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Trademark | TEST YOURSELVES: is the mark “Easylabour” can be registered in Israel?

December 19, 2010 by Amit · Leave a Comment 

An Israeli medical device company filed a trademark application for "esaylabour" and was rejected for being descriptive.
 
The applicant argued in vein that that labour generally means work and that the mark is distinct since they could not find any "esaylabour" in the US and EU and that they branded and advertised the mark.
 
The applicant hence appealed to the commissioner and argued that similar marks were allowed before by the Israeli Patent Authority, the applicant also argued that the product(s) are used also for general pain relief.
 
The commissioner dismissed those arguments showing the differences between the applicant's trademark and the applicant's examples of previously allowed trademarks and by stating that the applicant had estopelled himself during the prosecution.
 
The applicant was not represented during the prosecution and appeal.

Filed under Newsletter Vol 2 - December 2010, Trademarks · Tagged with

Trademark Competing Marks Procedure Decision: DUREX PLAY v. LIFESTYLE PLAY

August 6, 2010 by Amit · Leave a Comment 

According to Israeli law when two applicants file identical or similar trademark applications the Israeli Patent Authority initiates a competing marks procedure according to article 29 of the law and the examiners will not examine the applications. The usual outcome of such procedure is a decision by the administrative judge, in this particular case, Mr. Noah Shalev Shlomovitz (Deputy Commissioner), as to which of the marks will continue to examination – however this was NOT the outcome in this case. 

LRC Products Ltd. (Durex) and Ansell Limited (LifeStyle) filed 3 trademark applications that were involved in this case: "DUREX PLAY" and "PLAY" applications were filed by Durex on Sep 2004 and "Lifestyles Play" (Device mark) filed by LifeStyle on Feb 2005.

Usually three basic grounds are to be examined in order to decided which applicant/application continues to examination:

  1. Date of application;
  2. Actual usage of the mark until actual decision; and
  3. Equitable behavior of the parties.

Durex's arguments indeed revolved around those three grounds, while LifeStyles' arguments regard the generic nature of the word "PLAY" in this context (Class 10 "Condoms; contraceptive, hygienic or prophylactic devices; massage apparatus, instruments and appliances; electric and electronic message apparatus, instruments and appliances; body massagers; personal massagers; vibrators; marital aids; sex aids; parts and fittings for all the aforesaid goods").

The Deputy Commissioner, although he could have pointed out  that such issues are to be decided in the examination itself, noted that the examiner will most likely decide to reject the word mark application "PLAY" and allow the "DUREX PLAY" application only, disclaiming the word "PLAY". Hence LifeStyles' application would be examined without DUREX's applications in the way.

The actual outcome is that both parties can continue usage of the word "PLAY" only in conjunction with their home marks "DUREX" and "LIFESTYLES".

The Deputy Commissioner cancelled the word mark application "PLAY", sent the other two applications to examination and awarded 15,000 NIS (about $3,950) to LifeStyles.

Filed under Newsletter Vol 1 - August 2010, Trademarks · Tagged with , ,