Israel Supreme Court Overturns Ruling Forbidding Copying Fashion Designs

February 21, 2018


Back in December 2016 Israel fashion designer Gadi Elemelech sued Renuar, a chain selling women’s clothing, for selling clothing that was confusingly similar to his haute couture dress. The dress in question appeared in Elemelech’s 2013 collection, and in Renuar’s 2014 range. The legal grounds for the action were the Israel Trade Related Torts Act 1999. Judge Gidon Ginat ruled that a chain-store that copied a range of designer clothing should cease and desist, and that Renuar should pay damages of 55,000 Shekels and a further 35,000 Shekels legal costs.  Civil Tort 5366-12-14 Elimelech vs. Renuar Ruling by Gidon Ginat, 22 December 2016.

The ruling was appealed to the Israel Supreme Court which overturned it, canceling Judge Ginat’s ruling without costs to either side. Instead of a long detailed ruling, the three judge panel ruling is barely two lines, and simply states that simply copying a product is not enough to obtain a legal sanction against the copier, with a reference to paragraph 18 and citations of the Apropos 945/06 General-Mills vs Meshubach ruling(Bugles).


This ruling essentially means that non-registered designs are in the public domain and cheap copies of various articles, from food snacks to fashion clothing can’t be litigated unless the design is registered, apart perhaps from specific cases where there is some additional issue (A.Sh.I.R.).

A scratch line on a profile as a trademark indicating origin

February 11, 2016

If a design feature on a profile serves to indicate the origin of that profile, it may be registered as a trademark.

Israel trademark application 240319 filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co.) or NAPCO is such a mark.


The mark, as shown above, was applied for aluminium profiles in class 6.

To some extent, the mark is reminiscent of the three-stripe Adidas mark, but it seems that the intention here is to monopolize a nonfunctional scratch like indentation anywhere on any profile as an indication of origin. Furthermore, if the scratch were to have a function, such as engaging a seal or the like, it could still infringe.

To avoid such problematic protection, the applicant clarified that the mark was a lengthwise 120 degree scratch on non-significant parts of the profile.

We assume that non-significant parts is to exclude such scratches that serve an aesthetic or functional purpose.

The applicant requested immediate fast-tracked examination as new requirements of the Israel Standards Office required manufacturers of products for sale in Israel to have registered trademarks identifying the goods.

After a hearing at the Israel Patent Office, the mark was allowed with the above clarification and disclaimer on 28 November 2012.

On 27 February 2013, Extal LTD filed an opposition, claiming that the mark lacked distinguishing characteristics as required by Section 8a of the Trademark Ordinance 1972 and was confusingly similar to their mark and thus was non-registerable under Section 11(13) and was thus against the public ordre, was not registerable under Section 11(5), would create unfair competition, false identification of the origins of the goods, dilution of Extal’s reputation and was thus not registerable under Section 11(6).

This scratch seems to have caused an awful lot of trouble.

The opposer, Extal, was established in 1988 and claims to specialize in developing, manufacturing, designing and marketing quality aluminium profiles. The firm is active internationally and in Israel, and has invested in advanced manufacturing equipment, automated storage and powder painting. In 2005 Extal bought up the reputation and IP rights of Mipromal. This and sales in 2011 and 2012 of hundreds of millions of Shekels are the basis of their claims to a wide reputation in Israel.

In 1988 the Opposer filed Israel Trademark Number 121163 in class 6. The mark appears as follows:


The mark lapsed in 2006 due to failure to pay the renewal fees and was resubmitted in August 2011 and, following office actions, was split into two marks, Israel TM Application Numbers 253416 and 240117, each consisting of one of the elements above. Those applications were suspended pending this hearing. The Deputy Commissioner noted that scratches on the side of profile are standardized symbols for marking sections of extrusions, and the intention of the mark is a protrusion along a profile or an indention on a profile.

Extal claimed that the single scratch/protrusion has become well known in Israel and is marked on and identified with their products. The pending application is confusingly similar to their well known mark and is used to mark aluminium profiles with a triangular scratch along the profile. The distribution channels and target consumers are identical. Since the requested mark is recognized by the Israel Standards Institute as indicating that the goods come from Extal, allowing NAPCO to register the mark contravenes public order.

Extal alleged that NAPCO’s marks were filed in bad faith, since they were filed soon after their marks lapsed, and further alleged that NAPCO had filed false information.

NAPCO filed their statement of case on 14 April 2013 and denied most of Extal’s allegations but admitted that the two companies’ products were aimed at the same target audience in Israel. NAPCO claimed to have independently invented the scratch sign and to have used it since 1996, and for many years in Israel thereby developing a reputation for their products. NAPCO argued that Extal’s 121163 mark was neither a protrusion or a scratch and could not protect a scratch on an aluminium profile. To the extent that it could have provided some protection for whatever it protected, Extal had abandoned the mark. Furthermore, the publications supplied by Extal indicated that they were marking their goods, de facto, with a protrusion not an indentation.

