Collection Soho LTD owns a chain of design shops selling furniture, kitchenware, ornaments, bags, jewelry and fashion accessories. The chain has been in existence for 10 years, and in June 2013, the company was awarded a trademark for the word Soho in class 35, covering Shops for sale of designed goods in different consumer sections including – foodware and tableware, office supplies, appointment books and planers, calendars, kitchenware, baby and infant products, greeting cards, bathware (sic), furniture.
When Electra Real Estate LTD and Ben Ephraim and Sons, Building and Entrepeneurship LTD publicized a plan for a shopping mall called So Ho, Collection Soho LTD filed for an injunction, under the Equitable Trade Laws and the Trademark Ordinance.
Judge Gidon Ginat of the Tel Aviv District Court heard the case. As is his custom, and as he explained at an AIPPI conference in Israel a few months back, Judge Ginat prefers to address the whole issue in one hearing rather than rule on temporary injunctions and let cases drag out. He ruled that under both trademark infringement and the tort of Passing Off, the relevant test was whether there was an objective likelihood of confusing potential customers such that someone might purchase the goods of one company thinking that they were purchasing the goods of the other company.
Based on the fact that New York and London have Soho districts of a Bohemian, arty character, and with reference to Judge Gronis’ decision (Supreme Court Rules that Usage of “Shemesh” by Competing Restaurant is Kosher) concerning the word Shemesh, where the now head of Supreme Court ruled that registration of the word Shemesh (Sun) as a trademark by a grill restaurant, was insufficient to prevent others from calling their restaurants various names that included the word Shemesh, Judge Ginat ruled that in addition to the classic triple test for likelihood of confusion and the distinctive-indicative-generic term spectrum, he went on to rule that there are words with a universal aura and that it was difficult to accept that someone could take ownership over such words, and felt that Soho was in that category.
Although there is a chain of design shops called SoHo, there are other enterprises using the name Soho as part of their name. Here there was an interest in developing a shopping precinct called SoHo, not a single shop. Judge Ginat felt that there was no real likelihood of confusion, and therefore denied the injunction and ruled that the precinct could use the name SoHo. But should use a different font and not use the phrase Collection SoHo.
In the circumstances, due to the other goods sold in the shopping mall, Judge Ginat ruled that it would be clear to customers that the mall was not related to Collection SoHo, and threw out the case. However, he also ruled that the defendants could not use the same font as that used by Collection Soho LTD or use the phrase Soho Design.
13408.02.14 Collection Soho LTD vs Electra Real Estate LTD and Ben Ephraim and Sons, Building and Entrepeneurship LTD, Tel Aviv District Court before Judge Ginat, 9th March 2014
The term Soho conjures up a bohemian arty sort of lifestyle to Americans due to the neighborhood called South of Houston or Soho for short. To the British, the term indicates London’s historic red light district
There are 13 marks for Soho in the trademark registry, six of which have lapsed and 7 that are in force. For example, International Paper Company of Memphis, Tennessee, U.S.A. has a trademark No. 202063 for Disposable containers for use in the food and beverage service industry, namely, cups, lids, bowls, plates and serving platters; all included in class 21 and mark 202062 for Disposable containers made of paperboard for use in the food and beverage service industry, namely, cup carriers, cup sleeves, boxes, buckets, and bags; all included in class 16. Two of the lapsed marks, Soho and Soho Club were for registered to a Tango LTD, for clothing in class 25.
It is not clear to me why the word Soho should not be monopolized in Israel by registration of a trademark. If such a mark is registered, I fail to understand why the mark owner should not be able to enjoy a monopoly for the word.
I can see that the two signs use different fonts, but only can tell this as they are reproduced side by side. Both signs use san serif thin letters. The H is more or less identical. The S is slightly different and the O is more round in the complainant’s logo and more oblong in the defendants. The overall impression is very similar. I think this indicates intentional passing off, or at least inequitable behavior.
Nevertheless, it is difficult to criticize Judge Ginat for following Supreme Court precedent. His analysis is solid, and he has indeed moved this case quickly through the system. However, I was critical of the original Shemesh decision. Whilst judges are bound by precedents, bloggers aren’t. My concern is that whereas under common law, the likelihood of confusion may be the issue. trademarks are registered and are generally considered a form of property. If a mark is registered for design, why shouldn’t the mark owner be considered just that, an owner of a piece of abstract property? Can the existence of other retailers selling designer goods be considered as dilution? I would argue that judge Grunis’ decision was wrong since it dilutes the Shemesh brand name and this decision has a similar effect.
What Judge Ginat is doing essentially, is ruling that the right of any third-party to use a place-name like Soho for a shopping area over-rides the rights of a trademark owner to stop this unless there is a likelihood of confusion of origin of goods. There are two torts here. Likelihood of confusion and a separate trademark infringement issue. If the only issue is likelihood of confusion, why register trademarks? It will be interesting to see if this decision is appealed, and if so, what the verdict will be.
One final comment: the late Rabbi Irving Jacobs, formerly Principle of Jews College London, once told me that Rabbi Farber, the minister of Soho used to say that on leaving the synagogue one could make the blessing בורה מיני זונות.