Finding of prima facie infringement is sufficient to seize goods

In Dwaik v Customs Authority (Case 009961/05, November 11 2007), the Jerusalem Magistrates Court has dismissed a claim filed by a Palestinian importer for the release of goods seized by the Israeli Customs Authority.

Mahmoud Dwaik, a resident of the Palestinian Authority, imported a shipment of shoes from Turkey via an Israeli port. The shoes bore:

• trademarks which were allegedly confusingly similar to Puma Aktiengesellschaft Rudolf Dassler Sport's registered device mark (Registration 44822 for goods in Class 25 of the Nice Classification); and
  
  
• the name Pronto and marks consisting of two or four parallel stripes which were allegedly confusingly similar to adidas Salomon AG's three-stripe mark (Registrations 118277, 45237, 33479 for goods in Class 25).

Upon notice to Dwaik, the Israeli Customs Authority, acting under Section 188 of the Customs Ordinance, seized the goods on the grounds that they allegedly infringed the registered trademarks ADIDAS and PUMA, and issued a notice of forfeiture. Dwaik brought an action against the Customs Authority, seeking an order revoking the notice of forfeiture and mandating the release of the goods. Puma and adidas joined the action as co-defendants.

First, the Jerusalem Magistrates Court held that the Customs Authority was empowered to initiate seizure and forfeiture proceedings. The court pointed out that the issue of whether certain goods infringe a registered trademark may arise in four different types of proceedings. Three of these (ie, action for infringement under the Trademarks Ordinance 1972, proceedings before the registrar of trademarks and action for passing off under the Commercial Torts Law 1999) may be initiated only by the trademark owner. The fourth type of proceedings - seizure and forfeiture proceedings under the Customs Ordinance - can be initiated by:

• the trademark (or copyright) owner by way of notice to the Customs Authority; or
  
  
• the Customs Authority on its own initiative (the trademark owner joins the proceedings at a later stage).

Second, the court held that a finding of prima facie infringement was sufficient for the Customs Authority to seize the goods. Under Section 200A of the Customs Ordinance, in conjunction with Section 35 of the Consumer Protection Law 1981, the Customs Authority, upon a finding of prima facie infringement, has the power to seize goods. For this purpose, customs officers need not examine whether there is a likelihood of confusion under the standards applied by the courts. More stringent standards are in place if the infringer applies to the courts for the release of the goods.

Third, the court found that the imported goods infringed the trademarks ADIDAS and PUMA. The court rejected Dwaik's argument that the shoes themselves were different, as it was the marks - and not the shoes - that were the object of the comparison. Similarly, the court held that the fact that certain shoes bore the name Pronto was irrelevant. Moreover, the fact that cheaper and lower-quality material was used for the imported shoes only strengthened the need for trademark protection.

In assessing the likelihood of confusion, the court examined:

• the visual impression of the marks;
  
  
• the category of goods covered by the marks; and
  
  
• other circumstances (eg, recognition and publicity of the marks).

The court concluded that potential customers were likely to confuse the infringing goods with those of the registered trademark owners.

Finally, the court dismissed Dwaik's argument that the goods were intended for sale within the territory of the Palestinian Authority. The court noted that there was no evidence that the goods would be sold in the Palestinian Authority only. Moreover, under the Oslo Accords between Israel and the Palestinian Authority, goods which are prohibited for importation into Israel are also prohibited for importation into the Palestinian Authority.

David Gilat, Reinhold Cohn & Partners and Gilat Bareket & Co, Tel Aviv