The Israeli Trademark Office denied a P&G’s pet food company opposition against a Thai manufacturer of pet accessories & food which filed a trademark application comprising a paw print design. The attempt to claim ownership of a part of trademark, especially acceptable in the field, and which is not used by itself, was refused.
The Iams Company, is a Proctor & Gamble company based in the United States and formed in 1946 . IAMS manufactures and sells pet food. Iams registered in Israel trademark serial number 91,789 in class 31 for pet food, for the shape of a palm of a dog’s paw print.
This trademark was registered in Israel in 1994. The paw print design is a part of Iam’s trademark used on its products under two lines – IAMS and EUKANUBA. Iams is also the registered owner of Israeli Trademark 98007 in class 31 for pet food, for another logo which includes the paw print design.
Hunter Group is a Thai company based in 1991 and also engages in the manufacturing and marketing of an array of products associated with pets. Specifically, Hunter filed an application to register the logo mark SLEEKY with a double paw print design. This logo mark is the primary trademark used by Hunter.
Iams filed an opposition. In the Opposition Iams argued that the SLEEKY double paw print design mark lacks distinctiveness, and that it should be refused in view of the Iams paw print design logo registered trademarks. Iams also argued her paw print design was well known and that Hunter chose its trademark with bad faith trying to enjoy Iams reputation in its marks. Iams did not argue that there was actual consumer confusion.
The opposition was denied.
The Patent, Trademark & Designs Office Registrar, Mr. Kling, handed down the decision. Mr. Kling began its analysis with Section 9(11) to the Trademark Ordinance, the purpose of which is to prevent registration of applications, where consumers will be misled to believe a product they purchased originates from a source other than the trademark owner. Case law provides three main tests: the sight and sound test, the type of goods and customers test and the other circumstances test. There are a number of secondary tests.
The sight and sound test, is not an easy one in this case. The marks compared are these:
The Requested Mark
Iams considered the paw print design to be the dominant part of its trademarks therefore it asked the Trademark Office to give the paw print design more weight than the words part in the logos it used (which also included EUKKANUBA and the paw print design). While Iams made this argument the Registrar found that it failed to bring any evidence showing how consumers are used to seeing its marks. Moreover, without the necessary evidence, since the paw print design was only a small portion of the mark and given the rule that the trademark must be seen a whole, the Registrar did not accept Iams argument that the paw print design was the dominent part of Iams trademarks.
But, the Registrar did not stop there. Mr. Kling stated that even a comparison of the Iams paw print design itself with the Hunter double paw print design as they are specifically used included various differences. The use of a paw print for pet food was also considered by the Registrar to be suggestive at best. Given all the above, the Registrar found the use of the double paw print design by Hunter did not raise a likelihood of confusion under the circumstances.
Moving on to the two remaining tests, the Registrar found that the test of goods type and consumers was satisfied since both marks were in class 31 for pet food and both companies argued their goods were of the highest quality.
In the test relating to the other circumstances of the case, the Registrar stated that weight must be given to the fact that another third party company had a trademark over a paw print design. The significance of this third party registration was that the registration was agreed to by Iams. This amounted to evidence to show that Iams agreed to a co-existence of paw print design trademarks. In addition, the Registrar noted that animal body parts were common in the trademark registry and compared the attempt to claim ownership in a common design in the field to an attempt to claim ownership in a dictionary word. Thus, the Registrar concluded that the trademark applied for by Hunter is not sufficiently similar to Iams trademarks such that consumers would be mislead.
In addition, the Registrar noted that Iams provided sufficient evidence to show that its products were known and have reputation due to high volume of sales all under the Iams and paw print design trademarks. Iams however, failed to show that it had reputation in the paw print design alone. Iams could not bring a single case showing that a consumer was confused in fact. As a result the other arguments made by Iams were also rejected. The Registrar found the SLEEKY logo mark distinctive and allowed its registration.
This decision was handed down on June 17, 2012.