A Balanced Temporary Injunction Against Rami Levy

April 19, 2018

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

steaks

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

baladi minute steak

The claims of passing off and copyright infringement were considered unlikely to prevail and thus not grounds for a temporary injunction. However, Judge Avrahami saw fit to grant a temporary injunction on the grounds of unjust enrichment. Rather than have Rami Levy’s product removed from the shelves and repackaged which could result in the meat being lost, she ruled that a sticker in a contrasting colour should be attached to the packages indicating that Maadaniya was Rami Levy’s own brand. Rami Levy was also advised to work towards introducing a more different package. The parties were invited to try to settle their differences without the court having to hear the case in its

Baladi makes meat products including minute steak which are thinly sliced steak that can be roasted in a frying pan in one minute. Baladi claims to have designed the packaging that they use for minute steaks.

Rami Levi is a public company that runs supermarkets across Israel. The company stocks known brands and also sells popular products packaged for them under their own label.

Rami Levi sells Baladi products. It also sells minute steaks under their only  own label “Rami Levi’s Sycamore Marketing Delicatessen”. Rami Levi’s own label minute steaks are packaged by TBone Veal.

In a preliminary ruling, Baladi claimed that minute steaks were not sold in supermarkets until they launched this product in November 2017 with a massive and expensive sales campaign. From the launch until 19 March 2018, the product sold well due to the marketing campaign. On 19 March 2018, suddenly, without notice, Rami Levi forbade Baladi to replenish supplies and blocked the product, and instead supplied minute steaks under their own label.

baladi logo

Baladi claims that the own-label brand is packaged in a copycat package of that of their product, and that this was a calculated, organized action of Rami Levi in bad faith, to ride on Baladi’s advertising campaign and product launch, benefiting from their investment. Baladi’s campaign has drawn customers to want to purchase their product. The customers go to the meat refrigerators and find the infringing product that is a copy of their package and are misled into believing that they are purchasing Baladi’s product.

Baladi considers that the case is particularly serious since Rami Levi is a retailer that can block their product whilst offering the competing own-label product. This is particularly problematic since Rami Levi’s product launch was just before Pesach and close to Independence Day which is the start of the Israel barbecue season when sales go up significantly.

In light of the above, on 22 March 2018, Baladi sued for passing off, unfair trade practices, copyright infringement in the product package and unjust enrichment. They filed their case in the Tel Aviv and Jaffa District Court. Baladi requested a permanent injunction, compensation and production of sales data. For the purpose of assessing the court fees, Baladi assess the damages at 2,750,000 Shekels.

Baladi also requested a temporary injunction on Rami Levi to prevent them using the product sold under their private label or at least to prevent them selling the product in the packaging used at the time of filing, and to cease from blocking Baladi’s products, and to enable their products to be sold on an equal basis with other frozen meat products. The Request was supported by an affidavit from Ms Irene Feldman, the VCFO of Baladi, and was filed as an ex-partes action for immediate attention since any delay will cause irreparable damage.

El gaucho minute steak

In response, Yossi Sabato, the VCEO of Rami Levy submitted an Affidavit claiming that Baladi was acting in extreme bad faith by not telling the court that they were conducting a parallel action against El Gaucho which is a label of TBone Veal in the Central District Court as 4347-01-18. In that instance, they made similar accusations which were rejected. This action, in a different court, against a different label, was a type of forum shopping that was indicative of bad faith and should be sufficient for the case to be thrown out. This was simply an attempt to corner the market and to prevent competition. The Ex-partes actions in both the El Gaucho case and in the present instance are cynical exploitations of the legal system designed to get free publicity, and the plaintiff was suing for extreme damages without having first contacted the supermarket chain, which is itself inequitable behavior for which the case should be thrown out.

monopoly

With regards to the complaint itself, Rami Levy claims that Baladi is trying to obtain a monopoly on minute steaks, which is a term known in Israel and abroad and which they did not coin. Baladi also tried to obtain a trademark for this generic term. Minute steaks have been advertised in Israel in the past and are available in restaurants and from butchers, and even from supermarkets. Baladi has not been in the market long enough for minute steaks to be identified with them to the extent that they deserve a monopoly on the term (acquired distinctiveness), and a reputation that is protectable, and even Baladi does not claim to have rights to minute steaks but only to the sound of the name.

