Trademarks: The Triple test for examining the qualification of a mark to be registered

Two applications filed for the registration of the designed word "Valentino" and the designed sign "V".
The Commissioner rejected the applications due to their similarity to already registered marks of the company Valentino S.P.A. (hereafter: the registered marks).
The Commissioner held that the registered marks were classified within categories related to fashion, the same as requested for the filed marks.


The Triple test for examining whether a mark is confusingly similar to another includes three factors: 1. the sound and appearance, 2. the type of customers and merchandise used and 3. other circumstances.


According to those factors, the marks filed are confusingly similar to the registered marks (and the fact the word "Jeans" was added to them does not detract from their similarity as this word is Generic). In addition, the word "Valentino" is a key word within well known marks. Finally, other factors show that selecting the mark was not coincidental but an attempt to copy the famous known mark with intent to confuse the public. In fact it was showed that a photo the taken from one of the publication of the registered marks and was altered in anon professional way. As for the question of good faith is selecting the filed marks, this question can be discussed but it is obvious that coping a well known mark demonstrates that the applicant had an intent to confuse the public with the filed marks.

Turbo Tecstile – Ex- parte decision.

Yaara Shoshani
Appelfeld Zer Fisher

Trademarks: An appeal on a decision within competition procedure may prevent filing an opposition

The applicant, Tenuva Ltd, filed for the registration of a mark "Eshel", and was later successful in a competition procedure (Article 29 Of the Trademarks Ordinance of 1972). Yotveta Ltd., the rival company within the above mentioned procedure, appealed to the Supreme Court. Within a parallel procedure, the mark was allowed for registration by the Commissioner of Patents and Yotveta filed an opposition. The opposition procedure was put on hold until the Supreme Court concluded its decision, in which the appeal was rejected. Accordingly, Tenuva filed to dismiss Yotveta's opposition. The Commissioner stated that dismissal of a request all together should remain an exceptional remedy as it is always better to hear the parties and to clarify the issue. Nevertheless, this remedy should be available whenever there is a court ruling, since such ruling anchors in itself rights and interests which are not less strong than the right of a party to be heard. In this case the opposing party had exhausted its right to argue against the applicant within the competition procedure, and later within the appeal. Those arguments related not only with the question whose right to register the mark prevails, but also arguments which dealt with the marks qualifications to be registered. Therefore, the Commissioner decided to dismiss the opposition.

Tenuva vs. Yotveta

Yaara Shoshani
Appelfeld Zer Fisher

Trademarks: Request to revoke a mark filed by its Owner during proceedings for cancellation needs the Commissioner's approval

A request by Zol Lamehadrin, an Israeli food chain to cancel the registered of a mark owned by its competitor, Shupersal, was filed with the Commissioner of Patents.
Within the proceedings, the owner of the mark requested to revoke the mark. The Commissioner held that revocation of a mark is the owner's right, but when requested within proceedings, it amounts to a request to put a hold to proceedings, and would therefore need the Commissioner's approval. Such request must be considered against the rival's interest, in a way which will not deprived the rival from the right to get a final decision in its favor which will conclude the proceedings.
It was further held that proceedings would be ended since the party filing for cancellation of a mark did not request its continuation. Accordingly, the mark was revoked as requested by the owner, and the request for cancellation was deleted. The Commissioner ruled that the owner of the canceled mark has been prolonging the proceedings and by that lead to high costs spent by the party filed for the cancellation of the mark. Hence, the owner was obliged to pay actual compensation amount to 45,000 NIS.





Zol Lamahadrin Ltd vs. Shupersal Ltd.





Yaara Shoshani


Appelfeld Zer Fisher

Copyrights: Copyrights in articles - who owns them?

The applicant was employed by an Israeli Newspaper as a journalist. The Newspaper was giving copies of his articles to a company which operates a news website. The applicant claimed he owned the copyrights in his articles. This was claimed in accordance with the Israeli Copyrights Ordinance, Article 5(1) (b) that states that in the absence of an agreement between the author and his employer, the author reserves the right to prevent the publication of the article in a media which is not a newspaper, magazine or periodical. The District court, in an appeal and as opposed to the opinion of the magistrates’ court, ruled that the right granted by the Ordinance is not a mere declarative right to veto the publication his articles, but a copyright. It was held that publication on a website is not equal to a publication within a newspaper, magazine or periodical and hence the publication of the articles in it without an express approval of the author are prohibited.

