By Tony Greenman, Attorney at Law
Israel's Supreme Court has ruled that the Patent and Trademark Authority acted correctly when it allowed the registration of the mark E! Online for online services despite the existing registration of the mark T Online in the same class.
The earlier registration, belonging to Deutsche Telekom had been accompanied by a waiver, where under the registrant had waived any claim to the exclusive use of the word "online". This waiver had, of course, been demanded by the Registrar due to the generic or descriptive nature of the word.
The Supreme Court ruled that the effect of the waiver is to cause the word to be transparent when accessing the similarity of the marks. Since there is no inherent similarity in the remaining parts of the marks the letters E and T. The court also stressed that when marks consist in part of generic terms, the consumer will focus his attention on the none-generic part of the mark.
The court also pointed out that when dealing with marks used on the internet, the visual aspect of the mark is more dominant than the sound.
The court added that to allow the claim of appellant would give it de facto monopoly over the term to which it had already waived such claim.
C.A 1677/05 Deutsche Telecom A.G. v. E! Entertainment Television, Inc.