Region: Israel

SC denies interim relief against owners of registered marks whose validity was being challenged

In a dispute over confectionery brands dating back to the Soviet times, the Supreme Court has affirmed the decision of the Tel Aviv District Court to refuse interim relief to two Ukrainian manufacturers and their Israeli distributors which sought to enjoin two major Russian manufacturers holding Israeli trademark registrations for the relevant brands from informing their customers of the infringement of the registered marks.

05 June 2014

Opponent's mark held to be entitled to narrow protection due to "crowded" field

In <I>Millennium Marketing - Intertrade (1999) Ltd v Farm Chalk Investment Ltd</I>, the registrar of trademarks has dismissed an opposition by the owner of the registered stylised mark CLICK & FRESH for kitchen utensils against the registration of the stylised mark CLIP FRESH BY FARM CHALK, also for kitchen utensils. The registrar allowed the mark to proceed to registration, noting the narrow protection of similar marks in a "crowded" field.

21 May 2014

No injunction against use of 'Soho' for commercial centre despite SOHO mark for design stores

In <I>Collection Soho Limited Partnership v Electra Real Estate Ltd</I>, the Tel Aviv District Court has refused to enjoin a building developer from using the name Soho for a commercial centre at the request of the registered owner of the SOHO mark for a chain of home design stores. Among other things, the court held that the name Soho had a "universal flavour" and should not be easy to monopolise. Nevertheless, the court restricted the developer's use of the name.

10 April 2014

Popsicle shape not protected under passing off or as trademark despite reputation

In <I>Strauss Ice Cream Ltd v Osem Investments Ltd</I>, the Tel Aviv District Court has refused to enjoin the defendant from marketing a popsicle made up of concentric circles which allegedly copied the shape of the plaintiff's product. Although the court found that the shape of the plaintiff’s product had acquired a reputation, it concluded that there was no infringement due to, among other things, the absence of a likelihood of confusion.

31 March 2014

Ice Watch fails to prevent sale of watches allegedly copying unregistered design

In <I>Ice Watch SA v Time Concept 1999 Ltd</I>, the Tel Aviv District Court has held that a luxury watch manufacturer could not prevent a local retailer from offering for sale, under a brand name unrelated to the plaintiff, watches allegedly copying the plaintiff’s newly launched unregistered design. Among other things, the court noted that copying <I>per se</I>, in the absence of statutory protection under design or patent law, does not suffice to establish a cause of action.

20 March 2014

vitaminwater bottle shape refused registration

The registrar of trademarks has rejected an application filed by Energy Brands Inc, a subsidiary The Coca-Cola Company, for registration of the configuration of a bottle bearing the word 'vitaminwater' on the ground that it lacked inherent and acquired distinctiveness. Among other things, the registrar dismissed the argument that the mark had acquired distinctiveness in Israel because Israeli consumers are exposed to global advertising campaigns.

13 March 2014

Expansion of mark's use by defendant held to infringe plaintiff's rights

In <I>East & West Import and Marketing Ltd v East & West Food Ltd</I>, the Tel Aviv District Court has held that the defendant's expansion of its use of the EAST & WEST mark to wholesale trade infringed the rights of the plaintiff. The court also rejected the defendant's argument that it made good-faith use of its corporate name, which included the combination 'East & West'.

05 March 2014

Merck prevents registration of 'meta' mark for dietary supplements

In <I>Merck KGaA v Schreiber</I>, the IP adjudicator has upheld Merck KGaA's opposition to the registration of the mark METABOLIN for dietary supplements on the ground that it was confusingly similar to Merck's registered mark METAFOLIN, which also covers dietary supplements. Among other things, the IP adjudicator noted that trademarks intended for dietary supplements should be examined with particular caution.

25 February 2014

Philip Morris fails to prevent registration of cigarette mark by British American Tobacco

In <i>Philip Morris Products SA v British American Tobacco (Brands) Ltd</i>, the registrar of trademarks has dismissed an opposition by Philip Morris against the registration of CLICK SWITCH REFRESH by British American Tobacco for Class 34 goods. Among other things, the registrar dismissed Philip Morris’ argument that the mark was descriptive of the mode of use of the goods.

12 February 2014

Registrar refuses interim relief, but does not rule out possibility to grant equitable relief

In <i>Gueta v Northern Delis Ltd</i>, the registrar of trademarks has refused to grant interim relief in cancellation proceedings, but has not ruled out the possibility that, in principle, the registrar has inherent power to grant equitable relief in appropriate circumstances. The exercise of the registrar's inherent power must be limited and is applicable only in cases where it is appropriate in light of the nature of the proceedings.

06 February 2014

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