by Rachel Pasher EIjkenaar, adv. , Isaac Mazliach Attorneys
- MINISO v. MAX STOCK
Tel Aviv 58062-04-18 Guangdong Saiman Lnvestment Co. Ltd v. Max Management Israel Ltd. and others:
Court and Judge:
District Court of Tel-Aviv// The honorable Noa Grosman//decision date: 21/5/2018
Plaintiff, an international Chain MINISO, in preparation for opening shops in Israel, filed for registration of its TM used around the world (Image 1). Defendant- with multiple shops around Israel – used its own marks – image 2- since 2013 and the mark in image 3 since 2016. Prior to the filing of the claim including an interlocutory application against it, the defendant used the mark in image 4.
Within the proceedings of the Claim that included an interlocutory application, to prevent defendants from use of marks in images 3and 4 defendants changed their mark to the one in image 5.
(Image 1) (Image 2) (Image 3) (Image 4) (Image 5)
The court ruled for plaintiff with an Interlocutory order, preventing defendants from use of marks in images 3, 4 and 5, based on the following:
- There is a confusing similarity between images 1 and images 4 and 5, regardless of the existence or lack of- intention to confuse the consumers.
- Using the triple examination within the Israeli case law:
- The similarity in appearance and sound- an identical idea even if the actual graphics defer
- Correlation: merchandise v. consumers- both offer similar products to the same consumers
- Other circumstances – such as defendants multiple changes of TM as seen in image 2-5
- Rami Levy v. Barilla
Appeal request 1065/18 and 1521/18 Rami Levy Chain Stores 2006 LTD and other v. Barilla G. e R. Fratlli – S.p.A[as both plaintiff and defendant appealed- they will be referred to here as plaintiff and defendant]
Court and Judge:
The Supreme Court of Israel// The Honorable Justice N. Solberg//decision date 22/4/2018
Barilla, one of the largest PASTA company in the world, filed a lawsuit against the Israeli retail chain Rami Levy, in which it requested that it refrain from marketing pasta products and sauces for pasta sold under the private label Rami Levy on the grounds of: Passing off and infringement of a well-known Trade mark-referring to plaintiffs Blue colored pasta boxes-Images 1 &2 –plaintiffs goods and Images 3 &4 – defendants goods
(image 1) (image 2) (image 3) (image 4)
The court ruled for plaintiff with an Interlocutory order, preventing defendants from use of packages as in images 2 and 4, based on the following:
- A comparison of the products – both the pasta and the sauce products – indicates a visual similarity- in the total get up of the product (with no need to examine similarity in the details), that apparently creates a reasonable fear of misleading the consumer market of short-lived products as food.
- The plaintiff’s claim that the blue box of pasta is a well-known trademark was rejected due to the lack of sufficient evidence to grant such a monopoly on the use of the blue color in the packaging of pasta.
- Voice of Hope– High Adventure Ministries v. Strategic Groups and others
Appeal request 10075/17 High Adventure Ministries v. Strategic Groups and others
Court and Judge:
The Supreme Court of Israel// The Honorable Justice N. Hendel//decision date 7/5/2018
The appellant has been using the Voice of Hope well known and unregistered TM for many years, as part of its broadcasts of Evangelical Christian messages in English. Respondents began to use the exact same sign in broadcasts of Evangelical Christian messages in Arabic. Respondents included in their website, English publications according to which their broadcasts area continuation of the appellant’s Voice of Hope broadcasts, which stopped in 2000. The application and the appeal in the Supreme Court, asked for an injunction against the respondents’ use of the well-known yet unregistered TM- Voice of Hope. The application was rejected by the District Court. Appellant appealed to the Supreme Court of Justice.
The Supreme Court held:
- An application concerning trademark infringement is unique in comparison other grounds in commercial law in that fact that in addition to both parties to the proceeding, an additional aspect of the dispute – the public – must be taken into account in the sense that the violation is liable to mislead it.
- Although parties are two entities that use the same trademark, the fact that one body broadcasts in English and the other in Arabic prevents the misleading of consumers. The application for an order to prevent the use of the mark in broadcasts is rejected.
- The court did rule in favor of instructed the respondents to remove the English publications from their website, according to which their broadcasts were ostensibly the continuation of the appellant’s broadcasts, which were according to them discontinued in 2000.