A request by Zol Lamehadrin, an Israeli food chain to cancel the registered of a mark owned by its competitor, Shupersal, was filed with the Commissioner of Patents.
Within the proceedings, the owner of the mark requested to revoke the mark. The Commissioner held that revocation of a mark is the owner's right, but when requested within proceedings, it amounts to a request to put a hold to proceedings, and would therefore need the Commissioner's approval. Such request must be considered against the rival's interest, in a way which will not deprived the rival from the right to get a final decision in its favor which will conclude the proceedings.
It was further held that proceedings would be ended since the party filing for cancellation of a mark did not request its continuation. Accordingly, the mark was revoked as requested by the owner, and the request for cancellation was deleted. The Commissioner ruled that the owner of the canceled mark has been prolonging the proceedings and by that lead to high costs spent by the party filed for the cancellation of the mark. Hence, the owner was obliged to pay actual compensation amount to 45,000 NIS.
Zol Lamahadrin Ltd vs. Shupersal Ltd.
Yaara Shoshani
Appelfeld Zer Fisher
Showing posts with label trademark. Show all posts
Showing posts with label trademark. Show all posts
Thursday, December 6, 2007
Saturday, August 11, 2007
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.
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.
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
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
Tuesday, August 7, 2007
Trademarks:Israeli Commissioner erases "Love Parade" trademark application
The Israeli Trademark office rules to allow an Israeli company ("Musica Plus") to continue with registration of the trademark "Love Parade", and erased applications of Love Parade Berlin GmbH, a German company holding "love parades" all over the world.
The trademark office ruled that in a proceeding according to section 29 of the Israeli Trademark Act (Competing Applications), the following considerations will be applied:
A. Good faith of the parties in choosing the trademark.
B. The extent of use in Israel up to the request for registration.
C.The dates of filing the trademark applications. The trademark office further ruled that in such a proceeding, the question is whom should the trademark office prefer as user of the trademark, and it is a factual question. Representatives from LPB did not attend the hearing and therefore, their affidavits were deleted, and they had no evidence to support any of their claims.
A trademark owner of a famous trademark should conclude from this ruling that it would be wise to apply to an Israeli trademark as soon as possible, as the protection of the famous trademark may not suffice.
Zeev Fisher, Adv.
25/6/2007
The trademark office ruled that in a proceeding according to section 29 of the Israeli Trademark Act (Competing Applications), the following considerations will be applied:
A. Good faith of the parties in choosing the trademark.
B. The extent of use in Israel up to the request for registration.
C.The dates of filing the trademark applications. The trademark office further ruled that in such a proceeding, the question is whom should the trademark office prefer as user of the trademark, and it is a factual question. Representatives from LPB did not attend the hearing and therefore, their affidavits were deleted, and they had no evidence to support any of their claims.
A trademark owner of a famous trademark should conclude from this ruling that it would be wise to apply to an Israeli trademark as soon as possible, as the protection of the famous trademark may not suffice.
Zeev Fisher, Adv.
25/6/2007
Trademarks: The term "Nacterina" does not infringe the registered trademark "Tapuzina"
In a decision responding to an application for interim remedies, the honorable Judge Dani Zarfati of the district court in Nazareth ruled that the mark "Nacterina" does not infringe the registered trademark "Tapuzina" and that no elements of "Passing Off", or any other misappropriation were established.
The plaintiff argued that the defendant has been duplicating the features of the products marked "Tapuzina", including their brands, outward appearances, shapes and labels. The plaintiff has founded his arguments, inter alia, on proposals for the design of the products, ordered and received by the defendant (as the allegedly infringing products have yet to be commercialized).
The defendants argued that those proposals were ruled out and left unused.The honorable judge has ruled that it is unlikely that the plaintiff will be successful in showing that consumers may have been mislead despite the phonetic similarity between the two names. In addition, he asserted that there is dissimilarity in the use of fonts and labels of the two brands. Moreover, the judge ruled that since there are other brands worldwide, with the same suffix (e.g. "Orangina"), the consumer is deemed to be aware as to the existing differences between those brands.
