by Miriam Samis, IL Patent Attorney & US Patent Agent
In Israel, an Opposition can be filed against the registration of an accepted trademark. This was the case with Israel Trademark Application No. 313874 ( “PIT BOSS” in class 11, for barbecues and grills) which was opposed by the company Ohev Zion Ltd. on the grounds that it was confusingly similar to their own registered trademark, TM 334923, and on other grounds, including that the requested mark was descriptive and in common use in commerce. The Opposer’s mark is a stylized mark of which reads as “The Boss Electrics and Kitchen”, in classes 7, 8, 9 and 11 for household electronics.
The Opposer argued that the word PIT relates to the expression “barbeque pit”, which means “a trench in which wood or charcoal is burned for barbequing”. In addition, the Opposer argued that the word BOSS means “in charge of”, and so the meaning of the requested mark is “the one in charge of the grill”. Therefore, the Opposer argued that the requested mark consists solely of words used in commerce to designate or describe the goods, contrary to Section 11(10) of the Ordinance, and is thus ineligible for registration.
The Registrar agreed that the meaning of PIT BOSS is “the one in charge of the grill”; however, the Registrar did not agree that the mark PIT BOSS is descriptive of the goods and that the consumer will see it as a combination that directly refers to a property of the goods. The Registrar further noted that the word BOSS by itself has no meaning regarding grills, and therefore the phrase PIT BOSS is not a combination of two descriptive words that creates a descriptive combination, as claimed by the Opponent.
Absurd by Association
In addition, the Opposer argued that PITMASTER is a known term in English for “a person who oversees the cooking done in a barbecue pit: a professional or skilled barbecuer”. They stated that BOSS is synonymous with MASTER, and thus the term PIT BOSS should be viewed as common in the trade and should be left free to the public domain. The Registrar agreed that the two words may be synonymous, but rejected the argument that this results in the term PIT BOSS being a term common in the trade. The Registrar stated that “accepting the opponent’s argument in this regard [the interchanging of words] would lead to an absurdity”.
Bad Faith Arguments Skewered
Regarding the Opponent’s argument that the requested mark was confusingly similar to the Opponent’s mark, the Registrar found that this argument was made in bad faith. During the examination of the Opponent’s mark, the requested mark (PIT BOSS) was cited against the Opponent’s mark, and in order to overcome the rejection, the Opponent responded by stating that there is no similarity – visual, phonetic and/or conceptual between the two marks, and the unique design of the mark makes it inherently distinctive. The Registrar reprimanded the Opponent’s counsel saying that initiating an opposition on the grounds that the two marks are confusingly similar directly contradicts the Opponent’s remarks made during examination, and such conduct by a litigant is unacceptable. As suggested by the Registrar, the Opponent withdrew the opposition on the grounds of consumer confusion between the two marks. However, the opposition on the grounds that the requested mark is descriptive of the goods still stood.
However, the Registrar did not find that the word BOSS is a common word used in the trade and its addition to PIT does not render it descriptive of the goods; therefore the combination of the two words was not found to be descriptive. The Registrar rejected the opposition allowing both marks to co-exist on the Register.
In recent years, the Israel Trademark Office (ITO) has adopted a rather harsh standard in determining the distinctiveness of a word mark using, and perhaps this is why the Opponent believed that they had a strong case. However, as noted above, the Registrar ruled that PIT BOSS was sufficiently distinctive and eligible for registration. It is possible that this decision may be an indication that the ITO may be softening somewhat the harsh distinctiveness standard held until now.
Time will tell.