Similar central idea of marks rules out registration

In Unilever plc v Segev (Civil Appeal 8441/04, August 23 2006), the Israel Supreme Court has upheld Unilever plc's opposition to the registration of a design mark in the shape of a dove against a blue background, with the palms of a hand holding the dove from either side.

The applicant, Eli Segev, sought to register the design mark for goods in Class 3 of the Nice Classification. Unilever plc filed an opposition to the application. Unilever based its opposition on prior registrations in Israel and elsewhere, also in Class 3, of a composite mark consisting of the word 'DOVE' in stylized form and the figure of a dove. The commissioner of patents, trademarks and designs rejected the opposition. The commissioner recognized that there could be a central motif that was common to two marks. However, the commissioner found that the central element of each of the two marks in question - the word 'DOVE' interwoven with the image of a dove, on the one hand, and the dove being grasped by two extended palms, on the other, rendered the two marks sufficiently different. Unilever appealed to the Supreme Court.

Unilever based its opposition on a number of provisions of the Israel Trademark Ordinance. The Supreme Court stated that the common thread in each of the grounds raised by Unilever was likelihood of confusion, based on the alleged appropriation of the central idea of the registered mark, namely the word DOVE and the accompanying visual image of a dove. In seeking to determine whether there was a likelihood of confusion, the court pointed to the various well-grounded elements of the test for likelihood of confusion, which it categorized as follows:

• sight and sound of the two marks;
  
  
• the respective products, customers and channels of trade; and
  
  
• the other circumstances of the case.

The court then went on to add that consideration must be given to the element of 'common sense' (translated from the Hebrew phrase - 'hasechel hayashar'). It devoted its initial attention to this element, which it described as cutting across all the other elements of the likelihood of confusion test and which went to the core of the opposition. The court noted with respect to the element of common sense as follows:

"Life experience, which is perhaps parallel to common sense in this matter, indicates that a person generally absorbs a complete picture, an idea, without troubling oneself about the details. This is especially so when we are speaking about the reasonable consumer and the products are basic consumer items."

Against this backdrop, the court went on to discuss the "central idea" behind each of the respective marks. In so doing, it considered whether the "overall picture" etched in the mind of the consumer regarding Segev's mark was confusingly similar to that of Unilever's mark. The court described the central idea of Unilever's mark as a 'dove', whereby the written word and the visual element reinforce each other and leave no doubt in the consumer's mind about the centrality of the dove.

Segev gave two different versions of the central idea of his mark: (i) the visual combination of the dove and the extended palms connote peace and friendship; and (ii) a visual replication of the name of two of Segev's companies, each of which contains the Hebrew transliteration for the Spanish word for 'dove'. Nevertheless, the court reasoned that neither explanation altered the court's view that the central idea of Segev's mark is a dove.

As for the 'sight and sound' element, the court emphasized that the overall impression of the consumer is paramount. Even if the components of the respective marks differ, it is the idea or impression of the mark that is created in the mind of the consumer, which is determinative. On that basis, the court overruled the commissioner on this point and found in favour of Unilever.

As for the respective product lines and customers, the court rejected the claim made by Segev that his companies' products are more exclusive than those of Unilever. Here, too, the court emphasized the central idea of the dove in Unilever's marks and the extent to which this central idea is identified with Unilever's products and customers. Accordingly, the court accepted the appeal and refused registration of Segev's mark.

At the end of its decision, the court also referred to the "commodification" of an idea, namely, a dove as a symbol for grooming and hygiene, as the basis of Unilever's trademark right in this matter. It will be interesting to see how future Israel courts will set the bounds for this concept of the 'central idea' of a mark in future disputes regarding likelihood of confusion.

Neil Wilkof and Anat Paz, Herzog Fox & Neeman, Tel Aviv