Trademarks: An appeal on a decision within competition procedure may prevent filing an opposition

The applicant, Tenuva Ltd, filed for the registration of a mark "Eshel", and was later successful in a competition procedure (Article 29 Of the Trademarks Ordinance of 1972). Yotveta Ltd., the rival company within the above mentioned procedure, appealed to the Supreme Court. Within a parallel procedure, the mark was allowed for registration by the Commissioner of Patents and Yotveta filed an opposition. The opposition procedure was put on hold until the Supreme Court concluded its decision, in which the appeal was rejected. Accordingly, Tenuva filed to dismiss Yotveta's opposition. The Commissioner stated that dismissal of a request all together should remain an exceptional remedy as it is always better to hear the parties and to clarify the issue. Nevertheless, this remedy should be available whenever there is a court ruling, since such ruling anchors in itself rights and interests which are not less strong than the right of a party to be heard. In this case the opposing party had exhausted its right to argue against the applicant within the competition procedure, and later within the appeal. Those arguments related not only with the question whose right to register the mark prevails, but also arguments which dealt with the marks qualifications to be registered. Therefore, the Commissioner decided to dismiss the opposition.

Tenuva vs. Yotveta

Yaara Shoshani
Appelfeld Zer Fisher