ECJ rules that the shape of a Rubik Cube is not a valid trademark

November 11, 2016

cube

Everyone agrees that three dimensionsal trademarks are possible. A classic example might be Rolls Royce’s mascot.  Where a mark has functionality, it becomes more difficult. Unique packaging, such as the shape of a truly unique bottle, is trademarkable.

Rubik’s Cube, which was invented in 1974 by Hungarian architecture professor Erno Rubik, has enduring popularity and has sold more than 400 million cubes worldwide. Seven Towns registered the Rubik’s Cube as a three-dimensional EU trademark with the EUIPO in 1999. Simba Toys challenged the registration, but in 2014 the European Union General Court decided the three-dimensional trademark was valid, and ordered Simba to pay costs.

The European Court of Justice has now ruled the registration invalid.

And what about Israel? Been there… Done that.


Bon Bon

November 3, 2016

Israel Trademark Application No. 267718 is for the mark Bon Bon showed alongside this paragraph. The mark covers Cocoa; sugar; flour and preparatiobon-bonns made from cereals, namely cereal-based snack food, high-protein cereal bars; pastry; confectionery made of sugar, namely candy, sweets, pralines, chocolate, pastilles [confectionery], halvah, waffles; honey in class 30, and was filed by Open-Type Joint Stock Company “ROT FRONT”, a Company registered in the Russian Federation.

The registration included the following limitation: The mark is limited to the colours word Purple, dark purple, light purple and white. as shown in the mark.

The application is a national stage entry of International Application Number 1213719 that included Israel as one of the designated countries.

On 14 February 2016, and in accordance with Section 56f of the Israel Trademark Ordinance 1972, a notice of acceptance was sent to the International Office of WIPO, conditional on no oppositions being filed prior to 29 May 2016.

On 19 May 2015 an opposition was filed by ARCOR S.A.I.C. and on 26 May 2016, a further opposition was filed by Colombina S.A., both in accordance with Section 24 of the Ordinance and with regulations 35 to 46 of the Trademark Regulations, 1940. Consequently, a memorandum regarding the Oppositions was sent to the International Office under Section 56f(ii) of the Ordinance. As per Section 56e(ii) of the Ordinance, copies of the Notices of Opposition in Hebrew were attached to the memorandum.

The Applicant has two months to file a counter-statement in response to the Notices of Opposition, i.e. until 19 September 2016 and 26 September 2016 respectively. Until today, no response from the Applicant has been received. Since the time period defined in regulation 37 has passed and in accordance with Section 24e of the Ordinance, the Applicant is considered as having abandoned the application. Therefore the mark is considered as abandoned and the 267718 file is closed. The Trademark Division will inform WIPO accordingly.

 Re Israel Trademark 267718, Closure of File by Ms YaaraShoshani-Caspi, 7 September 2016


Gentlefile – Trademarking Portmanteau Words

November 2, 2016

Gentlefile is a portmanteau of ‘gentle’ and ‘file’. An Israel trademark application was filed for the GENTLEFILE covering flexible soft dental files. Ill-advisedly, the pending application was then used as the basis for an International application under Madrid.

Medic NRG Ltd filed Israel trademark application No. 255358 for the word Gentlefile. The application covers surgical, medical, dlogoental and veterinary apparatus and instruments; parts and accessories for the aforementioned products; all included in class 10.

The Application was filed on 1 May 2015 and was the basis for subsequent International Application No. 1189965 under the Madrid Protocol in accordance with Section 56(c)(1) of the Trademark Ordinance 1972.

On 17 September 2014 the Trademark Department of the Israel Patent Office refused the Application under Section 8(a) and 11(10) of the Ordinance as lacking inherent distinctiveness and being descriptive of the goods covered. The Examiner considered that the word was a portmanteau of gentle and file, and implied a filing implement that was mild or tender, and consequently the term was descriptive of dental filing apparatus. The Examiner stated that the term implied:

Devices and equipment that are smooth or soft, mild tender to the touch and which deflect on use or gentle touch medical equipment that gives a pleasant and good feeling to patients.

