Israel Deputy Registrar to Cancel the Registration of VERSACE Trademarks Owned by an Israeli Company

On June 29, 2008, the Hon. Deputy Registrar Noah Shalev Shlomovitz, delivered his decision on a motion to cancel the registration of Five (5) Israeli Trademarks, registered from 1989.

The trademarks all included the name in block letters or variation of the name “Versace”, although according to the decision, no apparent connection to the name of Versace, the famous Italian designer, has been proven.

The owner of the Italian and worldwide marks Gianni Versace S.p.A., has filed a motion in 2000, for the cancellation of the “Israeli” Versace Trademarks from the Israel Trademark Registry. The owner of the Israeli marks, Versace 1983 Ltd., claimed that according to Section 38 of the Trademarks Ordinance, a trademark will not be considered for cancellation if at least five (5) years from the date of registration have passed.

However, after thoroughly considering the matter, the Hon. Judge Shlomovitz ruled that the five (5) year statutory limitation did NOT apply in cases on which trademarks were registered as part of a fraud or if registered in bad faith. In such cases, ruled Shlomovitz, the registrant that filed and was awarded a trademark in bad faith, cannot enjoy the same certainty a normal owner can.

Furthermore, the Deputy concluded that:

The owner of the trademarks chose her marks in bad faith asking to be resembled to the company filing the cancellation; the owner of the marks has used the marks in a misleading way to the public, alongside with unfair competition and in a severe exploitation of the public’s interest as incorporated in trademarks, in a manner that will mislead her clients to believe they are purchasing goods originated from the Italian company who filed for the cancellation.

Moreover, given such bad faith, the owner cannot enjoy the statutory limitation period, as the Italian owner of the marks has a right that her name and the name of its founder will not be used by other.

 (Page 17, l. 19-24)