by Eran Soroker & Robert Dorneanu
Urbanica vs. ūrbanika (with a “K”)
Background: Our client, Urbanica is an Israeli success story with huge fashion and design stores in the most prominent malls across the country, boasting a net worth of approximately 200 million NIS (approximately 54 million US$) in 2016.
As the owner of several registered trademarks under the name of “Urbanica” both in Israel and abroad, it came as a surprise when The Israeli Trademark Registrar informed us of a competing trademark application for “ūrbanika “. That’s right – identical to the Urbanica registered trademark but with a “K”. They also claimed precedence as they had been using the name “ūrbanika” (with a K) prior to Urbanica’s registration.
The Trademark Registrar initiated interference proceedings between the applications.
Eran Soroker and Robert Dorneanu from our litigation team, researched further to discover that “ūrbanika” was a one-shop design and furniture store located in the city of Netanya. Initial negotiations between the parties were not successful and resulted in a full scale legal battle: “ūrbanika” with a k filed motions to cancel the registered urbanica trademarks in Israel; On behalf of Urbanica, our litigation team, filed a lawsuit against “ūrbanika” with a k, in the sum of NIS 1,000,000 with the Central District Court.
After intense mediation the parties reached a satisfactory settlement which brought an end to all the legal proceedings between the parties.
As part of the settlement, “ūrbanika” with a k changed its name and is now operating under a different name – “ūbject”.
Our litigation team did not “ubject” to that…