Opposition upheld based on likelihood of implied connection
In Israel National Lottery v Starwood Hotels & Resorts Worldwide Inc (January 11 2010), the registrar of trademarks has upheld the Israel National Lottery's opposition against Starwood Hotels & Resorts Worldwide Inc's application for the registration of a shooting star device.
Starwood applied to register a shooting star device as a trademark for hotel and restaurant services in Class 43 of the Nice Classification. Another application for entertainment services, including casino and gaming, in Class 41 was abandoned. Starwood had formerly held registrations for an identical device for hotel services in Class 42, and casino and gaming services in Class 41, which had been cancelled for non-payment.
The National Lottery holds several registrations for composite marks containing a shooting star in respect of lottery and gaming services. However, none of the marks consists of a shooting star device on its own. The National Lottery's affiant testified that, while the National Lottery did not engage in hotel or casino services, it intended to expand its operations in the near future.
The registrar of trademarks first held that the National Lottery had demonstrated that it had used its marks, with slight graphic variations, for many years. The registrar further found that the shooting star device was a well-known mark of the National Lottery.
Moreover, the registrar held that under the usual similarity tests, Starwood's mark was similar to the National Lottery's registered marks. From a visual point of view, the registrar found that:
- the shooting star was the dominant element of the National Lottery's well-known marks; and
- based on the imperfect recollection of consumers, the difference between the shooting star element in the National Lottery's marks and Starwood's shooting star device was minor.
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