Injunction refused in trade dress case

In Strauss Ice Cream Ltd v Noga Ice Cream Ltd (Case 1583/09, July 2 2009), the Tel Aviv District Court has refused to grant an injunction preventing Nestlé's local subsidiary from marketing its La Cremeria ice cream in golden oval-shaped packaging.
Strauss Ice Cream Ltd, Unilever's Israeli subsidiary, sought an injunction against Noga Ice Cream Ltd, Nestlé's local subsidiary, alleging passing off and unjust enrichment. Strauss claimed that certain features (colour, shape and raised lid) of Noga's La Cremeria ice cream, which was launched in May 2009, were confusingly similar to the packaging of its own Cremissimo ice cream, which was launched in February 2008.
The court first held that a party cannot monopolize colours or shapes unless they have acquired distinctive character. The court concluded that Strauss had failed to prove that the packaging of its products had acquired distinctive character, especially as other ice cream manufacturers were using oval shapes and shades of gold for their packaging. Moreover, the court noted that the colours and shapes used by the parties were different. The raised lid was held to be a functional feature that was common in the trade. 
The court further found that the fact that the name and logo of the parties appeared prominently on their products helped to prevent consumer confusion. Moreover, the fact that the products are sold side by side in shops eliminated the need to consider the issue of imperfect recollection by consumers. The court also refused to rely on the results of a survey according to which 20% of consumers were confused as to the origin of Noga's goods, as the court was unsure of its probative value. The court highlighted that in order to establish passing off, a plaintiff must demonstrate that a substantial number of consumers are confused by the defendant's goods. 
The court held that because Strauss had failed to prove the existence of such confusion and since the balance of convenience weighed in favour of Noga, it was inappropriate to grant an injunction.
David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv

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