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
Showing posts with label Passing Off. Show all posts
Showing posts with label Passing Off. Show all posts
Thursday, December 6, 2007
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
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
Tuesday, August 7, 2007
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
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
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