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.


Justice in the Eye of the Beholder

June 2, 2015

multifocals   Optika Halperin

This decision relates to parallel importing, to slander and to inequitable behavior.

Luxvision is the licensed importer of Zeiss lenses. Optika Halperin, a national chain of opticians in Israel (founded by a Rabbi who was a boxer, a world freestyle wrestling champion and bodybuilder, and then a Karate expert who introduced and promoted the sport to Israel) advertised multi-focal lenses that they sold as being Zeiss lenses.

Luxvision ran a vicious campaign of letters and advertisements from 2010-2011 arguing that Optika Halperin’s lenses were not original Zeiss lenses. Optika Halperin sued Luxvision, its CEO Erez Avner, and Ami Lapidot, who is the director of the Lapidot Group which owns Luxvision, claiming that this campaign caused then damages of 10 million shekels including cancellation of contracts with ELAL (Israel’s national airline) and with HaMashbir (Israeli department store), and had unjustly enriched the defendants. Luxvision counter-sued for 200,000 in 2011, as maximum statutory fine for willful slander without proof of damage, concerning four advertisements by Halperin, which they alleged were slanderous, defaming and insulting.

The relevant details are as follows:

On 22 December 2010, Avner sent an email to ELAL, and without revealing that he was an employee of Luxvision, informed them that the advertisement of a discount between Optica Halperin and ELAL infringed intellectual property since the guarantee was not recognized by Zeiss. On 13 April 2011 the defendants contacted HaMashbir in writing and informed them that Zeiss International had canceled the manufacturing and distribution rights of the Indian company from where Halperin had purchased the Zeiss lenses mentioned in the discount, and that the lenses were not merely imported without a license, but that there was a question regarding the origin of the lenses. Luxvision also contacted Halperin’s employees with a letter titled “Notice of Cancellation of Agreements” ordering them to cease and desist from selling or purchasing Zeiss lenses. Luxvision further published misleading notices in newspapers and on Internet websites regarding the origin of Halperin’s lenses that stated “Zeiss importers: Optika Halperin together with ELAL sell lenses from India. The [Halperin] chain: they are original”, and in an article in the financial supplement of Idiot Achronot, 2 February 2011, “Zeiss Germany does not stand behind the special offer and the Guarantee is not authorized.” In the business paper the Marker on 13 April 2011 the defendants  allegedly planted an article titled “Optical Illusion, the German Company Zeiss: Optika Halperin sells Zeiss lenses that are not originals.”

In their defense, Luxvision denied any responsibility for articles published by newspapers and the alternative defense that the facts discussed in the articles were true. Luxvision further denied that they caused damage to Halperin and claimed that the damage was self-inflicted since they published false information regarding the source of their lenses, and this was self-risk or contributory damage to the extent that they were not entitled to any compensation or legal recourse. This was also the basis of their counter charges of 200,000 Shekels in compulsory compensation without proof of damage.

Both sides brought evidence regarding the relationship between Luxvision and Zeiss India, from which it seems that Luxvision had themselves purchased and sold Zeiss lenses from India. The relationship between Zeiss Germany and the Zeiss Middle East had apparently been broken however there was an agreement between them. Judge Ginat ruled that these details were not necessary to rule on the case in question.

The Ruling

Optika Halperin as an independent and private company that imports and sells optical equipment and eye-wear imported Zeiss lenses with the Zeiss logo from the Indian manufacturer, which is a factory established by Carl Zeiss Vision International Gmbh, the German mother company.

On 27 February 2008, Zeiss Germany set up a joint venture with GKB HI-Tech Lenses Private LTD, an Indian company set up to sell Zeiss lenses to the Middle East. Under the agreement, with GKB HI-Tech Lenses Private LTD would be allowed to sell lenses with the Zeiss label in the Middle East, including Israel. The Companies had their differences and went to court in India, after which the business relationship ceased as of October 2011. However, Zeiss continued to allow their name to be used on lenses from India that were sold in the Middle East.

On the basis of evidence filed, including affidavits, Zeiss never showed any reservation that lenses from the Indian company were being marketed as Zeiss lenses in Israel and elsewhere. Zeiss never complained to Halperin nor did they file suit in an Israel court. They are not a party in this dispute. Indeed, Zeiss India had initiated an action against Zeiss Germany and not the opposite. Judge Ginat therefore ruled that the evidence leads to the conclusion that the imported Indian lenses may be considered as ‘parallel imports’ and not as imports of the authorized Israel dealer. As with the Hilfiger case, this is perfectly legal.

