Application No. 178634 ("Cell for life") filed by Medifreeze Ltd and No. 178799 ("Cell for life is guarding what is most precious") filed by Creo-Life Ltd in relation to preserving umbilicus cells. An interferance procedure was applied by the Israel Patents Authority.
The Israel Commissioner of Patents, Trademarks and Designs, has recently ruled (9 August 2007) that examination procedure for application No. 178634 would remain and denied the registration of the trademark subject of application No. 178799. It was held there is no dispute as to the confusingly similiarity of the two marks. Hence, am interference procedure was correctly applied by the Authority. Within this procedure, one mark is accepted while the other is denied based on three tests. These tests and their application to this case is explained below:
1. Time of filing the application – Who filed first?
The Commissioner asserted that the two applications were surprisingly filed almost at the same time. Filing an application two days before the other would not -per ce- indicate that the right in the mark should belong to the first to file.
2. The extent of using the mark – Who was using the mark more extensively?
The Commissioner found that Medifreeze was constantly using the mark while Creo-life has failed to use the mark not only prior to filing but also subsequently. It is well established that non use of the mark after filing can be considered within interference. Creo-life was held to have no intention of using the mark at all and by this has ultimately proved lack of bad faith.
3. Selecting the marks – Were the parties acting in Good faith?
It was asserted that Medifreeze was able to demonstrate the exact process in which the mark was carefully selected. On the other hand, Creo-life was unsuccessful in explaining the reasons for the abandonment of a former application for the same goods, and subsequently selecting a mark closely similar to this of Medifreeze and filing an application for the registration of which. This clearly indicates that Creo-life was acting in bad faith.
As to the slogans of the two companies, it was decided that Medifreeze did not and could not duplicate Creo-life's slogan as it had no access to it. The argument that Medifreeze was acting in bad faith when selecting a similar slogan for its goods (questionnaire and collecting kit) was rejected, as lack of good faith is to be examined in relation to selecting of the specific mark by the parties and not in connection with conducting the business. Finally it was decided that Medifreeze could not have bad intentions when using an image similar to that used by Creo-life, as this image is typical to this area of commerce (preserving umbilicus cells) and therefore could not cannot be used exclusively by one trademark owner.
Yaara Shoshani (LLM), Appelfeld Zer Fisher