(A1) Notwithstanding the provisions of subsection (a), an application for the erasure of a trademark due to the fact that the application for registration of the mark was submitted in bad faith may be filed at any time."
- The application for deletion was filed, as stated, on December 14, 2022, about nine months after the registration of the mark, and therefore it is possible to examine all the grounds for deletion listed in section 39 of the Ordinance.
- As for the burden of persuasion, in an application for the erasure of a registered trademark, this burden is constantly placed on the applicant for its deletion. However, the burden of bringing evidence may shift from one side to the other. And if at the end of the proceeding there remains doubt, it will act in favor of the owner of the registered mark [High Court of Justice 144/85 Klil Metal Industries in Tax Appeal v. Registrar of Patents, Designs and Trademarks, IsrSC 42(1) 309, 318 (1988)].
- Section 46(a) of the Ordinance provides as follows:
46 " (a) The valid registration of a person as the owner of a trademark will entitle him to exclusive use of the trademark on the goods in respect of which the mark is registered and in all matters relating thereto, subject to any conditions and qualifications registered in the register."
- The right to make unique use of a registered mark derives from the power of a registered mark, to prevent the use of an identical or similar mark for the same goods or to prevent the registration of such a mark.
- As is well known, the right to exclusive use, i.e., the protection afforded to registered trademarks, oscillates between the two ends of a broad area called in case law the "axis of theories" [Other Municipality Applications 941/05 Cooperative Vintners Association of Rishon LeZion Wineries and Zichron Yaakov v. HaKerem Company Ltd., (Nevo 17 October 2006) (hereinafter: the Vintners Association)].
- The broadest protection is given to imaginary names that have no dictionary meaning, and to arbitrary names whose dictionary meaning has no connection to the goods they represent. At the other end of the axis are the descriptive names that do not receive the protection of the Ordinance, since they directly indicate the goods themselves (generic marks) or the characteristics of the goods, their nature and their character (descriptive marks). The rule is that there is no reason to detract descriptive names from the common language, to expropriate them from the public domain and to appropriate them for the benefit of a particular dealer in respect of defined goods, unless in the course of their use they acquire a distinctive character or have been significantly shaped [see in this regard Civil Appeal 3559/02 Toto Gold Subscribers Club in Tax Appeal v. Sports Betting Regulation Council (Nevo, September 26, 2004), (hereinafter: the Toto Gold case) and a long list of judgments and decisions in which the judgment was quoted].
- Between the descriptive signs that do not receive protection (unless they have acquired a distinguishing character) and those that are arbitrary, the case law has defined the suggestive signs on the theoretical axis. Regarding implicit signs, the case law held that the connection between them and the goods requires the consumer to think [see Civil Appeal 5792/99 Communications and Religious-Jewish Education Family (1997) in a Tax Appeal - "Family" Newspaper v. SBC Advertising, Marketing and Sales Promotion in a Tax Appeal - "A Good Family" Newspaper, IsrSC 55(3) 933 (2001) (Nevo, May 23, 2001) See also A.H. Seligson in his book Trademark Law and Related Laws (Schocken Publishing, 1973, at p. 40). The "thought required" depends to a large extent on the uniqueness and originality of the sign. It is not enough that the mark (literally) does not directly describe the goods in order to determine that it is an allusive mark of an innate distinguishing nature.
- The strength of a mark and the protection it receives also depends on its design. The more complex the design, the more limited the protection it will receive and is limited to the design. On the other hand, a mark without a (verbal) design is granted a broad protection that applies to all possible designs of the mark [see in this regard, paragraph 34 of my decision in opposition to the registration of mark No. 278069 Mitzvot Spring 2014 Pastry in a Tax Appeal v. Want Nature in a Tax Appeal (Nevo, September 30, 2020). See also Kerly's Law of Trade Marks and Trade Names, 16th ed.. On page 407, para. 052-11, footnote 76].
