Night Sleep Center Plus LTD has marketed beds under the name Dr Relax.
Two other bed manufacturers, Relaxon (Israel) the best Furniture in the World LTD and The Center for Health LTD having trademarks Relaxon and Dr Gav (Gav is Hebrew for back) respectively, sued for both trademark infringement and passing off.
In an interesting and well-reasoned ruling, Professor Ofer Groshkopf, a law professor at Tel Aviv University who serves as a Tel Aviv District Court Judge ruled that Dr Relax does not infringe either mark.
Simply put, he considers that there is no likelihood of confusion between the marks, and pointed out that ‘Dr’ is a general indication of medicine and academic research and relax is a general term.
Both words are generic and their combination neither sounds like nor looks like either mark. Since there is not confusing similarity, there is no trademark infringement. Furthermore there is no passing off.
Judge Grushkopf also noted the somewhat similar image of someone reclining that appears in both Dr Gav and in Dr Relax, but considers the different positioning of the graic element, its generic nature, and the different colour schemes were insufficient to create a likelihood of confusion. He also rejected a survey performed by the plaintiff as not providing the correct indication of confusing similarity in a purchasing environment.
Judge Grushkopf was impressed by the fact that neither plaintiff sued when the defendant first started using the Dr Relax brand, but only did so some time later following other disputes between the parties. This was seen as undermining the plaintiffs’ claims of inequitable behaviour.
It transpired that when the brand Dr Relax was first used, six years earlier, Night Sleep Center Plus LTD created a confusingly similar catalogue to that used by Relaxon (Israel) the Best Furniture in the World LTD, which is the local representative of Elran, a Canadian company. Furthermore, evidence was provided that a sales person had indicated to a private investigator that the Dr Relax products were identical.
For each of these separate passing off actions, the Judge awarded statutory damages of NIS 100,000 to Relaxon, but did not consider these ‘sins at birth’ were sufficient justification to prevent the now successful competitor from using the brand 6 years later.
Judge Grosskopf noted that both complainants had filed oppositions to the Dr Relax trademark application, but indicated that he would not relate to its registerability.
In an interesting aside, Judge Grosskopf argued the minority opinion in a Supreme Court precedent concerning McDonalds and suggested that he would be inclined to allow a portmanteau mark such as “Mac King” for hamburgers, despite clearly being inspired by Mc Donalds and Burger King. In this case, where neither Dr nor Relax are distinctive in and of themselves, the issue is different.
A final point worthy of note: the Judge started his ruling with a preface discussing the Biblical prohibition of mixtures, such as wool and linen combinations (shaatnez) and growing vegetables in a vineyard (Klai haKerem). He quoted Leviticus 19:19 and Deuteronomy 22:9-11 and the commentary of Rashi and Nachmanides comments thereon. After pointing out that there was no Biblical injunction against mixed trademarks he went on to rule that not only did the Heavenly Court have no problem with such marks, but the Terrestial Court didn’t either!
We note that in this ruling Judge Grosskopf is taking a conservative position with regards to trademarks, and is simply looking at likelihood of confusion. There have been various judicial constructions such as dilution that he is ignoring.
The Case: T.A. 9143-11-08 Eliyahu & Sons LTD and Others vs.Night Sleep Center (2000) Plus LTD and Others, before Judge Professor Grushkopf (22 June 2011.)