Concurrent registration of identical marks allowed

Israel
In Mitzomzom Ltd v Yisrael (March 7 2010), the patents and trademarks adjudicator has ruled that since neither of the parties was able to prove prior rights in the mark DF, the trademarks of both parties would proceed to registration concurrently.
 
On January 3 2006 Mitzomzom Ltd filed an application for the registration of the trademark DF (and 'peace symbol' design) for "clothing, footwear and headgear" in Class 25 of the Nice Classification. Approximately three months later, Aviv Yisrael filed an application for the registration of the word mark DF.  
 
Following the filing of the two applications, the Israel Patents and Trademarks Office declared an inter partes proceeding between the rival applications in accordance with Section 29 of the Israeli Trademarks Ordinance 1972. Section 29 allows the examiner to declare an inter partes proceeding if he or she believes that the applications cover identical or similar marks with respect to identical or similar goods/services. The issue in such a proceeding is which party has superior rights.
 
Yisrael claimed that he had superior rights in the DF mark since his father had previously filed an application for the registration of the mark. In addition, Yisrael argued that it had owned a figurative trademark containing the words 'DF Dinamit Fashion' since 2001. Yisrael further claimed that:

  • he had invested vast sums of money in advertising and promoting the DF mark; and
  • Mitzomzom had acted in bad faith when filing its application because it marketed three different clothing collections (a formal clothes collection called Studio, a swimsuit collection called Silver and a collection of everyday clothing under the mark DF).
In response, Mitzomzom claimed that its mark had been chosen in good faith by well-known Israeli fashion designer Dorin Frankfurt. Mitzomzom pointed out that the mark consisted of the initials of Frankfurt's name together with the peace symbol. Moreover, Mitzomzom claimed that it had been using its mark since 2001 and that its DF collection constituted 50% of its income.
 
Mitzomzom also submitted that it had filed its trademark application three months before Yisrael filed his own. Finally, Mitzomzom argued that Yisrael had filed his trademark application in bad faith since he had no real intention of using the mark, as evidenced by the fact that he primarily used the marks DINAMIT, DINAMIT JEANS or DINAMIT FASHION, rather than DF.   
 
In deciding which of the parties had superior rights, the adjudicator considered the following elements:
  • the good faith of the respective applicants in selecting their marks;
  • the extent of use of the marks by each party prior to the commencement of the proceedings; and
  • the priority date of the marks.
With regard to good faith, the adjudicator found no evidence that either of the parties had tried to 'free-ride' on the reputation of the other party. Thus, both parties had acted in good faith when applying for the registration of their marks. Turning to the extent of use of the marks, the adjudicator ruled that the parties had failed to demonstrate that consumers identified the mark DF with either of them. Finally, with regard to the priority date, the adjudicator ruled that, since only three months had passed between the two applications, this factor would be given little weight.
 
As a result, the adjudicator decided to exercise her authority in accordance with Section 30 of the ordinance and allow both marks to proceed to registration concurrently. The adjudicator based her decision on the following findings:  
  • The relevant consumers for the respective goods were different, since Mitzomzom's goods are designer clothes, while Yisrael's clothes are for daily use and are sold at a much lower price.
  • The distribution channels of the goods were completely different. Mitzomzom's clothes are sold only in Dorin Frankfurt clothing boutiques, while Yisrael's clothes are sold mainly through wholesalers.
  • The respective marks were visually different.
  • Both marks have coexisted for years without any evidence of consumer confusion.
Accordingly, the adjudicator decided that there was no likelihood of confusion between the two marks and that both could be registered.
 
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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