- In fact, the verbal mark grants its owner "exclusivity" in the word that constitutes the mark. Hence, any other mark that includes the word in the registered verbal mark that is requested in respect of those goods or goods of the same definition will usually not be eligible for registration even if it is requested in its designed form. There may be exceptions to this rule, when the word in question includes one or more additional words in addition to the word protected by the mark [see Application for Registration of 268446 Mark Super-Pharm (Israel) in Tax Appeal v. Abbott Laboratories (Nevo 11.3.2021)] or the design of the word is so unique that it overshadows the verbal similarity ] Section 70 of the Decision Regarding Objection to the Registration of a Trademark 574852 (Designed) Sociedad Anónima DAMMv. HIJOS DE RIVERA, A. (Nevo 23.1.2019)].
- The broad protection afforded by the registration of a literal-dictionary mark (which is not imaginary or arbitrary) to its owner may harm the freedom of expression and occupation of the public engaged in the field [see the Ozzi case and the Toto Zahav case in the judgment of Justice Beinisch. As for the use of the words "gold" and "sun" – as discussed in the judgment of Justice Grunis in Civil Appeal Authority 7836/09 O.P. Shemesh Investments in a Tax Appeal v. Naama Menashe (Nevo 13.12.2009)], and therefore, in my opinion, it is necessary to examine his eligibility for registration in a strict manner. The fact that the mark in question is the literal-dictionary and is not imaginary or arbitrary in relation to the goods, is sufficient to determine that the mark lacks an innate distinguishing character, or that its distinguishing character is very weak. and also to transfer the burden to the applicant to prove that the mark has acquired a distinguishing character. Insofar as the applicant claims that the mark implies, the degree of originality and uniqueness of the mark must be carefully examined.
- The threshold required to prove that a literal-dictionary mark related to the goods (and which does not imply) acquired a distinguishing character is high – it must be proven by solid evidence that the dictionary word, without any design, has become identified with the applicant alone (regarding the increased burden of proof, see paragraph 21 in the case of the Winegrowers' Association). Moreover, the applicant must register a verbal-dictionary mark related to the goods or the definition of the goods, and there is an increased duty of good faith. It is sufficient that the applicant is aware of a true use of the word as a trademark by another dealer in the field when he wishes to register the mark in order to cast doubt on his good faith.
- These rules are consistent with a series of decisions of this court in which the registration of literal and dictionary marks related to the goods or the designation of the goods has been deleted or the registration of such marks has been refused [see, for example, Application for Registration of Trademarks 379688, Israel Discount Bank 379686 in a Tax Appeal (Nevo, July 23, 2025); Trademark Objection 364915 Competition between 372573 Trademarks, 8364915 SharkNinja Operating LLC v. Medipod in a Tax Appeal (Nevo, May 12, 2025); Application for Registration of Trademark No. 359052 (EASY BOARD Easy Board) Tambour in Tax Appeal (Nevo 28.7.2024); Application for Trademark Registration of 359606 (FOODY HOME) from Powder in Tax Appeal (Nevo 10.7.2024); Application for Trademark Registration 311811 CREATE ML Apple Inc. (Nevo 17.3.2021); Application for Trademark Registration 335272 "SPACE" JetBrains s.r.o (Nevo, July 26, 2022); Objection to a Trademark 288035 Campus in a Tax Appeal v. Shalom College in a Tax Appeal (Nevo, July 27, 2021); Application for Registration of a Trademark 345605 "Gourmet" Hevel Settlements, Maon Cooperative Agricultural Association for Regional Development in a Tax Appeal (Nevo, July 30, 2023)].
- As will be detailed below, the application of the above rules leads me to the conclusion that the law of the mark is erasure.
The registered mark lacks an innate distinguishing character
- The registered mark "Mazor" is registered for "the provision of consulting services (other than legal advice) for the purpose of exercising rights due to a defective medical condition or injury". There is no dispute between the parties that the word "remedy" is a dictionary word, which is not imaginary and its meaning in modern language is a medicine or a cure. The parties' area of practice is assistance in exercising medical rights. The word "Mazor" is related to the field of medicine and is also related to the services provided by the owner of the sign to people in a poor medical condition and therefore is not arbitrary in relation to services. Therefore, it is not surprising that an Internet search reveals that there are many additional service providers in the field of medicine who use the name "Mazor" to describe their services, including businesses for providing guidance and medical accompaniment, natural medicine, pharmacies, psychiatric medicine, clinics of the HMOs, and more (regarding the Registrar's authority to conduct an independent search, see also paragraph 25 in the matter of the Vincentrists' Association). In this context, see also Appendix 6 to Baliciano's affidavit, which includes photographs from the search engine "Google", which shows, for example, that there is a medical center called Mazor. This commercial reality contributes to the conclusion regarding the weak distinguishing nature of the registered mark.
