KILLAH Held to Be Confusingly Similar to KILLY

By Dan Berg and Jonathan Agmon

The applicant, European Sports Merchandising B.V. requested to register the trademark “KILLAH” in class 25. The applicant claims it is the owner of the “KILLAH” trademark worldwide and it is being used in connection with clothing of young women.

The opponent, Upcoming TM S.A., claims that it is the owner of the “KILLY” mark registered worldwide and in Israel in class 25. The opponent claims the “KILLY” mark is used for sportswear and sports equipment. The opponent further argues that the “KILLAH” mark is confusingly similar to its “KILLY” mark and thus, it is not eligible to be registered.

The registrar decided that the main issue in question is the similarity between the Opponent’s registered trademark and the Applicant’s requested trademark. Article (9)11 of the Trademarks Ordinance defines which trademarks are not eligible to be registered. The registrar examined the similarity based on the main three tests established in the court’s rulings, referred to as “the triangular test”.

The appearance and sound test – visually, in both marks the dominant element is the prefix “KILL”. Phonetically, both marks are also very similar, one is pronounced “kee-lee” and the other is pronounced “kee-la”.

The type of goods test- both marks have the same list of goods in class 25. The applicant claims that de facto, it sells clothing for young women while the opponent sells winter sportswear, causing no chance of confusion.

The type of customers test- the registrar decided that the customers could be similar. The fact that one trademark is used in connection with sportswear and the other is used in connection with young women’s wear does not avoid overlapping between the two trademarks.

The registrar also decided that both marks were chosen in good faith, but the opponent’s mark was registered earlier.

Having considered all the above, the registrar held that the requested trademark KILLAH will not be registered in the trademarks registry due to the fact that it is confusing similarity to the opponent’s mark KILLY.