Both sides filed numerous affidavits from employees and from people in the industry. The witnesses were cross examined in March and June 2014.

One of Extal’s arguments was that a lengthwise scratch along a profile is to minimal to serve as an indication of origin and was unacceptable under Section 8a of the Ordinance. We find this argument odd for Extal to submit since they were concurrently prosecuting a similar mark themselves. We think that the statement could fairly be used to estoppel their application.

That as may be, Ms Bracha noted that the Israel Standards Organization requires that profiles are marked. Since they are extruded in long lengths and then cut to size, a mark at one end or another is insufficient and manufacturers mark their profiles with (combinations of) protrusions and / or scratches. The Israel Standards Organization keeps a register of the various manufacturers marks but also requires the manufacturers to register trademarks. See Accumulated Regulations 7012, 30 June 2011 Section 2.2. The regulation came into effect for imported profiles on 30 November 2012.

Clearly the Israel Standards Organization regulations are not binding on the Israel Trademark Office which may refuse a mark considered as generic, as too similar to a competing mark, or for some other reason. However, the guidelines for examiners considering trademark profile markings as trademarks require them to take into account the Israel Standards Organization’s regulations when considering whether marks are inherently distinctive or have acquired distinctiveness. Thus the profile itself is functional or aesthetic and longitudinal scratches or protrusions (certainly on non-visible faces) serve as an indication of source.

There are a number of such marks with two or three indentations or protrusions such as 96177 (Extal), 96178 (Extal) 67008 Klil and 124975 (Extel). None of these have accompanying explanations.

NAPCO’s mark is a single scratch but it includes a clarification that “the mark is a lengthwise 120 degree scratch on non-significant parts of the profile.”  Thus NAPCO’s mark has inherent distinctiveness and is designed to distinguish its products from those of competitors.

The question remains whether it is indeed distinctive and whether it could create unfair competition.

Section 11(6) states that a mark that could confuse the public, falsely indicate the origin of goods or promote unfair competition may not be registered.

In this instance, the question is different from that discussed in the caselaw, such as 10959/05 Delta Lingerie vs. Tea Board China, 2006, and  the Safari Surf and Enrico Coveri cases, in that the pending mark is arguably confusable with a non-registered mark. As Seligsohn wrote in his Biblical Epic monumental Trademark and Related Laws, Shocken 1973:

A mark will be considered as a misleading mark if the public would be mislead to believe that it was the mark of another. The English Courts have dealt with this issue and ruled that a mark that is confusingly similar to one that have been registered may not be registered. However, the Israel Law does not differentiate between a registered mark and one not registered but well known. In both instances the Commissioner will refuse the mark if he believes that it will confuse the public into thinking that the mark is that of the third party. Before the Commissioner takes this step, he must be persuaded that the established unregistered mark is so well known in Israel that the public will assume that the younger application is the product of the owner of the established mark.

Extal is the largest distributor of profiles in Israel will 20% of the market. Their mark is well known. The argument centered on whether Extal had a reputation for a single line mark as they claimed, or only for a single protrusion as NAPCO argued.

The Deputy Commissioner was persuaded that Extal has a reputation for a single line mark among the relevant market and fulfills the requirements set down in 18/86 Phoenician Glass vs. Les Verreries de Saint Gobain, PD 45 (3) 225, 245-146.

There is no doubt that the original 121163 application was for scratches or protrusions as both were shown and the description was for a single line on a profile wall. Furthermore, a letter from the Israel Standards Organization appended to the file wrapper also related to a single line. Furthermore, the registration at the Israel Standards Organization was for a single protrusion or a single indentation.

The Opposer, Extal, attempted to register the two marks in one application in 2011, but the Patent and Trademark Office ordered the application split into two applications, one for an indentation and the other for a protrusion.

The opposer had a registration, lost it unintentionally, but has marked their products with a single line since the 1990s. They also had registered a design for a profile with a single line.

About half of the opposer’s product are sold to warehouses, traders or wholesalers. A significant proportion of the products are sold to window and door manufacturers and to industry. The relevant public are thus wholesalers and tradesmen.

Extal claims that 99% of their profiles are marked and that the calendars they distribute to their customers in 1994 stated “One line – the indication mark of Extal Profiles”. Their 1996 catalogue has the letters ID standing for indentification along various images, and pointing to a line that is generally a protrusion, sometimes an indentation and sometimes not clear. The catalogue even states: NOTE – Extal’s identification mark – a single line.

A further catalogue from 2006 states Micropramel and Extel’s marks are one or 2 lines stamped on the profile. [The Hebrew word used indicates stamped into, but doesn’t rule out embossed, since the word is that used for coin manufacture- MF].

Mr Yatom, testifying for Extal, argued that the choice of protrusion or scratch was left to the technicians and both were considered as indicative marks.

The Deputy Commissioner Ms Bracha notes that most images show a protruding line but some show an indentation and she concluded that the relevant audience would consider both as being Extal’s marks.

