In Israel, when applications for similar trademarks are filed, in relation to similar products or services, contentious proceedings are opened between the rival applications. In such a case, the options are either to file counter-arguments, to try to reach an agreement with the other party or to proceed contentiously so that the Registrar would determine which mark should prevail.
The application for registration of the mark “Good Buy” (in Hebrew) was filed on April 15, 2012 and the application for registration of the mark “Good Buy! (Device)” (in Hebrew), on June 14, 2012, both in class 35 for similar services. Contentious proceedings were initiated between the two applications, the parties decided to file their respective evidences and a hearing was held before the Adjudicator.
The three tests which are used in order to determine a preference to a trademark in contentious proceedings are the following: the filing dates of the applications, the use of the marks before and after the application dates and the good faith of the parties.
The test of the application filing date has a minor weight and is of secondary importance, especially when we are concerned by a difference of only two months. As to the test of the scope of use of the marks, the Adjudicator found that, pursuant to the parties’ evidences, the use of the mark “Good Buy” (in Hebrew) began at a significantly earlier date than the use of the mark “Good Buy! (Device)” (in Hebrew), i.e. in 2004 as compared to 2011.
The Adjudicator considered that the third test, the good faith test, was the core of the matter in these proceedings and that it should be determined whether one of the parties intended to take profit of the reputation acquired by the other. This test is applied in two stages, the choice of the mark stage and the use of the mark stage. For the two stages, the Adjudicator found that the weight of evidences was more favorable to the applicant for the mark “Good Buy” (in Hebrew). In addition, in light of the bad faith of the applicant for registration of the mark “Good Buy! (Device)” (in Hebrew) and the confusion caused among the public between the two marks, the Registrar’s authority to allow the parallel registration of both marks, could not be applied.
As a consequence, the Adjudicator ordered that the examination of the mark “Good Buy” (in Hebrew) be continued and rejected the application for registration of the mark “Good Buy! (Device)” (in Hebrew).