No injunction as shaver shape cancellation action likely to succeed

In Koninklijke Philips Electronics NV v Sarig Electronics Ltd (Case 001943/06 A, November 28 2006), the District Court of Tel Aviv has denied a motion for interlocutory injunction filed by Koninklijke Philips Electronics NV against the importer of Remington's shavers which feature three revolving blades on a triangular surface.

Philips owns three registered trademarks in Israel with respect to shavers with three revolving blades on a triangular surface (also known as a triple head). Sarig Electronics Ltd, which advertises and markets Remington shavers whose shape is similar to Philips' trademarks, filed on May 25 2006 with the Trademarks Office an application for the cancellation of Philips's aforesaid trademarks on the grounds that (i) Philips had no bona fide intention to use its marks, and (ii) the registrations were aimed at preventing others from marketing shavers with triple heads with respect to which there existed a registered industrial design that had expired. Philips responded by filing an application for an interlocutory injunction with the District Court of Tel Aviv against Sarig.

The court denied Philips's motion, holding that a shape that was registered as a design which had expired is not eligible for registration as a trademark. Awarding exclusivity in using such a shape to the holder of the industrial design registration was aimed at encouraging development of new designs that will be available to the public after the expiry of the design term. Allowing the registration of such a design as a trademark will prevent the public from using the shape that was covered by the expired design registration. Such a limitation is not reconcilable with the purpose for which the exclusivity was awarded with respect to the design in the first place.

Philips further argued that even if Sarig was correct, it could not succeed in the cancellation proceeding before the Trademarks Office in view of the statutory five-year limitation period as set out in Section 38 of the Trademarks Ordinance [New Version] 1972. The court rejected this contention while relying on provisions of Section 39 (a)(1) of the Trademarks Ordinance, enacted pursuant to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and which stipulate that in spite of the five-year limitation period set out in Section 38, an application for the cancellation of a trademark for the reason that the application for registration of such trademark was filed in bad faith may be filed at any time.

Against this background the court held that Philips registered the trademarks in bad faith and, hence, Sarig's cancellation application falls within the exception to the five-year limitation period set out in Section 39(a)(1). Further, the court held that the Law for the Adjustments of the Trademarks Law with the TRIPs Treaty (enacted in 1999) may be invoked retroactively with regard to trademarks that were registered more than five years before the enactment.

While concluding that the triple head may not distinguish Philips's shavers from those manufactured by others, the court held that prima facie (i) Philips did not intend to use the triple head in good faith as a trademark in connection with the shavers it manufactures and markets, and (ii) its triple head mark was not instrumental for distinguishing its products from those of others. Thus, the court concluded that Sarig has a good prospect of success in its application for the cancellation of Philips's trademarks.

Sarig further argued that its use of the triple head design falls within the exception to trademark infringement set out in Section 47 of the Trademarks Ordinance, namely that a genuine description of the nature or quality of the products may not amount to trademark infringement. In this regard the court concluded that Sarig's use of the triple head as part of the shavers or in pictures thereof on the product packaging should be regarded as use of the physical and genuine description of the product it markets.

The court further rejected Philips's claim for passing off, stating that the triple head was not unique to Philips after the expiry of the design and patent, and the fact that the name Remington appears on Sarig's products clearly directs consumers away from confusing the products with those of Philips.

The court ordered Philips to pay Sarig's costs in the sum of IS50,000 (approximately $12,000).

David Gilat, Gilat Bareket & Co, Tel Aviv