ISRAEL Trends and Developments Contributed by: Sanford T Colb, David Colb, Barak Mashiah and Guy Oved, Sanford T Colb & Co
Background of parties’ marks Sonol Israel Ltd and So Good Ltd (hereinafter, jointly “Sonol”) is one of the largest and best- known energy companies in Israel, and it owns many convenience stores, some of which are located in gas stations. Sonol purchased a small chain of neighbour - hood convenience stores from a third party, which was branded under the mark that is the subject of Application No 1. Yoseph Schwartz, the proprietor of Application No 2 is the owner of a chain of convenience stores in Israel which operates under the name “City Market”. The trade mark applications On 3 March 2021, Yoseph Schwartz, the proprie - tor of Application No 2 filed Application No 2. Approximately one month later, on 7 April 2021, Sonol filed Application No 1. Both marks are stylised marks which comprise the words “City Market” in Hebrew letters. In view of the fact that both marks contained an identical word component, the Israel Trademark Office initiated Competing Trademark Proceed - ings. Pursuant to the provisions of Section 29(a) of the Israel Trademarks Ordinance, Sonol contacted Yoseph Schwartz, the proprietor of Application No 2 and proposed that the parties attempt to reach a settlement which would enable registra -
tion of both marks, in view of the stylistic differ - ences between them and in view of the fact that the “City Market” component, which both marks share, is descriptive and common in commerce in Israel. Yoseph Schwartz, the proprietor of Application No 2, declined the proposal of Sonol, the pro - prietor of Application No 1. As a result, the parties entered into Competing Trademark Proceedings which included the filing of evidentiary affidavits, cross-examination of affiants and submission of written summations. Ultimately, the intellectual property adjudicator at the Israel Trademark Office issued a deci - sion stating that in view of the fact that the “City Market” component, which both marks share, is indeed descriptive and common in commerce in Israel, consumers would pay scant attention to this component of the parties’ marks, and in view of the fact that the remaining components of the parties’ marks are significantly different, there would be no concern about consumers being misled. Therefore, the marks of both par - ties would be registered, which finally occurred at the end of 2023. It is apparent that had the parties reached a set - tlement, they could have avoided the Compet - ing Trademark Proceedings. In which case, the outcome would have been the same, the parties’ marks would have been registered one or two years earlier, and the parties would have avoided significant expenditure.
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