haley (not registered in Israel) sells food products, there is indeed little likelihood of confusion.


Oppostion to Smartbike Trademark

September 17, 2017

268138El-Col Electronics (Nazareth Illit) Ltd submitted a trademark application for Israel Trademark No. 268138 in class 12.

The mark is a graphical image bearing the words Smart Bike as shown.

On 7 March 2017, an opposition was filed by Smartrike Marketing Ltd and Smart Trike MNF PTE LTd under section 24a of the Trademark Ordinance 1972, and Regulation 64a of the 1940 regulations.

On 30 April 2017, the Applicants requested an extension of time for submitting their Counter-Statement of Case in Response to the Oppositions. On 20 June 2017, the Applicant submitted their claims in accordance with Section 35 and requested that the Opposer deposit a bond for covering costs.

Section 38 of the Regulations provides the Opposer with a period that ended on 20 August 2017 to submit their evidence. In addition, the Opposer should have responded to the bond request within 20 days. However, until the time of writing this Decision, it appears that the Opposer chose not to submit evidence in an Opposition they themselves initiated. Nor did they respond to the request to deposit a bond.

Consequently, under Regulation 39, Smartrike is to be considered as having abandoned the Opposition:

If the Opposer does not submit evidence, he is considered as having abandoned the Opposition unless the Commissioner rules differently.

Since the Opposer did not submit  evidence and also failed to contact the court secretary, and since she saw no justification to rule differently, Adjudicator of IP, Ms Shoshani-Caspi ruled that the opposition be considered closed, and that Israel Trademark Application No. 268138 be immediately registered.

Based on the various considerations, she ruled that the Opposer should pay costs of 1000 Shekels + VAT within 14 days.

Opposition to Israel TM Application No. 268138, Ruling by Ms Shoshani Caspi, 28 August 2017


Apple and WhatsApp’s Apps for Apps

September 14, 2017

272109 apple watch appOn 9 February 2015, Apple Inc submitted Israel trademark application no. 272109 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular background as shown.

280669

Before Apple’s trademark application was examined, WhatsApp Inc. filed Israel trademark application number 280669 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular speech bubble shaped background as shown.

 

 

Apple’s application was for Read the rest of this entry »


MANDO

August 24, 2017

MANDOHalla Holding Corporation filed two Israel Trademark Applications Nos. 257747 and 257748 for the word mark MANDO and for the stylized Mando mark in classes 12 and 35.

The marks covered Horns for motor cars, Anti-theft devices for motor cars, Wheel rims for motor cars, Cycles, Parts and accessories for cycles, Cycle rims, Wheels for motorcycles, Cycle spokes, Cycle stands, Cycle frames, Cycle handle bars, Cycle hubs, Two-wheeled motor vehicles, Air bags{safety devices for automobiles}, Steering wheels for automobiles, Reversing alarms for automobiles, Parts and accessories for automobiles, Electric cars, Tandem bicycles, Mopeds, Touring bicycles, Delivery bicycles, Bicycles, Bicycle rims, Wheels for bicycles/cycles, Bicycle spokes, Frames{for luggage carriers}{for bicycles}, Bicycle stands, Bicycle frames, Bicycle handle bars, Parts and accessories for bicycles, Handlebars, Shock absorbing springs for motor cars, Spiral springs for vehicles, Shock absorbing springs for vehicles, Spring-assisted hydraulic shock absorbers for vehicles, Air springs for vehicles, Suspension Shock absorbers for vehicles, Shock absorbing Springs for vehicles, Suspension shock absorbers for vehicles, Shock absorbers for automobiles, Brakes for motor cars, Brake linings for motor cars, Brake shoes for motor cars, Brake segments for motor cars, Disk brakes for vehicles, Band brakes for vehicles, Brakes for vehicles, Brake facings for vehicles, Brake linings for vehicles, Brake shoes for vehicles, Brake systems for vehicles, Braking systems for vehicles and parts thereof, Brake segments for vehicles, Brake Shoes for vehicles, Block brakes for vehicles, Conical brakes for vehicles, Non-skid devices for vehicle tires[tyres], Braking devices for vehicles, Cycle brakes, Band brakes{for land vehicles}, Block brakes{for land vehicles}, Brake pads for automobiles, Brakes for bicycles/cycles, Bicycle brakes, Gearboxes for motor cars, Crankcases for components for motor cars{other than for engines}, Clutch mechanisms for motor cars, Torque converters for motor cars, Gears for cycles, Reduction gears for land vehicles, Gears for land vehicles, Gear boxes for land vehicles, Transmission shafts for land vehicles, Gears for vehicles, Cranks for cycles, Bearings for land vehicles, Axis for land vehicles, Couplings for land vehicles, Axle journals, Trailer couplings, Electric motors for motor cars, Motors for cycles, Alternating current[AC] motors for land vehicles, Driving motors for land vehicles, Motors for land vehicles, Servomotors for land vehicles, Motors{electric}{for land vehicles}, Direct current[DC] motors for land vehicles; All goods included in Class 12, and Import-export agencies, Administrative processing of purchase orders, Wholesale services for freezers, Retail services for hot-water heating apparatus, Wholesale services for automobiles, Commercial intermediary services in the field of bicycles, Retail services for tires[tyres] and tubes, Wholesale services for antifreeze, Retail services for liquid fuels, Commercial intermediary services in the field of parts of vehicles, Commercial intermediary services in the field of articles of vehicles, Commercial intermediary services in the field of renewal parts of vehicles, Trade agency, Trade consultancy, Trade brokerage, Offer services [trade]; All services included in Class 35