Furthermore, after reviewing the Internet website of the Applicant, the Examiner concluded that since the main activity of the applicant is to provide dental equipment, the term file is descriptive by its nature.

little-shop-of-horrorsThe Applicant claimed that the mark is distinctive and the goods to be protected are not soft, smooth or pleasant dental equipment and so the mark is not descriptive. The Applicant further alleged that a reasonable person would not associate the mark with dental equipment since smooth, soft, mild instruments can be used in a variety of fields, and at the Examiner’s request the Applicant appended examples of usage of the mark in its publicity material and the description of goods accepted on its basis by the United States trademark office on 12 August 2014.

mr-bean-dentistThe Examiner was not convinced and issued a second Office Action. In response the Applicant claimed that the applied for mark had many alternatives meanings and none of them described the goods covered. The Applicant claimed that the word file meant case, computer document, line or rasp, and that the Applicant had developed the mark and used it for years and had now began registering around the world, including the European Community, the United States, China and Russia.

The Examiner dug in her heels and continued to hold the mark non-registerable.  She claimed that the term file was a rasp-like instrument that was used in root canal treatment and the term “gentle file” is descriptive in that it relates to a flexible hand tool. The Examiner provided examples of dentists referring to such a tool as being a file and noted that it only requires one of the meanings to be a generic description to make a mark non-registerable.

oral-proceedingThe Applicant requested a judicial ruling based on the arguments on record and an oral proceeding.

RULING

The Deputy Commissioner Ms Jacqueline Bracha summed up the legal question as whether GENTLEFILE is inherently distinctive, and, if not, whether it can be considered as having acquired distinctiveness.

Section 8 of the Ordinance makes registerability dependent on distinctiveness:

8.—(a) No mark is eligible for registration as a trade mark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).

(b) In determining whether a trade mark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.

A trademark having distinctive character enables distinguishing the goods of one company from another. See the Bible Seligsohn “Trademark Laws and Related Legislation” page 20 (1973).

It is generally considered that marks fall into the following categories: generic, descriptive, indicative, randomly selected and made up. There is a continuum from generic marks to made up ones (See 5792/99 Communication and Religious-Jewish Education Family (1997) Ltd “Family” Magazine vs. SBS Advertising, Marketing and Sales Promotion Ltd. “Good Family” Magazine, Supreme Court Ruling 2001(11) 534 (23 May 2001). At the made up mark end are marks with inherent distinctiveness, whereas at the generic end are marks that cannot be registered.

Section 11(10) of the Ordinance determines that marks that describe the goods that they are to label cannot be registered unless they have acquired distinctiveness:

a mark consisting of numerals, letters or words which are in common use in trade to distinguish or describe goods or classes of goods or which bear direct reference to their character or quality, unless the mark has a distinctive character within the meaning of section 8(b) or 9;

The mere fact that a descriptive mark is not in Hebrew does not make it registerable in Israel since the accepted terms should remain in the public domain, even if they are not in Hebrew. (Seligsohn page 35, and 3552/02 Toto Gold Club Ltd vs. The Counsel for Regulating Sports Gambling (26 September 2004).

Thus the general rule is that there is no place to drag descriptive names from common language and to remove them from the public domain and to relate them to specific goods unless they have acquired distinctiveness. 

The degree of descriptiveness of a mark is determined with respect to the intended goods or services and not in a vacuum. (see Appeal 21488-05-11 Eveready Battery Company Inc.  vs. The Commissioner of Patents and Trademarks 8 December 2011. The mark will be considered in its entirety and not analyzed into its components as this is how the consumer regards the mark (see Appeal 5454/02 Tiv Taam  Teva (1988) Tivoli vs. Ambrosia Superhav Pd 57(2) 438).

No-one denies that the marks are intended for medical usage in general and for dentistry in particular. The consumer in this instance is not the general public but rather dentistry practitioners such as dental surgeons, assistants, dental technicians and the like. So the way the mark is regarded has to be considered from their perspective and not from that of others not in the field.

The applied for mark is a combination of two words without a space so that they are viewed as a single word. The portmanteau word comprises file and gentle which mean mild and a tool that is generally steel that has sharp crevices and is used to smooth and flatten surfaces such as human teeth. In dentistry this tool is used to remove plaque from teeth. The word file also means computer document, divisional arrangement and line.

When considering the words in the appropriate context, that is with regards to medical devices for dental applications, the Deputy Commissioner concludes that both ‘gentle’ and ‘file’ are descriptive terms. That the words have other meanings in different contexts to a different audience in no way detracts from them being descriptive in the relevant field, since one has to consider the marks with respect to the services and goods for which they are to be used. The word file has a specific dental meaning and the word gentle is a qualifier that describes a relevant property whose meaning is well understood in this context. As the Examiner concluded, in this instance, we are dealing with flexible tools and it transpires from the Applicant’s own marketing material that it is their softness/gentleness that describes them.

