In one of the more compelling Israel court rulings on an IP issue I’ve seen in a while, Judge Michal Agmon-Gonen dismissed claims by Adidas against Galel Yassin, a West Bank Arab who imported cheap training shoes from China.
Yassin imported trainers for retailing by market traders at NIS 20-30 (about $6-9). The shoes included four parallel diagonal stripes on each side and Adidas claimed that this infringed their famous three-stripe logo.
Judge Agmon-Gonen ruled that there was neither an objective nor a subjective likelihood of confusion. Customers was aware that the shoes were cheap substitutes and not the brand leaders. The importer clearly marked the shoes with the brand ‘Sydney’ in three places and did not write Adidas or use the three-leaf symbol.
The importer had tried to negotiate a compromise with Adidas, and had offered to add a line crossing through the four stripes, or to add a big cross on top, either solution to be implemented before release from the docks, but to no avail.
The gist of the ruling is that Agmon-Gonen is not enamoured with recent trends that see brands and trademarks as property themselves, and believes that trademarks should simply be an indication of the supplier or manufacturer of the goods thus marked. With such a narrow interpretation of trademark law, the legal issue is simply one of likelihood of confusion. Whilst prepared to acknowledge that the inspiration of the four stripe mark may well have been Adidas’ product line, there was, nevertheless, no likelihood of confusion. Rather Yassin was providing a cheap alternative for the financially deprived.
Yassin provided evidence that other shoe manufacturers, notably Skechers, also used a four stripe decoration. Adidas cited previous rulings in their favour, both in Israel and abroad. Agmon-Gonen suggested that Adidas was aggressively throwing its weight against weak competitors, generally unable to suffer the financial strain of defending themselves and saw this as trademark abuse. Freedom of Occupation allows others to import footware and the public interest is for competition. In addition to leading brands, there is a market for unbranded, generic products, and the 4-striped trainer was such a generic alternative for those unable to pay for the brand leaders’ products.
Whilst accepting the existence of various legal doctrines such as dilution of famous marks, Agmon-Gonen considered these trends an issue of policy, and generally considered the public good and competition of more importance.
Although some Israeli case-law was cited, the 46 page ruling is more notable for referring to both recent and classical journal articles and textbooks, and for quoting the minority opinion in the A.Sh.I.R. case.
In conclusion, Adidas’ case was dismissed, Yassin is able to continue importing generic, non-branded training shoes and was awarded NIS 85,000 (about $23,600).
T. A. 2177/05 Adidas-Salomon vs Galel Yassin and others.
This ruling reminds me of a tweet put out by http://twitter.com/AntiIsraelPorn – a tongue-in-cheek satirical propaganda forum:
Israel refuses to lift the ban on left footed shoes into Gaza. Forces Gazans to walk uncomfortably.
Posted 8:19 PM Dec 28th, 2010 via Twitter for iPhone
Three stripes is a registered trademark of Adidas since 1949 and is well known worldwide.
For a general overview of other litigation on the subject, see http://en.wikipedia.org/wiki/Three_stripes
The ruling appears to be a departure from current trends. Although the job of setting legal policy should best be left to the Supreme Court, I suspect that Judge Agmon-Gonen’s ruling will be upheld if challenged on appeal, and even if not appealed, will be influencial since it makes a compelling case. Indeed, if she continues like this, I suspect she will be promoted to the Supreme Court eventually.
10 February 2011 – An appeal has been filed.
There is also a new decision from Italy that maintains that there is infringement – see http://www.internationallawoffice.com/newsletters/detail.aspx?g=26e8f27a-005b-4861-949f-d422b1fa7ee9