Review of a Trademark Cancellation Request

by Miriam Samis, IL Patent Attorney & US Patent Agent

Contrary to US trademark practice, in Israel the owners of trademarks do not have to periodically submit specimens of use so as to maintain registration. Nonetheless, that does not mean that the validity of a registered trademark cannot be challenged on the grounds of non-use. This is typically done by a third party filing a Cancellation Request pursuant to Section 41(a) of the Israel Trademark Ordinance [hereinafter “the Ordinance”]:

“…any interested person wishing to do so may submit an application for the cancellation of the registration of a trademark in respect of which the goods or classes of the goods or some of them for which the mark was registered (hereinafter – the goods in respect of which cancellation of the registration is requested), on the ground that there was no bona fide intention to use the trademark in connection with the goods in respect of which cancellation of the registration is requested and that there has in fact been no bona fide use of the trademark in connection with those goods in respect of which the application for cancellation is requested or there has been no such use as aforesaid during the 3 years preceding the application for cancellation.”

When the Israel Trademark Office (ITO) deems a trademark eligible for registration, it is assumed that the applicant is already using the trademark or has a bona fide intention to use it within a reasonable time following the filing of the application. Section 41(a) of the Ordinance gives an interested third party an opportunity to demonstrate either that the mark was not registered in good faith and that there was no bona fide intention to use the trademark in connection with the requested goods/services or that no such use was made during the 3 years preceding the application for cancellation.

In 2015, the popular baby stroller company BABYZEN successfully registered its iconic “YOYO” compact stroller in Israel under Registration Number 277654. However, the YOYO registration covered not only baby strollers but also all of the following goods in Class 12:

“Electric vehicles; tricycles for children; cycles; frames for cycles; kickstands for cycles; brakes for vehicles; handlebars; vehicle wheel rims; pedals for cycles; tyres; wheels for vehicles; children’s push chairs; prams [baby carriages]; nacelles; children’s safety seats for vehicles”

In 2022 Shanghai Yaoyo Technology Co, Ltd. filed application number 355544 to register YOYO in Class 12 directed to: 

Electric vehicles; cars; aircraft; automobiles; rolling stock for railways; ships; motors, electric, for land vehicles; automobile bodies; upholstery for vehicles; undercarriages for vehicles.”

Shanghai Yaoyo’s application was rejected on the grounds that it is identical to and therefore confusingly similar to BABYZEN’s YOYO registered mark (IL TM 277654).

Shanghai Yaoyo then filed a Cancellation Request in 2023 pursuant to Section 41(a) of the Ordinance, claiming that BABYZEN’s YOYO mark had not been used in the preceding 3 years in relation to some of the registered goods, specifically-

 “Electric vehicles; tricycles for children; cycles; frames for cycles; kickstands for cycles; brakes for vehicles; vehicle wheel rims; pedals for cycles”  

Shanghai Yaoyo conducted an investigation into BABYZEN’s use of YOYO, and brought evidence demonstrating that the primary use of BABYZEN’s mark relates to baby strollers and accessories. BABYZEN failed to respond to the Registrar’s requests to rebut this assertion.

In view of the evidence brought by Shanghai Yaoyo, and following BABYZEN’s silence on the matter, the Register accepted the request to cancel the following items in BABYZEN’S YOYO registration: 

“Electric vehicles; tricycles for children; cycles; frames for cycles; kickstands for cycles; brakes for vehicles; vehicle wheel rims; pedals for cycles”

Thus, the registered mark was now limited only to 

“Handlebars; tyres; wheels for vehicles; children’s push chairs; prams [baby carriages]; nacelles; children’s safety seats for vehicles.” 

Shanghai Yaoyo had successfully demonstrated that there had been no use of BABYZEN’S trademark in connection with goods in class 12 which seemed to have barred the acceptance of their own application, and hoped that this would clear the way to the acceptance of their application to register their YOYO mark in Class 12.

Takeaway

While applicants may see an advantage in filing their trademark with an extensive listing of goods and services – this is not necessarily advisable. As seen in the above decision, the validity of a mark is up for challenge should, quoting the Ordinance, “any interested person wishing to do so …submit an application before cancellation of the registration of a trademark in respect of which the goods or classes of the goods or some of them for which the mark was registered”. 

The Bottom Line

When filing a trademark, care should be taken to limit the listing of goods/services to the applicant’s use or foreseen use. 

Postscript

“Wait, what happened to Shanghai Yaoyo’s YOYO mark”, you may be wondering. Was the Cancellation Request worth their while? Did they achieve their goal?

Well, that remains to be seen, as it is still undergoing examination. Stay tuned. 

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