Cancellation of the ELAL contract 

In 2009 and 2010, ELAL and Yaakov Halperin signed various agreements under which Business and First Class passengers on ELAL flights would receive vouchers for purchasing Zeiss lenses at Optika Halperin.  Luxvision wrote to ELAL claiming misrepresentation and the eventual upshot was that ELAL did not renew their contract with Optika Halperin who claimed damages of 2,515,000 Shekels in loss of contract and loss of future business.

Although eventually ELAL wrote to Luxvision that they were not renewing the contract with Optika Halperin so the charges were moot, Luxvision argued that this letter was not an indication that they canceled an agreement, nor was it an indication that the decision was the result of Luxvision’s campaigning.

What was clear was that Luxvision embarked on a media smear campaign against Optika Halperin, and the articles are available on line and still cause damage. Furthermore, they contacted third parties having contractual relations with Optika Halperin so Luxvision did do serious damage to Optika Halperin’s reputation.  The articles were unequivocal and there is a basis for bringing charges of Slander under Sections 1 and 2 of the Slander Act.

However, it will be appreciated that Section 14 of the Slander Act provides the defense that the allegations are true. This requires that the publication is true and is of public interest. The truthfulness defense is objective. It is important as it strikes a balance between Freedom of Speech and the right to one’s good name. The public interest consideration is subjective, and the court has to rule on each case according to its merits. Regarding the truthfulness of Luxvision’s allegations, the onus is on them, as defendant to establish that their allegations are indeed true.  However, Luxvision were within their rights to indicate that the lenses were not guaranteed by them and with multi-focals, there is a real likelihood of lenses being unsuitable and rejected as such.

Judge Ginat was impressed that Zeiss Germany would have gotten involved if there was any truth that the Indian lenses were substandard. Zeiss themselves and not the importer owns the rights in their name. Furthermore, Luxvision contacted ELAL before contacting Zeiss Germany. Judge Ginat concluded that this case is not one where the lenses are not originals or are fakes, but is a case of parallel importing, and, as established in Dyson and in the Tommy Hilfiger  case, parallel importing is legal in Israel. Consequently, the defense that Luxvision told the truth is not a totally accurate reflection of reality and the defense is not available to them.

Contacting the media and Optika Halperin stores around the country does not seem to be a reasonable act that can be considered as equitable behavior as the publications were inaccurate and Luxvision was aware that the Indian company was authorized by the German company to produce Zeiss lenses, even if the relationship between the Germans and Indians was somewhat rocky. Consequently, Judge Ginat rejected the defense that the slander was unintentional.

Nevertheless, the estimate of 10,000,000 Shekels of damages was less than substantiated and consequently Luxvision was ordered to pay the maximum statutory damages of 50,000 Shekels for slander. The allegation of unjust enrichment was also not substantiated and was rejected.

Charges against Lapidot were rejected as any actions he conducted through the company were considered as the responsibility of the company and not personal responsibility.

Luxvision’s counter-claims of slander for Optika Halperin’s media campaign stating that ‘only companies that want to profit likes pigs sell expensively’, was rejected as Luxvision had started the smear campaign and the description seemed somewhat apt. Furthermore, there was nothing wrong with Optika Halperin showing the difference in price between themselves and competitors. In general, Optika Halperin’s campaign was considered acceptable. Luxvision, was, however, also ordered to pay 33,999 Shekels for causing the ELAL contract to be breached and they were also ordered to pay the court’s expenses including the cost of the court recorder, and 38,000 Shekels in legal fees incurred by Halperin.

28167-04-11 Optica Halperin vs. Luxvision LTD, by Gidon Ginat of Tel Aviv District Court, 29 April 2015


Waters of Eden – Nature’s Champagne

May 25, 2015

Mei Eden

Mei Eden (Waters of Eden) is a mineral water bottler and distributor.  Mei Eden advertised their mineral water as Nature’s Champagne.

