David and Albert Nachmias were partners with Yossi Ashkenazi in Yekev Ben Zimra, יקב בן זימרה a boutique winery that was established in 2003. A few months later, the partnership split up and Yossi Ashkenazi paid David and Albert Nachmias 80,000 Shekels for his share. Yossi Ashkenazi continued to sell wines under the brand Yekev Ben Zimra יקב בן זימרה. In 2013, David and Albert Nachmias started a home based winery and sold wine under the brand name Yekev Kerem Ben Zimraיקב כרם בן זימרה .
The term Yekev means winery. The term Kerem means grape (or olive) grove. Thus the two words Yekev and Kerem are generic for the industry. The term Ben Zimra is a name of a 6th Century Rabbinic scholar, and Kerem Ben Zimra is the name of the Galilean village established in 1949 by Turkish immigrants where plaintiffs and defendants lived.
Yossi Ashkenazi and Yekev Ben Zimra (יקב בן זימרה) sued the Nachmiases for trademark infringement and passing off, requesting a permanent injunction and statutory damages of 100,000 Shekels for Passing Off, under Law of Unfair Trading.
The Nazareth District Court ruled in favour of the plaintiff and noted that for a decade, Yekev Ben Zimra developed a reputation, and the goods it produces are intrinsically linked with the name of the company. To establish ‘passing off’ one needs to establish that a brand has a reputation and that there is a likelihood of confusion. In this case, Yekev Ben Zimra has a reputation and Yekev Kerem Ben Zimra is confusingly similar since it looks and sounds the same and the goods sold and distribution channels are identical.
The Judge issued a permanent injunction and awarded 20,000 legal fees to the plaintiff, however, in the circumstances, he did not see fit to rule statutory damages.
T.A. Nazareth55513-11-13 Yossi Ashkenazi and Yekev Ben Zimra vs. David and Albert Nachmias, 13 January 2014