Region: Israel

SCARLESS case highlights distinction between suggestive and descriptive marks

A recent case involving the trademark SCARLESS for “a gel for the protection of scars” is an instructive example of the approach taken in Israel as to the distinction between suggestive and descriptive trademarks. Among other things, the adjudicator held that not even a moment of thought was required to identify the mark SCARLESS as a word that describes one of the characteristics or purposes of the goods.

27 January 2015

Supreme Court issues landmark decision on parallel imports

In <I>Swissa v Tommy Hilfiger Licensing LLC</I>, the Supreme Court has defined the scope of permissible use of registered trademarks by parallel importers. The court adopted a relatively liberal approach to parallel imports, but nonetheless imposed restrictions on the activities of the parallel importer. The court also addressed other important concepts, such as dilution and use of another’s trademark in domain names and as keywords.

01 December 2014

SC refuses to reconsider adidas' claim that four-striped shoes infringe its three-stripe mark

In <I>adidas Salomon AG v Yassin</I>, the Supreme Court has rejected adidas' petition for an additional hearing following its appellate ruling in this case, in which the court had rejected adidas' claims of trademark infringement, passing off, dilution and unjust enrichment against an importer of lower-end shoes bearing four stripes. Nevertheless, the court significantly tempered the effect of the appellate ruling.

25 November 2014

Case highlights adjudicator's power to require posting of bond

The case of <I>Super Medic (Medic Lite) Ltd v Nanobiotex</I> is an instructive example of the exercise of the authority of the commissioner or adjudicator to require the posting of a bond by a non-Israel opponent. The adjudicator required the opponents to post a bond in the amount IS20,000 and, in doing so, stated that her authority to require the posting of a bond derived from the rules of civil procedure and the customary conduct in civil court cases.

31 October 2014

adidas' three-stripe mark infringed despite lack of likelihood of confusion

In <I>adidas AG v Batash</I>, the Tel Aviv District Court has held that the defendant had infringed adidas AG’s registered three-stripe marks for clothing by using three parallel stripes on sports apparel, even in the absence of a likelihood of confusion, as the marks used by the defendant were virtually identical to adidas' registered marks. However, the court dismissed adidas’ claims of passing off and dilution.

22 October 2014

Error in applicant's name found not to invalidate notice of opposition

In opposition proceedings against the registration of The Procter & Gamble Company’s mark ACTIPEARLS, the adjudicator has considered whether an error in the captioned name of the applicant had the effect of invalidating the notice of opposition. The adjudicator found that the error was merely a technical one that could be corrected, and rejected the applicant’s claim that the correction had prejudiced it.

18 September 2014

Weak inherent distinctive character limits scope of protection of registered mark

The IP adjudicator has dismissed an opposition by the owner of the marks SELECTED and VINEYARDS SELECTED for wine against the registration of two device marks including the words 'selected vineyards'. The adjudicator cited the Supreme Court’s decision in <I>adidas v Yassin</I>, in which it was held that a weak inherent distinctive character limits the degree of protection of a mark, even after it has secured protection due to its secondary meaning.

15 September 2014

Philip Morris loses 'activate' appeal against Japan Tobacco

In <I>Philip Morris Products SA v Japan Tobacco Inc</I>, in proceedings between two rival applications, the district court has upheld the registrar’s decision to proceed with the examination of Japan Tobacco’s ACTIVATE FRESHNESS mark for cigarettes, and to refuse Philip Morris' application for a mark containing the words 'activate' and 'fresh'. Among other things, the court held that Philip Morris had failed to show that it had chosen its mark in good faith.

31 July 2014

Requests for assignment should not be taken for granted

In opposition proceedings between Puma and Ibd Alrazak Abido, the adjudicator has considered a motion filed by Puma to strike Ibd Alrazak Abido’s counterclaim or, in the alternative, to strike the names of two of the parties named in the counterclaim. At the centre of Puma’s motion was the request filed by Ibd Alrazak Abido for partial assignment of the mark to two assignees.

18 July 2014

Examiner found to have erred in commencing proceedings between rival applications

In <I>Tambour Ltd v Nirlat Ltd</I>, the IP adjudicator has annulled the examiner’s decision to cancel the acceptance of a mark in order to commence proceedings between rival applications. The adjudicator held that, to commence contentious proceedings between rival applications, the later application must have been filed at least a day before the acceptance of the earlier application.

25 June 2014

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