No need for photo finish as Kodak wins passing off dispute


In Eastman Kodak Company v Conko Ltd (Case 000225/06 A), the District Court of Tel Aviv-Jaffa has found the defendant photofinishing shop guilty of passing off for its use of a shade of yellow, similar to that used by the plaintiff in its branding, for envelopes employed to hold the printed photographs developed for customers.

Eastman Kodak Company, a multinational involved in all aspects of the photographic industry, filed a complaint against Conko Ltd, a local Israeli photofinishing shop, for its use of yellow-coloured envelopes issued to customers with their printed photographs. Kodak contended that the shade of yellow Conko was using for its envelopes was very similar to the famous yellow branding used by Kodak. It also argued that the envelopes featured markings that were confusingly similar in design to its trademarks.

The District Court agreed with Kodak and found Conko guilty of passing off. It reasoned that Kodak had proved that it has been using a similar shade of yellow to that employed by Conko for many years and has extensive goodwill in that colour. It concluded that Conko's use of Kodak's yellow colour for its envelopes, without reasonable and functional grounds for such imitation, was likely to confuse consumers and amounted to passing off.

The court awarded damages to Kodak but noted that it was not possible to calculate the exact quantum of damage caused to Kodak or the degree of enrichment Conko gained as a result of using the yellow envelopes because, among other things, Conko had not participated in the court hearing and had not submitted evidence on the issue. Thus, the court set the level of damages at IS30,000 (approximately $6,500) and made an additional order for costs in the sum of IS15,000.

David Gilat, Reinhold Cohn & Partners, Tel Aviv

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