In a July 26 2011 ruling,(1) an adjudicator of the Israeli Trademarks Office found no misleading resemblance to exist between registered trademark MISS SIXTY (owned by Fronsac TM SA) and the trademark MISS SEXY (owned by the applicant, Iris Line Ltd). The adjudicator therefore denied Fronsac's opposition to the registration of the latter mark.

The Israeli Trademarks Office ruled that under the visual and phonetic test, and in view of, among other things, the visual design of the MISS SIXTY mark, no potential for confusion was found to exist between the two marks. The office further ruled that Fronsac had failed to establish that its MISS SIXTY trademark was well known, in addition to being registered, and therefore it could not argue for dilution of the mark.

Fronsac's Registered Israeli Trademark 109573

Applicant's Trademark 205879 (in English and Hebrew)


Iris Line Ltd is an Israeli company that has used the above MISS SEXY trademark since 2007 for the sale of fashion products. Its annual revenues are estimated atseveral million Israeli shekels.

The applicant filed a trademark application (205879) for registration of the MISS SEXY trademark in Class 25 for women's garments, blouses, shirts, undershirts, coats, jackets, pants, dresses, sweaters, vests, skirts, suits, T-shirts, jeans, shorts, sweat suits, underwear and leotards.

Fronsac filed an opposition to the application, based on:

  • its stylised trademark for MISS SIXTY (shown above), filed in Class 25; and
  • its trademarks for MISS SIXTY in block letters, filed in Class 18 for leather, imitation leather and goods made of such materials and not included in other classes, and filed in Class 3 for bleaching preparations and other substances for laundry use.

The trade name MISS SIXTY was originally created in Italy in 1991 for jeans and Fronsac argued that it has since become the subject of worldwide goodwill in fashion. Fronsac further argued that it owns the rights to the MISS SIXTY trade name and trademarks throughout the world. Its annual sales around the world are approximately $40 million.

Fronsac argued that the MISS SEXY mark bore a resemblance to the MISS SIXTY mark, which could confuse consumers and mislead them into thinking that the applicant's products were Fronsac's products instead. Fronsac further argued that its trademarks for MISS SIXTY were not only registered, but also well known. It went on to argue that even if the MISS SEXY mark did not create actual confusion, the resemblance between the two marks would cause dilution of the MISS SIXTY marks - both the stylised mark (in Class 25) and those in block letters (in Classes 3 and 18).


The Israeli Trademarks Office rejected Fronsac's arguments. Initially, it found that Fronsac failed to provide sufficient evidence to establish that its marks were well known. The office explained that in order to establish a well-known trademark, the owner of the mark must prove that the mark has acquired recognition and prestige of unquestionable strength. The owner should do so through evidence of significant revenues and substantial market penetration, as well as evidence of extensive advertisement and marketing efforts and exclusive use of the mark.

In the absence of such evidence, the MISS SIXTY mark was not found to be a well-known trademark and the question of dilution was therefore found to be irrelevant.

The Israeli Trademark Office went on to examine the resemblance between the marks. It applied the triangular test,(2) which includes three secondary tests:

  • the visual and phonetic test;
  • the type of customer and class of goods test; and
  • the remaining relevant circumstances and common-sense test.

The decision states that of these three secondary tests, the visual and phonetic test is the most significant. According to this test, considerable weight is given to a comparison of the marks as a whole, while considering mainly the initial impression by consumers. While applying the test, the Israeli Trademarks Office addressed the fact that both marks were designed or stylised in such a way as distinguished them from one another. The office stressed the curved styling of the letters in the MISS SIXTY mark, which differed from the MISS SEXY mark.

The office stated that a single element mutual to two trademarks that are otherwise not identical (in this case 'Miss') is not enough to establish misleading resemblance. The office found a further visual difference in the fact that the MISS SEXY mark also included the trade name in Hebrew, whereas the MISS SIXTY mark did not. The office also addressed the question of phonetic resemblance between the marks, and found that the word 'sixty' did not resemble the word 'sexy'.

With respect to the type of customer and class of goods test, the Israeli Trademarks Office explained that the identity of the classes in which the two marks were registered, and of the specification of goods and services, was not enough to determine the test. The test will yield a positive result only if the goods marked under both trademarks are intended for the same type of client. The office found that the Fronsac goods were marketed to clients of greater financial means than those of the applicant, and through different means. The office also commented that young women and girls are not expected to confuse clothing brands.

With regard to the remaining relevant circumstances and common-sense test, the Israeli Trademarks Office examined the resemblance of the conceptual message of each of the two trademarks. Among other things, the office found the marks to differ with respect to the indication of domestically manufactured or imported products. The MISS SEXY trademark application was in both English and Hebrew, and was thus taken by the office to indicate domestically manufactured goods; the MISS SIXTY trademark was in English only, and was therefore perceived differently. The two marks were also found to have different connotations - while the word 'sexy' indicates the attractiveness of the product or user, the word 'sixty' is simply a number and may refer to age.

Based on the triangular test, the Israeli Trademarks Office found that the marks did not resemble one another in such a way that might mislead consumers.

The office went on to find that although the above-mentioned MISS SIXTY registered block-letter trademarks granted broader protection, as they were not distinguishable by a specific design or styling, the non-stylised marks could not form the basis for accepting the opposition. Unlike the MISS SEXY trademark, which was registered in Class 25, the MISS SIXTY block-letter trademarks were registered only in Classes 3 and 18. As the MISS SIXTY trademark was not established as a well-known trademark, the registered block-letter MISS SIXTY trademarks could not afford protection with respect to marks in classes or fields of trade other than their own.

Finally, the Israeli Trademarks Office rejected Fronsac's assertion that the word 'sexy' is descriptive with regard to women's clothing, and therefore was not eligible for registration as a trademark.

As a result, the Israeli Trademarks Office rejected the opposition and ordered registration of the applicant's trademark MISS SEXY.


The decision demonstrates the importance of protection of a trademark not only through registration of a designed or stylised mark, but also through registration of the trademark in block letters. The MISS SEXY mark was found not to resemble the MISS SIXTY mark, largely due to visual differences between the two marks that were found to exist, among other things, based on the specific and unique styling of the letters in the MISS SIXTY mark. The office recognised that the scope of protection may have been wider with respect to the marks registered in block letters; however, they were not registered in the necessary class. Had Fronsac also registered its block-letter trademark in Class 25, the office would have examined the resemblance of such mark to the MISS SEXY mark, without giving weight to the possibility of distinguishing between them based on the unique design of the MISS SIXTY mark.

The decision also underscores the importance of registering marks in Israel in both Hebrew and the foreign language, in this case English. Although the language in which it was written may be indistinguishable when the word is spoken, the MISS SEXY trademark was found to be distinguishable from the MISS SIXTY trademark, because the former mark included the trade name in Hebrew as well as English, whereas the latter included the trade name in English only. The difference in language in which it was written was also found to provide an indication as to the type of goods. Thus, had the MISS SIXTY mark also been registered in Hebrew, it may have had an impact on the outcome of the decision.

For further information on this topic please contact Avi Ordo at S Horowitz & Co by telephone (+972 3 567 0876), fax (+972 3 566 0974) or email ([email protected]).


(1) Opposition to the Registration of (Designed) Trademark 205879, Iris Line Ltd v Fronsac TM SA, July 26 2011.

(2) For a discussion on the triangular test please see "Court rules no confusing similarity between marks EVE and EVA".