Tel Aviv Court denies rights in shape mark in landmark ruling

In August Storck KG v Alpha Intuit Food Products Ltd (Case 2191/03), the Tel Aviv District Court has rejected Storck KG's claim that the defendant was infringing its right in a shape mark for chocolates.

In April 2003 Storck KG, a German manufacturer of confectionery, registered in Israel the hemispherical shape of its well-known TOFFIFEE-marked chocolates. Alpha Intuit Food Products Ltd imported and marketed in Israel chocolates under the trade name Chocodaan's. Chocodaan's chocolates have a shape similar to that of TOFFIFEE chocolates. Storck brought an action to the Tel Aviv District Court, claiming that Alpha had infringed its shape mark by (i) selling the Chocodaan's products, and (ii) using a picture of hemispherical-shaped chocolates on the Chocodaan's packaging.

The court rejected Storck's claims. First, it refused to recognize that the mark Storck registered in April 2003 was a three-dimensional shape mark on the basis that there was no indication to this effect on the registration certificate. The court further emphasized the differences between the rationales behind design protection and trademark protection. It noted that trademark protection should not be extended to the shape of the product itself.

As to the second claim, the court held that in order to determine whether a likelihood of confusion existed, Storck's mark should be considered in conjunction with its and Alpha's packaging. Taking into account the overall appearance of the two products' packaging, in particular the fact that both displayed other signs such as the brand name, the court ruled that they were sufficiently distinguishable.

Storck has appealed.

David Gilat, Reinhold Cohn & Partners, Tel Aviv