No likelihood of association between footwear and watches bearing RADO mark

In Rado Uhren AG v Rado Import and Marketing Ltd (opposition to the registration of mark No 244357, June 29 2015), the registrar of trademarks has dismissed the opposition filed by the owner of the mark RADO for watches (registered in Class 14) against the registration of the stylised mark R RADO in the name of a local company in Class 25. The registrar held, among other things, that the marks related to goods of a different description and that there was no likelihood of association.

In 2012 Israeli company Rado Import and Marketing Ltd applied for the registration of the stylised mark R RADO (shown below) for apparel, footwear and headgear in Class 25. According to the applicant, it had used the mark since the mid-1990s. The applicant’s goods retail at a variety of department stores and shoe stores throughout the country.

Rado Uhren AG opposed the application on the grounds of confusing similarity, unfair competition and likelihood of association with its well-known mark RADO, registered in Israel as stylized mark No 79906 (shown below) for watches in Class 14 and as part of several other stylised marks, all in Class 14. The opponent’s goods retail at a variety of stores throughout Israel.

The opponent claimed that it had made use of its mark in Israel for several decades and that the mark RADO had, through investment in product quality, branding and advertising, become identified with the opponent in Israel and worldwide, and had become well known in the sense of the Trademarks Ordinance [New Version] 5732-1972. The opponent further claimed that it had recently started marketing apparel and other products falling within Class 25. The opponent holds registrations for the mark RADO in Class 25 in about 50 jurisdictions, but not in Israel.

The registrar dismissed the opposition on all grounds.

The registrar held that the propounded mark was not confusingly similar to a mark registered for goods of the same description, in the sense of Section 11(9) of the ordinance. While the propounded mark was deemed to be visually and phonetically similar to the opponent’s registered mark, it was held to relate to goods of a different description under the criteria set forth in the applicable case law (ie, the nature and purpose of the goods, the channels of distribution and the degree to which the goods compete). The opponent’s evidence regarding fashion houses which offered watches and apparel was deemed limited to a certain segment of the market and failed to convince the registrar that the alleged trend of merging the watch industry and the fashion industry (including footwear) was of such magnitude as to allow the conclusion that watches and shoes are “goods of the same description” - although the registrar acknowledged the proximity of the two industries. The opponent’s foreign registrations in Class 25 did not avail.

The registrar observed that the choice of the applicant’s mark had not been satisfactorily explained, but held that this was irrelevant in light of the fact that the applicant had used the mark for 20 years. During that period, the opponent had been aware of such use for 10 years.

The opponent also invoked Section 11(14) of the ordinance, which, for a registered well-known mark, overcomes the hurdle that goods must be "of the same description” as it bars the registration of a similar mark even for dissimilar goods, provided that there is a likelihood of association with the well-known mark which would cause injury to its owner. The registrar deemed the opponent’s mark to be well known in Israel, due to its dominant presence in the Israeli and global watch market, its advertising in Israel and international event sponsorship. However, the registrar held that the opponent had failed to show that it would suffer an injury as a result of the applicant’s operation in the footwear industry. The fact that the opponent had failed to object to the applicant’s operation for 10 years was also taken into account. It was further held that the opponent had failed to establish a likelihood of association between the parties’ goods, even though both footwear and watches belong to the broad field of fashion.

Finally, the registrar held that the opponent had failed to show that the applicant intended to benefit from the opponent’s goodwill. Therefore, the applicant’s mark was not liable to create unfair competition in contravention of the provision of Section 11(6) of the ordinance.

Legal costs of IS25,000 were awarded.
 
David Gilat, Orit Gonen and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv