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  Few important rulings were given by the trademark office, concerning a petition to erase a trademark due to lack of use
Dikla Diari, Appelfeld Zer Fisher

24/7/2007


In a decision about MIG (a petition to erase a register trademark no. 138834) the registrar ruled about a petition to dismiss a trademark due to lack of use.

The owner of the trademark and the petitioner both work in the Russian journalism field in Israel and publish magazines in the Russian language for the Russian public in Israel.

The newspaper of the petitioner is published under the name MIG in a similar design to the one that is registered in the trademark office under the name of the trademark´s owner.

The petitioner requested to erase the trademark since the trademark owner didn’t use it for the last 3 years except for a single use, which was allegedly performed in bad faith.

According to the petitioner the main use of the trademark´s owner in the trademark is graphical design and publishing workbooks and advertising brochures. They didn´t work in journalism since 1999. The brochure was published in bad faith and not as real business activity. The trademark was registered as a "defensive trademark". The petitioner however publicizes a weekly magazine and a website since 2003. They chose the name MIG in a coincidental way since it´s the initials of the company and the meaning of a word in Russian.

According to the trademark owner, they didn´t use the trademark since the Israeli market is too small for two newspapers in the same name. They also had to invest a large amount of money in litigation against the petitioner. The aggressive competition that the petitioner created prevented them from continuing to publish the newspaper. The petitioner acted in a bad faith. The graining control attempt of the petitioner caused the reduction in use.

The decision:

In the matter of the use in the trademark:

The trademark owner failed to convince the registrar that the brochure they published in 2003 is enough to be considered as a "use" according to clause no. 41 in the trademark ordinance. The website is non-relevant, as it is not use in the same class.

The fact that the newspaper was published only once can´t consider as a "normal use" in a "normal business". In addition the timing was odd and the explanation wasn´t satisfied. Therefore the registrar rules that the trademark owner didn’t use the trademark according to the relevant good, in the last 3 years before the petition to erase.

Special circumstance in trade:

The trademark´s owner claimed that even if the registrar rules that there wasn´t a use in the trademark in the last 3 years before the petition to erase, there was special circumstance in trade that prevented the use- the acts of the petitioner that created a "block market and wild competition". 

The registrar thinks that the justification for the lack of use is mainly because the lack of finance profitability in publishing a newspaper as they did before.

The aggressive competition indicated by the trademark owner can´t be considered a special circumstance in trade. Competition exists in almost every field and the Trademark Act requires "special circumstance in trade". A competition in a market were the trademark´s owner work, hard as it may be, can´t be a special circumstance that justified lack of use. Actually, the competition was supposed to encourage the trademark´s owner to use their trademark even more in order to maintain their status in the market. 

The registrar ruled that special circumstances in trade which justify the lack of use did not exist. Therefore, the petition to erase the trademark was accepted.

Migdor Ltd. v. Boris Gail and Oleg Kaldovasky- A petition to dismiss a registered trademark no. 138834- Mig in the Russian language, as a result of lack of use.



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