Region: Israel

Trend to apply rules of civil procedure and evidence to contentious proceedings highlighted

A decision of the commissioner in opposition proceedings between Stichting BDO and Banco de Oro Unibank Inc highlights the trend at the Israel Patent and Trademark Office to apply the standards of evidence and procedure taken from the courts of general jurisdiction. The decision revolved around a series of challenges to the reply affidavit that was filed on behalf of the opponent.

09 July 2013

Commissioner puts emphasis on submission of credible factual support

The commissioner of patents, designs and trademarks has dismissed an opposition against the registration of the trademark CLEARASIL STAYCLEAR, finding that there was no likelihood of confusion with the earlier mark CLEAREX. Of particular note in this decision was the commissioner’s insistence on the need to introduce relevant evidence, including perhaps a survey, to substantiate assertions of fact.

03 June 2013

Wrangler fails to prevent registration of cowboy mark

In <i>Wrangler Apparel Corp v Weiss Brothers</i>, the District Court of Tel Aviv has dismissed an appeal by Wrangler Apparel, the owner of two marks depicting a cowboy throwing a lasso, against a decision of the IP adjudicator allowing the registration of a trademark consisting of the silhouette of a cowboy throwing a lasso in conjunction with the English word 'rodeo'.

01 May 2013

Shape of Cointreau bottle held to lack distinctiveness

The trademark examiner has rejected Cointreau’s application for the registration of a 3D bottle as a trademark for “alcoholic beverages (except beer)”. Interestingly, the examiner carried out an independent internet search in order to determine whether the shape at issue deviated from the ordinary shape in the relevant field. However, the principles that govern the limits of such independent factual research by an examiner are not settled.

25 April 2013

Crocs shoes registered as 3D mark

The adjudicator has accepted Crocs Inc’s application for registration of a 3D mark for its famous footwear, finding that the shoes “had become a means for identifying the applicant and distinguishing it from the rest of the businesses in the field”. The decision shows that the registry is willing to grant registration of a 3D mark if the requisite evidentiary showing is made out, but that the evidentiary bar is a demanding one.

13 March 2013

Former distributor's sale of glasses frames in the US held to amount to passing off

In <i>Art Optic Ltd v Tomashover</i>, a former distributor of Ronit Furst hand-painted frames for glasses was held to have committed the tort of passing off by selling painted glasses frames in the United States. Among other things, the court held that the plaintiff - a manufacturer of hand-painted frames for glasses designed by artist Ronit Furst - had acquired goodwill in the products in the relevant market (the United States).

15 February 2013

Gore-Tex's 'Guaranteed to keep you dry' slogan held to be descriptive

The Israeli Trademark Office has refused to register the mark GUARANTEED TO KEEP YOU DRY for protective clothing in Class 9, textiles in Class 24, and clothing, footgear and gloves in Class 25. Among other things, the IP adjudicator noted that the slogan at issue was not used as a trademark to identify the source of the goods, but only in conjunction with other words, primarily the applicant's name.

30 January 2013

Rubik's cube registrable as 3D mark

The Israeli Trademark Office has allowed the registration of the 3D shape of the Rubik's cube for puzzles in Class 28 and advertising services in Class 35. The registrar concluded that the shape was neither functional nor aesthetic, and that is was eligible for <i>telle quelle</i> registration under Section 16 of the Trademarks Ordinance.

18 January 2013

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

The adjudicator has rejected an opposition filed by Philip Morris Products SA against British American Tobacco (Brands) Inc’s application for the registration of a design mark in Class 34. The case illustrates what happens when the opponent in opposition proceedings chooses not to file evidence.

11 January 2013

Marks struck off register as goodwill did not attach to registrant

In <i>Asulin v Parvari</i>, the IP adjudicator has cancelled two trademark registrations in the name of a creditor of the company that owned the marks, due to the likelihood of consumer confusion. The IP adjudicator found that the goodwill attached to the marks remained with the original company.

13 December 2012

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