Ice s.a. (formerly TKS) and ICE IP s.a. (formerly Chinalux SA) vend watches that are known as ice-watches. A range of these watches are shown below.
They have all sorts of distinctive features, like a winder at 3 O’clock, a strap, a watch face and hands. There is also a sort of pseudo diver’s bevel. I would argue that the only thing distinctive is the brightly coloured plastic image that was popularized by swatch 25 years ago.
The watches are labeled ICE and not SWATCH. ‘Ice watch’ sounds a little like ‘Swatch’, and Swatch were less than pleased – but that is a different story.
Time Concept 1999 LTD also market watches.
Ice sued for a temporary injunction on grounds of Passing Off, Copyright Infringement and Unjust Enrichment.
The watches are not the same. There are similarities: a winder at 3 O’clock, a strap, a watch face and hands.
Ice started marketing in Israel in 2009, with their Ice Chrono Electrick model introduced in 2012 and their Ice Chrono Party model introduced in 2013.
Time Concept was established in 1999 by Raanan Katz, and follows another company, Gallery LTD., established in 1988. Their time concept is to choose from a range of fashion watches that are made in china and to import them into Israel.
Ice claims that their Electrick and Party watches have distinctive design characteristics that, when combined, provide a unique ‘get up’ that has defined the face of the company and on which it established its reputation. Whilst they were advertising their watches on hoardings, Time Concept was important allegedly almost identical watches and marketing them as Gallery watches.
Ice sent a Cease and Desist letter, and following up by suing.
Ice alleges that Time Concept sold their copies on stands near Ice’s watches. In an interesting choice of words, the plaintiff summed up to the effect that there was an accumulation of similarities that were non functional, yet could not be dismissed as random or chance. Consequently, Dan Adin and Eran Liss, representing ICE, requested the usual package of refraining from marketing, distributing, importing, advertising and offering to sell the offending watches, and to pay half-a-million Shekels in damages.
The defendants argued that they had ordered the watches from China and are from the Unisex range, which is one of the three ranges that is branded as Gallery in Israel. The Gallery brand includes some 170 fashion watches that have sold since 1988 at around 399 Shekels, whereas the ICE watch sells at 890 Shekels. After their marketing campaigns, gallery has some 200 outlets across the country.
The plaintiffs consider that the catalogue images show the similarities, such as three dials and beveled ring, missing numbers on quarters, and the like. They argue that the defendants watches are not copies per se., but appear to be additional watches in the same series.
The defendants stressed the differences.
In his ruling, Judge Gidon Ginat ruled that the defendants watches were indeed similar to the Party and Electrick watches of the plaintiffs. Other watches of other manufacturers were less similar.
However, from a legal position, the starting point has to be that without statutory protection from patent or design laws, copying does NOT give grounds for suing. Each case has to be examined on its merits.
He noted that the plaintiff had failed to register his design. The question remains whether one of the other charges raised: (copyright, passing off, unjust enrichment) were grounds for sanctions.
Judge Ginat was not convinced that the models were well enough known to have a reputation to be passed off, even with the extensive advertising. The defendant’s watches also carried the name Gallery. Additionally, he wasn’t sure that the watches were that similar anyway. Finally, watches are occasional purchases where one would anticipate the purchaser noting the name and logo on the watch which is very different in the two cases.
the copyright claims were rejected since the product is a mass-produced object that is protectable by design registration. Copyright may cover exclusive watches in certain circumstances, but not mass-produced watches for the mass market.
As to Unjust Enrichment, following the precedent 5768/94 A.Sh.I.R., Ginat ruled that there wasn’t the additional element of bad faith that warranted compensation.
In conclusion, the case was thrown out. Both sides to bear their own costs.
T.A. 23036-09-13 ICE S.A. vs. Ice Concept 1999 LTD> et al., Ginat 10 Feb 2014
I think this decision is correct. My brother Aharon led the defence, and I discussed the case with him in advance. (I’ve also met the Time Concept people on the long, boring, Saturday night flight to Hong Kong). There may be room for unregistered design rights or short-term fashion copyright, but at present, the Israel Law does not have such provisions. The fashion industry has designer shows where everyone goes to try to work out next season’s product, and everyone is inspired by everyone else. I don’t think the case should have been brought at all, and was surprised that Eran and Dan sued in the first place. The issues raised are important though, and not just in Israel.
In a recent post, the IPKAT has announced:
Lookalike event — but it’s not a copy. The Kats’ friends at the Competition Law Association have another event coming up: it’s called “Lookalikes – an unfair practice and unfair competition?” No, it’s not a lookalike version of the recent JIPLP/GRUR Int event on a similar subject, but it does reflect the high level of interest which is currently being shown in this important topic. Speakers are our good friends Johanna Gibson & John Noble. The date is Thursday, 13 March 2014, 6pm at the London office of Withers Worldwide LLP. You can get the details here.