Who Filed the Most Trademark Applications in Israel?

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2016 has shown a considerable decrease in trademark filing in Israel according to the 2016 Patent and Trademark Office Report.  

There is a reduction of 8.7% in the number of National trademark application filed by local attorneys in Israel. There is also a reduction of the number of international applications) Madrid Protocol) filed in Israel (6.13%).

Apple Inc. has filed the most trademark applications in Israel (54).

Abercrombie & Fitch has filed the most international trademark applications in 2016 (46 applications, with no national applications at all).

A total of 1,365 national trademark applications have been filed in Israel and a total of 708 international trademark applications have been filed by foreign applicants.

 

Legal 500 Recommendation as a Leading Intellectual Property Firm for 2017

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Legal 500 2017 Recommendation: 

Yossi Sivan & Co. Law Offices has been recommended by the LEGAL 500 2017 edition as an Israeli leading firm in the Intellectual Property Disputes category:

“Yossi Sivan & Co. has ‘extraordinary knowledge and expertise in trade mark and copyright litigation’. The ‘practical and personable’ Yossi Sivan has extensive experience of IP cases involving international clients…” 

The Diamond of the Crown – No likelihood of Confusion between IGL and CGL

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Israel’s diamond industry is estimated at around 4 billion dollars a year. Israel considered as one of the strongest players in the international diamond market. Naturally, there is fierce competition in the industry, a competition that sometimes reaches the court’s doorstep.

Recently the Israeli District Central Court has ruled a very important decision in trademark matters concerning the diamond industry.

IGL, a gemological laboratory that provides assessment, analysis and grading services of diamonds jewelry and gemstones under mark IGL, has sued another gemological laboratory for the use of the mark CGL.

IGL has claimed that the mark CGL is an infringement of the IGL registered trademark.

In addition to a monetary compensation of NIS200,000 and a permeant injunction,  IGL has also filed a motion for a temporary injunction to prevent the use of the mark CGL until the final decision by Court.

IGL’s claims

IGL has claimed that the use the mark CGL and the designed logo constitutes trademark infringement, passing off and unlawful exploitation of its reputation.

IGL also claimed that the use of the similar logos and colors (black and gold) causes confusion in the market.

Below are the design marks of IGL and CGL:

CGL’s claims

CGL, represented by Yossi Sivan & Co. Law Offices has claimed that the motion is groundless, and that its sole purpose was to temper the successful activities of CGL.

CGL has claimed and demonstrated that the use of the words I, G and L are a common practice in the gemological diamond industry and that the acronyms IGL are not identified exclusively with IGL.

CGL has also claimed that the use of a round designed seal next to three acronyms letters are a common practice in the gemological industry, therefore cannot be identified by the consumers as related specifically to IGL.

CGL further argued that there is no likelihood of confusion between the marks based on the triple test: The visual test, the phonetic test and type of goods and consumers test.

CGL further argued that they provide professional diamond and gemstone evaluation services primarily to diamond dealers and merchants and that this is a sophisticated audience that is well acquainted with the companies involved in the field and can distinguish very well between the services provided by the IGL and the services of CGL ie, professional evaluations of diamonds, which are also accompanied by different visual appearance.

CGL has also claimed that diamonds are considered to be the most expensive products and require careful examination, which eliminates any likelihood of confusion in the market.

In addition, CGL argued that it’s manager has a considerable reputation of almost 40 years in the diamond market therefore, there is no reasonable possibility that a diamond merchant will arrive to CGL’s laboratory and will erroneously believe that it is related to IGL, who are unknown in the field.

The Court’s Decision

Following the submission of pleadings, conducting cross-examination of the party’s witnesses and oral summaries, the Central District Court of Lod has decided as follows:

The Court has found that, despite the alleged similarity of the round shape that symbolize a seal, there are substantial differences in the decorations of the logo, which add additional differences in the letters and wording of the marks.

The Court stipulated that these differences exclude a reasonable possibility of visual likelihood of confusion between the marks.

Applying the type of goods and consumers test, the District Court has accepted the CGL’s position that gem and diamond assessment services are services based on professional criteria, which include careful examination of a laboratory, preparation of a report, evaluation and finally the issuance of an appropriate certificate.

