Club Pharm ordered to change its colour

In Super Pharm (Israel) Ltd v Club Pharm Ltd (Case 001961/02), the District Court for Tel-Aviv-Jaffa has upheld Super Pharm's claim for passing off based on Club Pharm's use of colours for its logo identical to those used by Super Pharm for its logo.

Super Pharm owns a national chain of drugstores. It holds registered trademark rights in the mark SUPER PHARM, a blue and red logo, and a combination of its name and the logo. Club Pharm also operates a drugstore and was using the same fonts and the same blue and red colour combination for its logo.

Super Pharm brought a claim for trademark infringement and passing off, arguing that Club Pharm's logo was misleadingly similar in style and colour to its own logo. It contended that Club Pharm had intentionally selected the name 'Club Pharm', the logo and the colours blue and red in order to create the impression that its store is part of the Super Pharm chain. Super Pharm sought a permanent injunction prohibiting Club Pharm from using the name 'Club Pharm', the logo and the colour combination.

The court rejected Super Pharm's claim for trademark infringement because there are no exclusive rights in the word 'pharm' in respect of drugstores, and the words 'super' and 'club' do not resemble each other graphically, phonetically or in meaning.

However, the court upheld Super Pharm's claim for passing off, concluding that customer confusion was likely because both parties' logos consist of two words - one of which is 'pharm' - and Club Pharm used the same fonts and colour combination in its logo as those used by Super Pharm.

The court ordered Club Pharm to change the colour blue in its logo to any other colour, thereby eliminating the likelihood of confusion. No other relief was ordered.

Neil Wilkof and Shai Kagan, Herzog Fox & Neeman, Tel-Aviv