Region: Israel

Owner of MISS SIXTY mark fails to prove well-known status

In <i>Fronsac TM SA v Iris Line Ltd</i>, the IP adjudicator has held that the registered trademark MISS SIXTY was not a bar to the registration of the stylised mark MISS SEXY for clothing due to the presence of differentiating elements. Among other things, the adjudicator found that the opponent had failed to demonstrate that the MISS SIXTY mark was well known in Israel.

14 September 2011

Crocs Inc can rely on consumer protection laws in Customs dispute

The Tel Aviv District Court has held that a rights owner may rely on consumer protection laws and other laws, in addition to the specific provision of the Customs Ordinance that deals with seizure of goods infringing copyright and registered trademarks, to seek seizure of allegedly confusing goods by the Customs Authority in the absence of a registered trademark.

27 July 2011

Good faith can be defence to trademark infringement claim

In <i>Tommy Hilfiger Licensing LLC v Shadi</i>, the Nazareth District Court has ruled, among other things, that a claim of 'good faith' may, in appropriate circumstances, serve as a defence to a claim of trademark infringement. However, in the case at hand, the defendant had failed to demonstrate that it had acted in good faith with respect to its use of the plaintiff's mark.

25 July 2011

No trademark infringement, but defendant's conduct held to amount to passing off

In <i>A Eliyahu & Sons Ltd v Night Sleep Centre (2000) Plus Ltd</i>, the Centre District Court has held that use of the trademark DR RELAX for furniture did not infringe the marks RELAXON or DR GAV (Hebrew for 'Dr Back'). However, it concluded that the defendant's conduct amounted to passing off.

21 July 2011

Customs not liable for costs that cannot be collected from importer

In <i>The State of Israel - Customs Authority v Christian Dior Couture</i>, the Supreme Court has ruled that storage and destruction costs that cannot be collected from an importer of counterfeit goods must be borne by the rights owner. Such costs may be deducted from the bank guarantee provided by the rights owner pursuant to statutory requirements.

13 July 2011

Maximum statutory damages awarded in counterfeit drugs case

In <i>Lilly Icos LLC v Finkelstein</i>, the Tel Aviv District Court has awarded the maximum statutory damages against the principal wrongdoer in a case involving counterfeit Cialis drugs. The court found that the severity of the defendant's conduct tilted the balance towards awarding the maximum statutory damages.

11 July 2011

Owner of CARGO for clothes fails to prevent use of ‘cargo’ for trousers

In <i>New Jeans Ltd v Renuar Fashion Manufacturing and Marketing (1993) Ltd</i>, the Central District Court has dismissed an action brought by the owner of the trademark CARGO (registered for clothing and footwear) against three major clothing retailers that used the word 'cargo' for trousers in conjunction with their own marks. The court concluded that the defendants’ use of the word 'cargo' constituted legitimate descriptive use.

28 June 2011

Major shareholder personally liable for infringement

In <i>Onipharm Ltd v Anderson Medical Ltd</i>, the Central District Court has ruled that the corporate veil between a company and its major shareholder could be pierced because the shareholder had tried to register the trademark at issue in his own name. In doing so, the shareholder became personally liable for any infringing uses of mark made by the company.

23 June 2011

Trademark Office registers four product configurations and get-ups

In four decisions handed down on the same day, the IP adjudicator has allowed the registration of the configuration of two liquor bottles and of the get-up of two perfume bottles, but refused to register the Head & Shoulders shampoo bottle. The IP adjudicator referred to various decisions on product configurations and get-ups, including the Supreme Court's decision in the <i>Toffifee</i> case.

21 June 2011

Configuration of telescopic gun sights refused registration

The Israeli Trademark Office has refused to register three-dimensional marks consisting of the configuration of telescopic gun sights, holding that the marks were product configurations consisting of functional and design features which were devoid of any distinctive character - despite the US Patent and Trademark Office finding that they had acquired distinctiveness through use.

10 June 2011

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