The Comite Interprofessionnel du vin de Champagne (CIVC) which represents the wine manufacturers in the Champagne region of France, who perform a second fermentation of their wines in the bottle to produce a sparkling wine, have a geographical appellation. Only wine from that region may be called Champagne. The Comite Interprofessionnel sued Mei Eden on grounds of Infringement of their Geographical Appellation of Origin, Unjust Enrichment, the TRIPS Amendment to Israel’s IP Laws 1999 and Commerce relates torts 1999.

We note that MEi Eden is sold in blue tinted plastic bottles. Notably, in the period on question, the company did not sell sparkling mineral water, only still mineral water.

In an erudite 52 page ruling Judge Ginat reviewed Israel trademark cases, TRIPS legislation, Perrier related decisions from Germany, and UK rulings by well respected IP Judges Arnold and Laddie.

I can’t be bothered to reproduce the whole ruling here. I will confine myself to two quotes:

“The necessary elements for a claim in passing off were restated by the House of Lords in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 as follows:

the claimant’s goods or services have acquired goodwill in the market and are known by some distinguishing name, mark or other indication;
there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and
the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation”

As noted above, both of these points were well explained by Laddie J in Irvine, in particular in the following passages:

“First, it is well established that, even in the absence of competition and hence diversion of sales, a misrepresentation leading to the belief that the defendant’s business is associated with the claimant’s is damaging to the claimant’s goodwill. Secondly, it is also well established that, if there is a misrepresentation which erodes the distinctiveness of the indication in question, then that is damage for the purposes of a claim in passing off.”

Expressed in these terms, the purpose of a passing-off action is to vindicate the claimant’s exclusive right to goodwill and to protect it against damage. When a defendant sells his inferior goods in substitution for the claimant’s, there is no difficulty in a court finding that there is passing off. The substitution damages the goodwill and therefore the value of it to the claimant. The passing-off action is brought to protect the claimant’s property. But goodwill will be protected even if there is no immediate damage in the above sense. For example, it has long been recognised that a defendant cannot avoid a finding of passing off by showing that his goods or services are of as good or better quality than the claimant’s. In such a case, although the defendant may not damage the goodwill as such, what he does is damage the value of the goodwill to the claimant because, instead of benefiting from exclusive rights to his property, the latter now finds that someone else is squatting on it. It is for the owner of goodwill to maintain, raise or lower the quality of his reputation or to decide who, if anyone, can use it alongside him. The ability to do that is compromised if another can use the reputation or goodwill without his permission and as he likes.”

In his ruling, Judge Gideon Ginat issued an injunction against Mei Eden using the term Champagne to describe their water, fined the water bottler 400,000 Shekels and awarded a further 200,000 Shekels in legal fees.

02-22286-33 Comite Interprofessionnel vs. Mei Eden LTD et al. Judge Gidon Ginat, 19 May 2015

COMMENT
This decision issues as WIPO members are hammering out the Geneva Act of the Lisbon Agreement. See here for more details.
I have nothing against appellations of origin per se being taken seriously. However, this specific case was filed well after the events and long after the advertising Champagne campaign was initiated. Once a complaint was made the defendant stopped using the slogan. Arguably therefore, there were adequate grounds to throw the case out. I can, however, see grounds for issuing an injunction to prevent Mei Eden describing their product as Nature’s Champagne.

Damages? Unjust enrichment? Not convinced.

Unlike some Israeli sparkling wines which are as good as the French ones, mineral water, no matter how good, is not confusingly similar to Champagne wine, regardless of how bad. Mei Eden is not a sparkling water nor is it sold in glass bottles like Perrier. It cannot be compared to Babycham which was a cider that could allegedly be confused with Champagne by occasional Champagne drinkers or by the inebriated.

I don’t think that Laddie’s comments regarding an alleged misrepresentation leading to the belief that the defendant’s business is associated with the claimant’s is damaging to the claimant’s goodwill are in anyway relevant to this case.

I don’t find the argument of “passing off’ convincing. I don’t see a reasonable likelihood of customer confusion, or even a faint possibility of customer confusion. I can accept that European trademark practice would consider this type of usage ‘dilution’ and would forbid it. I can therefore see a legitimacy in the Comite Interprofessionnel suing for an injunction, and obtaining their costs. However, I don’t see a justification for this rather large fine. At worse, Mei Eden promoted their water using this Nature’s Champagne campaign. Arguably they increased Mei Eden’s market share of the mineral water market and maybe even increased mineral water consumption, but I seriously doubt it was at the expense of Champagne sales. I just don’t buy this.
The basis of the costs ruling was statutory damage and the damages awarded were “estimated” after weighing up all the considerations. I suspect that this sum will be appealed.

