Written by our Partner Nadav Applebaum
About a year ago, adv. Yaniv Gal, called me with a problem. One of his clients, an insurance agency called Agenda, had discovered that another entity was using the exact same name to promote courses in real estate and investments. For nearly a decade, both businesses had operated in parallel, each growing in its respective domain. However, over time, the insurance agency began noticing increasing customer confusion between the two.
Concerned, the agency took action: about two years ago, it registered Agenda as a trademark with the Israeli Patent and Trademark Office (ILPO).
Shortly after, it came to light that the competing business had also filed to register Agenda as its trademark, and that its application had been accepted for publication. That’s when the case came to me. On behalf of the insurance agency, we filed an opposition to the registration, citing the similarity between the marks, overlapping fields of activity, and evidence of actual market confusion.
The opposing party argued that they had been operating for many years—even before the insurance agency was established—and that their services were fundamentally different, supposedly eliminating any likelihood of confusion.
After a full evidentiary proceeding and closing arguments before the Registrar of Patents and Trademarks, our opposition was upheld. The Registrar found the competing party’s behavior to be in bad faith, rejected their application, and even ordered them to pay legal costs. Following the ruling, the parties reached a settlement under which the competing business agreed to gradually phase out the use of the name and refrain from any future use.
Key Takeaways:
Register Your Trademarks Early: Do not delay in protecting your brand. Early registration can be decisive in legal proceedings.
Monitor and Enforce: Regularly monitor your brand’s use in the market and take timely enforcement action when needed.
Seniority ≠ Ownership: The first to use a mark isn't necessarily the one who owns it—the first to register in good faith holds the stronger legal position.
Brands Are Dynamic: Trademarks evolve over time. Keep track of how your brand is used, and stay aware of the broader ecosystem in which it operates.
About a year ago, adv. Yaniv Gal, called me with a problem. One of his clients, an insurance agency called Agenda, had discovered that another entity was using the exact same name to promote courses in real estate and investments. For nearly a decade, both businesses had operated in parallel, each growing in its respective domain. However, over time, the insurance agency began noticing increasing customer confusion between the two.
Concerned, the agency took action: about two years ago, it registered Agenda as a trademark with the Israeli Patent and Trademark Office (ILPO).
Shortly after, it came to light that the competing business had also filed to register Agenda as its trademark, and that its application had been accepted for publication. That’s when the case came to me. On behalf of the insurance agency, we filed an opposition to the registration, citing the similarity between the marks, overlapping fields of activity, and evidence of actual market confusion.
The opposing party argued that they had been operating for many years—even before the insurance agency was established—and that their services were fundamentally different, supposedly eliminating any likelihood of confusion.
After a full evidentiary proceeding and closing arguments before the Registrar of Patents and Trademarks, our opposition was upheld. The Registrar found the competing party’s behavior to be in bad faith, rejected their application, and even ordered them to pay legal costs. Following the ruling, the parties reached a settlement under which the competing business agreed to gradually phase out the use of the name and refrain from any future use.
Key Takeaways:
Register Your Trademarks Early: Do not delay in protecting your brand. Early registration can be decisive in legal proceedings.
Monitor and Enforce: Regularly monitor your brand’s use in the market and take timely enforcement action when needed.
Seniority ≠ Ownership: The first to use a mark isn't necessarily the one who owns it—the first to register in good faith holds the stronger legal position.
Brands Are Dynamic: Trademarks evolve over time. Keep track of how your brand is used, and stay aware of the broader ecosystem in which it operates.
