On December 10, 2012, Israeli Deputy Registrar of Patents and intellectual property adjudicator Jacqueline Bracha allowed Visa Europe Limited’s application to register the word mark OMNI after the applicant limited the specification of goods and submitted a letter of consent from the owner of an earlier, identical OMNI registration. The ruling is useful in evaluating the treatment of identical trademarks used for related, but commercially distinguishable, goods.
The applicant sought registration No. 216985 in Class 9 for bank cards, charge cards, credit cards and related payment instruments. The Trademark Department had raised an objection under Section 11(9) of the Trademarks Ordinance because Verifone owned earlier Israeli registration No. 93536 for the identical OMNI mark, also in Class 9, covering electronic payment-processing terminals and related software.
Background: Visa Europe’s OMNI Application and Verifone’s Earlier Mark
Visa Europe’s proposed Class 9 specification initially concerned payment cards and banking-related computer software used to authorize and process financial transactions, among other goods. Verifone’s earlier OMNI registration covered electronic terminals for processing and transmitting credit- and debit-card transaction information, together with computer software for programming such terminals.
The applicant responded to the Trademark Department by amending the goods specification. It expressly excluded the goods covered by Verifone’s earlier registration, thereby removing the textual overlap between the specifications. Visa Europe also submitted Verifone’s consent to the proposed registration.
The Registrar accepted the application after examining whether, notwithstanding the identical names and related financial-services field, the remaining goods and relevant purchasers created a likelihood of confusion.
The Dual Purposes of Israeli Trademark Law
The decision explained that trademark law protects consumers against confusion about commercial source and also protects businesses against unfair competition. Consent between proprietors is relevant, but neither company’s private agreement can entirely displace the public interest in avoiding confusion.
Section 11(9) of the Trademarks Ordinance prevents registration of a mark identical to an earlier mark belonging to another proprietor for the same goods or goods of the same description, and similarly addresses confusingly similar signs. Accordingly, identical wording is a significant factor, but the nature of the goods and their commercial channels must also be examined.
The Triple Test: Appearance, Sound and Commercial Circumstances
Israeli trademark decisions commonly refer to a three-part analysis: the marks’ visual and phonetic resemblance; the nature of the goods, marketing channels and customers; and other circumstances and common sense.
Here the marks were identical in appearance and sound. The remaining inquiry therefore concerned whether differences in the goods, their purchasers and distribution channels were sufficient to avoid likely confusion. In the absence of detailed evidence of actual marketed products, the decision used the respective registered and proposed specifications as the basis of comparison.
Are Payment Cards and Card-Terminal Equipment Similar Goods?
The goods were commercially related. Visa Europe’s amended specification covered cards such as bank, credit, debit and stored-value payment cards, excluding Verifone’s transaction-processing terminals and their programming software. Verifone’s specification concerned the infrastructure used by merchants to handle those card transactions.
The decision reviewed factors traditionally considered when assessing similarity between goods: their nature and composition, their intended use and ordinary trade channels. Other relevant considerations include the users of the goods, whether the goods are normally offered at the same retail locations and whether they compete.
Complementary products can create an association in consumers’ minds even if they are not substitutes for each other. That principle mattered here because payment cards and card terminals function together in payment transactions. The Registrar therefore treated them as related products rather than assuming they were wholly unrelated simply because their precise specifications no longer overlapped.
Different Customers and Trade Channels Reduced Confusion
Despite the complementary nature of the goods, the decision found a meaningful distinction in the relevant customer groups. Payment cards are supplied to cardholders, typically through banks or credit-card providers, whereas merchant payment terminals are acquired by business operators. The customer evaluating the source of a card is generally not the same customer selecting the point-of-sale terminal.
The methods of distribution also differ. A consumer ordinarily obtains a payment card through a financial institution; terminals are purchased through a different commercial channel. These differences mattered to the overall assessment rather than operating as rigid categories that would always prevent confusion.
The Result: Registration Allowed with a Limited Specification
The Deputy Registrar held that, after removal of all overlap between the goods specifications and in view of the distinct customer groups and trade channels, there was no likelihood of confusion sufficient to prevent registration. The OMNI application was therefore allowed to proceed.
The decision should not be understood as a general permission to register any identical mark in the same Nice class by merely adding a disclaimer. Class numbers do not decide whether goods are commercially related. Each application requires assessment of the actual specifications, customer groups, commercial connections and other evidence.
How the Later Supreme Court Kviskal Judgment Affects Consent Analysis
In a later case, Registrar of Trademarks v. Kviskal Services Ltd., LCA 5743/24 (April 10, 2025), the Israeli Supreme Court confirmed that a coexistence agreement or consent letter is ordinarily significant but does not compel registration without conditions. The Registrar remains responsible for addressing a material risk of consumer confusion under Section 30(a).
The OMNI decision is best read as an example where both the amendment of the specification and the commercial distinctions supported acceptance, rather than as a rule that the earlier proprietor’s consent was conclusive. See Kviskal: Supreme Court on Trademark Coexistence.
Practical Implications for Trademark Applicants in Israel
An applicant facing an earlier identical or similar mark should compare the exact specifications before assuming that registration is impossible or, conversely, that a different product description resolves the problem. It may be appropriate to consider carefully defined exclusions, evidence of different purchasers or distribution channels, and a meaningful agreement with the earlier proprietor.
For another example of the limits of coexistence arrangements, see Concurrent Registration with Geographic Restrictions: Urbanica. For the ordinary examination procedure, see Trademark Examination and Office Actions in Israel.