Peckham Spring

Readers are referred to “Mother Nature’s Son” the 1992 Christmas Special of Only Fools And Horses, which is perhaps the most iconic episode ever, and one of the funniest programs ever aired by the BBC, where the Trotters successfully market Peckham Spring Water.
http://www.bbc.co.uk/comedy/onlyfools/christmas/1992.shtml


Old Jaffa

February 16, 2015

jaffa orange    old jaffa

A Mr Yehuda Malki filed two trademark applications, 220542 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.

On allowance, the Council for Creating Plants and for their Marketing – Citrus Division opposed the marks.

Israel trademark no. 237678 which covers soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 issued without opposition, but the the Council for Creating Plants and for their Marketing – Citrus Division field for cancellation of the mark.

On 12 September 2012, the Commissioner Asa Kling ordered the cases to be heard together and on 31 October 2012, the three cases were heard.

The Applicant, unrepresented, informed the Commissioner that he did not intend cross-examining the Opposer, and so the Opposer was exempted from appearing.

The Opposer considered that using the term Jaffa for anything not including citrus fruits was false labeling as the term was understood in the trademark ordinance and registration of the mark was therefore against the public good.

The Applicant rejected this interpretation and considered that considerations regarding false labeling were beyond what should be considered when registering trademarks. The public good should allow him to go about his business.

Section 11(5) of the Trademark Ordinance 1972 states that trademarks that are immoral or against the public good cannot be registered.

Section 2a of the Ordinance states that Jaffa is an appellation of origin under the law of Appellations of Origin 1965, and suing the word Jaffa, Jaffas or Joppa in Hebrew or English, or marks including the word or sounding like the word was not allowed under Section 2. Section 2b states that addition of words such as kind, type, copy, goods originating or the like did not stop using these terms form being forbidden.

According to the Commissioner, the concept of “public good” is a general principle that the courts can apply wherever they consider it appropriate, and this changes from  time to time and from place to place. However, as far as the term Jaffa is concerned, it is an appellation of origin that has specific legislation designed to advance Israel’s citrus industry.

In the legislation relating to the appellation of origin it is noted that the special law was drafted as the term Jaffa was being used for citrus fruit not originating in Israel and for other goods that are not citrus fruit and are not necessarily from Israel.

Consequently, the Commissioner accepted that the appellation of origin was designed to promote Israel’s citrus industry worldwide. Marks such as Old Jaffa were, indeed, against the public interest.

The Applicant considered that the term ‘Old’ was different from type or kind, and effectively removed the term Old Jaffa from the special law protecting Jaffa.

The Commissioner considered that arguably a law from the Sixties may be no longer relevant and noted that back in 2005, the previous Commissioner considered whether or not to extend the appellation of origin protection for Jaffa, but noted that the protection was extended and is in force.

Furthermore, since the word JAFFA is protected as a trademark (Israel trademark 20481) the requested mark should not be considered distinct within classes 29 and 30, and shouldn’t be allowed to be registered.

Despite the fact that fresh fruit and dried goods are often sold in different places, this is not always the case. The term old is not enough to allow registration, since Old Jaffa refers to Jaffa (in other words, it’s  not like the difference between York and New York).

Were the applicants’ goods related to the Old City of Jaffa, possibly consumers would associate the location separately from citrus fruits but currently that is not the case. Consequently, trademarks 220541, 220542 are refused and 237678 is canceled. The parties are invited to request costs.

Decision re Opposition to 220542 and 220581,  and cancellation of 237678 re Old Jaffa; Malki vs. the Council for Creating Plants and for their Marketing – Citrus Division by Asa Kling, 4 January 2015.

Comment

Currently, to provide Jaffa oranges all year round, the term is used for marketing oranges originating in South Africa and not just in Israel.

Still, the District Court over-ruled the previous Commissioner and allowed the mark to be registered. See here.