On 23 November 2015, the marks were allowed and on 29 February 2016 an Opposition was submitted by MAN Truck & Bus AG under Section 24a of the Trademark Ordinance and regulation 35 of the regulations.

On 2 May 2016, the Applicant submitted their counter statement and on 6 October 2016, the Opposer submitted their evidence. The Applicant should have submitted their counter-evidence by 6 December 2016, but on 30 November 2016 and again on 2 February 2017, they requested and received two monthly extensions, and so had to submit evidence by 5 May 2016. Despite the extensions, the Applicant did not, in fact, submit their counter-evidence.

On July 2017, and going beyond the letter of the Law, the Patent Office Court sent the Applicant the following notice:

On 6 October 2016 you were required to submit your evidence under Section 39 of the Trademark Ordinance 1940. After receiving extensions, the deadline was set for 5 May 2017. To date, you have not submitted evidence. You have 10 days to let us know if you intend to proceed with this opposition proceeding. If you fail to respond, the case will proceed to a ruling.

The Applicant failed to respond, no evidence was received and no further extensions were sought. The secretaries referred the case to Ms Shoshani Caspi for a ruling.

In light of the above, Ms Shoshani Caspi considers the Applicant as having abandoned Israel Trademark Applications Nos. 257747 and 257748, and the Opposition is accepted for all opposed goods.

Using her authority under Section 69 of the Ordinance, and considering the fact that the Opposer had to submit a statement of case and evidence, instead of the Applicant simply actively abandoning the Application at their own initiative, Ms Shoshani Caspi ruled costs of 7500 Shekels exc. VAT.

Ruling re two Israel Trademark Applications Nos. 257747 and 257748  for MANDO by Ms Shoshani Caspi, 25 July 2017.

COMMENT

Applicant could have saved themselves fees by withdrawing. Additionally, even without submitting evidence they were entitled to request that Adjudicator consider the Opposition on its merits. It is certainly possible that MAN Truck & Bus AG do not have a strong enough case to prevent the mark being registered.

 

Procrastination can be expensive.


Cobra

August 22, 2017

COBRA.pngKnipex-Werk and C Gustav Putsch KG opposed Israel trademark application nos. 279193 and 283268 in classes class 7 and 8 respectively, which were both filed by Ohev Zion LTD (Ohev Zion, means Love of Zion). The marks are fr the stylized word COBRA shown alongside.

Furthermore, Knipex-Werk and C Gustav Putsch KG themselves filed Israel trademark application no. 289408 in class 8 for the word COBRA, for water pump pliers and pipe wrenches.

