In an interesting decision, Dr. Meir Noam, the Israel Commissioner of Patents and Trademarks has ruled that two companies cannot both vend cosmetic products based on Dead Sea mud, using the same trade-name, Black Pearl.
Apparently, both companies concerned, Yuval Yari Dead Sea, and Anna Lotan, independently chose the name in good faith, or at least, insufficient evidence of bad faith was produced. Both companies have reputations and have significant turnover and profits.
Noam ruled that the public interest requires awarding the mark to one party only, and chose Yarin as being the first to file and having the larger turnover. Since there is insufficient evidence of bad faith, Noam refrained from awarding costs.
Of interest, the ruling starts by quoting the classic Rabbinic discussion of two parties coming before the judge whilst holding opposite ends of a prayer shawl they claimed to have each found, where, in the absence of additional evidence, Jewish tradition rules that the worth should be divided between the parties. Noam admitted feeling uncomfortable deciding in favor of one party, but felt that the Wisdom of Solomon was not in the public interest, as the punter was entitled to know the source of the product.
There have been cases of course, where two companies have legitimate claims to a name and have built up reputations. In the age of the Internet adn globalization, and with Israel adopting Madrid, such cases are likely to be more common.
Nevertheless, the ruling awards the whole cake to one party and does not seem totally fair. As with Domino Pizza and Pizza Domino, which is a somewhat similar case in that the name is indicative of the product to some extent, perhaps allowing both parties to continue using the name, but with different colors and fonts, or a different graphical element, might have been another way forward.
One of the reasons behind the decision to divide the worth of the prayer shawl between the parties is not that the Rabbis felt that both parties were equally entitled to it, but simply because there was no way to decide who had the better claim. Solomon’s application to a baby was a great way to discover the true mother. In this case, it may be dificult to monetarize the worth of the mark to each side and the relative merits of each side, but clearly there are some merits to each side. Noam’s ruling that the mark be awarded to one side without any financial adjustments is fast and efficient, but clearly not an attempt to reach fairness. Could more be done?
In economic terms, if both parties were awarded some rights, presumably use of the name, it is not unlikely that they could have come to a financial understanding outside of the legal system that would have accurately reflected the relative worth. It is a shame that such an option was inadequately explored; particularly as Noam has accepted that the parties acted in good faith.
Rough justice to be covered by layers of nacre? A purse from a pig’s ear? ah well…
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