The Court was impressed that providing such services will usually be accompanied by the purchase of precious stones in a considerable amount of money and that it’s not a “shelf product,” but rather a unique product, that is directed to a sophisticated customer, which reduces the likelihood of confusion.

The District Court was also impressed that the CGL’s owners are veteran and well-known in the diamond industry, and that these circumstances do not support the claims of IGL that CGL “rides” on the reputation of IGL, considering the relatively short period in which IGL operates in the diamond market.

The District Court also relies on many trademarks submitted by CGL’s attorneys, whose mark consists of a circular seal structure, three capital letters in English and an accompanying inscription to the side or below the combination of the letters and the logo.

Naturally, as befits gemstone products, the combination of colors with the same symbols and letters is done in gold, black and blue, colors that symbolize prestige.

The District Court also accepted CGL’s position that the initials in the IGL sign represent the words “international gemological and laboratory” and that these are generic names which, for the most part, enjoy less protection than arbitrary names.

Under these circumstances, the District Court held that the IGL’s registered mark has a weak inherent distinctive character, and that IGL did not present any significant evidence indicating that the registered mark had required a distinctive character, meaning that the consumers are linking it to the services provided by IGL.

In conclusion, the District Court held that the triple test did not support the claim of a likelihood of confusion.

The Court also rejected the passing off claim and ruled that there is no likelihood of confusion between the services and that CGL did not prove their reputation.

Applying the balance of convenience test, the District Court has ruled that it was not convinced that the use of the CGL mark would cause irreversible damage or serious damage to IGL.

In conclusion, the District Court rejected the motion for a temporary injunction and ordered IGL to pay legal costs of NIS 9,500 to CGL.

Disclaimer: Nothing in the foregoing shall constitute any legal advice or any opinion whatsoever. This is an informative article only and it is well recommended to consult with a specialized attorney.

CGL was represented by Yossi Sivan & Co. Law Offices


The Legal 500 - The Clients Guide to Law Firms

Foreign Brand Owner was allowed to manage TM Opposition without Posting a Guarantee

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Generally, the Israeli case law requires foreign companies to post guarantee before managing a litigation, including Trademark Oppositions.

A very important decision of the Israeli IP Commissioner enabled a Nederland company to manage a Trademark Opposition against a local applicant without posting a guarantee, based on its wide reputation, evidence of extensive commercial activities in Israel and the valuable registrations.

Lifestyle Equities CV a Nederland company has filed an Opposition to a trademark application filed by David Ivgi as shown below:

Lifestyle Equities CV has claimed that the requested mark is confusingly similar to their well-known and registered mark “Beverly Hills Polo Club” as shown in the below logo:

Lifestyle Equities CV has claimed that the requested mark features a polo rider on a running horse and a circle element confusingly similar to Lifestyle Equities CV’s mark.

Ivgi requested that Lifestyle Equities CV post a bank guarantee to cover the expected costs should the Opposition be denied, according to the applicable law concerning corporations.

Ivgi’s Claims:

Ivgi has claimed that Lifestyle Equities CV is a Dutch  entity and therefore it would be very difficult to collect the expenses from them, should the opposition be rejected.

Ivgi also claimed that the chances of Lifestyle Equities CV prevailing were extremely small given the visual differences between the marks, therefore a guarantee must be posted.

In addition, Ivgi claimed that Lifestyle Equities CV didn’t prove actual assets in Israel since it has failed to file an affidavit to support its claims.

Ivgi also claimed that the burden of proof lies on Lifestyle Equities CV to prove that it has enough financial capabilities.

Lifestyle Equities CV’s claims:

Lifestyle Equities CV has claimed that Ivgy’s motion must be rejected and that Ivgi is acting in bad faith trying to register this mark.

Regarding the guarantee, Lifestyle Equities CV has claimed that the Trademark Registrar has a wide discretion not to order a guarantee to cover the expenses and that actually Ivgi did not prove that Lifestyle Equities CV would have difficulty in covering the expenses if their opposition was denied.

Lifestyle Equities CV has also claimed there is no need for posting a guarantee in light of their financial capabilities and the fact the Lifestyle Equities CV was a foreign entity was not by itself a ground for requesting a guarantee.

