The IP Factor

Israel 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.

Calling 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.

Back 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.

Judge 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.