Medical Tourism “tops” Real Estate
by Eran Soroker
Top Ichilov and Top Experts Center send the “Top” spinning…
Trademark applications by two parties to register the trademark “Top Ichilov” are the subject of this lengthy proceeding initiated by the Israeli Trademark Office.
Background: Soroker Agmon Nordman, Advocates & Patent Attorneys represent Top Experts Center Ltd. who offer Medical Tourism specialized services. They have a clinic on the 20th floor of an office building near Ichilov Hospital they lease from Ichilov Top Ltd.
Ichilov Top Ltd. argued that they should be entitled to register the trademark “Top Ichilov” as they have been operating a “Luxury Medical complex” since 2007 under the name “Top Ichilov” and have invested substantial amounts in advertising their facilities.
Furthermore, they contended that Top Experts Center Ltd. breached their rental agreement when it applied, at the end of 2011, to register “Top Ichilov” as its trademark. Ichilov Top Ltd. claimed that per the rental agreement, Top Experts Center Ltd. was only licensed to use the trademark but not to register it as its own.
Soroker Agmon Nordman strengthened Top Experts Center Ltd.’s stance by:
(1) Providing samples of Top Experts Center Ltd.’s significant investment in advertising their Medical Tourism Services under the trademark “Top Ichilov”.
(2) Arguing that contrary to Ichilov Top Ltd.’s claim, they do not operate a “luxury medical complex” but merely offer offices for lease as doctor clinics on the 20th floor of an office building.
(3) Asserting that Ichilov Top Ltd. knew and consented to Top Experts Center Ltd.’s activity under the trademark “Top Ichilov” which was no secret, mainly because Top Experts Center Ltd. operated in one of Ichilov Top Ltd.’s clinics.
Ichilov Top Ltd. based their arguments on an extensive affidavit by their current CEO and a short affidavit by their previous manager.
During the proceedings, their testimonies were refuted;
(1) As to Ichilov Top Ltd.’s current CEO’s affidavit, it was refuted based on the fact that he started working for Ichilov Top Ltd. in 2012 and therefore his testimony was not relevant. He did not take part in designing or choosing their trademarks or in the drafting or negotiation of the rental agreement with Top Experts Center Ltd.
(2) As to Ichilov Top Ltd.’s former manager, proof that he was well aware that Top Experts Center Ltd. operated under the trademark “Top Ichilov” and supported this activity was provided. In addition, the rental agreement was signed with Top Ichilov International Ltd., Top Experts Center Ltd.’s former name.
The Israeli Trademark Registrar concluded that Ichilov Top Ltd. acted in bad faith as they knew that Top Experts Center Ltd. use the trademark “Top Ichilov” to market their Medical Tourism services, and therefore rejected their trademark applications and left Top Experts Center Ltd.’s applications for further examination.
Conflicting trademark applications number 243331, 246936, 247771, 247772, 247811, 253794, 253799, 253800, 253802 (Section 29 of the Trademarks Ordinance) published on March 28, 2017