“Rules Written in Blood” is an old Israeli saying that perfectly sums up the need to learn from others’ mistakes before choosing the right path.
As a brand owner or trademark lawyer, taking enforcement action if you see any competitors or others using confusingly similar marks is the first step to consider.
However, suing for trademark infringement can sometimes result in a fatal result for the brand.
One example can be found here.
What is an Indirect Attack ?
In Israel, the defendant may raise several defenses to a trademark infringement claim.
Indirect attack is one of the defenses.
In an Indirect Attack, a defendant may claim that the plaintiff’s trademark registration is invalid, or shouldn’t have been registered in the first place, and therefore should be cancelled.
The plaintiff could request cancellation based on a lack of distinctive character or descriptiveness of the trademark registration (absolute grounds).
This could be a majore risk for the brand owner.
Court is Examining The Registrability of the Mark
In a recent case brought by a cosmetic company, this risk was perfectly illustrated.
An infringement claim has been filed to the Israeli Tel Aviv Magistrates Court, in which the Plaintiff has claimed that the use of the mark “Messeia” by the defendants on cosmetic products constitutes trademark infringement.
The Plaintiff owns the trademark registration for the mark “Messiah” in class 3.
Photos of the Plaintiffs products and the Defendants are presented below:
It should be noted that an indirect attack could be generaly initiated in a trademark infringement procedure within the framework of the infringement claim itself, even if no separate motion for cancellation has been filed to the Israeli Trademark Office or no separate declarative motion has been filed.
In this case, the Court has taken one step further, and although the defendant did not specifically raise the claim of indirect attack, the Tel Aviv Court first examined the registrability of the plaintiff’s trademark registration.
Court Ruled that the Plaintiff’s Trademark Should be Cancelled
The Court has ruled that according to Paragraph 11 (7) to the Trademark Ordinance, marks identical with or similar to emblems of exclusively religious significance are not registerable.
The mark “Messiah” is protected as a symbol with a clear and exclusive religious meaning, meaningful in both Jewish and Christian religions, therefore the mark is not registrable.
Thus, the Court ruled that the Plaintiff’s trademark registration for the mark Messeia should be cancelled.
In order to formally cancel the mark, the Court requested to send a copy of the decision to the Trademark Office.
So, the Plaintiff sued for trademark infringement, but ultimately lost his registration.
A fatal result for the brand owner.
Owners of brands should carefully consider their risks before initiating a trademark infringement claim, including losing their registration.
Disclaimer: The above may not be considered as any legal opinion whatsoever and users are requested to get a professional advise.