Section 11(9) of the Israeli Trademark Ordinance establishes the well-known principle according to which a trademark, which is identical or confusingly similar to another prior mark which is already registered with respect to identical goods or goods of the same description, is not capable of being registered.
But what happens when two confusingly similar trademarks are requested by two different entities to be registered at the same time? Does one of the parties have to refrain from registering its trademark even though the competitor's mark has yet to be registered? It is for such cases that section 29 of the Israeli Trademark Ordinance, which deals with rival applications proceedings, was enacted.
According to Section 29, rival application proceedings will be initiated when two applications of similar/identical marks have been filed for registration in Israel in respect of the same goods or description of goods. In such cases, the Registrar will enable the parties to try to reach an agreement which allows for the co-existence and registration of both marks. Any agreement reached is subject to the approval of the Registrar.
If a co-existence agreement is not reached or approved, the Registrar will decide whose rights are superior in light of the evidence and arguments raised and submitted by the respective parties.
The considerations which will be taken into account by the Registrar when examining which trademark should prevail are: (a) the good faith of the respective parties; (b) the scope of use of the marks prior to their filing and thereafter; and (c) the filing date of each application; (that said however, the filing date is the least important of the above considerations).
Recently, an interesting case of rival applications under Section 29 was discussed by Ms. Jacqueline Bracha, Deputy Director of the Israel Patent Office.
Applicant 1, "Kondituria Engel Muzrey Mafe Ltd.", is a family business specializing in the baking of small pastries packed by weight and sold wholesale to retail chains which was established in the 1950s by the family's grandfather, Yitzhak Engel.
Applicant 2, "Shlomo A. Angel Ltd.", is a bakery for the production and marketing of a variety of breads, rolls and pastries nationwide, which was established in 1927.
Both applicants applied for the registration of various trademarks in class 30, in different variations on the founders' respective surnames - Engel and Angel. It should be noted that in Hebrew, the...