Rami Levy

Rami Levy claims that their product package is completely different from Baladi’s, including writing and visual elements, and there is no likelihood of confusion. Baladi advertises their product with their trade-name Baladi clearly written thereon and, in the absence of this term, there is no likelihood of confusion. Rami Levy’s private label HaMaadaniya (literally the delicatessen) is well-known to Rami Levy’s customers as a low price brand, and there is no likelihood of confusion.

“Rami Levy” is written clearly on the front and back of the packaging, and is a super brand that does not need to ride on the reputation of Baladi or anyone else. The difference in price also prevents confusion, and all Rami Levy’s own branded products are clearly sold as such in their stores, and there are loads of examples of private labels being sold alongside branded goods and the public are not misled in any way that they are purchasing something other than the own label.

boycott

As to the issue of marketing Baladi’s products in Rami Levy’s stores, Rami Levy contends that they are under no obligation by general law (in rem) or by contract (in personam) with Baladi, to purchase any of Baladi’s products, including their meat products. Baladi’s goods are available in other chains. At present, Rami Levy stores DO stock Baladi’s minute steaks but, in view of the high price that Baladi dictates for their product, Rami Levy is under no obligation to replenish stocks of something much more

In answer to Rami Levy’s response, Baladi reiterated that their issue is NOT the name ‘minute steak’, but the packaging and the product blocking. On 26 March 2018. a long hearing was held. There were many attempts to bring the parties into an understanding, and the affidavits were reviewed and the parties summarized their arguments. After the hearing the parties still refused to come to an understanding, and so there is no alternative but to reach a verdict in this instance.

Relevant Considerations Regarding Temporary Injunctions

Principles-Governing-Issuance-of-Temporary-Injunction

It is known that the party requesting a temporary injunction has to convince the Court, on the basis of apparently convincing evidence, that there is grounds for the complaint and the Court then has to balance the ease of implementing the different actions, i.e. the damage to the complainant if a temporary restriction order is not issued, vs. the damage to defendant if a temporary restriction order is issued but if it later transpires should not have been. The Court has to ascertain whether the temporary injunction was requested in good faith, and if the injunction is just and fitting in the circumstances and does not unduly damage the defendant – See Regulation 363 of the Civil Procedures Regulation 1984.

interests

The main considerations for requesting a temporary injunction are the likelihood of prevailing and the balance of interests of the two parties, but where the Court considers that the likelihood of prevailing is greater, they will be less concerned about the balance of interests, and the opposite is also true.

When deciding on a temporary injunction, the court also has Read the rest of this entry »


Passed Off Pasta?

February 8, 2018

barilla pasta

Barilla is an Italian pasta brand that is on sale in Israel.

Oddly enough, pasta is made of durum wheat (Triticum durum or Triticum turgidum subsp. durum), which is a tetraploid species of wheat which is hard to mill due to the starchy endosperm. Dough made from its flour is weak or “soft”. This makes durum favorable for couscous (semolina) and pasta, and less practical for flour. It is actually grown in Israel and exported to Italy!

Rami Levy

Rami Levy (Shivuk HaShikma) is an Israel chain of supermarkets that, as well as selling commercial brands, negotiates with manufacturers and packages its own-brand labels which are usually cheaper.

 

Recently, Rami Levy started stocking its own-label dried pasta.

Rami Levy pasta

As you can see, Rami Levy’s pasta, like Barilla, uses a blue box, albeit a slightly different shade, and has the type of pasta contained viewable through a cellophane window. The type of pasta (penne, spaghetti, cannelloni, etc.) is written in white, although on Barilla’s product, the name is in English letters and on Rami Levy’s own brand, it is in Hebrew. Rami Levy Shivuk Hashikma is written across the top and on the side of the box. The name of the brand, written in yellow, seems to be a face with a hat on and wide mouth, but is actually a stylized O followed by lla in italics giving Olla. However, Barilla also ends with an lla.

Barilla sued Rami Levy in the Tel Aviv District Court for a million shekels (about $300,000 US, 250,000 Euros) and obtained an injunction ordering Rami Levy to take their own-brand pasta and sauces off the shelves. Rami Levy filed a counter-suit and the cases are pending.

Rami Levy claims that Barilla waited for over 14 months since Rami Levy introduced their own-label and so the case should be thrown out. He claims that his competition is fair and Barilla should respond by advertising, discounts and special offers. He dismisses allegations of passing off, and argues that there is an overwhelming weight of precedent from the District and Supreme Court that indicates that the similarity is not excessive and that the case is baseless. The name Rami Levy, the Italian series is clearly written in white on blue in large letters.

