Israeli Bar Association's rights in HAPRAKLIT upheld by court

In Israeli Bar Association v Ben-David (Case OM 810/01), the Tel Aviv District Court has issued an order preventing two separate defendants from using the word 'Hapraklit' (meaning 'lawyer') in their domain names. The court held that although the domain names were registered prior to the Israeli Bar Association's (IBA) application to register the mark HAPRAKLIT, it had rights in the mark at that time as a result of extensive use.

The IBA has used the name Hapraklit for a periodical that it has published for more than 50 years. However, the IBA had not registered the name as a trademark. The first defendant, Yair Ben-David, is a lawyer and is also the author of a book entitled The Lawyer and the Client. He registered the domain name 'hapraklit.com' for a website used to promote his book and claimed that he had chosen the term 'Hapraklit' because it is the first word of the Hebrew title of the book. The second defendants, Microdan Computers (1985) Ltd, Hoitsch Guy and Hoitsch Ran, registered 'hapraklit.co.il' for a website containing information for Israeli attorneys.

When the IBA became aware of these registrations, it filed a trademark application for the registration of the mark HAPRAKLIT in (i) Class 16 of the Nice Classification with respect to printed materials and in particular periodicals and legal publications, and (ii) Class 42 for legal information services for lawyers, jurists and the general public. It then instituted a trademark infringement action against the defendants.

Before the Tel Aviv District Court, the defendants argued that the IBA's trademark was not eligible for registration as it was descriptive. The court rejected this argument, holding that any claim against the IBA's right to register HAPRAKLIT should have been raised by the defendants before the registrar of trademarks. Since the defendants (i) were aware that the IBA had filed a trademark application with respect to the mark HAPRAKLIT, and (ii) had failed to oppose this registration, they could not now claim that it had been registered incorrectly. It came to this conclusion, in spite of the fact that at the time the action was filed the IBA did not hold a valid trademark registration.

The court also rejected the defendants' contention that as they had registered their domain names prior to the IBA's application for registration of the trademark HAPRAKLIT, they had an earlier right to use the term 'Hapraklit'. It stated that rights in a registered mark outweigh rights in a registered domain name. The court also noted that although the domain names were registered prior to the IBA's application to register HAPRAKLIT, it had rights in the mark at that time as a result of extensive use.

The defendants' main defence was that the IBA's marks were not intended for the same category of business. The court compared the description of the goods and services covered by the registered trademark with the defendants' activities and, while observing that such descriptions should be read narrowly, held that their activities fell within the scope of the mark.

Accordingly, the court issued an order preventing the defendants from using the term 'Hapraklit' in their domain names.

David Gilat, Reinhold Cohn & Partners, Tel Aviv