She was also impressed that despite testifying that he and others in the field could differentiate between the two suppliers’ products, A Mr Altif failed to identify the source of a sample as did other witnesses. Rather damningly, a Mr Masaroy who testified for NAPCO had trouble identifying his client’s goods.

From Mr Altif’s testimony it transpired that after painting, other marks were eradicated. It was difficult to identify the source of goods and one had to cross-check profiles with those shown on invoices. Sometimes functional or aesthetic lines were confused with those allegedly serving as indication of origin. In practice, additional indications such as delivery papers were used to identify batches. He also indicated that there was a problem with fake imports on the market.

Although the registration had lapsed, the mark was still in use and was refiled a day before this case that is being opposed. Extal expressed doubts that NAPCO was using their mark.

Extel sent private investigators to eight distributors and, without relating to scratches or protrusions, these asked workers about Extal and NAPCO’s products and marks. The conversations were submitted as evidence. Whilst noting that the investigators knew what was expected of them, the Deputy Commissioner did not feel that they had concealed information as alleged by NAPCO . As transcripts and tapes were submitted, there was no need to submit a report. That said, the Opposer chose the distributors to send the private investigators to and could select companies that they had a good relationship with. Despite certain reservations about the private investigation, the Deputy Commissioner felt that the Opposers’ mark was well known and that they were considered as being a single stripe, without differentiating between protrusions and indentations.

As to Applicant’s good faith, it is noted that although they claimed usage of the 120 degree indentation from 1996, they do have other marks in use. The opposed mark was only registered with the Israel Standards Organization from 2013, which is AFTER the Applicant was aware of the Opposer’s claims to the mark. The marks were filed almost simultaneously but NAPCO requested accelerated examination. This and the large difference in market share indicate that NAPCO may have been acting inequitably.

NAPCO ‘s choice of mark remains unclear, but regardless of whether the mark was requested in bad faith, in practice it is confusingly similar to the Opposer’s mark and thus cannot be registered.

Since the mark is refused under Section 11(6) as potentially confusing the public, whether or not the Opposer’s mark is a well known mark under Section 11(13) is moot.

Nevertheless, although perhaps not a well known mark in the sense of Section 11(13) Extal does have a reputation in the industry.

The Opposition was allowed and the mark canceled. Nevertheless, as the Opposer had not filed clear marks and had not maintained their marks they were not entitled to full damages. Had the opposer’s mark been properly registered the applicant’s mark would not have been allowed and thus the opposition proceeding would have been superfluous. Showing a reputation in a non-registered mark made this opposition particularly difficult as it made it necessary to bring evidence of reputation and of Applicant’s bad faith in registering the design.

A firm claiming to be a market leader should be more professional in registering its marks to prevent a third party registering them. Similar considerations are true for the registration with the Israel Standards Office as well.

The parties’ behaviour in the proceedings and the intermediate rulings and cross-examinations and interference are also taken into account. Thus costs of 5000 Shekels including VAT are deemed appropriate.


At a Patent Conference at Bar Ilan University recently, the Commissioner of Patents and Trademarks discussed the pending design law and noted that designs were being used to protect extrusion profiles.

That as may be, although scratches seem to be odd types of trademarks, it is not easy to permanently mark extrusions to indicate origin. Furthermore, apparently the first makers’ marks were scratches and the like on pieces of armour.

The issue of non-functional elements in an extrusion serving as a trademark has been discussed by the Israel Patent Office before see here.

The prime example of case-law in Israel concerning a well known but non-registered mark is the Chanel ruling of 1950, where some Israeli market his products Chanel and the well known brand Coco Chanel had not registered their marks in Israel. Another case of interest is the Versace saga here, here and here. I don’t think that the single scratch/protrusion is that well known. Extel has at least two other registered marks for two triangular scratches, two triangular and two domed protrusions, implying that the single triangular scratch can at best be one of several lines. Nevertheless, it may well be a recognized marking in the industry.

It seems that this whole case hinged around the issue of whether Extal had a reputation for a single line or for a single protrusion, and whether, if only for a single protrusion, whether the two are confusingly similar. There is no doubt that ten or twenty years ago Extal was claiming a reputation for a single line or stripe, but that is not the issue. Nor is the registration at the Standards Institute. The issue is what people in the industry see as being Extal’s mark. The Israel Patent Office, by requiring Extal’s application to be split, has already determined that a scratch and a protrusion are not the same. The private investigator’s testimony was less than satisfactory. Indeed, NAPCO attempted to get it struck from the record – see here. I note that the sorely missed UK IP Judge from Golders Green, Hugh Laddie, apparently did his own market research when considering likelihood of confusion, such as with the Burton fashion brand. I wonder if Ms Bracha could have usefully visited one of the many wholesalers in Talpiot or Givat Mordechai, or sent an Examiner, and thus determined first hand, whether Extal had a reputation for a single scratch line or not. Certainly one doubts that calendars from 2006 are being referred to, even if some may still be hanging on walls somewhere.


