Commissioner puts emphasis on submission of credible factual support

The Israel commissioner of patents, designs and trademarks has dismissed an opposition against the registration of the trademark CLEARASIL STAYCLEAR (Opposition against trademark applications Nos 203593 and 203593).

Reckitt & Colman (Overseas) Limited applied for the registration of the mark CLEARASIL STAYCLEAR for goods in Classes 3 and 5 of the Nice Classification. The applicant engages in the manufacture of various home care products and it has activities in over 60 countries and sales in over 180 countries. The applicant is also the owner of the mark CLEARASIL in numerous countries, including in Israel since 1969, and it is especially known in connection with the cosmetic treatment of acne.

The opponent, Mediline Ltd, an importer and manufacturer in Israel of various cosmetic products, is the owner of Israeli trademark registration No 116547 for the stylised mark CLEAREX in both Hebrew and English. The mark has been registered since 1999. The opponent alleged that the mark applied for should be rejected on various grounds, the common thread of which is that the mark is confusingly similar to the opponent’s registered mark.

The commissioner applied the accepted three-part test to determine likelihood of confusion:

• sight and sound of the respective marks;
• types of goods/services, customers and channels of distribution; and
• other relevant circumstances.

With respect to the first test, the commissioner acknowledged that the respective marks both contained the word 'clear'. Nevertheless, in taking into account the totality of the respective marks, the commissioner was of the view that visual differences between the marks significantly limited any likelihood of confusion, even when the imperfect memory of the consumer was considered.

As for the alleged similarity of sound, the commissioner pointed out that the presence of the word 'clear' in both parts of the mark applied for was sufficient to distinguish the respective marks. In this connection, the commissioner addressed the opponent’s argument that a customer is likely to ask the pharmacist for a “clear and something” preparation, without further specifying which product was intended, a result that merits particular attention because of the nature of the respective products. The commissioner dismissed this claim by pointing out that the opponent had not provided any evidentiary support.

As for the respective goods, customers and channels of distribution, the commissioner acknowledged that the customers for the respective products were primarily teenagers who are likely to make the purchase in haste. However, this mere assertion was not sufficient to establish a likelihood of confusion. As stated, “the opponent needed to support this claim with suitable evidence, such as a survey that points to a likelihood of confusion”.

The commissioner then considered other circumstances that might support a finding of likelihood of confusion, such as the meaning of the respective terms, actual use, advertising and evidence of actual confusion. Having regard to the evidence and the totality of the circumstances, the commissioner did not find that there were any such additional circumstances to support the finding that a likelihood of confusion existed between the respective marks. Accordingly, the opposition was rejected.

Of particular note in this decision is the commissioner’s firm insistence on the need to introduce relevant evidence, including perhaps a survey, to substantiate assertions of fact. This emphasis on the submission of credible factual support needs to be taken into account, especially by a party contemplating the filing of an opposition or cancellation.

Neil Wilkof, Dr Eyal Bressler and Co, Ramat-Gan