Generic Body Warmers

S.P.B. Equipment LTD and T.T.L.M. Systems (Israel) LTD, both owned by Shai Popper supplied chemical body warmer packages to the Israel Defense Forces (IDF) and to private customers through survival and camping stores.

The packages have a specific shape, are coloured yellow and show instructions for use and various warnings in Hebrew and English. They also include a Use By Date.

The packages are manufactured in by Tianjin Comfort in China where they are sold as Body Warmers. Popper, however, sells these devices as High Quality Body Warmers.

Apparently, over a 10 year period, during which Popper had a significant market share if not an absolute monopoly, Popper sold some 5,000,000 units.

EliKal LTD. was created by a Mr Eli Even-Chen in 2005 after Even-Chen served as Head of Logistics and Equipment of the IDF over the years 2002 to 2004.

After several failed attempts, EliKal succeeded in winning the army tender.

EliKal’s body warmers were also sold as High Quality Body Warmers, had the same shape, were coloured yellow and had very similar texts printed on them. Furthermore, EliKal used a similar website with similar content to that of Popper’s companies, to advertise his products.

Popper sued, claiming passing off, unjust enrichment, famous mark infringement and copyright infringement, claiming statutory damages of NIS 100,000 and absolute damages of a similar sum.

In analyzing the two cases, Judge Avraham Yaakov noted that the general issue of to what extent suppliers had rights in markets they were dominant and where fair competition allows others to compete. Essentially the issue was one of where lied the public interest. He went on to point out that one could ask for statutory damages or actual damages, but not both in tandem.

Somewhat confusingly, Yaakov rigorously applied the triple test, and related to the sounds of the two names, as well as to the appearance of the products. Ruling that High Quality Body Warmer was simply a laudatory version of Body Warmer, who rejected the complainants allegations that he had somehow acquired rights in the product name through good will and reputation. However, the bottom line was that the term High Quality Body Warmer was simply a laudatory version of Body Warmer, and the shape of the article was not unique to the complainant, since the product was available from Chinese suppliers as an off-the-shelf product.

Since the IDF knew exactly who they purchased goods from, at least as far as the army was concerned, there was no case of passing off to answer for. Regarding the private market, the complainant stated having some 1,000 regular clients, but did not substantiate this claim, so the charges of passing off were also rejected.

Judge Yaakov went on to rule that despite the close similarity in instructions and warnings printed on the two packages, the Hebrew text was largely dictated by the army mil. spec. and the English language version was largely supplied by the manufacturer. For such products, the scope for creativity in instructions and warnings was limited. Consequently, Popper did not have copyright in the instructions.

Judge Yaakov also accepted the argument that the colour yellow was considered a warm colour and was widely used in packaging for products such as matches, lighter fluid and the like.

Having rejected all claims regarding the product itself, Judge Yaakov then considered the websites and, since the defendants site was clearly based on that of the complainant, with similar text, including some creative uses of the packages such as keeping animals warm in transit, he ruled copyright infringement and awarded NIS 70,000 out of the maximum discretionary NIS 100,000 statutory damages and a further NIS 20,000 in costs.

T.A. 15307-11-09 SPB Equipment et al. vs. Elikal LTD. before Judge Abraham Yaakov, 26 August 2011.

COMMENT

When analyzing the different elements like colour, text, name, etc. individually, one comes to the conclusion that Judge Yaakov is correct. However, we note that following the A.Sh.I.R. ruling by the Supreme Court, it is clear that in lieu of other grounds provided by IP legislation, Israel case-law provides the possibility of seeking redress on grounds of Unjust Enrichment, at least where a product design is copied. What is required is some additional element indicating bad faith. Regular readers will no doubt be aware that I am not a great fan of this doctrine, but it is, nevertheless, good case-law which is supposed to be binding on lower courts.

In this instance, the defendant copied the trade dress, including colour, shape and the name of the product. The copying of the website is further indicative that the defendant was copying Popper’s product.

Although the body warmer is a product made in China, it is not generic in the sense that potatoes or plain tee-shirts are generic. There is a peculiarity in Israel’s outdated design law (Patent and Design Ordinance 1925) which requires absolute local novelty to register a design in Israel. It is therefore possible that the product design could have been registered by Popper.  I therefore wonder if the clear indications of EliKal targeting Popper’s market with an identical product in identical packaging shouldn’t be considered unjust enrichment? Even-Chen’s winning the army tender deserves a second look as well. In principle, as a tax-payer, I am in favour of the army purchasing identical products from the cheapest supplier. Did this happen here? I suspect that Even-Chen had extremely good contacts with the decision makers…

Presumably, once damages are awarded for copyright in this specific case,  the point is moot. Nevertheless, it seems to me that the courts are moving away from A.Sh.I.R. and favour free market competition which I see is a good thing.

This decision does illustrate the importance of distinctive names and packaging schemes to develop a reputation for a product. It also indicates that there is no protection for market share or importer’s rights. None of this should be surprising, but we constantly meet clients who want to patent a device they’ve seen abroad that they want to import into Israel, and descriptive and laudatory names are only too common.

The decision relates to a temporary injunction regarding the identical coloured product that was apparently infringed, and this case was firstly wrongly filed in the Magistrate’s Court.

We note that body warmers have been required by Israel’s generals since time immemorial. See Kings I 1:1-3.

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