Barilla has a trademark on their brand name and not on the design of the package or on the blue colour. Rami Levy accuses Barilla of ignoring their own branding and trying to monopolize the blue colour. However the case-law does not support claims of passing off where packages are similar but the trade name is clearly written and there is no likelihood of confusion in such cases. The courts do not recognize rights in a packaging colour. Rami Levy further claims that with over half a billion shekels in sales of “the private brand” in 2017, his sales outstrip those of Barilla. His prices are much lower and this also distinguishes them, and there are a number of accumulative differences.

COMMENT

taaman 1taaman 2

We note that Taaman (pun on taam which means both taste and reason) is an Israeli importer and distributer of staples such as flour, pasta, chocolate, etc. that also has a red logo with white text in an oval. Their name, in Hebrew, is written in a backwards leaning italic font, however as Hebrew is written from right to left, the sloping is the same as that of Barilla. Their pasta is packaged in blue cellophane with a window showing the content. Thus Barilla’s packaging is perhaps less unique than they claim, although Taaman uses cellophane bags and not boxes.

In a recent decision the Deputy Commissioner refused to register a black box with silver trim as a trademark. Back in 2014, Judge Ginat refused to recognize a trade-dress in blue energy drink cans. Judge Binyamini threw out a claim that one ice-cream manufacturer was entitled to a monopoly on gold ice-cream tubs. Then again, Abu Shukra were unable to register their application for a trademark for a coffee package that is similar to Elite’s Turkish coffee.

 

 

 


Copyright in Numerology

December 12, 2017

numerologyNumerology is any belief in the divine, mystical relationship between a number and one or more coinciding events. It is also the study of the numerical value of the letters in words, names and ideas. It is often associated with the paranormal, alongside astrology and similar divinatory arts.

gamatriya chartIn gamatriya, each letter of the Hebrew Alphabet is assigned a corresponding number. the first nine letters are numbered 1 to 9, and the next nine are assigned the numbers 10, 20, 30, etc. The final four letters are assigned the values 100, 200, 300, 400.

The word alphabet comes from the Greek Alpha Beta, and the word gamatriya comes from Gamma – t(h)reeya. That said, the Greek alphabet was based on the Hebrew and Phoenician precedents. The Latin letters were derived from the Greek ones.

The issue in question here, is whether copying sections of verbal lectures and publishing them in writing is considered copyright infringement.

In coming to their verdict, the Supreme Court has reviewed the differences between the onld and new, law, what fixation is required and in what circumstnaes a publisher or distributor can be considered as innocently infringing.

The Case

Sharon Ron is a numerology lecturer. In 2002 Ela Shonia attended his numerology course at the Association for Promoting Awareness in Haifa. At the lectures, handouts and exercises were distributed by Ron. In 2003, Shonia and a fellow student called Sarah Vakhnin attended private lessons given by Ron at his home in Kfar Sava.

Numerology 3rd milleniumIn 2004, Shonia published a book titled “Numerology for the third millenium” which went to three editions, the last one in 2010. In 2010 Shonia published a second book titled Combined Numerology. Both books were published by Astrologue Publishing LTD.

Mishkal Publishing & Distribution LTD received the rights for both books in 2010, in a deal between Shonia, Astrologue and Mishkal dated 03/02/2010 [I am writing the date in numeric form as it may portend something – MF]. Ron sued Shonia, Astrologue and Mishkal in the Tel Aviv District Court in Appeal 8822/15, and counter Appeal 8822/15. [No doubt these file numbers have some mystical significance-MF].

On 20 March 2004 and on 3 February 2010, Shonia signed declarations Read the rest of this entry »


Israel Supreme Court Upholds Decision Re Appellation of Origin

November 26, 2017

cheese and wineIsrael is a member of the Lisbon Convention for the Appellation of Origin. This is an international convention beloved of the French and frowned upon by the common law countries. Essentially food and drink associated with certain places is entitled to wider protection than mere trademark protection, so that only Scotland can make Scotch Whiskey. Only France can make Champagne and Cognac. Parmesan cheese and hams must come from the Parmesan region of Italy, and so on.

