Monday, August 20, 2007

Trademarks:Kangaro, an Unregistered Trademark in Israel Would not Enjoy protection under Israeli IP laws

The plaintiffs, Kangaro Industries Regd, and Chan Stationary Ltd (Kangaro's Israeli representative) filed for an injunction against the Israeli defendants Guard stationary and others, for preventing the defendants from importing, ordering, selling or marketing staplers and punchers placed in a package which allegedly infringes the plaintiffs' rights in its unregistered trademark :"Kangaro". The plaintiffs accused the defendants with the liability for "passing off", unjust enrichment and infringement of copyrights.

In Israel, liability for Passing off depends on the ability to demonstrate the existence of both two elements:

1. Acquired distinctiveness – that consumers in the marketplace exclusively associate the mark, as used on the identified goods, with a particular commercial origin or source (namely. the trademark owner), and:

2. Confusion – that consumers mistakenly confuse the goods of the defendant with those of the trademark owner.

According to Israeli case law, for establishing acquired distinctiveness, it must be clearly evident that the consumers identify the true origin of the goods, due to the specific trademark placed on them. In addition, evidence must be brought as to show that the mark was used for a long period of time; that the mark was well advertised and that efforts were made so that consumers would associate the trademark with the goods produced by the trademark owner. The court will also consider the following elements: whether the consumers care as to the identity of the producer of the goods, and not purchase them merely based on their shape and qualities; whether the demand for the goods is influenced by the well reputation of the producer him/her self.

The court held that the plaintiff was unable to demonstrate the existence of the first element and therefore the judge did not proceed to verifying the existence of the second one.

As to the plaintiff's other claim for liability for unjust enrichment, it was held that the plaintiff was unable to demonstrate the presence of a just interest worthwhile of protection in addition to showing the mark was used by others. In the absence of evidence as to efforts and budget allocated to make the trademark associated with the goods, the plaintiff could not show the defendants were liable for unjust enrichment.

The claim for copyrights infringement was rejected as well due to lack of originality and creativity within the features of the packages produced by the plaintiff.

Yaara Shoshani (LLM), Appelfeld Zer Fisher

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