The mark should be considered in its entirety as this is how the target audience perceives it as a trademark. In this context the combination does add something beyond the sum of the parts which increases the likelihood of the mark being considered registerable.

However, it has been determined that merely joining two words together is insufficient to render a mark distinctive unless the combination provides added value. With reference to Page 38 of Seligsohn:

A complex mark of this type cannot over time and through usage lose the plain meaning of the words from which it is comprised, rather a combination has to inherently include something imaginative that the descriptiveness is no longer revealed.

In this regard, reference is made to the Opposition against Israel Trademark Application No. 202424 “MAXIMUMASP” MAXIMUMASP LLC vs. Sky Net Group Ltd (30 June 2010:

The element that Judge Zilberg refers to as “An invention”, and which the European Court calls “Linguistically Unique” is not separate from the second element, that is having acquired a separate meaning from the original one. This means to say, the creativeness is the originality that changes two known and descriptive words into a third phrase which in turn indicates or describes the original meaning, is tested not just in that the phrase adds something, but that the addition provides the phrase with a meaning that is blatant and is the first thing to jump into the viewer’s brain, and which clouds out the original meaning, even were he to think of the original meaning if contemplating the mark. We can already say that the mere combining of two words into one, and even if a letter is thereby deleted, is no proof that the resultant word has the inventiveness required.

The term ‘Gentlefile’ is indeed a portmanteau of two words rolled into one, but it does not appear that the combination creates a new meaning beyond the literal meaning of the combination. In this instance there isn’t even a letter that has been deleted or changed, merely the space between the noun and adjective has been deleted. Thus the combination lacks the essential element of inventiveness that creates an additional meaning beyond the original meaning of gentle file.

Without ruling on whether the combination is too descriptive to be able to acquire distinctiveness through use (2673/04 Appeal Copy to Go marketing (1997 Ltd. vs Israel Shaqued 15 April 2007) the Applicant has not furnished sufficient evidence to persuade that the mark has indeed acquired distinctiveness as required for registration under Section 8(b) of the Ordinance.

Examining acquired distinctiveness of a mark is done with reference to how long the mark is in use, the amount of publicity gained and the resources invested by the Applicant / Owner in creating a linkage between the mark and the goods in the public perception. (see Toto above). Furthermore, one should examine if due to the mark the public connects the goods and services with the mark Applicant/Owner. (see Appeal 18/86 Israel Class Company Venezia vs. Les Verries de Saint Gobain, p.d. 45(3) 224, 238 (1991).

The Applicant did append examples of advertising material from Israel and abroad showing the mark to their responses to the Office Action, and also submitted examples of registrations for the mark from other countries. The Applicant did  not supply details of sales, investment in marketing, the period over which the mark was in use, and the like.

Where marks are far from the imaginative end of the spectrum and are more descriptive-generic, it is more difficult for the Applicant to meet the burden of proof to show acquired distinctiveness. (see Toto paragraph 9). Since the Applicant did not append sufficient evidence to prove this and relied on foreign advertising and registrations, without additional evidence there is no way to ascertain that there is local acquired distinctiveness.

In conclusion, Ms Bracha ruled that the Application be rejected.

Ruling by Deputy Commissioner Ms Jacqueline Bracha on Registerability of Israel Trademark Application No. 255258 Gentlefile, 21 September 2016

COMMENT
Where a mark is arguably descriptive such as in this case, it is not advisable to use a pending application as the basis of a Madrid filing since central attack on the application voids the Madrid trademark registrations.

What I believe the Applicant should have done in this case is to first register the logo that appears above. The mere addition of the graphic element makes this more than a mere combination of words. Using this as a logo without challenges will be good evidence of acquired distinctiveness when subsequently attempting to register the portmanteau word. It is likely that the company sells dental tools worldwide and does not concentrate on the local market which is small since there are only 8.5 million Israelis for dentists to treat. In a small market it is possible to acquire distinctiveness and to become the market leader but this requires strategically deciding to do so. As always, descriptive names should be avoided.

It is difficult to blame the Attorney of record in this case as it is more than likely that they provided good advice and the client went ahead and chose a poor name and tried to protect it. If they didn’t, there would be little work for trademark attorneys.