- A generic trademark is the name of the product or service provided by the trademark owner. I do not believe that the word "mazor" is a generic word in relation to the area of occupation of the owner of the mark, as claimed by the applicant for deletion. Nor do I believe that this is an implicit sign, as the owner of the mark claims. In my opinion, there is no uniqueness or originality in the choice of the mark.
- The owner of the mark claims that the word "medicine" is also an acronym for the words "exercise of medical rights." A similar argument was also raised by the deletion applicant regarding her unregistered mark ("exercise of medical rights and benefits"). First, the mark is not registered in the way that it is customary to display initials (in Hebrew, acronyms are marked with quotations (") before their last letter) and the owner of the mark does not use the symbol as an acronym. I also do not see any uniqueness in the combination of words into an existing dictionary word related to the field of occupation in order to give the mark a distinguishing character.
- In view of the aforesaid, I am of the opinion that the registered mark lacks an innate distinguishing character or at the very least, is of a weak innate distinguishing character. I will now examine whether the sign has acquired a distinguishing character.
The registered mark did not acquire a distinguishing character
- As stated above, the standard required to prove an acquired distinguishing character for a dictionary sign related to the goods (and which does not imply) is high. The owner of the mark did not meet this burden at the time of examining the mark in 2021, nor in the framework of the proceeding before me.
- Belliciano attached to his affidavit a series of appendices to support the claim that the mark acquired a distinctive character as a result of use and publication. These appendices do not prove widespread use of the verbal mark without any design. Appendix 1 to the affidavit presents various publications of the trademark owner, and with regard to some of them, it is not clear when they were published. You can see the first publication in 2014 and another publication from 2019. In most of the publications that were presented, the owner of the mark uses the mark in a designed manner that looks like this (hereinafter: the stethoscope logo). Similarly, in Appendix 2 to the affidavit, letters of thanks were attached, the date of some of which is unclear. The earliest of these is from 2014 and is also used in the stethoscope logo. Appendix 5 to the affidavit includes copies of the trademark owner's website and social media shelves. It is not clear when the publication will date. One publication mentions the year 2011 and it appears that the Facebook page is dated February 16, 2014. These publications also use the stethoscope logo. Appendix 4 to the affidavit is a documentation of internet traffic data, but it is not clear what year it is in and there is no name for the domain for which the data was presented, except for the title "Mazor Medical Rights". It is not possible to learn from this appendix that the verbal mark is identified with the owner of the mark. As to the scope of the investment and sales turnover, Mr. Belliciano attached to his affidavit Appendix 7 as "a document attesting to the sales turnover and advertising expenses of the trademark owner". The document presents Mr. Belliciano's expenses from 2011 to 2017 and not of the trademark owner. For the owner of the mark, there is a report from 2016 to 2021. However, it is not possible to learn from the reported expenses regarding the publication of the mark as it is. In view of the aforesaid, I am of the opinion that the owner of the mark did not meet the burden of proving that her mark, as it was recorded, acquired a distinguishing character.
- I am aware that the mark is being examined by the Trademarks Department. The department determined on the basis of the materials before it that the mark acquired a distinguishing character, but this does not shackle my hand. The question of the acquired distinguishing character is an evidentiary question whose in-depth clarification was made possible in this adversarial proceeding.
The application for registration of the mark was filed in bad faith
- The heart of the dispute between the parties is the question of the good faith of the trademark owner, both at the time of filing the application for registration of the mark and in its conduct vis-à-vis the Authority, and in the manner in which its rights are enforced vis-à-vis the applicant for deletion.
- According to Section 39(a1) of the Ordinance, registration in bad faith constitutes an independent ground for deletion of a trademark. A request for deletion on this ground may be submitted without a time limit:
"39...