Court prunes back scope of limitation clause

In Zer.4.U.(2000) Ltd v A Sderot Hen Flowers (Case 2388/02), the Tel Aviv District Court has enjoined the defendant from using the domain name 'zer4me.co.il' on the basis that the plaintiff is the registered owner of the trademark ZER4U.

The plaintiff owns a chain of bricks-and-mortar flower shops using the trademark ZER4U ('zer' meaning 'a bouquet' in Hebrew), as well as a web-based flower shop using the domain name 'zer4u.co.il'. Its registration of the ZER4U mark includes a limitation clause stating that the terms 'zer', '4' and 'u' may be registered by others.

The defendant also owns flower shops and markets its goods by distributing catalogues. It registered the domain name 'zer4me.co.il' and began using it for a website that further promoted the company's products.

The plaintiff initiated proceedings for trademark infringement. The defendant argued that because of the disclaimer in the plaintiff's registration, it was able to use the terms 'zer' and '4' without infringing the plaintiff's rights.

The court ruled in the plaintiff's favour, finding that although 'zer', '4' and 'u' may be used by others, they cannot be used in a combination that would confuse consumers as to the origin of goods. As the court found the defendant's domain name to be confusingly similar to the plaintiff's mark, it enjoined the defendant from using the domain name.

David Gilat, Reinhold Cohn & Partners, Tel Aviv