Philip Morris chooses not to file evidence in opposition - and pays the price

Israeli opposition practice provides for the filing of evidence by each of the parties, supported by an affidavit, upon which each affiant must be available for cross-examination. What happens, however, if one of the parties chooses not to file evidence? It was against this background that the adjudicator was asked to rule in the opposition filed by Philip Morris Products SA against Application No 227383, filed by British American Tobacco (Brands) Inc.

The mark in question was a design, depicted below, and the application was filed in Class 34 of the Nice Classification for “cigarettes; tobacco; tobacco products; lighters; matches; and smokers’ articles”. 

The opponent chose not to file evidence in support of its opposition. Nevertheless, a hearing was set at which it would be entitled to present oral arguments. The opponent raised two claims:

• the graphic form of the mark lacked inherent distinctiveness and it was so basic that it lacked all capability of even acquiring distinctiveness; and
• registration of the mark would prevent others from using the form of a circle in marking their products.

The adjudicator stated that registration may not be conferred on basic geometric forms, which should remain free for use by all as part of the public domain. The applicant itself agreed with this proposition. However, the adjudicator accepted the claim, put forth by the applicant in Paragraph 15 of the counter-statement, that the mark in question was not a basic geometric form. The adjudicator further stated that there was no proof that the form of design was in customary use by persons in the area and, therefore, the mark should remain in the public domain.

Attention was paid to the fact that the examiner had decided to accept the mark for registration in accordance with the criteria for registrability set forth in the Israel Trademarks Ordinance. Given that the opponent had not filed any evidence in support of the opposition, there was no evidentiary basis to support a conclusion that the examiner should have rejected the application as being a form of sign whose use is common to the trade.

On the basis of the foregoing, the adjudicator stated that the mark was inherently distinctive, but at a “low level” of distinctiveness. Relying on a recent decision of the Israel Supreme Court in the matter of adidas Salomon AG v Yassin (Civil Appeal 563/11), the adjudicator noted that, when a mark is of low inherent distinctiveness, its scope of protection will be limited to only highly similar marks. As such, in the instant case, there was no danger that registration of the mark would lead to overbroad protection with respect to use of the form of a circle as a mark. Accordingly, the adjudicator rejected the opposition. In so doing, she awarded costs in favour of the applicant in the equivalent amount of approximately $5,000.

This decision shows how difficult it is to prevail in an opposition under Israel practice when no evidence is filed by the opponent in accordance with the Trademarks Ordinance and the opponent relies solely on strictly legal grounds to support the opposition. 

Neil Wilkof, The Bressler Group, Ranat-Gan