OPEL is not well known in Israel

In Opel Eisenach GmbH v OPET Petrolcülük AS (June 7 2009, published on July 28 2009), the Israel commissioner of patents, trademarks and designs has ruled that the mark OPEL, which belongs to German-based car manufacturer Opel Eisenach GmbH, is not well known in Israel. 

Opel owns registrations for the mark OPEL in more than 40 countries. In Israel, the mark is registered for motor vehicles in Class 12 and repair and maintenance services for motor vehicles in Class 35 of the Nice Classification. OPET Petrolcülük AS is a large Turkish company which is engaged mainly in the storage of oil and the production of oil by-products.
On October 5 2004 OPET filed a series of trademark applications in Israel for the mark OPET (and design) for various products and services in Classes 1, 4, 39 and 42, some of which related to the motor vehicle industry (eg, oil for engines, and air and sea shipment services). On January 30 2006 Opel opposed the application on the grounds that:

  • the OPET marks were confusingly similar to its registered OPEL mark; and
  • because the OPEL mark is well known, the OPET marks should not be registered even in those classes that are not related directly to Opel's line of business because use of the OPET marks would dilute the reputation of the OPEL mark.
In deciding whether the OPET marks were confusingly similar to the OPEL mark, the commissioner applied the well-established three-part test:
  • visual and phonetic similarity between the marks;
  • similarity between the goods and their potential consumers; and
  • assessment of the totality of the circumstances.  
In applying this test, the commissioner ruled that the two marks were not similar visually and phonetically. The commissioner also ruled that the potential consumers of the products covered by the two marks were different, and so were their channels of distribution. The commissioner also gave weight to the fact that OPET owns other registrations for its mark in connection to cosmetic products, which Opel never challenged. The commissioner thus concluded that the marks were not confusingly similar and rejected the opposition.
In addition, the commissioner held that the mark OPEL was not well known in Israel, noting that the sales figures of Opel's products were relatively low and had been decreasing over the years. However, more interestingly perhaps, the commissioner stated in obiter that even if he had ruled that the mark OPEL is well known in Israel, he would still have dismissed the opposition on the grounds that Opel had failed to show that consumers would make a connection between OPEL and OPET. In doing so, the commissioner explicitly adopted the position of the Court of First Instance in L'Oréal SA v OHIM (Case T-21/07). In that case, the court interpreted Article 8(5) of the Community Trademark Regulation (40/94), under which the owner of a trademark with a reputation in the European Union may prevent the registration of a similar national trademark.
The decision seems to suggest that it will now be more difficult to claim rights in an unregistered but well-known mark in Israel.
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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