On July 24, 2014, Israeli intellectual property adjudicator Yaara Shoshani-Caspi rejected an application for concurrent registration of confusingly similar URBANICA trademarks subject to agreed geographic restrictions. The applicants, Urbanica Investment Company Ltd. and Nov Holdings Or Yehuda (1989) Ltd., had reached a coexistence agreement after competing trademark applications triggered proceedings under Section 29 of the Israeli Trademarks Ordinance.
The decision illustrates the limits of territorial allocation as a solution to consumer confusion in a relatively small national market, particularly where customers are not confined to the cities in which suppliers operate. It is also relevant to understanding the Registrar’s independent discretion under Section 30(a) of the Trademarks Ordinance.
Background: Competing Urbanica Trademark Applications
The two companies applied to register trademarks containing the Hebrew name “אורבניקה” (Urbanica). The Trademark Department concluded that the signs were confusingly similar and initiated competing-application proceedings under Section 29.
The applicants negotiated a settlement and applied for permission to register both marks under Section 30. Their agreement proposed dividing commercial use between different cities, corresponding, according to the parties, to their actual business territories.
One applicant would operate in Tel Aviv–Jaffa, Ramat Gan and Givatayim, as well as in projects under the Israeli TAMA 38 urban-renewal framework. The other would use its mark only in Petah Tikva, Kfar Saba and Rishon LeZion.
Why the Trademark Department Objected
The Trademark Department opposed the proposal because construction and real-estate services are not necessarily local in the eyes of consumers. A potential customer may search for an apartment both in the Tel Aviv area and in Rishon LeZion. Geographic separation between business locations would not reliably prevent that customer from associating the two marks with the same source.
The applicants requested an opportunity to present arguments to the Registrar. The matter was therefore considered as a proposed concurrent registration supported by a settlement, rather than a simple uncontested application.
Section 30(a): Honest Concurrent Use and Special Circumstances
Section 30(a) allows the Registrar to permit identical or similar trademarks belonging to different proprietors to be registered in respect of the same or goods of the same description where there has been honest concurrent use or other special circumstances. Registration may be permitted with conditions or restrictions.
That authority is an exception to the usual concern about registration of marks that may confuse the public. The applicant seeking concurrent registration must therefore address whether real consumer confusion is likely notwithstanding the apparent similarity of the signs.
The more similar the marks and goods, the more compelling the evidence of meaningful differentiation may need to be. Evidence of independent adoption and honest commercial behavior is relevant, but it does not by itself eliminate consumer confusion.
A Coexistence Agreement Does Not Bind the Registrar
Although the settlement deserved consideration, the adjudicator emphasized that the Registrar is not a rubber stamp for private coexistence arrangements. The relevant assessment remains whether consumers are likely to be misled by concurrent registration. The parties may agree to share a market, but the consuming public has not agreed to bear the risk of confusion.
In this case there was no suggestion that either applicant had adopted the similar name in bad faith. Nevertheless, the remaining question was whether their proposed geographic separation could reliably protect consumers.
Geographic Division: The Great Shape Criteria
The decision discussed the earlier Great Shape v. Osran ruling concerning competing applications Nos. 105968 and 107479, decided July 9, 2006. That earlier decision identified cumulative considerations for allowing similar marks to coexist subject to territorial limitations.
First, neither party should have nationwide or international goodwill that transcends the proposed region. Second, the products or services should be genuinely local in character. Third, the boundaries of the geographic business areas should be clearly identifiable. Fourth, each party should actually operate within a distinct territory without encroaching on the other’s area.
These considerations are interrelated and can overlap in their application. Territorial coexistence was described as uncommon and suitable only for special circumstances in which fair competition and consumer protection can both be preserved.
Why the Proposed Division Failed
The adjudicator found no established international reputation for the Urbanica signs, but the parties’ evidence did not exclude the possibility that their businesses and marks were known beyond the limited municipalities in which they operated.
Construction and real-estate services were not considered exclusively local. Consumers commonly examine opportunities in more than one city. The adjudicator was also not satisfied that the parties’ activity could be strictly confined to the proposed geographic borders. The conditions identified in Great Shape were therefore not met.
Increasing use of the internet further weakened geographic limitations as an effective means of distinguishing otherwise similar trademarks. Online brand exposure does not necessarily stop at a municipal boundary. The proposed agreement did not provide persuasive evidence that consumers would distinguish the marks despite their close resemblance.
Would Different Graphic Presentation Have Helped?
The adjudicator noted that a materially different visual design accompanying the shared Urbanica wording might have reduced the risk of confusion and given the agreement greater weight. This was a hypothetical observation, not a finding that any specific alternative design would necessarily be accepted.
Because the proposed territorial restrictions did not sufficiently address the risk of confusion, the application for concurrent registration was rejected. The parties were directed to submit evidence in the competing-application proceedings, through which the right to continue with registration would be determined.
Subsequent Supreme Court Guidance: Kviskal (2025)
The Supreme Court later considered the significance of consent and the Registrar’s discretion in Registrar of Trademarks v. Kviskal Services Ltd., LCA 5743/24 (April 10, 2025). The Court confirmed that owners’ agreements should ordinarily receive meaningful weight but do not displace the Registrar’s power to impose conditions necessary to address a material risk of consumer confusion.
See Kviskal: Israeli Supreme Court on Coexistence Agreements. Together, the cases illustrate why Israeli trademark applicants should assess actual customer behavior, the character of the goods and services and the effectiveness of proposed separation measures rather than rely on geographic allocation alone.
For the separate competing-application procedure, see Competing Trademark Applications in Israel (Section 29). Another administrative decision on identical marks and different goods is examined in OMNI Trademark Registration.