Lifestyle Equities CV has further claimed that since it owned the well-known Beverly Hills Polo Club fashion brand, who has a very high financial value there is no risk of not covering the expenses.

Lifestyle Equities CV further claimed to have valuable assets in Israel based on the high royalties collected from its licensees in various categories.

In addition to that, Lifestyle Equities CV has claimed that it has shown a good chance of winning the opposition case.

Lifestyle Equities CV further argued that the requirement of posting a guarantee was undermining their basic (constitutional) ownership property rights to access the judicial system in Israel, relative to local companies.

Lifestyle Equities CV further claimed that Lifestyle Equities CV is a Dutch company and the Nederland is a signatory of The Hague Treaty of 1954.

The Hague Treaty of 1954 prevents discrimination against foreign companies in relation to local companies, therefor the fact that Lifestyle Equities CV is a Dutch company cannot by itself justifies posting a guarantee.

The Decision

The IP Commissioner, Mrs. Yaara Shoshana Caspi, has accepted Lifestyle Equities CV’s claims that it should not be discriminate just based on the fact the it’s a Dutch company.

Lifestyle Equities CV has managed to show a considerable financial capability, even without submitting clear evidence such as financial reports.

Lifestyle Equities CV has proved (based on its evidence) a wide commercial activity in Israel, that it has valuable brand and that its brand is well known around the world.

The Commissioner further ruled that Lifestyle Equities CV’s trademark registrations in Israel are valuable enough and considered to be a tradable asset.

In addition, the Commissioner has ruled that there is a certain similarity between Lifestyle Equities CV’s mark and the requested mark and that Lifestyle Equities CV’s claim that this could confuse customers is not baseless.

The IP Commissioner has decided that there wasn’t reasonable chance that Lifestyle Equities CV could not cover the expenses and she actually suspects the sincerity of his claims.

Finally, Ivgi’s motion was denied and costs of 1500 Shekels were awarded to Lifestyle Equities CV.

Lifestyle Equities CV was represented by Yossi Sivan & Co. law Offices

Does Parallel Import of Baby Strollers without Serial Numbers Constitute an Infringement of Intellectual Property rights?

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Many international brands are being imported to Israel not only by the official importers, but also by Parallel importers.

As far as the consumer is concerned, as long as these products are authentic and not counterfeit, this parallel import is an acceptable and legitimate phenomenon, since it improves competition and results in lowered prices.

It is well known that brand owners are repeatedly trying to protect the interests of their local official importers by locating the source of the overseas parallel import to Israel for the purpose of stopping the parallel import and controlling the level of prices.

Locating the details of the supplier is possible through reading the bar codes and the serial numbers labels that appear on the imported products.

Does the manufacturer have any legitimate interest to prevent the removing of those serial numbers? This question has recently come up in a very interesting case ruled by the Central District Court in Israel.

Background:

STOKKE is a Norwegian Company and manufacturer of baby strollers that are distributed to many countries around the world.

Baby Love is an Israeli Company that imports STOKKE Strollers among other baby products, by parallel import.

STOKKE has filed a motion for a temporary injunction against Baby Love for importing and selling STOKKE baby strollers by parallel import without labels bearing the serial numbers of the manufacturer.

Stokke’s claims:
STOKKE argued that the original serial numbers have been removed by Baby Love and that the new labels that appear on the Baby Love strollers consist faked serial numbers.

STOKKE claimed that the sale of these parallel imported strollers is actually causing the nullification of any warranty granted by the manufacturer and preventing STOKKE from the  ability to trace the strollers for the purpose of consumer service and warranty.

STOKKE has also claimed that the Baby Love strollers are damaging its goodwill and its contractual relationships with the official importer in Israel, a company named Shem Tov.

In addition, STOKKE has claimed that these actions of Baby Love are harming its ability to perform a recall to handle any problems in the strollers.

Concerning the warranty issues, STOKKE has claimed that Baby Love’s actions are causing the consumers to think that they have purchased a STOKKE stroller with full warranty while in fact those
strollers have no official warranty by STOKKE.

STOKKE has also claimed that the removal of the serial numbers and the relabeling with faked serial numbers endangers the consumers, plain and simple.

