On April 10, 2025, the Israeli Supreme Court decided Registrar of Trademarks v. Kviskal Services Ltd., LCA 5743/24, addressing whether a trademark coexistence agreement can compel the Registrar to accept two similar marks without restrictions. Justice Alex Stein, joined by Justices Noam Sohlberg and Khaled Kabub, held that the Registrar retains statutory discretion to impose conditions protecting consumers from a material risk of confusion, notwithstanding consent by the owners of the competing marks.
The Court allowed the Registrar’s appeal, set aside the Jerusalem District Court judgment of May 15, 2024 and restored the Registrar’s August 15, 2023 decision. The proposed Kviskal trademark could be registered for Class 3 laundry products only with a restriction to institutional use and the specified Hebrew vowel mark. The decision is important for applicants and foreign trademark counsel negotiating letters of consent or coexistence arrangements for Israel.
Background: Two Similar Hebrew Laundry Trademarks
Kviskal Services Ltd. operated an industrial laundry and washing-machine rental business serving institutional customers, with a history dating back to approximately 1967. It applied for registration of the Hebrew mark “כביסקל” on January 25, 2022, with subsequent amendments, in Class 3 for laundry preparations, Class 35 for relevant sales activities and Class 37 for machine rental, laundry and maintenance services.
Perfume Clean Ltd. already owned Israeli trademark registration No. 337688 for the similar Hebrew mark “כביסכל”, covering household cleaning and laundry goods in Class 3. The Registrar considered the marks close in appearance and pronunciation and raised an objection under Section 11(9) of the Trademarks Ordinance [New Version], 5732-1972. The dispute principally concerned the overlap in Class 3. The other classes were accepted.
The Coexistence Agreement Between Kviskal and Perfume Clean
On July 2, 2023, the companies entered into an agreement under which Perfume Clean consented to the registration of Kviskal’s proposed mark, while Kviskal undertook not to challenge Perfume Clean’s existing registration. They also agreed to act in good faith to prevent consumer confusion and to discuss problems if they arose.
The agreement was conditional on Kviskal obtaining registration but did not contain detailed, enforceable divisions of the product market, mandatory visual differentiation, packaging rules or restrictions identifying distinct customer groups. The Registrar did not regard the parties’ general assurances as sufficient to eliminate possible confusion in the market for laundry preparations.
The Registrar and District Court Reached Different Conclusions
In the Registrar’s decision of August 15, 2023, concerning application No. 348173, concurrent registration in Class 3 was permitted only if Kviskal added a patach vowel sign beneath the Hebrew letter kuf and limited the laundry products specification to institutional use. The Registrar considered the companies’ histories and commercial coexistence, but also the possibility that similar marks would eventually appear on products sold to the same consumers.
Kviskal appealed. On May 15, 2024, the Jerusalem District Court, Judge Avigdor Dorot, allowed the appeal in Administrative Appeal 24545-09-23 and removed the institutional-use restriction. The District Court treated the consent of the proprietor of the earlier registered mark as especially significant, distinguishing that circumstance from conflicting pending applications. That judgment was the subject of the subsequent Supreme Court appeal and is no longer the operative result.
Section 30(a): The Registrar Retains Independent Discretion
The Supreme Court held that Section 30(a) authorizes the Registrar to permit concurrent registration of identical or similar trademarks belonging to different proprietors where there has been honest concurrent use or other special circumstances. The statutory discretion includes authority to allow registration, refuse it or impose conditions and restrictions considered appropriate.
This power operates alongside the obstacle to registration in Section 11(9), relating to identical or confusingly similar earlier registered marks. It is also distinct from the competing-application procedure in Section 29(a). The Supreme Court rejected the District Court’s proposition that the Registrar’s Section 30(a) powers should be materially narrower when the competing trademark is already registered rather than merely pending.
Justice Stein also referred to Section 18(a), which allows acceptance of an application subject to amendments, modifications and restrictions. Private agreement cannot negate powers conferred by statute for the protection of the public.
