(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 fact that the legislature determined that there is no statute of limitations on an application for deletion of a mark due to lack of good faith, indicates the great importance that should be attributed to the good faith of the applicant to register a mark.
- The expression "good faith" has different meanings, and its meaning in a given context is determined according to the purpose and purpose of the legislation, and in our case, it is determined in accordance with the purpose of trademark law [see paragraph 16 Other Municipality Applications 9839/17 Habitat in Tax Appeal v. CAFOM (Nevo, December 17, 2018)]. The registration of a trademark is intended to protect the reputation of the trademark owner, to prevent misleading the public and to enable a fair trading life. The Trademarks Ordinance is part of a system of laws that deal with the protection of fair trade, fair competition, and the absence of deception (see page 898 in the Toto Gold case). The Ordinance also cites unfair competition as grounds for the deletion of the mark under section 39(a) of the Ordinance, or its ineligibility under section 11(6) of the Ordinance.
- In his article "The Commercial Torts Law, 5759-1990 - Fairness in Competition and Trade Secrets", the scholar Deutsch refers to the concept of "unfair":
"The content of the concept of 'unfair' is derived from a wide range of considerations. Among these considerations, the improper use of power is superior. The principle of fairness comes first and foremost, that the strong side must exercise its preferred power within limits and taking into account the protected interests of the weak side."
- The deletion applicant is the owner of a small business that is active mainly in the southern region and the scope of its activity is not large (see Appendix C to Lavi's affidavit – a copy of the Applicant's profit and loss reports for the years 2008-2019). The Applicant for Erasure established its transaction bearing the name "M.Z.O.R." on May 1, 2007 (Appendix A to A. Lavi's affidavit). The deletion applicant also used this name in a formatted form as early as 2007 (see paragraph 2 of Lavi's affidavit and Appendix E to Lavi's affidavit – a copy of a tax invoice from 2010). The designer mark of the applicant for deletion (hereinafter: the logo of the two men) looks like this:
- On June 15, 2011, the Office of the Attorney General's Office filed a request for a temporary injunction against the applicant for deletion. This application also reflects the activity of the deletion applicant until 2011. The injunction was requested against the deletion applicant, who was defined as a licensed dealer under the name "Mazor – Exercising Medical Rights and Benefits". In other words, in 2011, the activity of the applicant for deletion was overt and apparently not negligible. It is clear that an injunction would not have been requested against a dealer whose activity is covert or non-existent (Appendix B to Lavi's affidavit).
- The evidence before me does not indicate that the owner of the mark was active under the name Mazor prior to 2011. Although the trademark owner's website, which was attached as Appendix 5 to the affidavit of Beliciano under the title "Who We Are", it is stated that "since 2009 Mazor – Exercising Medical Rights" has been assisting clients in exercising their rights, this is not supported by its evidence. In any event, the evidence shows that the owner of the mark chose to represent herself in publications and signage in her offices, mainly by means of the stethoscope logo.
- It is not possible to determine with certainty whether at the time of the choice of the name in 2009 or 2011, the owner of the mark was aware of the existence and activity of the applicant for deletion, but there can be no dispute that in 2016 (five years before it requested to register the mark) it was aware of this activity, and even sent the applicant a warning letter in which the owner of the mark demanded that the applicant for deletion, before registering it, stop using the mark "Mazor" (see a copy of the correspondence between the parties from 2016, Appendix E to Lavi's affidavit). At this stage, as the deletion applicant also replied to the letter, the parties could have acted in parallel while differentiating their activities by means of the different designed marks used by each of them (the deletion applicant with the logo of the two persons and the owner of the mark with the stethoscope logo). Indeed, it appears that this was the case for about six years until March 27, 2022.
- Since 2016, the owner of the mark has significantly expanded its advertising and promotional activities (see Appendix 7 to the affidavit of Beliciano – report for Mazor) mainly through the stethoscope logo. All the while, the deletion petition operated simultaneously, albeit with smaller volumes of advertising and sales. It is clear that in the relationship between the parties, the person with the mark is the strong side.
- On June 22, 2021, the trademark owner filed the application for registration of the trademark "Mazor MAZOR" (literally). The request to examine the mark expeditiously, on the website, was supported by the affidavit of Mr. Bellisiano, who explained the urgency by stating that "the company has recently learned that the mark has been used by unauthorized parties in a manner that violates its rights" (see Appendix D to Lavi's affidavit and the statement of claims from the deletion request). Presentation to the Registrar of incorrect representations by means of the affidavit of the examination on a site in relation to its rights in the mark shines a negative light on the conduct of the owner of the mark.