Pop Group Anthrax Sued for Ripping Off a Hannuka Sweater

February 8, 2016
Anthrax photo by Jonas Rogowski

Anthrax Photo by Jonas Rogowski

Anthrax is an American heavy metal band from New York City. It was formed in 1981 by guitarist Scott Ian and bassist Dan Lilker. The group was considered one of the leaders of the thrash metal scene during the 1980s. Of the “Big Four” thrash metal bands (the others being Metallica, Megadeth and Slayer). The name was chosen as being “sufficiently evil”.

Anthrax were the only thrash metal band from the East Coast. As of 2014, the band has released ten studio albums, a number of singles and an EP with American hip hop group Public Enemy. According to Nielsen SoundScan, Anthrax sold 2.5 million records in the United States from 1991 to 2004, with worldwide sales of 10 million.

Cummin's Hannukka sweatshirt

Aaron Cummins, claims he created the original design for the Ugly Hanukkah Sweater in 2012 and has exclusive copyrights to it, but that it’s being ripped off by others to promote the famous Anthrax rock band. According to his lawsuit, the sweater’s design was registered with the U.S. Copyright Office in 2013, and has since been marketed and sold through his Detroit company, Wet House.

Cummins claims that sometime around September, Cummins’ Hanukkah sweater design started showing up on the Internet as an Anthrax sweatshirt and continues to be sold online at as an Anthrax sweatshirt.

More details of this strange copyright infringement case may be found here.

Apparently the sweater design actually came from a joke post on Metal Sucks by writer Axl Rosenberg, who jokingly headlined that the band was selling Hanukkah sweaters and photoshopped an Anthrax logo onto an existing hanukkah sweater. The band actually ended up making and selling some of the sweaters…

American Sleep

December 9, 2015


Super Night Star 2000 LTD filed Israel Trademark Application Number 256053 for American Sleep as shown. The application covers Mattresses and garden and home furniture; all included in class 20.

On 26 August 2014 the Trademark Department sent an Office Action claiming that the mark could not be registered under Sections 11(6) and 11(6a) of the Ordinance since the mark included the geographical region American and the mattresses do not originate in America.

The Applicant responded on 17 November 2014 and claimed that the mark was not misleading as America does not have a reputation regarding mattresses. The Applicant went on to explain that customers would not consider that the mattresses were from America but that they enabled an American standard sleep quality, and the geographical indication was random.

Since America does not have a mattress reputation, section 11(6a) is not applicable. To support this argument he referred to Israel Trademark No. 235163 “Spirit of Jerusalem” to Ein Gedi Cosmetics. The Applicant’s response was unsuccessful and he requested a hearing before the Registrar. Applicants are entitled a hearing and on 5 July 2015, the Deputy Commissioner Ms Jacqueline Bracha held a hearing and the applicant went over his arguments and also noted that the term ‘American’ does not imply the United States specifically. (The applicant did not, however claim that the mattresses originated in Latin America or in Central America).

The Applicant claimed that unlike a perfect noun that is a specific place name and might lead a consumer to believe that the goods originated in a place, the term American is an adjective which does not imply a connection with the place (no, I don’t understand this either – MF). The Applicant then went on to claim that the term American was at best, a laudatory term.

The Ruling

Section 11(6a) states that:

A mark may not include a place name used for goods not originating in a specific area if it could lead to confusion regarding the source of the goods.

The main issue is whether the term American when applied to mattresses would lead the consumer to conclude that the goods originate in the States.

Section 11(6a) was added to the Trademark Ordinance when Israel joined TRIPS in 1999. The standard for excluding the mark is likelihood of confusion and not actual confusion.

Not all marks including a place name are prohibited. Some will be seen by the consumer as being random. It is only marks that are likely to cause confusion regarding the origin of goods that are forbidden.

McCarthy in McCarthy on Trademarks and unfair Competition, chapter 14:34 suggests three questions should be addressed:

”       1. Is the mark the name of the place or region from which the goods actually come? If the answer is yes, then the geographic term is probably used in a descriptive sense, and secondary meaning is required for protection. If the answer is no, then the geographic term is probably being used either in an arbitrary sense or in a misdescriptive or deceptive sense, depending upon the probable reaction of customers…

       2. Is the geographic term likely to denote to reasonable buyers that the goods come from the region or place named? If the answer is no, then this is evidence of an arbitrary usage…  

       3. Is the place or region named noted for these particular goods? If buyers don’t really care whether the goods come from the place named (and in fact they do not come from the place named) then this is evidence that the mark is being used in an arbitrary sense. But if the geographic term is likely to lead buyers to think that the goods come from that place, and the place is well known for these goods such that this is an important inducement to purchase, then the mark is probably deceptive and cannot be registered or protected.”

Since there are American made mattresses available in Israel that have a local reputation, one can conclude that customers are not indifferent to whether a mattress is made locally or in the States. One cannot exclude the possibility that someone seeing a mattress branded as American would conclude that it originates in the United States.

