Confusion cleared up by Supreme Court in MEGA-GLUFLEX Case


In Taam Teva (1988) Tivoli Ltd v Ambrosia Supherb Ltd (Case 5454/02), the Supreme Court has overturned a lower court decision that refused Taam Teva's motion for a preliminary injunction against Ambrosia Supherb. The Supreme Court held that Ambrosia Supherb's MEGA REPLEX mark in English script is confusingly similar to Taam Teva's trademark in Hebrew letters that transliterates into English as MEGA-GLUFLEX.

Taam Teva owns a registration for the Hebrew version of the mark MEGA-GLUFLEX for preparations containing nutritional supplements, vitamins and minerals. The trademark registration disclaims the word 'mega'. Some time later, Ambrosia Supherb adopted and commenced use of MEGA REPLEX in Israel with respect to a food additive for people with bodily joint problems. Taam Teva filed an action with the District Court of Tel-Aviv, alleging both trademark infringement and passing off. At a preliminary injunction hearing, the court rejected both causes of action, holding that there was no issue of confusion because the two marks differ visually and phonetically. Taam Teva appealed to the Supreme Court.

The appellate court reversed the lower court's finding that there was no likelihood of confusion and remanded the case for consideration of the other elements required for the grant of a preliminary injunction. The Supreme Court's ruling included a number of points to be considered when assessing whether or not the trademarks at issue are confusingly similar. It held that courts must take into account aural similarity as well as visual similarity. The court observed that, in this case, while the two marks were distinct visually, they were confusingly similar aurally. It further noted that there is a difference between products that consumers can observe directly on the shelf and products that consumers request over-the-counter from a salesperson. In the latter situation, which was the usual sales procedure for the products at issue in this case, the aural element is likely to be more important than the visual element.

The Supreme Court did not accept Ambrosia Supherb's contention that, when assessing whether or not there is a likelihood of confusion, the disclaimed part of a trademark should be ignored. The disclaimed section, said the court, is still a part of the mark and the evaluation process requires that the whole mark is considered. In this case, the court held that taken as a whole, there were significant similarities in the structure of the two marks.

In addition, the appellate court rejected Ambrosia Supherb's argument that the term 'flex', which forms part of Taam Tavi's MEGA-GLUFLEX mark is common to the trade and therefore lacks distinctive power. It highlighted different sub-groups of terms that may be affected by the notion 'common to the trade' - for example, words that are freestanding and more likely to be common to the trade (eg, 'cola') and words that are integrated into the mark (eg, the 'accu' portion of the ACCURIST mark) that are less likely to be deemed common to the trade.

Neil Wilkof, Herzog Fox & Neeman, Tel-Aviv (with the assistance of Shimon Chertow, Naschitz Brandes & Co)

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