What Could be the Consequences of Not Registering a Trademark in Israel?
Is it Possible for a Worldwide Fashion Label to Successfully Oppose a Similar Mark Without Holding a Trademark Registration? What Could be the Consequences of Not Registering a Trademark in Israel?
This is the case of a trademark opposition recently filed in Israel.
Facts of the Case:
Tasci S.r.l is the owner of the Montura brand, a fashion brand sold around the world under the mark shown below. Tasci S.r.l’s brand entered the Israeli market in 2017, but they did not file for a trademark. Tasci S.r.l does not operate a specific store in Israel.
José Guillermo Treger is the owner of a Panama fashion brand under the name MONTURA, designed as a logo shown below. José Guillermo filed a trademark application in Israel for the mark MONTURA in 2019 .
Tasci S.r.l opposed José Guillermo’s trademark application relying on its claim for reputation and sales in Israel.
José Guillermo has claimed that his mark is sufficiently different visually since both marks are using different styles. José Guillermo also claimed that his brand is intended for day-to-day fashion products, most of them under the age of 25, while the opposer’s mark is being used (out of Israel) mainly on sport and hiking clothes, which is a different category, therefore there should be no confusion.
The Trademark Commissioner’s Decision
The Trademark Commissioner has found that the marks are confusingly similar both visually and phonetically since the dominant feature of both marks is the word MONTURA.
Nevertheless, the Trademark Commissioner has ruled that the opposer was not able to prove his reputation in Israel, his evidence was vague and did not relate to substational sales in Israel but only to general global sales, although several invoices (450 pages) were filed as evidence.
Not Enough Evidence Filed
In addition, the Trademark Commissioner has ruled that the opposer was not able to prove that his mark considered a well-known mark since not enough evidence has been filed to support it.
Eventually, the opposition was entirely rejected, and the applicant’s mark was approved.
This outcome might be catastrophic for the opposer, who seems to have a considerable amount of global use around the world, but he couldn’t enforce his rights in Israel.
It should be noted that the opposer has filed a trademark application for his mark, but since the Trademark Commissioner has already ruled that both marks are confusingly similar, the applicant could file an opposition against the opposer’s new application.
What can Tasci S.r.l claim in their defence ? That there could be no confusion? They have already claimed that both marks are confusingly similar in the opposition previously filed by them!
This is why filing for a registered trademark in Israel is a must to ensure the protection of a brand. Relying on a global reputation to win a trademark opposition is extremely risky and sometimes ends not as expected.
If you are selling goods around the world, you must consider filing a trademark application in Israel. Don’t take any chances.
Disclaimer: The information contained in this article is for general informational purposes only and should not be considered legal advice or a substitute for consulting with a licensed attorney.