Baby Love’s Claims:
Baby Love represented by Yossi Sivan & Co. has argued that the real purpose of the motion for injunction was to unlawfully block the commercial activity of Baby Love as a parallel importer in order to prevent competition in the market and to exaggerate the prices of the strollers with no interference.

Baby Love has argued that it doesn’t remove the labels, but purchases the strollers AS IS from the supplier outside Israel, that the parallel imported strollers are identical to the strollers imported by the official importer of STOKKE and that they are sold at lower prices compared to the strollers imported by Shem Tov.

Baby Love has also argued that the removal of the serial numbers is a consequence of the fact that STOKKE is trying to trace the origin of the strollers in order to prevent the parallel import to Israel, forcing the supplier to remove the labels.

Baby Love has also claimed that STOKKE is trying to trace the origin of the strollers in order to prevent the parallel import, to control the prices of the strollers and to dictate exaggerated prices, extremely harming the competition.

In addition, Baby Love has argued that the manufacturer has no legitimate right to control the distribution of the strollers and in fact, STOKKE has exhausted its rights after it sold the strollers to some supplier around the world according to the rules of exhaustion of intellectual property rights.

Baby Love has claimed that the interest lying in the parallel import by preventing STOKKE from tracing the details of the supplier overrides the interest of STOKKE to control the market and to exaggerate prices by blocking the market.

In addition, Baby Love has claimed that the strollers are not required to any recall according to the regulations of the Standards Institution of Israel and that the strollers are not products that require a safety standards such as safety chairs for cars.

Baby Love has also clarified that there is no misleading of the consumer since the name of the parallel importer appears all over the purchasing documentation and that the consumer knows that it is a product of parallel import.

Court’s Decision:
The Central District Court has denied the motion for the temporary injunction and ruled that allegedly there is no misleading of the consumer and that the consumer is aware that he is purchasing a parallel imported stroller and that the warranty is given by the parallel importer not by the official importer.

The court also ruled that Baby Love doesn’t remove the original labels and doesn’t fake the original labels but sticks on different labels that include its own serial numbers according to the regulations of the Standards Institute of Israel.

The court has also mentioned the active involvement of the official importer of STOKKE which implies that most of the claimed damage arising from the parallel import activity is the commercial damage of the official importer, not STOKKE.

The court also has clarified that parallel import is a positive phenomenon in its essence in light of the Supreme Court’s decision in case No. 7629/12 TOMMY HILFIGER V. Swisa and that the recognition of the legitimacy of parallel import is based on the doctrine of the exhaustion of intellectual property rights which is well based and obvious.

The District Court has also mentioned the proposed bill of the Restrictive Trade Practices Law (Antitrust Law) (removal of import barriers 2015) applying limitations that would prevent official importers from the exploitation of their status and abuse of their rights by opposing parallel importers.

The court also rejected the comparison between the number on a motor vehicle chassis to the serial number sticker on a stroller and determined that this comparison indicates the weakness in STOKKEs arguments.

The court has also rejected the claim that the removal of the labels (bar codes) “endangers the public” and ruled that this claim is very farfetched and lacks evidential basis.

Ultimately the Court dismissed the Motion of Temporary Injunction and ordered STOKKE to pay Baby Love expenses worth 15,000NIS and to deposit a guaranty of 75,000NIS within 20 days otherwise the lawsuit will be dismissed.

Although this decision is a temporary decision, it still constitutes a great victory for free competition and the legitimacy of parallel import in Israel.

Baby Love was represented by Yossi Sivan & Co. Law Offices

Disclaimer
Nothing in the above shall be considered as any legal advice or any legal opinion whatsoever. This is just an informative article. We strongly recommend consulting with a professional attorney in such matters.

Trademark Registration Procedure in Israel

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Registration of a trademark in Israel provides the owner a right of exclusive use of the registered mark for the registered goods or services. A trademark is registered by the Patent Authority at the Trademarks Registry.

A trademark application is made by filling out an application form and paying the registration fee. The application form specifies the name of the owner, the requested mark and the goods or services for which the mark is intended. A separate application must be made for each NICE Classification goods or services class.

Once an application is made, it will be examined by a Trademark Office’s examiner. The examiner will decide whether the mark is eligible for registration based on the Trademarks law and regulations. The examiner may issue an Office Action if he objects to the registration of the mark on any of the grounds set forth in the Trademarks Ordinance. The examiner may also condition the registration of the mark on a waiver by the applicant. The examination process takes approximately one year, assuming there are no Office Actions or Objections.