The Applicant alleges that the combination with sleep indicates that the term is being used arbitrarily but Ms Bracha does not consider this argument convincing. In RE CALIFORNIA INNOVATIONS, INC 329 F.3d 1334; 2003 U.S. App. LEXIS 10240; 66 U.S.P.Q.2D (BNA) 1853 the US Federal Court concluded that bags and storage devices including the term California indicates to the public that the  bags and storage devices originate in that State.

“In this case, we agree with the Examining Attorney that applicant’s mark CALIFORNIA INNOVATIONS and design is primarily geographically deceptively misdescriptive of applicant’s goods.

… Clearly, consumers viewing the word CALIFORNIA would understand it to refer the state of California. Moreover, although the design element in applicant’s mark does not have a geographical connotation such that it reinforces the primary significance of CALIFORNIA as geographical, we do not find the design to be so unique or distinctive as to detract from the geographical significance of CALIFORNIA. Also, the word INNOVATIONS does not detract from the primary significance of CALIFORNIA as geographical, but rather suggests innovative products originating from California.

… There can be no doubt that California is a major producer of a wide variety of goods, and in particular, goods of the type involved in this appeal. Thus, there is a reasonable basis for concluding that the purchasing public would make a goods/place association.”

Although the Applicant claims that the US does not have a reputation in mattresses. However, an Internet search reveals that there are US mattress manufacturers that are active in Israel, including Sealy, Active Coil and Serta. Sealy i a world leader and has a significant share of the Israel market.

The Monopolies Commission objected to Aminach and Night Sleep Center 2000 LTD joining forces as it would have a negative impact on the market, and noted that consumers place a high value of mattresses as impacting health and sleep, but not having external indications that enable the consumer to ascertain quality and to make an informed decision. The choice of mattress is heavily influenced by the sales person.

In such conditions, the assumed origin is a significant factor and the pending mark is misleading in this matter. This also indicates that the choice of place is not arbitrary.

Although the Applicant claims that the mark has a history of use, he has not provided evidence that this indeed is the case. It is also not clear that acquired distinctiveness could help overcome allegations that a mark is misleading as to the source of goods.

The mark was rejected.


I would have thought that using a place name as an adjective rather than a noun would be more confusing. There are mattresses and reclining armchairs sold in Israel as American Comfort, American Highrise, etc. I have found American beds very large and very comfortable, but when I’ve been to the US, I’ve stayed in hotels.

Does it matter where flooping mattresses are harvested?

Ketchup Wars

August 20, 2015

Heinz has removed the Hebrew transliteration of Ketchup from bottles of their iconic sauce. The reason? Israel has a standard for Ketchup that Heinz doesn’t come up to. Specifically, Israeli Ketchup contains a higher percentage of tomato extracts than Heinz’ tomato flavored condiment.

I read about this development in Yesterday’s Idiot Acharonot (Israel’s largest circulation fish & chips wrapper newspaper) whilst enjoying a leisurely breakfast on holiday in the Galilee.  The topic is a hot sweet & sour issue among fellow Anglo-American Immigrants who I am in contact with on Facebook.

To those of us who grew up in the UK or the US, Ketchup meant Heinz. Heinz launched its first Tomato Ketchup in 1876, Heinz was at the forefront of exploring natural preservation, and in 1906 was first to launch a Ketchup free from artificial preservatives. To prevent it growing a beard without fungicides, it includes enormous amounts of sugar and vinegar.



There never were 57 varieties of ketchup or indeed of anything else. Nevertheless, worldwide, Heinz is the #1 ketchup.

In the 17th century, the Chinese mixed a concoction of pickled fish and spices and called it (in the Amoy dialect) kôe-chiap or kê-chiap (鮭汁. By the early 18th century, the table sauce had made it to what is now Malaysia and Singapore, where it was discovered by English explorers. The Indonesian-Malay word for the sauce was kecap (pronounced “kay-chap”). That word evolved into the English word “ketchup”, and English settlers took ketchup with them to the American colonies.

In the United Kingdom, preparations of ketchup were historically and originally prepared with mushroom as a primary ingredient, rather than tomato. Ketchup recipes begin to appear in British and then American cookbooks in the 18th century. 

So the term Ketchup doesn’t imply containing tomatoes at all. It really simply means a savoury sauce. Nevertheless, to most of the world, the term relates to the thick dark red sauce that Heinz manufactures and distributes.

In Israel, a variety of condiments are sold as tomato ketchup. The most widely distributed and probably the best of them is Osem’s ketchup, which also comes in a distinctive container that is perhaps as well recognized in Israel as Heinz’ is elsewhere. I prefer Heinz’ Ketchup as it the taste I grew up on. My Israeli kids prefer Osem’s.

To put the argument into some kind of perspective, I’d like to use the analogy of mustard. I am sure that for British ex-patriots like me, mustard is a very strong condiment prepared from a powder. Coleman’s mustard has a long and distinguished history.

