July 10, 2013
Israel: the opposition filed against the registration of the trademark ONESTO by the company ENSTO OY, was successful

The Finnish company ENSTO OY filed an opposition against the registration of the stylized trademark  in relation to various electricity products in class 9 by the Chinese company Yueqing Onesto Electric Co., Ltd.
 
The opponent owning the registered trademarks ENSTO in Israel (word and stylized marks) in classes 7, 9 and 11, claimed that there is a misleading resemblance between the marks.
 
A similar procedure took place at the OHIM (the European Registry) where the opposition was successful after appeal.
 
In Israel, the degree of resemblance between the marks is examined mainly according to the “Triple Test”: the appearance test – the sound test – the clientele, type of goods and marketing channels test.
 
In her decision, the Adjudicator decided that there is a misleading resemblance in the appearance of the marks, mainly due to the fact that the Israeli consumer is not well acquainted with the Latin alphabet and is unable to make a difference between the arrangement of the letters included in both marks. In this regard the Adjudicator’s decision differs from the European court’s opinion, pursuant to which the degree of similarity between the mark is low. Regarding the sound test, the Adjudicator considered that there is an important phonetic resemblance between the marks. Regarding the clientele, type of goods and marketing channels test, the parties apparently agreed that they were similar. Finally, the Adjudicator decided that the different meaning of both marks (ONESTO originating from the Italian word for “honesty” and ENSTO from the name of its founder) has no influence, since the Israeli public does not usually know the Italian language.
 
As a consequence, the Adjudicator has decided that the mark  is not capable of registration due to the existence of the prior marks ENSTO.