No Time Limit To Cancel Trademark Registrations Filed In Bad Faith

Author:Mr Luiz Blanc and David Gilat
Profession:Reinhold Cohn Group

In Habitat Ltd v Habitat International (CF (TA Distr) 29227-03-16, November 13 2017) the Tel Aviv District Court under Judge Altuvia rejected a trademark infringement claim which had been filed by Mr Meerovich, the owner of a local furniture chain, against the purported use of the mark HABITAT in Israel by the international furniture chain, Habitat International.

The court accepted Habitat International's defence that the several HABITAT registrations owned by Meerovich since 1976 had been filed in bad faith in order to exploit the global goodwill attached to the mark HABITAT since the 1960s. The court ordered the cancellation of Meerovich's trademark registrations and asserted that, unless the parties reached a different agreement concerning the respective use of the mark HABITAT, the international chain could use in Israel its trademark HABITAT for the products and HABITAT INTERNATIONAL for its promotional activities. The court further ruled that Meerovich could continue using the mark HABITAT for his local chain because Habitat International had tolerated its continuous use for over 40 years; and besides sporadic sales, it had no presence in the Israeli market during this period.

Habitat International is the successor in interest of Habitat Designs Limited (HDL), which was established in 1964 by the internationally recognised British interior designer Sir Terence Conran. At the end of 1972 or 1973, Meerovich opened a furniture shop in Israel using the brand name HABITAT. At that time, HDL had already been successfully using the trademark HABITAT in Europe with respect to furniture and a variety of decorative articles for home interiors.

In 1975 Meerovich established the local company Habitat Ltd, and in 1976 he filed several trademarkapplications for HABITAT. At that time, HDL owned Israeli trademark registrations for HABITAT dated 1973. These old registrations were cited against and blocked the registration of its applications during their examination by the Israeli Trademarks Office.

In order to overcome the citations, Meerovich had filed cancellation actions against the old registrations on the grounds of non-use in Israel between 1975 and 1977. HDL decided against defending the old registrations in Israel and submitted a notice to the Israeli Trademarks Office to that effect. The notice included a statement that HDL reserved its right to use the mark regardless of the result of the cancellation action. Consequently, the old...

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