Supreme Court confirms trademark infringement, but no injunction needed

Israel

In Migdor Ltd v Gayle (Civil Appeal 45/08, December 29 2010), the Supreme Court has rejected appeals against a decision of the Tel Aviv District Court in which the latter had found that appellant Migdor Ltd had infringed the MIG mark.

Since 1996 Boris Gayle and his partner (the respondents) have owned several publications in the Russian language which are distributed in Israel. These publications use the trademark MIG, together with the drawing of a clock that is slightly hidden by the letters 'MIG'. In 2000 Migdor began publishing newspapers, also in the Russian language, under the name MIG. Migdor also used the drawing of a clock in conjunction with the name MIG.

In 2000 the respondents applied for the registration of the trademark MIG in Israel, and the mark was registered in 2001. However, in 2007 the Israel commissioner of patents, designs and trademarks ordered a partial cancellation of the trademark due to non-use with respect to "newspapers, news leaflets and magazines". The commissioner thus ordered that these goods be deleted from the specification of the goods in Class 16 of the Nice Classification (for further details please see "MIG mark in cancellation dog fight").

In the meantime, in 2002 the respondents filed a lawsuit in the district court against Migdor. In 2007 the district court ruled in favour of the respondents on the issue of trademark infringement. In addition, the district court ruled that, by virtue of the use of the mark, the respondents had acquired goodwill in the name MIG. Therefore, Migdor was liable for passing off. However, while the district court awarded damages, it refused to grant an injunction on the grounds that the amended specification of the respondents' registration did not include "newspapers". Both parties appealed.

On appeal, the Supreme Court found that both the respondents and Migdor used the name MIG. The court ruled that, based on a visual and aural comparison, the marks were almost identical. Furthermore, the court stated that the respective publications both fell under the same specification of goods in Class 16, despite the fact that the respondents' publication is a commercial and promotional publication that does not include any news, while Migdor's publication includes articles by reputable journalists. Moreover, the Supreme Court ruled that the respective customers were virtually identical (ie, the Russian-speaking population) and that the marketing channels were very similar. Based on the foregoing, the Supreme Court upheld the district court's finding that Migdor had infringed the respondents' trademark.

The Supreme Court also ruled that the respondents had successfully proved their claim for passing off. The court compared the marks and ruled that their overall impression was nearly identical. Based on this similarity, together with the fact that both publications were in Russian and that the respondents had acquired goodwill in the MIG mark, the court found that a claim for passing off had been proven.

The Supreme Court also affirmed the district court's decision not to issue an injunction. Because "newspapers, news leaflets and magazines" had been deleted from the specification of the respondents' goods, there could be no future infringement of the mark with regard to newspapers or leaflets. Accordingly, there was no need for an injunction that would prevent the infringement of a right that no longer existed.

The Supreme Court thus rejected both appeals.

Neil Wilkof and Jenia Melkhior, Herzog Fox & Neeman, Tel Aviv

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