On 25 June 2017, the parties submitted a notification to the effect that after long and continuous negotiation, they had reached a coexistence agreement regarding the registration and usage of the marks in Israel, with intent to prevent misleading or confusing Israeli consumers, and the Opposition was thus closed with both parties agreeing to pay their own costs. A copy of the coexistence agreement was appended to the notification.

The parties stated that they were unaware of any actual events of confusion resulted by their usage of the marks in Israel, and that endorsement of the coexistence agreement would protect the public interest, prevent confusion and misleading the public and protect the interests of both parties, acquired through use of their marks in Israel.

cobrasIn the framework of the agreement, the Applicant and the Opposer agree to a number of conditions, designed to protect the Israeli consumers. In addition to restricting the range of goods in the Applications, as detailed below, the Applicant will only use the stylized COBRA mark, and not the word alone. The Opposer will not use the stylized mark. Both parties undertake not to use their marks with respect to goods that the other party has applied for, and thus there is no likelihood of customer confusion.

In accordance with the agreement, the parties have requested that Application number 279193 be restricted to “electric, electro-mechanical or chargeable pliers, wrenches and pipe  wrenches”, and that Application no 284368 will actively disclaim “pliers, wrenches and pipe wrenches”.

The parties request that opposed Israel trademark application nos. 289408 in class 8 for  “water pump pliers and pipe wrenches” be immediately examined and allowed and the Opposition be considered dropped only on publication of the 289408 application as allowed. Should any of this agreement not be acceptable to the Registrar, the parties requested that a hearing to be attended by their legal representatives be scheduled as soon as possible.

RULING

There are three trademark applications. The Applied for marks are stylized and the Opposer’s mark is a simple word mark.

In light of the agreement before her, the Adjudicator, Ms Yaara Shoshani Caspi does not consider that it is sufficient for the Opposer to agree to refrain from using the Applicant’s stylized mark. Also it is insufficient for both parties to refrain from applying for Cobra marks for goods that the other party sells. The Adjudicator considers this insufficient to create the desired difference between the two Cobra marks.

As to correcting the list of goods, the Adjudicator is only partially satisfied.

The list of goods of Israel trademark application no. 279193 in class 7 is as follows:

“Machines and electric and chargeable hand tools, such as electric drills and electric saws; electric and motorized gardening tools, such as choppers, fence trimmers, leaves blowers; air compressors; vacuum cleaners; welding machines; water-pressure washing machines; and electric machines and machine tools for making, processing and cooking food and beverages, namely food processors, meat grinders,  blenders, juice press, vegetable peeling and slicing apparatus; coffee grinders; kneading machines, devices for grinding, milling, crushing and chopping food; electric can openers, electric meat grinders, garbage disposals; vacuum-cleaners; water pressure cleaning devices, steam cleaning devices; and parts and accessories for all the above; all the aforementioned goods excluding electric, electromechanical or chargeable pliers, wrenches and pipe wrenches; all included in class 7.”

The Adjudicator was willing to allow the suggested restriction which disclaims the articles listed by the other party in Israel trademark application no. 289408. However, the agreed list of goods for Israel trademark application no. 284368 in class 8 is not acceptable. That list is as follows:

“Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels, razors, electric and non- electric hair clippers and beard, trimmers, scissors to trim hair, nail clippers, electric irons and steam irons, electric hair stylers; parts and accessories for all the above; all the aforementioned goods excluding pliers, wrenches and pipe wrenches; all included in Class 8.”

This is unacceptable since Israel trademark application no. 289408 also includes: “Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels”, so the amendment to Israel trademark application no. 284368 is not acceptable.

If, however, Israel trademark application no. 284368 is amended to exclude “Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels”, the marks will be considered allowable and the coexistence agreement will be endorsed. The parties have until 19 July 2017 to accept this. There does not seem to be a point in holding a hearing whilst the parties are negotiating, and if the parties fail to come to an agreement, the Opposer should submit their evidence within two months, i.e. by 5 September 2017, with the appropriate fees.

Interim Ruling by Ms Yaara Shoshani Caspi re coexistence of COBRA trademark applications, 6 July 2017.