Kaufman vs. Walla

Yaara Shoshani
Appelfeld Zer Fisher

Passing Off: Unjust Enrichment denied by court. Reason: the alleged infringed product was not innovative

The Plaintiff claimed the defendant copied its bath products and argued the establishment of the wrongs passing off and unjust enrichment. The Israeli district court rejected the claims explaining that for Passing off the two required elements – 1. Proof of reputation of the products and 2. Reasonable risk for deception of the public, were not established. First the plaintiff failed to prove the product acquired reputation with end users. It was held that acquiring reputation among suppliers is irrelevant. Second it was held that the public was not mislead by the defendant's products as the defendant acted to distinct its product from that of the plaintiff's by using a different logo, and different rapping box.
As for unjust enrichment, it was held that the first element i.e. Enrichment was established as the defendant entered a new market where the plaintiff had no business in, with no need to invest in the product's design. The second element, i.e. enrichment on the expense of the plaintiff- was established as well, as the defendant practically made a product which is identical to the one produced by the plaintiff. However the third element that is needed for the establishment of unjust enrichment was not found according to the court. Proving the existence of this element requires evidence that the product is innovative, or that large amount of resources and time was invested in its development. In this case there was no such evidence. The product was held to be simple of no special features making it difficult to copy. Hence, the third element was not established.
The court therefore rejected the plaintiff's claim as a whole.



Ozgum Ltd. Vs Treplex Pal Yam Ltd

Yaara Shoshani,
Appelfeld Zer Fisher

Patents: Invalidation of a patent by court during discussion concerning an infringement

The plaintiff (Hereafter: Ana Lotan) was in the business of producing and marketing of cosmetics and is the proprietor of a registered patent (no.106392) for skin peeling creams. The plaintiff argued that the defendant (Balmon) was producing a product for scrubbing and peeling of the skin, and by this is infringing the registered patent.

The district court rejected the claim and argued as follows:

1. The invention was not patentable due to already existing American patents which destroyed the invention's novelty, and hence should have not been registered as a patent (Articles 3-5 Israeli Patent Law).
2. According to Article 3 of the Israeli Patent Law, an invention worthy of a patent must be novel, i.e was not presented publicly, world wide prior to filing date, and be considered as an "inventive step", namely that an ordinary person skilled in the art would have been able to create the invention, based on the existing knowledge in the relevant field.
3. In a previous case (CA/4867/92) discussed by the Supreme Court, it was held that when an infringement of a patent right is considered, the court not only examines the extent of the patent's claims, but also looks into whether the allegedly infringing patent contains the same core of the invention as the allegedly infringed patent. Similar, when novelty of a patent is examined, the court can look not only into publication which contains the invention's components but also one that includes the core of the invention.

In this case, there were two patents registered prior to filing date of the complainant's patent application. In both patents information that could have lead to a person skilled in the art to allegedly infringed invention was disclosed. In addition, the core of the invention was identical in both patents (i.e. an abrasive component), and the fact that the chemical structure was different in both of them was found to be irrelevant.

District court 1179/00 -Ana Lotan vs. Balmon

Plant Varaieties: Breeder's consent for use of varaiety is not required after sale

The plaintiffs are in the business of varieties breeding. The plaintiffs argued that according the Israeli law of Variety Breeding 1973, (hereafter: the law), they have registered varieties as to Gerbera varieties which were breaded by them. In addition it was argued that the defendants were using these varieties without permission of the plaintiffs. The Israeli district court ruled that the proprietor of varieties is entitled for payment for using the registered variety. However, after selling the variety, the breeder's consent is not required for purposes of additional use of that variety, unless this additional use is defined as reproduction of the variety (Article 36 of the law). The argument that the defendant admitted that reproduction of the varity took place for the purpose of establishing an infringement of registered variety.
(Flouriest de Quakel BW vs. Hajag Baruch, District Court 25 October 2007)