Lack of disclaimer for 'Eden' does not grant rights in that word

Israel
The Israel trademarks, patents and designs adjudicator has ruled that the fact that the Trademark Office did not request a disclaimer for a specific word in a mark does not necessarily mean that the trademark owner has exclusive rights in that word (August 30 2009). 
 
Shimourei Eden Ltd applied for the registration of the mark EDEN CANS (and design) for canned fruits and vegetables, olive oil, fish, pulses, meat and meat extracts (Application 186296). David Banino owns several TASTE OF GARDEN OF EDEN marks (Registrations 79155, 79420 and 81427) for various food products and catering services in Classes 29, 30 and 42 of the Nice Classification. Banino's registrations for TASTE OF GARDEN OF EDEN were subject to a disclaimer for the word 'taste'. Banino filed an opposition against the registration of the mark EDEN CANS based on its TASTE OF GARDEN OF EDEN marks.
 
Banino claimed that for many years, he had conducted his business under the trade name Taste of Garden of Eden, placing special emphasis on the word 'Eden'. Accordingly, the mark EDEN CANS was confusingly similar to his marks. Banino further claimed that since his marks were word marks and no disclaimer had been requested for the word 'Eden', he had exclusive rights in that word in connection with foodstuffs in Class 29.
 
In deciding whether the two marks were confusingly similar, the adjudicator applied the three-part test under Israeli law - namely:

  • the visual and phonetic similarity between the marks; 
  • the similarity between the goods, potential consumers and channels of distribution; and
  • the totality of the circumstances.
The adjudicator held that there was no likelihood of confusion between the marks because they were significantly different, both visually and phonetically. The adjudicator also ruled that the marketing channels and potential consumers were different, because Banino's goods were sold in his delicatessen, while Shimourei Eden's products were sold to wholesalers and in supermarkets. 
 
The adjudicator then considered Banino's claim that he had exclusive rights in the word 'Eden'. The adjudicator noted that a request for a disclaimer is a right reserved to the Trademarks Office under the law. Disclaimers serve two important functions: 

  • they determine the exact extent of the exclusive rights granted by the registration; and
  • they represent a warning to the trademark owner that it may not prevent others from using the disclaimed component of its mark.
Therefore, it is possible to use part of a registered mark as long as such use does not exploit the reputation of the registered mark. The adjudicator added that the fact that the Trademarks Office did not ask for a disclaimer for the word 'Eden' in Banino's marks did not necessarily mean that Banino had exclusive rights in that word. The opposition was thus rejected. 
 
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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