Word with "universal" meaning cannot be protected as trademark

Israel
In Northern Delis Ltd v Gueta (CC 2817-07), the Tel Aviv District Court has ruled, among other things, that the word 'Baba' has a "universal" meaning and, therefore, no one can claim exclusive rights in it.
 
The plaintiff, Northern Delis Ltd, has operated for many years a supermarket called 'Super Baba' in Tel Aviv. Prior to operating the supermarket, the plaintiff had run a coffee house called 'Coffee Baba' in the same location, and before that, a restaurant called 'The Babba Restaurant'. Northern Delis is also the owner of the registered trademark SUPER BABA for "retail chain store services". Mr Yehuda Gueta is the owner of a well-known supermarket, which is located in the centre of Tel Aviv and operates under the name Super Baba.
 
Northern Delis filed a civil suit against Gueta and his partners, alleging passing off and trademark infringement with respect to the use of the mark SUPER BABA in connection with their supermarket.
 
The Tel Aviv District Court noted that the tests for passing off and trademark infringement to determine whether there is a likelihood of confusion are similar. However, in the passing-off action, the plaintiff also needed to prove, in addition to a likelihood of confusion, that:
  • the mark in question had acquired a reputation; and
  • there was a reasonable basis to conclude that consumers were likely to be confused between the two supermarkets.
Nevertheless, as a preliminary question, the court considered whether the word 'Baba' is entitled to protection. In this respect, the court noted that the word 'Baba' has many generic meanings in Hebrew, Arabic and the Slavic languages (in Arabic, it is used to describe a grandfather; in Hebrew, it is commonly used as a slang word to describe a close friend; in Slavic languages, it is used as a nickname for a grandmother). On that basis, the court was of the opinion that the word 'Baba' has a "universal" meaning; therefore, no one could claim exclusive rights in this word.
 
With regard to passing off, the court noted that the mark SUPER BABA had acquired a reputation. However, the court ruled that Northern Delis had failed to prove that the reputation in the mark belonged to it. It pointed out that, for many years, the supermarket had in fact been operated under the name Super Baba by a third party, and that there was no licensing agreement between that third party and Northern Delis to use the mark. Thus, there was no basis to conclude that the reputation in the mark SUPER BABA could be attributed to Northern Delis.
 
As a consequence, the court dismissed Northern Delis' claims and allowed Gueta and his partners to continue operating their supermarket under the name Super Baba.   
 
This decision raises several troubling points. First, the notion of a word having "universal" meaning was not further explained, so the provenance and applicability of this notion can be questioned. Second, the court seemed to make findings in connection with the "universal" meaning of the word 'Baba' on the basis of implied judicial notice, rather than evidence. Third, the court did not consider whether, with respect to the claim for passing off, the plaintiff could prove its rights in the mark based on licensed use, even in the absence of a written agreement.
 
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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