Still, I think that the fact that the term is no longer an indication of the origins of the citrus fruit does provide justification to interpret the rule narrowly, and, in my opinion, the term Old Jaffa does conjure up the coastal town and not Jaffa Oranges. Certainly, 40 years ago, the restaurant in London called Old Jaffa was trying to invoke the place and not the fruit.  Nevertheless, following a court ruling, the issue may be beyond a Commissioner to cancel the law or to interpret it narrowly. If Yehuda Malki decides to appeal this ruling to the courts, it will be interesting to see what happens.

 

 


Trademark for “Israel Franchise Portal” Successfully Opposed

April 8, 2013

A Mr Adi Chami, through his company Adi Avihu Chami  Management and Marketing Real Estate Investments LTD.,  filed an Israel trademark application number 233872 for פורטל הזכיינות של ישראל – Portal Zakhyanut Shel Israel, literally, “Israel Franchise Portal”. The mark included a graphic element and is shown below:

Portal

The application was for business administration services by franchising on the internet, all included in class 35.

On publication, MATI, a government-owned non-profit that provides franchising services via a wholly owned subsidiary called Fran-Ex Business Consulting LTD  together with the subsidiary, jointly opposed the mark.

MATI was established in 1991, and opened a dedicated branch called “The Center for Promoting Franchising in Israel” back in 2002. MATI also registered their own trademark (no. 161956 in 2004) for the “Center for Promoting Franchising” as shown below:

zachyanut

In 2010, following reorganization, MATI established Fran-Ex Business Consulting LTD, as a wholly owned subsidiary dedicated to franchising.

the applicant, Adi Avihu Chami  Management and Marketing Real Estate Investments LTD., is wholly owned by Mr Adi Chami, who also wholly owns another company called “Israel Franchise Portal LTD.”, and also directly owns a website: www. zakhyanut.co.il

MATI claimed to be the central body dealing with franchising in Israel, providing information to some 1500 people a year, and to academic institutions, foreign embassies and the Israel Parliament.

MATI claimed to use the term “Portal Zakhyanut Shel Israel”, literally, “Israel Franchise Portal” but had not registered it, considering it descriptive and therefore not registerable under section 11(10), and the inclusion of the word Israel rendered it a geographic indication and thus not registerable under Section 11(11). However, were it to be considered registerable, MATI felt that as a long term user of the term, and provider of services, it should be awarded the mark.

Adi Chami argued that MATI, as a government non-profit should not be able to challenge a commercial company for ownership of a trademark which is a commercial property. Since MATI had spun off  Fran-Ex Business Consulting LTD, MATI had no standing. Furthermore, he argued that there were loads of marks registered that included the word Israel and therefore this should be considered a geographical indication under Section 11(11). Finally, he argued that the mark in question was totally different to Israel TM 161956.

In his ruling, Commissioner Assa Kling ruled that MATI had standing as the Section 24 of the Trademark Ordinance and the relevant regulation (regulation 35) empowers anyone to oppose a trademark application. He went on to rule that there was no flaw in MATI having set up a wholly owned subsidiary to carry out franchising related work.

The issue, in the opinion of Commissioner Kling, was whether the Applicant was trying to free-ride on the reputation of the non-profit. He agreed with MATI that it was of little relevance if they had registered their franchising website or were using it as an unregistered trademark. The fact that MATI referred to their site a website and Chami  referred to his as a portal was also considered of little relevance since the two words were more or less synonymous as far as internet sites were concerned.

Kling considered that Chami had provided little evidence of providing franchising services, and certainly not through the present applicant ‘Adi Avihu Chami  Management and Marketing Real Estate Investments LTD.’ which dealt with real estate.

Since the applicant had written to Fran-Ex Business Consulting LTD claiming that their usage of their website was confusingly similar to his trademark, he was estopelled from claiming that the marks were not confusingly similar.  Various other actions by the applicant indicated inequitable behaviour and the  Commissioner consequently refused the registration of the mark and awarded costs of NIS 15000 to the opposers.

Opposition to Trademark Application 233872 for “Portal haZakhyanut Shel Israel” MATI and Fran-EX vs. Adi Avihu Chami…, Ruling by Assa Kling 11 March 2013. 

COMMENT

Under Israel Law, inequitable behaviour is given very high weight, so once he considered applicant as acting inequitably, it was not surprising that the application was rejected. However, if we are looking at the issue of equitable behaviour, one wonders why MATI considered “Center for Promoting Franchising” to be registerable and indeed registered a trademark for it, but considered “Israel Franchise Portal” to be descriptive and therefore not registerable?  It appears that they didn’t consider registering a trademark for this until someone else got there first, and arguably this is not the most equitable type of behaviour.

