Different types of websites distinguished in passing-off action

In Effective Advertising Ltd v Interactive Advertising Ltd (CC-000008/10, February 3 2010), the District Court of Nazareth has ruled that a distinction should be made when examining the evidence needed to establish reputation in a passing-off action on the basis of online use of a trademark. 
The owner of Effective Advertising Ltd (EAL) and the owner of Interactive Advertising Ltd (IAL) were once partners in a company called Active Advertising Ltd, which owned the domain name 'zimmer4u.co.il'. The website attached to the domain name was also known by the name mumlatzzimmer (which may be translated as 'recommended guesthouse'). In 2004 IAL registered the trademark MUMLATZZIMMER.
The partnership subsequently came to an end. The parties reached agreement whereby the rights in the domain name 'zimmer4u.co.il' and the registered trademark MUMLATZZIMER were assigned to EAL. IAL then began operating a website at 'zimmer100.co.il' and filed an application for the registration of the trademark ZIMMER MUMLATZ - THE MOST RECOMMENDED ZIMMERS IN ISRAEL (and design). EAL opposed the registration of the mark before the Israel Trademarks Office. It also brought an action for passing off and requested a permanent injunction preventing IAL from using the trademark ZIMMER MUMLATZ.
In ruling on the passing-off action, the court considered the following issues:
  • whether the trademark MUMLATZZIMMER and the domain name 'zimmer4u.co.il' had acquired a reputation; and
  • whether there was a reasonable likelihood of confusion between EAL's and IAL's websites.
Regarding the first question, the court noted that when considering whether a website has acquired reputation, a distinction should be made between two types of websites:

  • those that provide reliable information and/or opinions which internet users will identify as originating from the website itself; and
  • those that provide only factual/technical information, the origin of which is indifferent to internet users.
The court noted that EAL's website belonged to the second category and, therefore, the evidentiary threshold for proving reputation was higher. The court listed various factors that should be taken into account in determining whether a website has acquired reputation in such a situation, including:
  • the number of users of the website;
  • the popularity of the website on various search engines;
  • the existence of sponsored links from other websites that recommend using the website in question;
  • evidence demonstrating that internet users prefer the website;
  • information regarding the number of advertisers on the website;
  • information about the geographic scope covered by the advertisers on the website; and
  • a statistical comparison between the number of advertisers on the relevant website compared to similar sites.
EAL was able to provide only evidence of hits on Google for the mark MUMLATZZIMER, and the court ruled that this was insufficient to prove that its website had acquired reputation. 

Regarding the likelihood of confusion, the court ruled that the registration of the term 'mumlatzzimmer' ('recommended guest house') did not mean that EAL had a monopoly over use of the terms 'recommended' and 'guest house' used separately. The court noted that since the word 'recommended' is generic and the term 'guest house' is descriptive, the trademark MUMLATZZIMER enjoyed, at best, a very limited protection. The court concluded that since the parties' marks were sufficiently distinct, there was no likelihood of confusion.

Accordingly, the passing-off action was dismissed.
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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