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 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 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