Chef held to have superior rights in name of restaurant

In Levi v Mamtakey 10 Ltd, the patents and trademarks adjudicator has ruled that, under certain circumstances, the name of a restaurant can be associated with the chef of the restaurant, rather than the restaurant itself. 
Pinhas Levi was the owner and chef, for many years, of a successful restaurant in Jerusalem called Azel Pini Ba-Hazter ('Azel Pini's backyard'). In 2002 Levi decided to close the restaurant and re-open it in Tel Aviv under a slightly different name, Azel Pini Ba-Hatzer - Orgada, with a new partner, Algrabli, who owns Mamtakey 10 Ltd, the other party to the action. In 2003 the new restaurant in Tel Aviv commenced its operations. In 2007 the partnership between Levi and Algrabli soured and they went their separate ways. Algrabli continued to operate a restaurant under the name Azel Pini Ba-Hatzer - Orgada. For a short while, Levi operated a restaurant in Jerusalem under the name Azel Pini Ba-Hatzer, but then closed it.
On June 18 2007 Algrabli filed an application for the registration of a figurative mark containing the name Azel Pini Ba-Hatzer - Orgada. On August 6 2007 Levi filed an application for the registration of an almost identical mark.
The Israel Patents and Trademarks Office declared an inter partes proceeding between the rival applications in accordance with Section 29 of the Israel Trademarks Ordinance 1972. This provision allows the examiner to declare an inter partes proceeding where he or she believes that the applications cover identical or similar marks with respect to identical or similar goods and/or services. The issue in such a proceeding is which party has superior rights.
The adjudicator considered the following elements:
  • the extent of use of the mark by each party prior to the commencement of the proceeding and until the date of the hearing; and
  • the good faith of the applicants in selecting their respective marks.
With regard to the use of the marks by the parties, the adjudicator ruled that, although there was much evidence to suggest that extensive use had been made of the mark AZEL PINI BA-HATZER - ORGADA when the parties were partners, she could not ignore the fact that Levi was the first to use the mark AZEL PINI BA-HATZER. The adjudicator also noted that, over the years, this mark had become associated with Levi, as the chef of the restaurant, rather than with the restaurant itself. The adjudicator ruled that Levi's use of the mark exceeded Algrabli's use.
With regard to the good faith of the parties in choosing their marks, the adjudicator noted that Algrabli had not provided any reasonable explanation as to why he had decided to adopt the mark AZEL PINI BA-HATZER - ORGADA. To the contrary, she accepted Levi's argument that he was the first to adopt the mark. The adjudicator thus ruled in favour of Levi.

Interestingly, the adjudicator completely disregarded the priority date of the marks. While this factor is usually accorded less weight, its importance derives from a Supreme Court decision. Therefore, one may wonder why this factor was discarded de facto by the adjudicator.
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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