Jeremiah Colman founded Colman’s of Norwich in 1814. To create a tangy flavour, he blended brown mustard (Brassica juncea) with white mustard (Sinapis alba). From 1855 the firm introduced its distinctive yellow packaging and bull’s head logo, and in 1866 was granted Royal Warrant as manufacturers of mustard to Queen Victoria. The royal household still uses Colman’s today.

colmans mustard

Now the French make an entirely different condiment called Dijon mustard, that is rather milder. Americans have a sort of yellow ketchup that they call mustard, but which has no similarity to English mustard. One could envisage the UK banning American mustard from being sold as ‘mustard’ without a qualifier, such as ‘American style’ mustard. Similarly, one could imagine Americans requiring Colman’s Mustard to be sold with a government health warning that it should be consumed in small quantities only, and that it is rather different than what Americans are used to.

Israeli bottles of Heinz Ketchup will still have the word Ketchup on their labels in English, just not in Hebrew. Presumably English and American immigrants will see that the sauce is what they are looking for, and Israelis will appreciate that the condiment is something different. It is not a bad compromise. However, as the term ketchup doesn’t actually imply tomatoes and the average consumer is aware that condiments from different companies taste slightly different, and since both Heinz and Osem’s ketchup bottles feature the name of the manufacturer clearly and each comes in a distinctive bottle, I am not convinced that this is really necessary.

namesred mug

There are, of course, Israeli precedents for this type of thing. Nestle’s Nescafe Original was marketed in Israel as Red Mug. They couldn’t call it Nescafe as the term was generic. The Hebrew word Nes means miracle, and, where Elite’s Cafe Namess (soluble coffee) was known as Nescafe (miracle coffee), there was no way for Nestle to obtain a trademark for Nescafe.

Pips Cola

Prior to the Oslo accords, Pepsi Cola was not available in Israel, as Pepsi decided to kowtow to the Arab boycott. A Galilean Arab sold a locally produced cola as Pips Cola. When Pepsi entered the Israel market they tried to get an injunction against the Arab manufacturer. The Israel courts correctly noted that they had abandoned the local market. They ended up having to buy him out.

For British readers of my generation, I refer to classic Goodies Episode “The Bunfight at the OK Tearooms“, where ketchup as a metaphor for movie blood and gore was taken to its logical conclusion.


Coveri (Caveri?)

July 1, 2015

Enrico Coveri

On 3 May 2011, Enrico Coveri s.r.l. filed Israel Trademark Application No. 237567 for ‘COVERI’ coveri(ng) clothing, footwear and headgear, all in class 25. The mark was eventually allowed and published for opposition purposes on 30 April 2012. On 23 July 2012, Sar-Go Investment LTD opposed the mark. (The opposition actually related both to Israel TM 237,567 ‘COVERI’ and to Israel TM 237566 ‘ENRICO COVERI’ in Class 35, however, Sar-Go Investment LTD retracted their opposition to TM 237566 ‘ENRICO COVERI’ which was subsequently granted). In parallel with the Opposition before the Israel Patent Office, Enrico Coveri s.r.l. sued Sar-Go Investment LTD for infringing their (pending) mark. [– this is possible under common law rights, albeit not a good idea to sue before the mark issues].

Sar-Go Investment LTD asked the Court to require that Enrico Coveri s.r.l. post a bond [which is common practice where a plaintiff is not domiciled in Israel] and, on failure by Enrico Coveri s.r.l. to do so, the Court closed the case. On 31 December 2012, Sar-Go Investment LTD filed two trademarks, Israel TM 252378 “COVERI KIDS” for wholesale of clothing and shoes for children and youth, for “COVERI HOME” for wholesale furniture and children’s domestic accessories both in class 35. Both applications were suspended at the Opposer’s request until after the present Opposition is concluded.

Opposer’s Arguments

The Oposer claimed that they have used the (unregistered) marks Coveri Kids and Coveri Home for 15 years and had a reputation among their clients for these marks. The Opposer is a wholesaler whereas the Applicant is a manufacturer [this argument, together with the competing marks scenario created seems to be setting the scene for a request for co-existence]. In consequence of their longer usage in Israel, the Opposer claims that they should take precedence over Enrico Coveri s.r.l. in Israel under Section 24(a1)(2) of the Trademark Ordinance 1972, and, under sections 5(11) and 6(11) argued that allowing Enrico Coveri s.r.l.’s application to register would be unfair trade, would mislead the public and be contrary to the public good. In an alternative strategy, the Opposers argued that if Enrico Coveri s.r.l.’s was not canceled, then the two marks should be allowed to coexist due to the difference in sight and sound of the marks, as their desired mark was to be pronounced CAveri whereas the opposed mark was to be pronounced COveri. [I find this argument a little tenuous. The mark does not come with pronunciation instructions, and Israelis include Bedouin, Russian immigrants, American immigrants, Ethiopians, Thai foreign workers and Sudanese illegal immigrants. I doubt that there is a common pronunciation of vowels].