 


Dormeo – A mark-owner is entitled to a hearing in a cancellation proceedings, even when failing to show evidence of use of the mark.

October 10, 2016

dormeo

Studio Moderna owns Israel Trademark Numbers 109784, 209785, 209786 and 209787. The mark is for Dormeo, in classes 20 (Mattresses; beds and parts thereof (not included in other classes); slatted frames and bed undersides; cushions; pillows; anatomical pillows not included in other classes; seat cushions; pillow materials), 24 (Textile goods, not included in other classes, including covers, coverlets, mattress covers, covers for cushions, bed sheets, blankets, bedding, bed linen and bed cloths (bedding); textiles, not included in other classes), 25 (Clothing; footwear; headwear; scarves, corsets (belts for warming the lower back), arm sleeves, leggings, elbow bands, wrist bands and slippers) and 35 (for Advertising, marketing and promotion services; advertising agencies; advertising through all public communication means; distribution and dissemination of advertising material; rental of advertising space; demonstration of goods; public relations; marketing studies; presentation of goods on communications media for retail purposes; advertising via electronic media and the internet; publicity services, namely, promoting the goods, services, brand identity and commercial information and news through print, audio, video, digital and on-line medium; advertising and commercial information services, via the internet; advertising services in connection with the commercialization and sale of products for household purposes, furnishing articles, clothing; creating and updating advertising material; distribution and dissemination of advertising materials, leaflets, prospectuses, printed material and product samples).

In July 2015, Aldi GmbH & Co. KG filed to have the marks cancelled under Section 41 of the Trademark Ordinance, alleging lack of local use.

In response, on 12 October 2015, Studeo Moderna submitted evidence of usage and denied that the mark was not in use. Aldi responded with Affidavits of their personnel and of a private investigator, and argued that the marks were not in use in Israel.

Time passed, and Studeo Moderna took various extensions, but failed to submit evidence. On 7 June 2016 Aldi requested that the Patent and Trademark Office rule on the case based on the material in the file. Studeo Moderna opposed this, claiming the right to cross-examine Aldi’s witnesses.

Commissioner Kling reviewed Regulations 71 and regulations 37 to 46 which relate to an opposer and an applicant, as if they relate to a challenger and a trademark holder and noted that once the challenger has provided evidence, the mark holder was obliged to provide evidence, but the time-frame for so-doing was limited and the deadline had passed. He specifically rejected the implicit position taken by the marks holder, that ONLY if the challenger’s evidence is considered compelling, is the marks holder required to submit counter-evidence on the basis of regulations 38-40 which require the parties to submit their evidence in one go.

According to the Commissioner, an Opposer or a challenger of an issued mark who fails to provide evidence supporting a claim of non-use is considered as withdrawing or abandoning the claim. This is NOT the case for the applicant or mark owner, who, though obliged to provide evidence, is not considered as abandoning his marks if he fails to do so. Since the mark owner has requested to cross-examine the challenger’s witnesses he cannot be considered as having abandoned his marks. The right to cross-examine witnesses is fundamental and is rarely denied.  The Commissioner is also obliged to hear the claims of both sides. Consequently, the hearing will go ahead, however the marks owner is warned that he may be laying himself open to high costs of the marks are nevertheless cancelled. The parties are invited to list days that they are available for a hearing in January 2017.

 

 


Formalities May be a Big Deal

September 20, 2016

This is an interim request to delete evidence submitted in a trademark cancellation proceeding.

Israel Trademark No. 131862 for “Big Deal” covers shop services for toys, kitchenware, disposable articles, houseware, clothing for children, and drawing books; all included in class 35.   It is owned by H.A.B. Trading Ltd which has stores selling discounted goods. Yediot Internet (YNet) has an internet website offering special offers. Their website is called Big Deal.

big deal storeynet big-deal

Yediot Internet filed a request to cancel H.A.B.’s mark and H.A.B. Trading LTD requested that Yediot Internet’s counter-evidence be deleted from the file due to it not complying with various formalities. Ms Yaara Shoshani Caspi refused the request to throw out the evidence, but gave the applicant for cancellation (Yidiot Internet) 14 days to resubmit their expert opinion as a proper signed and dated affidavit with an  appropriate lawyer’s warning within 14 days, and to ensure that the trademark owner’s counsel receives a copy in this period as well. She also awarded interim costs of 800 Shekels + VAT to the mark owner (H.A.B. Trading Ltd ) to be paid within 14 days. A report of that decision may be found here.