How Much Weight Should a Coexistence Agreement Receive?
The Supreme Court did not hold that coexistence agreements are inherently suspect. Ordinarily, the parties are familiar with their markets and have incentives to distinguish their products. Their agreement may therefore deserve significant weight, and commercial settlements can avoid unnecessary disputes.
However, a consent agreement does not bind consumers, who are not parties to it. Exceptional intervention may be justified where an arrangement is clearly unlawful or where registration creates a material risk of confusion affecting third parties. The Registrar must consider the actual arrangements, not merely the fact that consent was given.
The judgment discussed the distinction, familiar from US trademark analysis, between naked consent, an unconditional consent unsupported by practical protections, and clothed consent, an agreement containing measures designed to avoid confusion. Effective product limitations, distinct packaging or sales channels and procedures to deal with confusion may support concurrent registration. These are examples of possible safeguards rather than universally prescribed terms.
Why the Institutional-Use Limitation Was Upheld
The two Hebrew marks were sufficiently close visually and aurally to present a potential problem for laundry preparations. The proposed distinction between Kviskal’s institutional business and Perfume Clean’s household market was relevant to the companies’ actual activities. The Registrar’s institutional-use limitation reduced the chance that competing, closely named laundry products would be sold to the same household customers.
Justice Stein concluded that the Registrar had acted within statutory authority and was not obliged to approve the private settlement without a further product limitation. The Supreme Court therefore restored the Registrar’s decision.
Limited Registration Does Not Necessarily Eliminate Infringement Protection
A significant part of the judgment addressed the difference between the right of exclusive use defined by the registration and the legal protection against trademark infringement. Section 46(a) links the proprietor’s exclusive use to the registered goods and any limitations. The definition of infringement in Section 1 may nevertheless extend to use in relation to goods of the same description.
Consequently, limiting Kviskal’s Class 3 specification to institutional laundry products did not automatically authorize third parties to use its mark on household laundry products. An infringement claim may still be available where the statutory elements are established. The Court clarified that the Registrar and District Court had proceeded from an overly narrow understanding insofar as they assumed that the specification limitation necessarily eliminated protection against other parties in the household market.
Consumer Protection, Competition and Other Market Participants
The Supreme Court emphasized that the Registrar’s particular role when assessing concurrent registration is to protect consumers from deception. The interests of competitors cannot, without more, justify special intervention in a coexistence agreement: they have the ordinary mechanisms available under trademark law, including opposition or cancellation proceedings where their statutory conditions are met. Broader antitrust concerns may be addressed under competition law by the competent authorities.
Justice Kabub’s Observations on Future Expansion
Justice Khaled Kabub agreed with the result and Justice Stein’s reasons. He noted that the perceived risk of weakening Kviskal’s protection against third parties had contributed substantially to the dispute, but that the distinction between registration scope and infringement protection answered that concern. He also observed that the parties might, in the future, negotiate a more detailed arrangement if Kviskal wished to enter the household market. That observation was not authorization to expand the current registration or use.
Result and Practical Lessons for Israeli Trademark Applications
The Supreme Court allowed the appeal on April 10, 2025, reversed the District Court’s judgment and restored the Registrar’s institutional-use restriction for Class 3, alongside acceptance in Classes 35 and 37. No costs were awarded in the Supreme Court, and the District Court’s NIS 15,000 costs order against the Registrar was set aside.
The case concerns registrability and the Registrar’s powers, not damages for infringement. Applicants should therefore prepare coexistence agreements that address identifiable risks of confusion through meaningful safeguards rather than relying solely on broad expressions of mutual consent.
For the earlier, subsequently reversed ruling, see Kviskal: Jerusalem District Court Judgment (2024). Related administrative decisions include Geographic Limitations for Concurrent Trademark Registration and OMNI: Identical Marks with Different Specifications. For wider procedures see Trademark Registration and Prosecution in Israel.