There are now two Israeli whiskey producers. Israel makes Kosher bubbly wine and brandy and a very wide range of cheeses that mimic English, French, Italian, Dutch and Greek types. The labeling is carefully controlled in accordance with the rules.

Israel boasts one Appellation of Origin: Jaffa for citrus fruits.

jaffa orangeCalling something Jaffa, Jaffas, or in Hebrew יפו, יבא, יפאס is not merely a trademark infringement, but also infringes the special law governing this appellation of origin “The Law for Protecting Origins and Indication of sources 1965” gave special protection for Jaffa and variant spellings for citrus fruits. Subsequently, special amendments to the Trademark Ordinance in 1968 widened the protection of the Jaffa mark to prevent its usage for a wider range of goods, and forbade marks that include the word Jaffa as only part of the mark. The amendment to the trademark ordinance takes this protection very seriously, and instead of merely providing financial remedies, prescribes incarceration for infringers.

126 EL AL Poster, Two Flight Attendants in Orange Uniforms by 747, Marvin G. Goldman Coll'nelal posterBack in the Sixties, Israel was a banana an orange republic. The largest export sector was fruit and vegetables and oranges were the flagship product. The posters alongside, used by ELAL – Israel’s national airline gives an indication of the importance and symbolism of the orange in that era.

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin.

Yehuda Malchi tried to register Israel Trademark Application Numbers 20542 and 220581 for OLD JAFFA, for preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively. Israel trademark no. 237678 covering soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 had previously issued without opposition. In an action combined with an opposition by the Council for Producing Plants and Their Marketing to Israel Trademark Application Numbers 20542 and 220581 , the Israel trademark 237678  (Old Jaffa) was canceled. The ruling may be found here.

Having appealed the Israel Patent Office ruling and that of the District Court, Yehuda Malchi appealed to the Israel Supreme Court.

EtrogJudge Hendel’s ruling included an interesting side comment in which he noted that Chief Rabbi Kook, who was the Chief Rabbi of Jaffa and the surrounding agricultural villages from 1904 until the outbreak of World War 1, had backed a campaign to promote using Jaffa etrogs (citrons) for the Sukkot ritual, rather than those from Korfu and Italy, which held much of the European market. Judge Handel thus argued that Israel was traditionally blessed with citrus fruit and that Jaffa was the hub of the trade a hundred years ago.

Hendel also noted that very little of the sprawling urban conurbation around Jaffa is devoted to agriculture today, but since the amendment to the Trademark Ordinance explicitly prevents use of Jaffa as part of a mark, the phonetic or visual similarity between JAFFA and OLD JAFFA is not relevant. He thus upheld the District Court’s ruling.

COMMENT

I am naturally formalistic (which is considered a dirty word in Israeli legal circles), and generally think that where the democratically elected legislative passes a clear law, the judges should follow that law. I am against judicial activism which I see as undermining the Knesset. (That is not to say that recent government attempts to prevent charges being brought against active ministers, to prevent the Prime Minister from being indicted for corruption are the finest examples of parliamentary legislation).

Nevertheless, I think that Judge Hendel could have and should have struck down this law providing wide and special protection for Jaffa oranges. The reason why is not merely that the brand does not indicate oranges from the Jaffa region grown by Jewish agriculturists on Kibbutzim, but rather that it does not indicate oranges grown in the contested region of Israel – Palestine at all! In order to provide year round supplies to world wide markets, oranges grown in South Africa and Australia are sold under the Jaffa brand. Thus the unique and distinctive taste of Jaffa oranges is not a result of the terroir of the Holy Land at all.  This travesty means that BDS supporters are not merely depriving Arab orchard owners with Thai foreign workers of their livelihood in an attempt to harm Israel politically, but are also harming the black workers in townships around Johannesburg.

Since the Council for Producing Plants and Their Marketing does not restrict usage of the mark to Israel grown oranges, why shouldn’t the special designation be cancelled?

In fairness to Judge Hendel however, we note that Yehuda Malchi was not represented and suspect that the sad state of affairs described above is unknown to him.

For the record, we note that it is ill-advised to appeal to fight legal battles, including submitting Appeals to the Supreme Court without legal representation.


Israel Supreme Court Rejects Appeal from Shukha Trademark Infringers

June 9, 2017

shukhaThere are two branches of the Shukha family that market oil and other food stuffs: Sons of George Shukha ltd. and Antoine Shukha and Sons ltd.

