TV slogan to change despite absence of confusion with journal mark

Israel

In Shalem Center v Techelet Media Ltd (Case 5111/03), the District Court for Tel Aviv-Jaffa has issued a preliminary injunction ordering the defendant to make several changes to its slogan despite finding there was no likelihood of confusion with the plaintiff's mark TECHELET (meaning 'azure').

Shalem Center, an institute for academic research on Jewish and Israeli thought, publishes a journal in both Hebrew and English called Techelet - ideas for the Jewish people. Shalem registered the journal's Hebrew name as a trademark in respect of publishing, education and cultural activity. When Techelet Media Ltd (TML) launched a television channel with the slogan "Techelet - a channel for your Judaism", Shalem initiated an action seeking preliminary injunction for trademark infringement. Shalem argued that:

  • TML's slogan is confusingly similar to its own;

  • The services to which the slogan and mark apply are similar;

  • Shalem's mark is famous and therefore entitled to a high level of protection; and

  • TML's orthodox view of Judaism (as opposed to its own pluralistic approach) would further confuse the public and damage Shalem's rights and goodwill in the TECHELET mark).

TML rejected Shalem's contentions, arguing that Shalem's proprietary right must be balanced against the right to free speech and the right to engage in activities of its own choice. Moreover, the central element of its slogan and Shalem's TECHELET mark has a special meaning within Judaism and the Israeli culture, and therefore should be free for anyone to use.

The District Court ruled that TML's slogan does not infringe Shalem's mark. Although it found that the mark and slogan are visually and orally similar because of the predominance of the word 'techelet' in both, it found that they were not identical for the following reasons:

  • The services to which they apply are different.

  • Shalem's target is a highly educated, circumscribed public (the journal has about 2,000 subscribers), whereas TML aims at the Israeli public more generally. The court stated that, as a general rule, the more sophisticated and educated the target audience, the smaller the risk of consumer confusion.

  • Whereas the word 'techelet' (or 'azure' in English) has religious connotations in TML's name (azure being the colour of the thread of a religious ornament), it has a secular meaning in Shalem's mark (azure being one of the colours of Israel's national flag).

The court concluded that there was therefore no justification to prohibit TML from using the word 'techelet' in its slogan. Further, the court found that TECHELET is not a well-known mark and therefore does not deserve special protection. Nevertheless, in order to avoid any likelihood of confusion, the court ordered TML to make the following changes to its slogan:

  • Add the word 'channel' before the word 'techelet', so that TML's slogan will read: "Channel Techelet - a channel for your Judaism";

  • Use the same size font for all the words in the slogan; and

  • Use a different font from that used for Shalem's journal.

Neil Wilkof and Shai Kagan, Herzog Fox & Neeman, Tel Aviv

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