After an application is accepted for registration it is published on the official Trademarks Journal and it is open for opposition for three months. If no oppositions are filed the application will be registered and will be valid for 10 years from the date of the application. The registration may be perpetual subject to the renewal of the registration.

Section 29 of Trademarks Ordinance, Interference Procedure

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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.

There are two ways to resolve cases of conflicting applications; the first is by an agreement between the two applicants. Once the Trademarks Registrar issues an Interference Procedure the conflicting applicants have three months to reach an agreement. Such an agreement must receive approval by the Trademarks Registrar. Alternatively, if no agreement is reached, the Trademarks Registrar will decide which application prevails or whether the two applications can co-exist.

When deciding which application to accept, the Trademarks Registrar will take into account considerations of good faith in filing the applications, the extent of use of the respective marks and, the date of filing the respective applications (in order of importance).

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Trademark Opposition Proceedings

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Once a trademark application is accepted for registration by the Trademarks Registrar, it is published in the official Trademarks Journal. Following such publication, any person may, within 90 days of the publication, file an opposition to the application.

The most common grounds for opposition is that an identical or confusingly similar mark is already registered. However, it is possible to base an opposition on any grounds that may render the application not eligible for registration, for example, that the mark is generic or descriptive and thus cannot be registered as a trademark.

Once an opposition is filed, an adversarial proceeding is carried out before the Trademarks Registrar. The Trademark Registrar will decide, upon evidence by both parties, whether the application should be registered. The Registrar’s decision may be appealed to the District Court.

Israeli Patent and Trademark Office Report for the Year 2012

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The Israeli Trademark Office has published i’ts Patent and Trademark Office report for the year 2012. The 2012 report reveals couple of interesting findings regarding the trademark filing policy of foriegn applicants in Israel.

Details show an increase in the international filings of trademarks in Israel by applicants from foriegn countries compared to previous years. Most of the applicants prefered the international filing (Madrid System) using their own legal attorneys over the national filing.

According to the report 2802 international applications have been filed in 2012 compared to 1777 national applications. Also most of the trademark applications were filed by US applicants.

While most of the European applicants, such as Germany, UK, France, Sweden and Switzerland prefered the international filing, the US applicants prefered the national filing (1,171 applications).

Although most of the foriegn applicant prefered the international filing, the picture is different when it comes to the most major international brands.

The report demonstrate the continues preferance of the leading brand owners to use their local Israeli attorneys in filing trademark applications insted of using their inside legal departments.

Most of the major international brand owners, such as HP, A&F, L’Oreal and Nestle, who filed most of the trademark applications in Israel, have filed national trademark application using their Israeli local attorneys.

According to the Table provided by the TMO 331 national tardemark applications have been filed by 17 international brand owners, in compare to 211 international applications using the Madrid System.

There could be number of reasons for this preferance:

One of the reasons could be untraditional trademark filings, such as trademark applications for three dimensional products, which always required the legal representation of local attorneys to handle the office actions.

Other reasons could be the constant need for a professional advice at the filing stage, in order to avoid any future office actions which require investing more legal expenses.

Israel Patent Office Annual Report of 2012

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The Israeli Trademark Office has published i’ts english version of the Patent and Trademark Office report for the year 2012. Here some of the basic statistic facts:

Patents : 
Total patent application filed in Israel – 6,793
Total patent granted – 3,386
Leading foriegn applicants: Raytheone Company – 235 patent applications, F. Hoffman La Roche AG – 229 applications, and Novartis AG – 165applications.
Number of patent Oppositions filed – 24

Trademarks
Total Trademark applications – 8,733
Domestic Applications 4,507
Foriegn Applications – 4,226
Leaders in Trademark fiiling – Israel Broadcasting Authority – applications 112 , Novartis – 41 applications.
Trademark Oppositions – 85. 

Design Applications
Total Design applications – 1,546 
Total applications registered – 636.
Foriegn comapnies leading in filing Design applications – Lsi Industries Inc USA and Saverglass France, Victaulic Comapny Usa and Diesel spa Italy.