This post reports in the next episode in this thrilling saga.

In the 22 June 2016 decision Ms Shoshani Caspi found that there were indeed flaws in the Expert Opinion submitted by Yidiot Internet that adversely affected the value of their submission as evidence. For example, the signatures were on an otherwise blank piece of paper appended to the opinion, so it is not clear that the undersigned expert was aware of what his signature was attached to. The opinion didn’t include the name of the expert giving it, and wasn’t dated.

Since striking evidence from the record is a drastic step that may have dire consequences to the party whose evidence is struck from the record, Ms Shoshani Caspi preferred to give the party requesting the cancellation a window to correct the formalities.

The Opinion was submitted on paper and not using the on-line submission system, contrary to Regulation 6b of the Trademark Regulations 1940. [MF astute readers will probably guess that back in 1940 there was no on-line submission process – the current regulation is an amendment – MF]. The requester for cancellation ignored the Adjudicator’s instructions and it is not clear that the Opinion was submitted to the agent of record of the owner of the trademark.

Apparently losing patience, the Adjudicator gave the agents for Yediot Internet until September 1, 2016 to comply with her instructions as the hearing was set for September 4, 2016. She then warned the agents for Yediot Internet that failure to follow her instructions would affect the weight she would give to the evidence submitted.

Re Proceeding to Cancel Israel Trademark No. 131862 “Big Deal” Interim Decision by Ms Yaara Shoshani Caspi, 28 August 2016

 


USA PRO – Can Sales and Marketing Data Submitted To Israel Patent Office Be Considered As Trade Secrets?

September 19, 2016

USA PRO.pngUSA Pro IP LTD filed Israel Trademark Application Number 268322 for “ISRAEL PRO”.

To prevail against Examiner’s Objections during Office Actions, the Applicant has to provide evidence of use and awareness of the mark amongst the relevant public. Once a mark is allowed, it publishes for Opposition purposes and third parties may challenge statements made during Examination or in evidence submitted. Sometimes, the Applicant does not want this evidence to be available to third parties, and claims that they are trade-secrets that should be kept secret.   This ruling addresses the conflicting rights of the applicant and of third parties that are inherent in keeping evidence and submissions confidential.

Confidential-219x194.jpgThe request to keep the evidence confidential was submitted in accordance with Circular 028/2014 “Trademarks – Examination of the Application Files” from 26 August 2014.

To prove that the mark had acquired distinctiveness, the Applicant submitted a summary of the investment in marketing, invoices for sales in Israel, Britain and the US and world-wide sales data.The Applicant claims that making this information available could adversely affect its ability to deal with third parties that that it was in contentious proceedings with in various jurisdictions.

Section 23 of the Trade Torts Law 1999 defines the Commissioner’s authority to rule that trade secrets of an applicant or another will not be published. This rule covers all courts and bodies having judicial or quasi-legal authority in accordance with any and all laws. Section 5 of the Trade Torts Law 1999 defines trade secrets as:

“Business information of any type that is not in the public domain and cannot be easily and legally revealed by others, whose secrets provide the owner with a business advantage over competitors, so long as the owners have taken reasonable precaution to maintain the information confidential.”

From examination of the documents submitted and the requested confidentiality, it appears that they cover the applicant’s sales in fine detail, including the type of goods sold, prices, who they were sold to and in what quantities. Additionally, the alleged advertising sales budget was provided.

From the request to keep this information secret, it appears that this information is confidential and was not revealed to third parties. In this instance and since there is no a priori public interest in this information that outweighs the applicant’s request to keep this secret, it should remain confidential, at least at present, whilst the mark is under Examination.

access-deniedAs the Deputy Commissioner, Ms Jacqueline Bracha, does not think that revealing this information is required to enable third parties to review trademark applications for the purpose of opposing them, she does not see a need to make this information available to third parties and orders that it remains confidential. To support this position, reference is made to the Israel Trademark No. 243620 “Become ill? Injured?” Center for Receiving Medical Rights LTD decision of 1 December 2014. It is understood that to the extent that an Examiner decides to relate to this material during prosecution, he can do so in general terms, whilst giving enough details to serve the interest of the public following the prosecution. However, should the mark be allowed and an Opposition filed, the Opposer may be entitled to greater or even to full access to the confidential material. Thus in the event of the mark being allowed, an opposition filed and the Opposer requesting access, the issue will be revisited.