Applicant’s Counter Arguments

The Applicant claims a worldwide reputation in the word Coveri that goes back to the Seventies. [“When The Levee Breaks” — Led Zeppelin (1971) was a coveri song from the Seventies. It was originally recorded by Kansas Joe Mccoy and Memphis Minnie in 1929!]

The Applicant denied the allegations of misleading the public as they claimed to have the reputation and also argued that the Trademark Ordinance only protects registered marks, which the Opposer had not (then) registered.

Furthermore, the Applicant claimed that they were the first owner of the Coveri mark and back in 1986 had applied for ENRICO COVERI in claims 3 and 18, for soap and leather goods, and this the Opposer’s claims should be rejected. The Opposer was acting in bad faith as it was inconceivable that he was unaware of the Applicant who had marketed goods in Israel that were branded as COVERI.


In the District Court proceedings, the current Applicant accused the Opposer of willful infringement and of ignoring requests from the Applicant to cease and desist from using the term Coveri. Furthermore, the Applicant argued that the Opposer’s us of the term Coveri would lead to misleading the public as the Opposer’s goods were sold by the Applicant. The Applicant further claimed dilution of their mark and Opposer’s enrichment at their expense.

In their defense, the Opposer denied knowing about the Coveri brand when they chose their own branding. As wholesalers of clothing brands and not manufacturers, they were unaware of the Applicant’s brand. Furthermore, the Opposer denied infringing the Coveri mark as their marks was Coveri Kids and Coveri Home.

However, as noted above, the District Court Proceedings were thrown out due to Applicant’s failure to post a bond.

The Applicant here, Enrico Coveri s.r.l., argued that the position taken by Sar-Go Investment LTD in the District Court estoppled them from claiming that the current proceeding be dismissed as the parties are the same in both proceedings. Support for this argument was found in Civil Appeal 246/66 Klausner vs. Shimoni.

The Trademark Office considered that the current situation was different as in the previous (court) proceeding, there was no substantive ruling as the case was thrown out. Also, the identities of the parties (and the marks in question) has switched, thus there is no estopple against bringing the case to trial. Furthermore, the legal arguments are different. For additional analysis, see TM 245411 Orez Gamalim Hahav Pninim (graphic logo) Yoram Sassa vs. Yehudit Matck, as published on the patent office website in April.

In conclusion, Deputy Commissioner MS Jaqueline Bracha saw no reason not to rule on the merits of the case.

Inequitable Behavior and the Common Good.

The Opposer claimed that the applications should be canceled as they were filed in bad faith, since the filing occurred 15 years after the opposer was using the mark and gaining a reputation in it. Furthermore, since the Court had thrown the case out, dealing with it on its merits now would be contrary to the public good under Section 11(5). The Applicant also accuses the Opposer of inequitable behavior since the choice of the term Coveri by the Opposer was itself an attempt to cash in on Henrico Coveri’s reputation. Arguments that Coveri means Cover Israeli Kids as the Opposer had claimed were dismissed as fanciful and unconvincing, and the alleged correct pronunciation as CAveri and not COveri as written was further indication of inequitable behavior.

The Opposer considered the marks were not registerable, as, due to inequitable behavior, their registration was impermissible under Sections 11(5) and 39(1a) of the Ordinance. However the Deputy Commissioner considered that this was not grounds for Opposition per se, only, for cancellation of an issued mark. Support for this position was found in the Pioneer decision.

[I am less than happy with the Deputy Commissioner’s ruling that inequitable behavior can be grounds for cancellation of a mark once issued, but not for opposing the mark. I know it is considered a dirty word, but I am relatively formalistic in my approach to the Law and have little time for interpretation of what the law meant to say. However, I can see no logic in allowing grounds of inequitable behavior to be sufficient to have an issued mark canceled, but not sufficient grounds to have a pending mark opposed. This seems senseless. I note that I disagreed with Ms Bracha in the Pioneer case as well  so at least I am consistent. Perhaps consistently wrong, but consistent.]

According to Ms Bracha, Section 11(5) was to cover cases such as to prevent an opponent to prevent an applicants from using opponents copyright protected artwork as trademarks.

Misleading the Public and Unfair Competition

As far as misleading the public is concerned, Ms Bracha considers that the mark has to be at least widely known if not formally ” a well-known mark”. She went on to apply the triple test to examine the similarities between the marks. As far as the sound of the mark is concerned, Ms Bracha noted that the Opposer claims that Coveri Kids has a patah sound (“a” as in cow – i.e. Cah-ver), whereas in on Henrico Coveri’s Coveri, the Sound is a holum “Oh” as in Copper. Noting that they are written the same way, Ms Bracha considers it unlikely that one can ensure that the marks are correctly pronounced and doesn’t think that anyone other than the Opposer’s who would be aware of the difference. [here I disagree. The word Coveri has a Kamatz Qatan and is pronounced Oh as in Copper by Yemenites and Ashkenazim but as an Ah by Spanish and Portuguese and in the Standardized Hebrew pronunciation. Nevertheless, the word, written in English (Latin) letters, could certainly be pronounced either way. This reminds me of the road sign conveniently placed near Heathrow Airport to confuse tourists. It points to Slough. Is the ough an oo as as in through? Is it an uf as in rough, an ‘or’ as in bought? No, it’s an ow as in bough!]

