No likelihood of confusion between TAL HAEMEK and TAL EDEN
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In Tnuva - Agricultural Cooperative for the Marketing of Agricultural Products v Siman Trading Ltd (February 19 2009), the deputy commissioner of patents, trademarks and designs has held that the likelihood of confusion between two word marks will be slight where one of the marks includes a word that is deemed to be a well-known mark, and the only possible point of similarity between the two marks is a word that is not well known and lacks distinctiveness.
Tnuva - Agricultural Cooperative for the Marketing of Agricultural Products is the largest dairy producer in Israel. Since November 25 1966 Tnuva has been the owner of the registered trademark TAL HAEMEK, which is used for dairy and milk products. On January 11 2004 Siman Trading Ltd filed an application for the registration of the mark TAL EDEN for "cheese and dairy products, including milk delicacy, sour cream and cream". Tnuva filed an opposition against the registration of the mark on the following grounds:
- Siman's mark was confusingly similar to Tnuva's registered trademark TAL HAEMEK; and
- Siman had selected the mark TAL EDEN in bad faith.
To decide whether the two marks were confusingly similar, the deputy commissioner elected to give more weight to the 'general circumstances test'. Based on this test, the deputy commissioner considered the following factors:
- the meaning of the two marks in Hebrew;
- the actual use of the marks;
- the reputation of the marks;
- evidence of actual confusion between the two marks; and
- other circumstances.
The deputy commissioner ruled that since the two marks had different meanings and were composed of common Hebrew words, the likelihood of confusion between them was weak. The deputy commissioner also ruled that the manner of actual use of the marks further reduced the likelihood of confusion.
The deputy commissioner was of the opinion that the most important factor in ruling that the two marks were not confusingly similar was that the word 'haemek' (Hebrew for 'the valley') in the TAL HAEMEK mark was a well-known mark with respect to Tnuva's cheese products. Neither of the parties had raised this issue and the deputy commissioner seems to have reached this conclusion on the basis of judicial notice.
In any event, since the deputy commissioner ruled that only the 'haemek' portion of the mark was well known, trademark protection for the word 'tal' (which means 'dew' and is also a first name in modern Hebrew) was narrow. As the only word in common between the two marks was the word 'tal' (which was the less dominant part in Tnuva's mark), the deputy commissioner concluded that the similarity between the two marks should be tested based only on the similarity between the words 'haemek' and 'Eden'. The deputy commissioner also ruled that the word 'tal' could be considered as common to the trade in the hard cheese market, without further explanation.
Based on the foregoing, the deputy commissioner concluded that the two marks were not confusingly similar since the words 'haemek' and 'Eden' sounded differently and had different meanings. It is apparently the first time that the Trademarks Office has taken the position that where one part of a composite mark is a well-known mark, this fact will reduce the likelihood of confusion with another mark if the only point of similarity between the two marks is the component which is not well known.
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv
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