The request for confidentiality and this decision are made public.made public.jpg

Decision re confidentiality of trade-secrets revealed to the Israel Patent Office during prosecution of a trademark for USA PRO, ruling by Ms Jacqueline Bracha, 21 August 2016.


Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized)

September 12, 2016

pliskaIsrael Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized) was registered on 1 September 2014 for alcoholic drinks in class 33. On 24 March 2005 half the ownership was transferred from Capital Food Company ltd. to D.I.L. Trade (Maglan) ltd.

On 2 February 2016, Vinex Preslav Joint-Stock Company filed a request to have the trademark struck from the register due to alleged lack of use during the previous three years. Vinex Preslav Joint-Stock Company is a Bulgarian company that claims to have used the term Pliska for alcoholic beverages since 1994, and has registered the mark worldwide under the Madrid Protocol since 2005. Vonex Preslav claim to have sales in Israel.

Furthermore, Vinex Preslav notes that there is an agreement between the registered owners, Capital Food Company Ltd. and D.I.L. Trade (Maglan) Ltd, that was submitted to the Israel Patent Office, under which D.I.L. Trade (Maglan) Ltd undertook not to use the mark from 1 January 2005 onwards.

On 31 March 2016, Capital Food Company Ltd. submitted their statement of case. They claim that their rights to the Pliska trademark outweigh those of Vinex Preslav, that they have used the mark in recent years and intend to continue using it. Capital Food Company Ltd allege that a cancellation request filed 14 years after a mark was registered is surprising and itself indicates that the mark has a reputation.

On 25 May 2016, Capital Food Company Ltd submitted a request to transfer the mark to Vinex Preslav in accordance with an agreement reached between the parties. However, on 31 May 2016, Vinex Preslav submitted their evidence to have the mark canceled and requested a decision based on the evidence submitted without a hearing.

Vinex Preslav requested that the cancellation ruling be based on a statement by Mr Vadim Farber, the CEO of Carmi International Foods Ltd, who is the distributor in Israel that Vinex Preslav uses. Mr Vadim Farber affirmed the existence and contents of an agreement between Capital Food Company Ltd. and D.I.L. Trade (Maglan) Ltd. under which D.I.L. Trade (Maglan) ltd. were obliged not to use the mark, and he further affirmed that the mark had not been used in Israel over the previous three years.

Vinex Preslav also submitted a statement from Ronen Menashe, an investigator at SML Israel Intelligence Ltd, in which he affirmed that his investigations had yielded no evidence of usage by D.Y.L. Trade (Maglan) Ltd. today or over the past ten years. Mr Menashe had held a conversation with the director of D.I.L. Trade (Maglan) Ltd. who explained that he conducted his affairs via a further company, since D.I.L. Trade (Maglan) ltd.  is no longer active. Furthermore, the new company does not make any usage of Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА”. Mr Menashe also visited a number of shops spelling wines and spirits but none of them sold products with Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” on it, or any other products manufactured by D.I.L. Trade (Maglan) ltd.

On 21 June 2016, Capital Food Company Ltd announced that they no longer had any connection with D.I.L. Trade (Maglan) Ltd, would not be submitting evidence, and requested a ruling based on the material of record.

RULING

Section 41 of the Trademark Ordinance 1972 states:

41. [a] Without prejudice to the generality of the provision of sections 38 to 40, application for the cancellation of the Registration of a trade mark regarding some or all of the goods or classes of 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.

The purpose of the section is to keep the trademark register clean from non-used marks. See BAGATZ 67/71 “Prem” Ltd. vs Registrar of Trademarks, p.d. 28(1) 802, 811, where, with respect to the previous version of the section it was ruled that:

Section 22 is intended, primarily, if not exclusively, to purify the trademark register of all marks that are not in use and without bona fide intent to use. This is a national issue, so that registers are not weighed down with theoretical marks. It was not incidental that the legislators required bona fide usage after registration.

The requester for cancellation first claimed that the owners had never used the mark in Israel. Following the request to transfer the mark to them by the current owners, there is no need to cancel the mark, but only to transfer ownership and to delete D.I.L. Trade (Maglan) Ltd from the register.

It will be noted that Section 41 of the ordinance allows for full or partial cancellation of a mark by narrowing the list of goods covered.  There is, however, no provision for cancelling some owners whilst leaving others as registered owners.