In the Coveri mark and in Coveri Kids and Coveri Home, the dominant word is Coveri. Furthermore, the other words are descriptive and lacking in independent distinctive character. Consequently, the marks are visually and audibly very similar. Both Opposer and Applicant sell clothing and children’s goods, one wholesale and the other retail. The client base is different, but it still overlaps and one could imagine a purchaser of Coveri clothing could go into a COveri Home shop to buy furniture or accessories. Whilst, it is certainly possible that Henrico Coveri is using his name for branding purposes and Coveri Kids means Cover Israeli Kids so there is no intent to confuse, however, it is unlikely that the public would be aware of this. The Opposer has stores in the upscale Kikar Hamedina of Tel Aviv. The Applicant’s witness was more circumspect as to where they were using their trademark.


Reputation in a specific market sector is judged by the time period the brand has been in use and the amount of publicity and marketing invested in linking the product to the brand name.

Coveri kids have shown 15 years history of the mark. However, Mina Tzemach’s market research has shown low brand penetration, nevertheless, Ms Bracha agreed with the Applicant that the onus is on the Opposer to show that they have a reputation in the mark and not that the Applicant does not.  Ms Tzemach’s affidavit was an appendix to another one and not a freestanding document. However, the The Opposer did not choose to cross-examine her on her findings which rather strengthens them.

Coveri admitted that they had never opened a shop, but claimed that their neckties and other things were sold in boutique stalls. Consequently, it appears that Coveri Kids and Coveri Home have a larger footprint in the market.

Equitable Behavior

It seems that Enrico Coveri acted after discovering that Coveri Home and Coveri Kids were strong marks in Israel. They first sent cease & desist letters and only subsequently filed their own marks, and later still, filed in the District Court. Under cross-examination from Adv. Tony Greenman, Enrico Coveri’s witness spoke about design shows abroad abut did not answer questions about their local advertising. Despite prompting by both Adv. Tony Greenman and by the Deputy Commissioner, the witness failed to show that the mark had been used in Israel prior 2011 and had local reputation. This lead the Deputy Commissioner to suspect that the Applicant’s registration was merely to prevent being sued by the Opposer and was not indicative of actual use or intent to use.

Although in Israel one can apply for a mark not in use if there is intent to use, however the intent should be genuine. The Israel courts view defensive trademark practices with a jaundiced eye.

Such an approach is also true in the US:

A lack of bona fide intent to use is a ground for an inter partes opposition proceeding to an application before the Trademark Board. Aktieselskabet, 525 F.3d at 21; McCarthy § 20:21, at 20-65,66. Lack of bona fide intent to support an intent-to-use application also may render an application void ab initio upon challenge in federal district court.” (W. Brand Bobosky v. Adidas AG, 843 F. Supp. 2d 1134, 1140 (D. Or. 2011).

The long and real usage by the Opposer and lack of cooperation by the Applicant’s witness lead Ms Bracha to consider that the mark should be refused under Section (6)11 of the Trademark Ordinance.

Previous Rights to the Mark

The Opposer claims prior rights to the mark under Section 24(ia)(2) of the Regulation. As far as distinctive marks is concerned, this is a relevant issue.

As cited in ITT. vs. Ratfone Import LTD, 23 June 2009:

“Furthermore, it is important to note that when a mark is canceled from the register or even if it was never registered, this does not indicate a lack of proprietary rights of the owner. There is a right of reputation which is protected in unregistered marks.

In this instance, however, the Opposer did not register their mark. They did not act to have the mark registered, and the present instance and the previous Court case were superfluous. Having ruled that the Opposition should be accepted under Section 11(6), the ownership of the marks is superfluous, particularly as the Opposer has long established usage and the Applicant has not shown usage in Israel. However, the lack of registration by the Opposer should be taken into account when ruling costs.


Registration of the Italian designer’s mark was refused without a ruling of costs to the Opposer. The Opposer’s marks (Coveri Kids and Coveri Home) can continue to examination following this ruling.

Israel TM 237567 “Coveri” to Enrico Coveri, Trademark Opposition by Sar-Go Investment LTD, Ruling by Deputy Commissioner, Ms Jaqueline Bracha, 27 May 2015


Potahto or Poteitoe?

Gefen or Gafen?

Pronunciation aside, this case bears more than a passing resemblance to the Versace case, since we have a well know international design house and a couple of Israeli stores using the name in ambivalent faith. I therefore suspect we haven’t heard the last of this.

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