(Jerusalem) 340657/ Ariella Lavie v. Mazor – Exercise of Medical Rights Ltd.

Registrar of Patents, Designs, Designs and Trademarks

 Request forDelete Trademark

 340657

Decision

1. I have before me an application for the deletion of a registered trademark (undesigned) numbered 340657 "Mazor MAZOR". The mark was registered on March 2, 2022 for: "Provision of consulting services (other than legal advice) for the purpose of exercising rights due to a medical condition or injury; all of which are included in class 45" (hereinafter: the registered mark).
2. The application for deletion of the mark was filed on December 14, 2022 by Ms. Ariella Lavie (hereinafter: the Applicant for Deletion). The applicant's main argument is that the application for registration of the mark was filed in bad faith and therefore the trademark is subject to deletion according to the provisions of section 39(a1) of the Trademarks Ordinance [New Version], 5732-1972 (hereinafter: the Ordinance).  In addition, the Applicant for Deletion argues that the mark is also eligible for registration under the provisions  of section 39(a) of the Ordinance because it  lacks a distinguishing character, contrary to the provisions of  sections 8(a) and 11(10) of the Ordinance, and it has not been proven that it acquired a distinguishing character in accordance with the provisions of section 8(b) of the Ordinance.
3. On February 2, 2023, "Mazor – Exercise of Medical Rights Ltd." (hereinafter: the trademark owner) filed its statement of claims. The owner of the mark claims that the mark is fit for registration and has a distinguishing nature, does not mislead the public and does not misuse it.
4. The Applicant for Deletion submitted her evidence on April 30, 2023, in the form of affidavits of Ms. Ariella Lavie, and of her husband, Mr. Avi Lavie, who is alleged to have established the business with her under the name "Mazor – Exercising Medical Rights and Benefits".
5. The evidence of the owner of the mark was submitted on July 4, 2023 in the form of an affidavit of Mr. Meir Beliciano, the owner of the trademark owner – "Mazor – Exercise of Medical Rights Ltd."
6. Since no evidence was submitted in response, a hearing was scheduled for the interrogations of the declarants that took place before me, after many postponements, on April 1, 2025. After the hearing, the parties' summaries were submitted.

Summary of the Petitioner's Arguments and Evidence

7. The main argument of the applicant for deletion is that the application for registration of the registered mark was filed in bad faith. Before the trademark owner submitted her application for registration of the mark "Mazor", she was aware that the application for deletion was engaged in the same field of occupation and was making use of that name.  The owner of the mark misled the Authority by not mentioning her acquaintance with the deletion applicant at the time of filing the application.  The lack of good faith of the trademark owner is also expressed in the trademark owner's use of the designed form of the mark Mazor, which is very similar to the logo that has been in use since 2007.  The Petitioner further adds that the lack of good faith of the owner of the mark is also expressed in her attempt to prevent the Applicant from using the mark "Mazor" by filing a claim for infringement of the mark less than a month after it was registered.
8. According to the deletion applicant, she has been making prolonged use of the mark "Mazor" since 2007, and even before the establishment of Mazor – the realization of medical rights in a tax appeal (the owner of the mark). During her many years of activity, she has invested heavily in advertising her business activities in the print press and social networks.
9. The Applicant further argues that the registered mark, the word "Mazur" without any design, lacks a distinguishing character. This is a generic mark in the field in which the parties are engaged.  The owner of the mark did not prove that the mark as it was registered without design acquired a distinctive character.
10. As stated, in support of her arguments, the Applicant for Deletion submitted two affidavits : the affidavit of Mr. Avi Lavie and the affidavit of Ms. Ariella Lavie (hereinafter: the Lavi affidavit). The following appendices were attached to the affidavits: Appendix A – details of Ms. Ariella Lavie's business from 2007; Appendix B – Copy of an application for temporary relief against the applicant for deletion; Appendix C – Copy of the Applicant's  Profit and Loss Statements for the years 2008-2019; Appendix D – Affidavit of Mr. Meir Belliciano dated June 22, 2021 submitted in support of an application for examination on the website of the trademark registered on behalf of the trademark owner; Appendix E – a  copy of the correspondence between the parties from 2016 as well as a copy of the tax account/receipt of the applicant for deletion (the invoice bears the symbol "Mazor" and the inscription "Exercising Medical Rights and Benefits") dated September 16, 2010; Appendix F – a copy of the trademark owner's publications.

Summary of the claims of the owner of the mark and its evidence

11. The owner of the trademark claims that it is a company in the field of exercising medical rights that has been active for over a decade and has provided service to thousands of customers. The owner of the mark also claims that she advertises her services on the social networks "Facebook", "Instagram", radio networks, with an investment of millions of shekels, and that she has an impressive sales turnover.
12. The owner of the mark claims that his mark has acquired a great reputation and that it is a well-known trademark. According to her, the mark is eligible for registration and has been registered lawfully, does not mislead the public and does not misuse the mark.  Therefore, according to its approach, the claims of the deletion applicant should be rejected both in the context of the lack of a distinguishing character and in the context of lack of good faith.
13. According to the trademark owner, the burden of proving bad faith is on the shoulders of the deletion applicant, and it is possible that if the trademark owner had not filed the claim against the deletion applicant for the enforcement of rights, the deletion request would not have been filed. She further added in this context that the applicant for deletion has nothing to complain about except herself when she did not submit an application for registration of her mark, that she is now misleading the public by using the registered mark and that there is also de facto deception of customers.  The owner of the mark claims that at the time of the establishment of the transaction it did not hear at all about the applicant for deletion and her activity or transaction activity.
14. In support of its claims, the trademark owner submitted Mr. Bellisiano's affidavit (hereinafter: the Beliciano affidavit), to which the following appendices were attached: Appendix 1 – Publications on the work of the trademark owner; Appendix 2 – a copy of thank you letters and success stories; Appendix 3 – A statement by the CEO of "Data Plus" and the lawyer that they provided advice to Mazor from the years 2015 and 2016 (respectively); Appendix 4 – Documentation of Internet traffic data; Appendix 5 – a copy of the trademark owner's website and social media shelves; Appendix 6 – Photographs from the "Google" search engine; Appendix 7 – A document attesting to the sales turnover and advertising expenses of the trademark owner; Appendix 8 – The examination report of the Registrar of Trademarks dated July 27, 2021 and the letter of acceptance (notice of acceptance of the mark) dated November 30, 2021; Appendix 9 – Advertising expenses presented by the deletion applicant (for the year ended December 31, 2008); Appendix 10 – Documentation and record of sample cases from 2023 and 2022 in which customers and potential customers were misled.
15. All highlights have been added unless otherwise noted.

Discussion and Decision

16. The Applicant bases the main point of her application for the deletion of the mark on section 39 of the Ordinance:

"39.  (a) An application under section 38 for the deletion of a trademark from the register, with respect to all or part of the goods or types of goods in respect of which the mark is registered, on the grounds that the mark is not eligible for registration under sections 7 to 11 of the Ordinance, or because the registration of the mark creates unfair competition with respect to the applicant's rights in Israel, shall be submitted within five years from the date of issuance of the registration certificate under section 28.