MIG mark in cancellation dog fight

In Migdor Ltd v Gayle (Registration 138834, July 16 2007), the Israel commissioner of patents, designs and trademarks has ordered a partial cancellation of the mark MIG on the grounds of non-use in relation to goods in Class 16 of the Nice Classification, namely "newspapers, news leaflets and magazines".

Boris Gayle and his partner, operating under the name MIG Publications, have owned since 1996 several publications in the Russian language which use the mark MIG. Migdor Ltd is a member of the publishing group Media International Group - the initials of which spell out the acronym 'MIG'. Migdor contended that while it is using the mark MIG for a magazine and Internet site, MIG Publications ceased use in 1999 with respect to newspapers, news leaflets and magazines, except for a single, token use of the mark some time between the years 1999 and 2004 (this being the relevant period for the action). Migdor therefore applied for cancellation of MIG Publications' mark.

The commissioner addressed the following two questions in ruling on the cancellation petition:

• Did the single use of the mark constitute 'good-faith' or 'genuine' use within the meaning of Section 41 of the Israel Trademarks Ordinance?
  
  
• Based on the facts of the case, were there 'special circumstances' within the meaning of the case law, which could be deemed to excuse the non-use of the trademark?

In ruling on the issue of whether use had taken place within the meaning of the Trademarks Ordinance, the commissioner ruled that the term 'good-faith use', as it appears in Section 41, should be interpreted in a manner consistent with the term 'genuine use', as construed under UK law. The commissioner took the following considerations into account:

• Whether the one time use of the mark is intended solely for the purpose of overcoming a claim of non-use and thereby preserving the registration.
  
  
• Whether the commercial exploitation of the mark is reasonable under the circumstances in the relevant economic sector.

In this case, the commissioner ruled that the second consideration tends to be the most important factor in deciding whether or not the mark was used genuinely.

The commissioner noted that one of the main features that distinguish newspapers is that they are published on a wide-circulation basis, usually on a daily basis. Therefore, the fact that MIG Publications had published its newspaper only once in a period of over four years could not be considered as a 'genuine use' in the ordinary course of business.

As for the claim of extenuating circumstances, MIG Publishing argued that the reason it was unable to publish its newspaper was because Migdor had created a market barrier by promoting unrestrained competition between the two parties, with the result that it was unprofitable to publish the newspaper.

In response, the commissioner ruled that a claim of a lack of economic profitability does not constitute a 'special circumstance' under the law. The commissioner accordingly ordered the deletion of "newspapers, news leaflets and magazines" from the list of goods registered under the mark MIG.

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