Trademarks: The term "Nacterina" does not infringe the registered trademark "Tapuzina"

In a decision responding to an application for interim remedies, the honorable Judge Dani Zarfati of the district court in Nazareth ruled that the mark "Nacterina" does not infringe the registered trademark "Tapuzina" and that no elements of "Passing Off", or any other misappropriation were established.

The plaintiff argued that the defendant has been duplicating the features of the products marked "Tapuzina", including their brands, outward appearances, shapes and labels. The plaintiff has founded his arguments, inter alia, on proposals for the design of the products, ordered and received by the defendant (as the allegedly infringing products have yet to be commercialized).

The defendants argued that those proposals were ruled out and left unused.The honorable judge has ruled that it is unlikely that the plaintiff will be successful in showing that consumers may have been mislead despite the phonetic similarity between the two names. In addition, he asserted that there is dissimilarity in the use of fonts and labels of the two brands. Moreover, the judge ruled that since there are other brands worldwide, with the same suffix (e.g. "Orangina"), the consumer is deemed to be aware as to the existing differences between those brands.

In view of the above mentioned, it was held that the likelihood of the plaintiff to actually win the main lawsuit is small, and refused to grant the applied for court orders. We believe this decision is incorrect. Within the Israeli market, the trademark "Tauzina" is an extremely strong one, in which massive budget was invested for advertisement. When establishing a case for trademark infringement, and even according to common sense standards, the similarity between the products´ appearance is less significant than the actual and phonetic similarity between them.In addition, the existence of other brands with the same suffix has no substantial effect on the Israeli consumer, that his awareness as to the existence of those brands - which were never sold in Israel - is doubtful.

We predict the occurrence of a different scenario, namely that the reasonable consumer would perceive the existence of the new drink "Nacterina", as a new drink launched by the manufacture of "Tapuzina". Therefore. It is likely that the consumer would mistakenly assume that the origin of both drinks is one and the same, and by that would be mislead. Furthermore, it seems that the court has completely ignored the risk of dilution of the strong trademark "Tapuzina". It is probable that the frequent consumer of the drink "Tapuzina" would not be pleased of the new taste of the new product Nacterina, and consequently will form a negative view on the brand "Tapuzina" as a whole.

The real question which were never raised is why has the defendant elected a name which is so phonetically similar and which is aimed at the same market segment? Why could not it choose a name such as "Nacteron" or "Nacterit" or a less generic brand?

If it did not do so for the purpose of enjoying the plaintiff´s goodwill, why else?

Zeev Fisher, Adv. 15/7/2007