In view of the above mentioned, it was held that the likelihood of the plaintiff to actually win the main lawsuit is small, and refused to grant the applied for court orders. We believe this decision is incorrect. Within the Israeli market, the trademark "Tauzina" is an extremely strong one, in which massive budget was invested for advertisement. When establishing a case for trademark infringement, and even according to common sense standards, the similarity between the products´ appearance is less significant than the actual and phonetic similarity between them.In addition, the existence of other brands with the same suffix has no substantial effect on the Israeli consumer, that his awareness as to the existence of those brands - which were never sold in Israel - is doubtful.
We predict the occurrence of a different scenario, namely that the reasonable consumer would perceive the existence of the new drink "Nacterina", as a new drink launched by the manufacture of "Tapuzina". Therefore. It is likely that the consumer would mistakenly assume that the origin of both drinks is one and the same, and by that would be mislead. Furthermore, it seems that the court has completely ignored the risk of dilution of the strong trademark "Tapuzina". It is probable that the frequent consumer of the drink "Tapuzina" would not be pleased of the new taste of the new product Nacterina, and consequently will form a negative view on the brand "Tapuzina" as a whole.
The real question which were never raised is why has the defendant elected a name which is so phonetically similar and which is aimed at the same market segment? Why could not it choose a name such as "Nacteron" or "Nacterit" or a less generic brand?
If it did not do so for the purpose of enjoying the plaintiff´s goodwill, why else?
Zeev Fisher, Adv. 15/7/2007
The plaintiff argued that the defendant has been duplicating the features of the products marked "Tapuzina", including their brands, outward appearances, shapes and labels. The plaintiff has founded his arguments, inter alia, on proposals for the design of the products, ordered and received by the defendant (as the allegedly infringing products have yet to be commercialized).
The defendants argued that those proposals were ruled out and left unused.The honorable judge has ruled that it is unlikely that the plaintiff will be successful in showing that consumers may have been mislead despite the phonetic similarity between the two names. In addition, he asserted that there is dissimilarity in the use of fonts and labels of the two brands. Moreover, the judge ruled that since there are other brands worldwide, with the same suffix (e.g. "Orangina"), the consumer is deemed to be aware as to the existing differences between those brands.
In view of the above mentioned, it was held that the likelihood of the plaintiff to actually win the main lawsuit is small, and refused to grant the applied for court orders. We believe this decision is incorrect. Within the Israeli market, the trademark "Tauzina" is an extremely strong one, in which massive budget was invested for advertisement. When establishing a case for trademark infringement, and even according to common sense standards, the similarity between the products´ appearance is less significant than the actual and phonetic similarity between them.In addition, the existence of other brands with the same suffix has no substantial effect on the Israeli consumer, that his awareness as to the existence of those brands - which were never sold in Israel - is doubtful.
We predict the occurrence of a different scenario, namely that the reasonable consumer would perceive the existence of the new drink "Nacterina", as a new drink launched by the manufacture of "Tapuzina". Therefore. It is likely that the consumer would mistakenly assume that the origin of both drinks is one and the same, and by that would be mislead. Furthermore, it seems that the court has completely ignored the risk of dilution of the strong trademark "Tapuzina". It is probable that the frequent consumer of the drink "Tapuzina" would not be pleased of the new taste of the new product Nacterina, and consequently will form a negative view on the brand "Tapuzina" as a whole.
The real question which were never raised is why has the defendant elected a name which is so phonetically similar and which is aimed at the same market segment? Why could not it choose a name such as "Nacteron" or "Nacterit" or a less generic brand?
If it did not do so for the purpose of enjoying the plaintiff´s goodwill, why else?
Zeev Fisher, Adv. 15/7/2007
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