- Moreover, the very request to register the mark verbally without any design in the circumstances of the case before me is contrary to the purposes of the trademark (see the Byte case), and is therefore tainted by bad faith. The registration of the mark Mazor verbally is not intended to protect the consumer from deception, since it does not differentiate between the owner of the mark and the applicant who used the word earlier. The registration also does not protect the reputation of the trademark owner since it has not been proven that the word is exclusively identified with the owner of the mark. The purpose of the registration is only to prevent the competitor (the applicant for deletion) from making use of the word "remedy" and thus to block its activity. The owner of the mark improperly exploited her preferential economic power and being a more sophisticated party in order to push out the applicant for deletion.
- Indeed, on March 27, 2022, shortly after the trademark was registered (March 2, 2022), the trademark owner sent a warning letter to the applicant for deletion for infringement of the "Mazor" trademark, and in May of that year she even filed a lawsuit in the Ashdod Magistrate's Court for monetary and declaratory relief. This is a registration that the Supreme Court defined in the case of Izhiman (Civil Appeal Authority 9711-17 Chain Stores of Izhiman Coffee v . Mazen Izhiman (Nevo 1.2.2018, paras. 8-9 of the judgment) as a registration for defensive reasons and as such is tainted by bad faith.
- Moreover, for at least six years, the parties worked side by side using designed marks that differentiated themselves (the stethoscope logo and the people's logo), it appears that during these years there were few cases of error among the customer public (see Appendix 10 to the Beliciano affidavit, which documents individual cases in which customers were misled). Recently, it appears that the owner of the mark is using a designed mark with characteristics similar to those of the two-person logo of the applicant for deletion. However, it is not clear when the use of the new mark by the owner of the mark began, since the evidence she submitted showed use of the stethoscope logo, and the website and the evidence requesting deletion showed a different logo (see, for example, Appendix F to Lavi's affidavit).
| The designer logo of the deletion petitioner since 2007 | The logo of the owner of the mark |
- Even in the additional evidence that the trademark owner approaches, it seems that it is the newly designed mark that increases the risk of misleading.
- In paragraph 3 of its statement of claims, the owner of the mark argues as follows:
"All of the Applicant's arguments in this matter are centered on the claim that the Respondent chose to enforce her rights against parties that use her mark unlawfully and while misleading the public and getting rich at her expense, and it is not impossible that if a lawsuit had not been filed against the Applicant (the TA proceeding). 53801-05-22, the "Claim" or the "Proceeding") then this application would never have been filed, and the Applicant has no choice but to complain about herself when she did not submit a trademark herself for registration. It should be noted that there is no lack of good faith in the enforcement of the respondent's rights. On the contrary, the Applicant is the one who acts in bad faith while misleading the general public by using the Respondent's mark, and now in order to try to evade the law, she has filed a motion for deletion in an attempt to restrict the Respondent's steps."
- Indeed, it is reasonable to assume that the request for deletion would not have been filed if the owner of the mark had not filed the claim for infringement of its registered mark. The request for deletion would not have been filed even if the owner of the mark had acted fairly and sought to register a mark that reflects the commercial reality. The fact that an applicant for deletion did not file an application for registration of a trademark on its behalf does not give the trademark owner legitimacy to exercise his preferred power without taking into account the protected interests of the applicant for deletion. I do not believe that the deletion applicant wishes to restrict the steps taken by the trademark owner, since already in 2016 the deletion applicant agreed that the parties would act in parallel. The owner of the mark is the one who acts unfairly and takes advantage of the registration of a weak mark that was done in bad faith in order to harm the applicant for deletion.
Conclusion
- The registered mark lacks an innate distinguishing character or was acquired and was requested in bad faith and is therefore subject to deletion. The owner of the mark will bear the expenses of the deletion application in the amount of NIS 1,800 and her attorneys' fees in the amount of NIS 30,000, including a tax appeal, which will be paid within one month from the date of this decision, otherwise linkage and interest differentials will be borne. This decision will take effect within 30 days from the date of submission of the decision. For the attention of the parties – the parties are obligated to notify the filing of an appeal.
Dr. Roya Israeli