Commissioner applies 'family of marks' doctrine

In Yakotiali v Virgin Enterprises Ltd (Case 167186, October 30 2007), the commissioner of patents, designs and trademarks has refused to register the trademark VIRGIN CANDLES on the grounds that it was confusingly similar to the famous mark VIRGIN.

Reshef Yakotiali is an individual who has been engaged in the production of candles since 1996. Yakotiali claimed that he applied special techniques for his candles originally used for the production of high-quality virgin olive oil. Consequently, in 2004 Yakotiali applied for the registration of the marks THE PURIFIED CANDLE in Hebrew, V (and design) and VIRGIN CANDLES in Class 4 of the Nice Classification. Multinational corporation Virgin Enterprises Ltd, which owns approximately 2,000 marks containing the word 'virgin' worldwide, opposed the registration of the mark VIRGIN CANDLES. In Israel, Virgin owns 25 marks for goods and services in different classes (excluding Class 4).

First, the commissioner considered whether the mark VIRGIN is well known in Israel based on:

• the scope of recognition of the mark; and
  
  
• the duration of use of the mark in Israel.

The commissioner held that the mark VIRGIN is recognized by over 25% of Israeli consumers based on data provided by Yakotiali (and not by Virgin). The only evidence provided by Virgin was a consumer survey conducted in the United Kingdom which showed that 95% of British consumers recognize the mark VIRGIN. Nevertheless, the commissioner took into consideration the scope of recognition of the mark in the United Kingdom, stating that "the Israeli public is exposed to content and advertising material from abroad". However, he pointed out that such assessment should usually be based only on the scope of recognition of the mark among the Israeli public.

With regard to the duration of use, the commissioner ruled that even though Virgin submitted only minimal evidence of use of the mark VIRGIN in Israel, it provided extensive evidence of the use of the mark worldwide. Under Israeli trademark law, a famous mark may be protected even if it is not being used in Israel, since trademark protection derives from the scope of recognition of the mark among the Israeli consumer public.

Second, the commissioner considered whether the marks at issue were similar, holding that Virgin's marketing strategy should be taken into consideration. In this case, the VIRGIN marks include a word that defines the actual business of the company (eg, Virgin Films, Virgin Radio and Virgin Atlantic). The commissioner noted that this marketing strategy creates what is known as a 'family of marks', as defined by the US Federal Circuit in J&J Snack Food Corporation v McDonald's Corporation. Therefore, the commissioner decided to reject the registration of the mark VIRGIN CANDLES. However, the precise statutory authority for applying the 'family of marks' doctrine under Israeli trademark law remains unclear.

Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv