GlaxoSmithKline avoids headache on appeal

In Mosk v GlaxoSmithKline (Israel) Ltd (Case 001519/07, September 21 2008), the District Court for Tel Aviv-Jaffa, sitting as a court of appeal, has affirmed a decision of the Tel Aviv Magistrate’s Court rejecting a claim for trademark infringement, passing off and copyright infringement. 
Amnon Mosk is a neurological physician specializing in the treatment of headaches pain and migraines. As part of his practice, he maintained a website (arguably as early as 1999) which contained the following caption (in English translation) at the top of the home page: "to treat a headache... first" (this being a play on words of a Hebrew phrase meaning 'first of all'). GlaxoSmithKline (Israel) Ltd (GSK) is the Israeli distributor of a well-known international pharmaceutical company.
Since 2002 GSK has marketed a product named Imitrex, which is intended to treat migraines. As part of its marketing efforts, GSK has used the slogan (in English translation) “Imitrex first and foremost" (making use of the abovementioned play on words). Mosk brought action against GSK for trademark infringement, passing off and copyright infringement.
The Magistrate’s Court rejected the claim of trademark infringement based on Section 46(c) of the Israel Trademarks Ordinance, which provides for the protection of a famous mark - even if unregistered - if another mark covering the same goods or goods of the same description is confusingly similar to it. The court held, among other things, that there was no convincing proof that the slogan at issue was a famous mark. Moreover (albeit strictly in obiter), the court noted that even if the slogan were a famous mark, Mosk’s services were not sufficiently similar to GSK's goods to be considered to be "of the same description" within the meaning of the ordinance.
Mosk had also sought registration of two service marks with the Israel Trademarks Office. The first mark consisted of a phrase identical to the caption used by Mosk on his website. The other consisted of two Hebrew words that could be understood either as 'first... and foremost' (based on the Hebrew play on words) or as 'on the head... and first' (in literal Hebrew translation).
Several days before the Magistrate’s Court was set to deliver its judgment, the registrar rendered his decision on the two applications. The registrar refused to register the first mark on the grounds that it was descriptive, but allowed registration of the second mark on the grounds that it was only suggestive and thus distinctive. However, registration was subject to a notice of disclaimer of the two words in their non-idiomatic sense. 
As a result, the Magistrate’s Court delayed issuing its decision and allowed the parties to file further motions and take further action in connection with the proceedings before the registrar.
The appellate court took into account both the decision of the Magistrate’s Court and the decision of the registrar in reviewing the decision of the trial court. In particular, the appellate court considered the fact that the phrase 'first and foremost' had been registered by the Trademark Office. Thus, while the Magistrate’s Court had focused on the claim of infringement of a well-known mark unregistered in Israel, the appellate court also considered the allegation of infringement based on the subsequently registered mark.
Despite this, the appellate court confirmed that no trademark infringement had occurred. It applied the accepted three-part test for infringement (comparison of the marks, the respective goods and the respective customers and channels of trade), as well as the so-called 'common sense' test.
In applying the three-part test, the court focused mainly on the comparison of the appearance of the marks and the respective goods/services. It stated that the overall impression given by the combination of the words in Mosk's mark, including the three dots separating the two words, was different from the impression given by the combination of the words without the three dots, as evident from GSK's website. As to the comparison between the respective goods/services, the appellate court confirmed the Magistrate's Court decision, namely that the services provided by a doctor are inherently distinct from the goods provided by a drug company, even if both are directed to the treatment of headaches.
Further, the appellate court declined to find that the respective marks were of the same description, referring to a 1969 Supreme Court decision and to its comparison of the respective goods/services. In light of these considerations, the claim of trademark infringement was rejected. The claims for passing off and copyright infringement were also rejected on appeal.
Neil Wilkof and Adar Ortal, Herzog Fox & Neeman, Tel Aviv 

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