Who Has Preferred Rights to the Mark ACTIVE in Class 34 ? Japan Tobacco Inc or Phillip Morris?

The Israeli Trademark Registrar Mr. Asa Kling has ruled in an Interference Procedure according to Section 29 of the Trademark Ordinance, that the Applications for the marks ACTIVATE FRESHNESS and ACTIVE in class 34 for Cigarettes filed by Japan Tobacco Inc have preferred rights over the application for the mark L&M ACTIVATE 2 “IN 1 ACTIVATE FRESH FLAVOUR” of Phillip Morris Products SA.
Section 29 of the Trademarks Ordinance is designed to deal with cases of conflicting trademark applications. When two separate applications are made by different applicants for marks that are identical or similar such as to cause confusion, for the same goods or goods of the same kind, the Trademarks Registrar may issue an Interference Procedure according to Section 29.

When deciding which application to accept, the Trademarks Registrar will take into account the following considerations:
A. Good faith in filing the applications
B. The extent of use of the respective marks and
C. The date of filing the respective applications

Courts have ruled that the most important factors are the extent of use and the good faith of the applicants.
In this case the Registrar has ruled that Japan Tobacco Inc has managed to prove by persuasive evidence a wide use of the mark in Israel and over the world, while Phillip Morris has failed to prove any use of the mark in Israel or anywhere else. Therefore, it was decided that the trademark application of Phillip Morris will be rejected.
Japan Tobacco Inc v. Philip Morris Products S.A – Interference Procedure regarding applications Nos. 238943,236442,235858. September 30, 2013.