No family of ICE marks, says deputy registrar

On July 28 2009 the deputy registrar of trademarks dismissed an opposition against the registration of the trademark ICE CUBE.
The applicant filed an application for the registration of the trademark ICE CUBE (and design) for goods in Class 25 of the Nice Classification. The owner of the registered trademarks ICE and ICEBERG for goods in Class 25 opposed the application. The opponent also owned unregistered trademarks for Class 25 goods, including ICE JEANS, ICEBERG SPORT - ICE, ICE J and ICE B.
The deputy registrar ruled that ICE CUBE was not confusingly similar to the opponent's marks. However, he went on to consider whether there was a likelihood of association or dilution. It was thus necessary to examine whether use of the word 'ice' as a leitmotif in the opponent's marks meant that they constituted a family of marks. In that case, the opponent would have exclusive rights in the word 'ice'.
The main tests for determining whether a group of marks constitutes a family of marks are as follows:
  • The common component is a prefix, suffix, syllable or word.
  • The marks must actually be in use - the mere fact that the marks are registered does not necessarily mean that they constitute a family of marks.
  • Consumers identify the common component of the marks with the owner. Therefore, the common component itself is sufficient to identify the origin of the goods.
  • A group of marks is more likely to be perceived as a family of marks if they are used or advertised together.
  • The greater the distinctiveness of the common element, the greater the chances that consumers will perceive the marks as a family of marks.
  • The issue is not whether the mark applied for is confusingly similar to the family of marks - rather, the issue is whether consumers will be misled into believing that the mark applied for is part of the family of marks. Alternatively, if consumers are not likely to be misled, the issue is whether the registration of the mark applied for would dilute the family of marks so as to weaken the link that consumers establish between the marks and the origin of the goods.
The deputy registrar ruled that the opponent's marks could be divided into two groups:
  • the marks ICE and ICEBERG, which have an immediate meaning; and
  • the marks ICE JEANS, ICEBERG SPORT - ICE, ICE J and ICE B, which have no immediate meaning.
The deputy registrar pointed out that the ICE CUBE mark had an immediate meaning. Therefore, he compared it with the first group of marks (ICE and ICEBERG). The deputy registrar concluded that ICE and ICEBERG did not constitute a family of marks, since:
  • the word 'ice' is not used as a leitmotif; and
  • the meaning of 'ice' and 'iceberg' is different from that of 'ice cube'.
Therefore, regardless of whether there was a family of ICE marks, the mark applied for was not part of this family. 
Ronen Sasson, Luzzatto & Luzzatto Patent Attorneys, Tel Aviv

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