Additional hearing denied in TOFFIFEE Case


In August Storck KG v Alpha Intuit Foodstuffs Ltd (Case 4237/08, October 5 2009), the Israeli Supreme Court has denied the defendant's petition for an additional hearing.

August Storck KG produces various sweets, including a chocolate sweet shaped as a ball cut into halves which is sold under the trademark TOFFIFEE. The shape of the Toffifee sweets has been registered as a trademark in Israel.

August Storck filed suit for trademark infringement and unjust enrichment against Alpha Intuit Foodstuffs Ltd, the importer of chocolate sweets whose shape is similar to that of the Toffifee product. The district court dismissed August Storck's claims on the grounds that the TOFFIFEE mark was two-dimensional and, therefore, provided no protection for the three-dimensional shape of the Toffifee product. The Supreme Court reversed, holding that a product configuration is registrable as a trademark if:

  • it has acquired secondary meaning through use; and
  • it does not serve a functional or aesthetic purpose.

The case was thus remanded to the district court (for further details please see "Product configuration cannot be registered based on inherent distinctiveness").

Alpha petitioned for an additional hearing on the grounds that the Supreme Court's ruling was liable to:

  • create uncertainty in the trade; and
  • lead to unjustified monopolies over product shapes.

Under Section 30(a) of the Courts Law 1984, a party may request that a matter decided by a panel of three Supreme Court judges be heard in an additional hearing by a panel of five judges. Under Section 30(b), the president of the court or another designated judge may grant such request if:

  • the ruling conflicts with the Supreme Court's own case law; or
  • the case warrants an additional hearing due to the importance, difficulty or novelty of the issues involved.

Denying the petition for an additional hearing, the Supreme Court pointed out that the presence of important, novel or difficult issues is not in itself sufficient to warrant an additional hearing - the case must be so significant as to justify further consideration of the legal issues involved.

The court held that although its ruling on the protectability of product shapes constituted a novel and important development in trademark law, the case was not of such extraordinary significance as to warrant an additional hearing. The court also noted that its decision, which had been adopted unanimously after a thorough review of comparative law, gave appropriate weight to all relevant considerations, struck a balance between them and was in accord with the provisions of Israeli law.

David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv

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