Sons of George Shukha ltd, which also imports and distributes rice, have 27 registered trademarks including the name Shukra in English, Hebrew and Arabic.  The earliest registered mark is from 1984 but one mark is for Sons of George Shukra from 1930.

Over a six-year period, the Sons of George Shukha ltd attempted to enforce their marks through the courts with the parties reaching an agreement that allowed Antoine Shukra and Sons to use labels that include the name Shukra in a font size no larger than that for Antoine and Sons and together with a logo. The settlement, though ratified by the court, was not fulfilled and so Sons of George Shukha ltd. appealed to the Supreme Court. Antoine Shukra and Sons submitted various creative arguments arguing that since the size of their oil containers was larger, the agreed size of the label was no longer reasonable. They also claimed that the ruling only related to the name Shukra in Arabic. They submitted that two weeks to recall and remove all infringing products from the shelves was too short a period, and the penalty of 2500 Shekels for every day delay would cripple them.

Supreme Court Judge Amit pointed out that unless the penalty for failing to enforce was crippling, infringing parties would simply continue to prevaricate. He noted that in two of the three counts of continued infringement, Antoine Shukra and Sons acknowledged that they were infringing, and in the third case, where the issues that received court endorsement related to the size used for the name Shukra and to it being used together with a logo, even if there was some grounds to consider the Appeal based on font size, the infringers were not displaying the logo prominently. He refused to reconsider issues ruled on by District Judge but noted that the District Court judge had stated that the Appellants had made various claims in affidavits but withdrew them during the hearing, and had generally acted in bad faith.

Judge Amit noted that with financial penalties for failing to enforce, staying a ruling during Appeal was generally not appropriate since a monetary ruling could rectify any issues. Judge Amit refused to stay the enforcement, but granted a 30 days instead of 14 days for it to be enforced.  By the end of this period, the Appellants have to provide a full record od what was done to recall or relabel the infringing goods. Costs of 5000 Shekels were awarded to Sons of George Shukha ltd.

Appeal 4113/17 Sone of George Shukra ltd. vs. Antoine Shukra and Sons ltd. and various members of the Shukra clan and related companies. 8 June 2017


Aluminium Profile Trademark Ruling Survives Appeal to Supreme Court

June 7, 2017

On 16th November, we reported that the District Court has upheld Deputy Commissioner Ms Bracha’s Decision not to allow registration of Israel trademark application 240319 filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co or NAPCO) following an opposition proceeding by  Extal LTD.

240139

Not content, NAPCO appealed to the Supreme Court and Extal filed a counter-appeal.

Judge Meni Mazuz has upheld the ruling and Appeal. He does not consider the issue of general public interest.

NAPCO lost their mark for failure to pay the renewal fee. Judge Mazuz does not consider that a now non-registered mark has to be a well-known mark to prevent registration of a confusingly similar mark, and that Deputy Commissioner Bracha was acting within her discretion in her ruling to not allow the mark to be registered.

Judge Mazuz did not consider that any fundamental rights were lost by requiring a different extrusion marking to be applied to profiles.


More Coffee!

March 23, 2017

EdenFollowing on the heels of the Izhimis family feud, we now report on a competing marks proceeding between Abu Shukra Import Export and Marketing Ltd and Strauss Coffee B.V.

Again, this relates to Turkish coffee. On 2 May 2013, Abu Shukra filed Israel TM application number 255526 in class 30 shown alongside.

This ruling relates to all over packaging designs being used as trademarks and to branding concepts. To my mind, it also raises issues of monopolies and market abuse, but this is beyond the competence of the adjudicator and commissioner to relate to, although I think judges might see things differently.

22263EliteOn 16 July 2014, but before Abu Shukra’s mark was examined, Strauss filed Israel TM Application No. 266680 for Coffee, roasted coffee, roasted and ground coffee and coffee substitutes, all in class 30, and also Israel TM Application No. 266683 for Turkish coffee, roasted Turkish coffee, roasted and ground Turkish coffee and Turkish coffee substitutes, all in class 30. Strauss Coffee’s marks are shown alongside.

[At this stage we note that Strauss Coffee owns the Elite brand among many others. Strauss employees 14,000 people in 20 countries. The empire was built on their Turkish coffee brand, but they also now own Sabra, the leading hummus brand in the US, are partners with Yotvata dairies and Yad Mordechai Honey – MF]. Read the rest of this entry »