Having registered a company called “Israel Franchise Portal LTD.” is, of course, irrelevant since company names have to be original and different from each other, but do indicate that the name may be registered as a trademark. If Chami had shown wide usage of the company name in actual trading, I suspect he would have been able to register the name as a trademark. Although the mark applied for is descriptive, so is the “Center for Promoting Franchising”.  Furthermore, the mark includes a graphic element that adds an element of distinctiveness. for some reason, Commissioner Kling seems to have ignored this element in his ruling. Personally, I would prefer if both govt. Non-profits and private individuals used names that revealed who they were and not merely what they do, and that trademarks were awarded accordingly.


Champagne and Strawberries

July 15, 2012

Victoria’s Secret sell a range of lotions, sprays and hand creams under the title “Strawberries and Champagne”. Presumably, the intention was to inspire romance, fun, bubbliness and summer fruity sweetness. On 16 November 2009, they filed an Israel trademark application which was allows the following October and published for opposition purposes.

Champagne is a historic province in the northeast of France, and the association of French wine-growers Comite Interprofessionnel du Vin de Champagne objected to Victoria’s Secret’s trademark application and filed an opposition in February 2011.

I don’t think there is a likelihood of confusion, but apparently the association of French wine-growers (Comite Interprofessionnel du Vin de Champagne (CIVC)) see things differently. Their objection is on grounds of dilution. In other words, any use of the word champagne that is not for sparkling wine originating in the Champagne area, including usage for lingerie, soaps, luxury cars, etc. is considered damaging to the mark, and to the reputation of their wine.

Whether or not the Israel trademark commissioner would have agreed is moot, since Victoria’s Secret withdrew the trademark application due to lack of commercial interest before the case was heard on its merits.

Comite Interprofessionnel du Vin de Champagne’s counsel applied for NIS 95,404.60 in legal fees but failed to provide sufficient evidence that such fees were fairly accrued, and so Ms Jaqueline Bracha, the Deputy Commissioner of Patents and Trademarks, awarded NIS 5,000 in damages and a further NIS 20,000 is legal fees.

Cost Ruling: TM 224851 Comite Interprofessionnel du Vin de Champagne vs. Victoria’s Secret Brand Management 25 June 2012.

NIS 20,000 is somewhat less than NIS 95,000. Nevertheless, it is enough to cover a fair supply of champagne wine and body lotion. Of course, if Victoria’s Secret’s lotions don’t taste good, this could have a damaging effect on purchasers assuming that the lotion contained Champagne and the unpleasant taste was the result of the champagne. One wonders though if trademark protection in this case should extend beyond beverages? Should the association of Scotch whiskey growers be able to prevent little black or white dogs being sold as Scot’s terriers? what about scotch eggs?


Lebanon Retakes Humus Record

May 9, 2010

After a team of Israeli Arabs in Abu Ghosh recently made a 4 ton plate of Humus in a satellite dish, Lebanon has retaken the world record by preparing a plate of humus that weighs about 11.5 tons.  

Thery also prepared a record breaking earthenware dish for the occasion.

In the village of Al-Fanar around 8 kilometers east of Beirut, some 300 chefs mixed around 8 tons of boiled humus, 2 tons of lemon juice, 2 tons of tahini and 70 kilograms of olive oil to prepare their record-breaking dish which was certified by a representative of the Guinness Book of Records.

As well as retaining the Tabulleh record, they have had a fry up of 5 tonnes of felafel, establishing a record for that and probably cuasing more than a little heartburn!

COMMENT

Although I dispute Lebanon’s attempt to get the felafel and chickpea spread recognized as a Lebanese dish, I have no problem with this recording breaking attempt.

I think that it is in everybody’s interest for national pride to be directed to relatively harmless activities like making humus. Particularly when there is a constant stream of deadly Iranian missiles being delivered to the Hizbollah from Syria.

So personally, I couldn’t care which country holds the record and look forwards to the day when I can travel to Beirut, Ramallah or Damascus to eat pita and humus.

I hope that the tons of food are distributed to the poor though.