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.

Publication of a Design over the Internet May constitute Prior Art

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Volfman Industries Ltd. filed a motion for cancellation of a registered design in the name of Akerstein Industries Ltd. on the grounds of prior art according to section 36 of the Patents and Designs Ordinance. The application for registration of the design was made on July 25, 2004.

The Design Registrar accepted the motion and ruled that publication of the design on an internet website, which was open to the public in Israel, constituted Prior Art. The design was published on the Internet on April 15, 2004, therefore the Registrar ordered the cancellation of the design registration.

The Designs and Patents Registrar clarified, in the Registrar’s Directions No. 69 from December 24, 2008, that publication of a design on the Internet prior to an application for registration of such design is considered to be Prior Art and renders the design not eligible for registration. For that purpose, publication on websites of foreign design registration authorities such as OHIM, will constitute Prior Art.

Volfman Industries Ltd. v. Akerstein Industries Ltd. Motion for Cancellation of Design No. 39519 (12/12/2009).

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.

 

Brand Owners ! Record your Licenses in Israel

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Many brand owners that distribute their products in Israel uses local licensees instead of operating Israeli subsidiaries companies. Using local licensees has many advantages, such as saving operation and management costs and minimizing financial investments.
According to the Israeli Law (Section 41 of the Trademark Ordinance) any trademark registration that has not been in used by its proprietor for a period of three consecutive years (from date of registration) can be cancelled on the grounds of non-use. Actual commercial use is required in order to meet the Use requirements.
It’s important to remember that using the mark in Israel only by a local licensee will not considered to be “use” by the proprietor of the mark according to the Law, unless the license is recorded.
The trademark Registrar has ruled based on the Supreme Court precedent, that since the proprietor of a registered trademark did not actually use the trademark on its own, but rather licensed the use to his licensee, without registering the licensee at the Trademark Gazette, the use by the licensee could not consider to be use by the proprietor. Therefore, the registered trademark can be canceled based on lack of use. Decision from February 20, 2011 – of Oz v. Of Tene (application for cancelation of the trademark no. 169322 “Of Tene – Mifaley Basar”).
It is imperative therefore to record the license with the Trademark Office using a Local representative in order to avoid the possibility of cancellation by third parties.

TM Application for “Hotels.co.il” rejected

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Buy-Tech Telecommunications LTD. , the owners of the domain name http://www.hotels.co.il/ has filed a trademark application for the mark hotels.co.il (application number 234287) in classes 35, 42, 43 and 39. The Trademark Examiner rejected the application, based on lack of distinctiveness.

The Applicant appealed and raised his claims before the Deputy Commissioner, Ms Jaqueline Bracha. The Applicant has argued that the website is well known, acquired a reputation with both hotel owners and tourists, and also generates 70 million Shekels per year.

The Deputy Commissioner rejected the applicant’s claims based on the Federal Circuit Decision from the United States re Hotels.com L.P. 573 F.3d 1300, 91 USPQd 1532, where the Court ruled that the generic term “hotels” did not lose its generic character by placement in the domain name HOTELS.COM. She also pointed out scholars opinions from Kerly’s Law of Trademarks, who claims that a registration of a domain name doesn’t by itself create an IP or monopoly right but, rather a contract with the domain name authorities.
The Deputy Commissioner has also ruled that the mark hasn’t acquired secondary meaning and rejected the Appeal.

Application number 234287 – hotels.co.il

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

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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.

 

The Slogan “GUARANTEED TO KEEP YOU DRY” was Rejected by the TMO

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The slogan “GUARANTEED TO KEEP YOU DRY” in classes 24 and 25 for textile and clothing sealed for water was rejected by the Trademark Commissionar on the Basis of lack of distinctive Character. The current guidelines regarding slogans is that slogans should be treated like any other trademark and could be registered if they are actually serve as a trademark and indicates the source of the goods. On December 8 2011, the District Court of Tel Aviv has ruled in the case of Eveready Battery Company Inc V. Registrar of Patents (21488-05-11), that the examination of a slogan should be the same as any other mark, without the prior assumption that a slogan lack of distinctive character by its nature . This decision was given in an appeal of decision of the Trademark Registrar in which he denied the trademark application FREE YOUR SKIN on the basis of lack of distinctiveness.

In the Decision of FREE YOUR SKIN Court has offered a test in order to decide whether a certain slogan can be registered as a trademark in Israel. The test would be whether we can presume that a consumer who enters a shop in order to buy a certain product would ask the product from the seller using the slogan? If the answer is positive than we can assume that the slogan indeed serves as a trademark and indicates the source of the goods to the consumer and therefore should be eligible for registration.

The Crocs Shoes Have Been Accepted for a Three Dimensional Trademark in Israel

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The trademark application for the famous Crocs shoes was accepted by the Trademark Registrar. Crocs filed a great amount of evidence including surveys, advertisements and publications in order to base the claim that the shoes have acquired secondary meaning.

For a product to be registerable it is required to fulfill three basic conditions:
A. That as a result of an extensive use the product has acquired secondary meaning in the market.
B. That the image of the product itself is actually fulfills the role of a trademark
C. That the requested image does not possess an aesthetic or substantial functional role.

The trademark Registrar has ruled that the functional and aesthetic aspects of the Crocs shoes are minor and that the design of the shoes is not considered to be an aesthetic role given the fact that the shoes are actually quite ugly…

Israeli Trademark Application for the Shape of the Cointreau Bottle Refused

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The trademark application for the shape of the Cointreau alcohol bottle was refused by the Trademark Registrar. The application covers a brown glass bottle as shown above.

The application was rejected based on the Supreme Court ruling in the Toffifee case ( AUGUST STORCK KG v. Alfa) that for a product to be registerable as a three dimentional trademark it is required to fulfill three basic conditions:

A. It has to be exceptional different from other similar container
B. It has to actually serve the function of a trademark and be considered as such by the relevant consumers
C. It has to acquire secondary meaning due to extensive use in the market.

It was ruled that the Bottle wasn’t different from other alcohol bottles exciting in the market and that the bottle shape wasn’t sufficiently distinct. Also it was ruled that the applicant had failed to provide convincing evidence that the bottle has been used as an actual trademark.