Israel - trademarks - Important rulings were given by the trademark office, concerning a petition to erase a trademark due to lack of use

In a decision about the trademark "MIG" (a petition to cancel the registered trademark no. 138834) the registrar considered a petition to dismiss a trademark due to lack of use.The owner of the trademark and the petitioner both work in the Russian journalism field in Israel and publish magazines in the Russian language for the Russian public in Israel.The newspaper of the petitioner is published under the name "MIG" which is similar in its design to the registered trademark of the owner.The petitioner requested to cancel the trademark since the owner of the trademark had not been using it for 3 years except for a single use, which was allegedly performed in bad faith.The petitioner claimed that the main use of the registered trademark relates to its graphical design, publishing workbooks and advertising brochures. These uses, so was claimed, were unrelated to journalism since 1999. It was argued that the brochure was published in bad faith and not as real business activity. The trademark was registered as a "defensive trademark". The petitioner claimed that on his part, he had been publishing a weekly magazine and a website since 2003. The choice the name "MIG" is purely coincidental since it is the initials of the company's name and has a meaning in Russian.The trademark owner argued that, he did not use the trademark since the Israeli market is too small for two newspapers using the same name. He claimed that large amount of money had to be attributed in litigation against the petitioner. The aggressive competition that the petitioner created prevented him from continuing to publish the newspaper. Finally, he asserted that the petitioner acted in a bad faith.

The decision:As to the use of the trademark:The trademark owner failed to convince the registrar that the publishing the brochure in 2003 is enough to be considered as "use" according to clause no. 41 of the Trademark Ordinance. The website is non-relevant, as it is not considered "use" in the same class.The fact that the newspaper was published only once can not be considered as a "normal use" in a "normal business". In addition the timing was odd and the explanation was not satisfying. Therefore, the registrar ruled that the trademark owner did not use the trademark according to the relevant goods it was registered for, during the last 3 years before the petition to erase was filed.Special circumstance in trade: The Trademark Act requires the prove of "special circumstance in trade" for non-use. The trademark's owner claimed that even if the registrar rules that there was no a use of the trademark within the last 3 years before the petition to cancel was filed, there were special circumstance in trade that prevented the use of the mark. He explained that in fact, the acts of the petitioner had created a "block market and wild competition".The registrar held that the reason for lack of use is mainly due to lack of finance and profitability potential in publishing a newspaper. It was held that the aggressive competition indicated by the trademark owner can not be considered a special circumstance in trade. Competition exists in almost every field. A competition in a market where the trademark's owner works, hard as it may be, can not be considered as special circumstance that justified lack of use. Actually, the competition was supposed to encourage the trademark's owner to use their trademark even more in order to maintain their status in the market.The registrar ruled that special circumstances in trade which justify the lack of use did not exist. Therefore, the petition to erase the trademark was accepted.Migdor Ltd. v. Boris Gail and Oleg Kaldovasky- A petition to dismiss a registered trademark no. 138834.

Israel - trademarks - Supreme Court Faces Novel Trademark Issues

In a recent decision, the Israeli supreme court faced some novel issues converning the trademark practice.

The supreme court faced an appeal by Pascol advanced technologies inc., on the trademark adjudicator´s decision to allow the trademark Gatewave for registeration, despite appealant registered trademark "Gateway 2000".

As a part of the decision, the supreme court faced the following novel and important issues:

A. Should new trademarks registered by the trademark owner (appealant) during the opposition proceeding be granted any weight in the decision?

The court ruled that even new trademarks cannot be ignored if they were registered in good faith.

B. The extent of the protection of a generic/descriptive trademark after registeration

The supreme court ruled that even after registeration, a descriptive or generic mark will be granted less protection, and even a mark with minor changes may lead to the conclusion that there is no infringment.

C. When checking whether there is a risk for misleading consumers, Should the court rely only on the registered description of goods and services, or should the actual use of the trademark be taken into account.

The court ruled that while the starting point is the trademark registry, the actual use of the trademark should not be ignored, and the registeration should be considered as giving some "space" to the trademark owner to extend his use.

Zeev Fisher, Adv. 23/6/2007

Trademarks: Israeli trademark office rules that "Once Weekly" is a descriptive term and isn´t eligble to be registered as a trademark

In a recent decision, the Israeli Trademark Office ruled that the term "Once Weekly" cannot be registered as a trademark which relates to a drug, as it is descriptive.

The proceeding was an appeal on the trademark examiner´s decision that "Once Weekly" is a descriptive term, and therefore, did not allow it to be registered as a trademark.

The applicant claimed that the term is implying, at most, and not descriptive, as it concerns the dosage of the drug and not the drug itself. The applicant further claimed that the drug has aquired distinguishing value among its customers.

The adjudicator ruled that:

"I find the examiner´s rulling correct and lawful. The terms ´Once Weekly´ in English or in Hebrew are with such a broad extent of descriptive value, that even if distinguishing value is proved, they are not eligible to be registered as trademarks, since it would not be appropriate to deprive the general public or other practitioners the right to use these terms".

The adjudicator also ruled that nevertheless distinguishing value was not proved.

Zeev Fisher, Adv. 21/6/2007