The request to cancel the mark focuses on a lack of usage by D.I.L. Trade (Maglan) Ltd, and the investigator did not attempt to determine whether or not Capital Food Company Ltd was using the mark. Mr Farber testified that the owners were not using the mark, but Capital Food Company ltd themselves claimed usage in recent years but did not substantiate this with any evidence. Furthermore, Capital Food Company ltd transferred their share in the mark to Vinex Preslav, leaving the fate of the mark with the Commissioner, and without making any demands themselves.

The net effect of this is that the request is really one of correcting the register by deleting D.I.L. Trade (Maglan) Ltd as an owner. Section 38(a) of the ordinance states:

38(a) Subject to the provisions of this Ordinance, any person aggrieved by the non-insertion or omission from the Register without sufficient cause, or by any entry wrongly remaining on the Register, or by any error or defect in any entry in the Register, may make application in the prescribed manner to the Supreme Court or may, at his option, make such application in the first instance to the Registrar. 

The requester for correcting  the register is an aggrieved person and is covered by Section 38a). It has previously been established that an “aggrieved person” is no different from the “interested party” referred to in section 41 of the Ordinance (- see Seligsohn “Trademarks and Related Laws” 1973, page 105. The Supreme Court related to this in Civil Appeal 941/05 Wine Maker’s Cooperative of Rishon l’Zion and Zichron Yaacov  vs. The Kerem Company Ltd. p/d/ 61(3) where it is stated:

The phrase “he that is disadvantaged” is explained liberally in the case-law to include someone who suffers some disadvantage in some manner vis-a-vis some third-party who enjoys a trademark registration that they are not entitled to. This explanation is based on the English phrase “Aggrieved Person” as understood in the English Law that the  Ordinance brings into Israel Law.

 The requester for cancellation fulfils this precondition since, according to his statement, he’s used the mark in his home country for decades, has usage abroad and is interested in using the mark in Israel.

The Commissioner’s has wide authority in this regard, a previous commissioner ruled regarding Israel Trademark No. 66312 “NIPRO” in Abbott laboratories vs. Nissho Corporation 13 July 1999:

Since Section 38 deals with various changes to the register, from cancellation due to lack of distinctiveness and including transfer of rights in a mark from one entity to another, the considerations behind allowing amendments depends on the underlying justification and on the scope of amendment requested. There are cases where a Section 38 amendment will be allowed and others where it will not.

This is demonstrated by the fact that the legislators limited the period under which a mark may be cancelled due to non-registerability, but did not limit the period during which the register could be amended (see section 39(a1) of the Ordinance, and also the words of explanation (published on 27 July 1999 Page 525 in the protocols of the Law for amending Intellectual Property legislation in light of the TRIPS agreement 1999, Book of Laws 1721 from 30 December 1999, Page 48, which resulted in this section being added to the Ordinance.

Nevertheless, when considering a request to amend the register, it is necessary to consider the rights of third parties that could be disadvantaged by the amendment. Such third parties are not merely the parties themselves, but include competitors who if the amendment is not allowed, could file for cancellation of the mark due to lack of use.

Furthermore, the requester of the cancellation wishes to be registered as the user themselves, after testifying that the mark is not actually in use. The correct procedure is to have the non-sued mark cancelled and then to file a new application. The new application is then open to third-party challenges by way of opposition and allows other parties, their say.

Additionally, if the mark is indeed dormant for so long, this increases the likelihood that other parties may be using the mark and assigning the mark in this manner could leave such other parties exposed to infringement actions.

Thus even if the end result is that the requester of the cancellation be registered as the mark owner, this result should be achieved with consideration for the rights of others, and not by devious means.

In light of the above, Deputy Commissioner Ms Jaqueline Bracha rules as follows:

  1. The request to amend the register such that D.Y.L. Trade (Maglan) Ltd is replaced by Vinex Preslav as the owner is not acceptable
  2. If Vinex Preslav wishes to continue with the cancellation request, they have 30 days to show lack of use of both owners. Since Capital Food Company Ltd. have stated that they will not be submitting evidence themselves, the decision will issue based on the submission by Vinex Preslav only
  3. Vinex Preslav may abandon the cancellation request within 30 days; the mark will remain owned by two parties and Vinex Preslav may substitute themselves for Capital Food Company Ltd as the part owner as per the transfer of ownership record that was submitted.

Cancellation or Change of Ownership of Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized) Ms Jaqueline Bracha, 22 August 2016