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Of Tene Trademark Cancelled for Lack of Use

In late February, the Israeli Trademark Office cancelled a logo trademark for non use in a dispute between Of Oz Industries (1991) Ltd. v. Of Tene Meat Industries Ltd.

The owner of the mark – Of Tene – owned until 1991 a meat producing factory. As of 1991, Of Tene rented the Of Oz her factory and also granted Of Oz an exclusive license to use the OF TENE trademark over meat products. The request to cancel the logo trademark of OF TENE was brought by Of OZ in 2008.

In accordance with section 41 of the Trademark Ordinance, a trademark will be cancelled if it is not used for three years prior to the filing of the request. When considering a request for cancellation of a trademark, the Trademark Office will consider three elements: 1. if the trademark to be cancelled was used or not; if it was not, then 2. whether there are special circumstances in trade according to which the trademark could not be used; and finally 3. if the trademark registrar should exercise his judgement and decide not to cancel the registration.  It is up to the party filing the request to file evidence sufficient to show non-use or at least make a prima facie evidence of non-use, at which time the burden would shift to the trademark owner.

In evidence, Of Oz, filed an affidavit which stated that in 1991 Of Tene leased Of Oz the factory, sold her the then existing stock and manufacturing materials and granted a license to make use of the OF TENE trademark. This, the patent office said, was sufficient to shift the burden of evidence to the trademark owner.

In evidence, the trademark owner, Of Tene, stated that Of Tene continued use of the trademark as part of its company name and on some documents the company produced. The trademark owner also argued the grant of license and the use by the licensee should be attributed to the trademark owner.

Use as Company Name – IP Judge, Shoshany Kaspi, refused to accept use as a company name to be sufficient trademark use under the Trademark Ordinance unless the company name is affixed on the products or services included in the description of the trademark. In this case, there was no evidence of such use.

Use through Of Oz – The Trademark Office IP Judge cited with consent The Supreme Court case in Gigiesse Confezioni v. Vampom Ltd. (2010) stating that the use of registered trademark by a an unregistered licensee will not be attributed to the trademark owner.

The Trademark Office further noted that the trademark owner failed to show that there was any use of the trademark in question, such that even if he licence was recorded it could not have afford use to the trademark owner.

Certain circumstances would allow use of a registered trademark by one company, who is not the trademark owner, to be attributed to the trademark owner. This can occur, the Trademark Office says, if it can be shown that the two companies are linked in such a way that their separation would be impractical or artificial. (See Miss Lagotte). In this case the two companies are independent from each other whose only connection is a tenant – landlord relationship. Therefore the use made by the requester could not be seen as the use by the trademark owner.

Furthermore, the Trademark Office reviewed whether special circumstances in trade existed such that there were reasons why the trademark should not be cancelled. The purpose of section 41 to the Trademark Ordinance according to which a request to cancellation can be filed is to allow traders in the field to use trademarks which remained registered but were not used commercially and there is no intent to use the same. Judge Kaspi stated that the Trademark Office may find special circumstances in trade if the requester of the cancellation is a licensee whose relationship with the trademark owner is terminated and thereafter filed a request to cancel the trademark. This case however is different because no evidence was filed to show use of the registered trademark. Consequently the trademark was cancelled.

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