Use of Hebrew transliteration of registered mark constitutes 'fair use'

Israel

In Micys Company SpA v Lhahav (March 24 2010), the trademark and patent adjudicator has ruled that use of the Hebrew transliteration of a trademark that was registered in its English form constituted 'fair use' of the mark under the Israeli Trademark Ordinance.

The defendants, Ronit Lhahav and Zizi Gotanio Asa, are a mother and daughter who own a small business called Diva Cosmetics Industries. They specialize in the production of hygienic, make-up and cosmetic products. In the late 1950s the defendants registered the trademark DIVA for various cosmetic and skin care products in Classes 3 and 5 of the Nice Classification. Micys Company SpA, an Italian cosmetics company, produces and markets a mascara called Diva's Lashes.

On April 9 2008 Micys filed a request for the cancellation of the DIVA mark on the grounds of non-use. Micys claimed that the defendants had not used the mark in connection with the goods for which it was registered for a period exceeding three years before the application for cancellation was filed. Alternatively, Micys claimed that the registration for the defendants’ mark should be partly cancelled since, even if the defendants used the mark to some extent, such use was not done in connection with "cosmetic preparations". The defendants argued that DIVA is a well-known mark and that they have used it continuously until the present.

In deciding on the application for cancellation, the adjudicator noted that the burden of proving non-use rests with the party seeking cancellation. The adjudicator ruled that although, based on the evidence provided by Micys, it seemed that the defendants were using the Hebrew transliteration of their DIVA mark, rather than its English form (as it is registered), such use constituted fair use of the mark. The adjudicator based her decision on the fact that the mark is phonetically identical in its English form and in its Hebrew transliteration. Therefore, she was of the view that use of the Hebrew transliteration constituted use of the trademark as registered.

In obiter, the adjudicator noted that, in her opinion, the exclusive right of a trademark owner to use a mark registered as an English word should include - under certain conditions that she did not specify - the exclusive right to use the Hebrew translation (rather than a mere transliteration) of the mark. Such use would constitute fair use of the mark under the Trademark Ordinance.      

Based on the above, the adjudicator was of the opinion that the defendants had used their DIVA mark in connection with all the goods for which it was registered. The application for cancellation was thus rejected.

Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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