Here are 5 Trademark Infringement Cases to Learn From: Mistakes, Battles and Things to Avoid in Your Own Trademark Infringement Actions

Cases of trademark infringement are often complex and include many nuances that one must pay attention to. Trademark Law is different in every country. Thus, familiarity with the local laws and court decisions of each specific country is important. To demonstrate this, below a partner from our firm will present to you 5 remarkable trademark infringement cases from Israel. 

Decker, Pex, Levi is a boutique law firm that specializes in trademark law and intellectual property (IP). The firm represents Israeli and international clients in IP legal matters. The services offered by the firm include assistance with handling trademark registration in Israel and worldwide, legal representation in trademark infringement actions, etc.

The Broad Definition of Trademark Law

Trademark infringement casesSuppose you own (or represent) an international company with a successful brand. The brand is registered as a trademark in various countries. What can you do to prevent infringements, when they occur in a small country like Israel? In order to understand what are the right legal actions to take against infringements, familiarity with the local law is crucial. “The local law” includes not only the trademark legislation, but also case law and important court decisions. 

Similarly to many countries around the world, Israel’s legal system has various properties of a common law system. One of which is the principle of a precedent. That is, previous cases shape the legal standards that are not always determined by the written law. 

Similarly to other intellectual property fields, trademark law has many open standards and “grey-areas”, in which the law does not determine what can or cannot be done. It leaves much place for courts to conclude in each given matter, according to the specific circumstances. 

Israeli courts often need to find creative ways to conclude in certain cases. At times, it even requires to “import” legal doctrines from other jurisdictions. Below we will present 5 precedential trademark cases, in which the Israeli Supreme Court issued some important decisions. We will further explain how those decisions shape the local trademark system regarding trademark infringement cases. 

Trademark Protection VS Right of Publicity

Trademark infringement casesWhich of the rights deserves a higher level of protection when it comes to advertisement – trademark right or the right of publicity? This question was discussed at length in the case of Alonyal v. Ariel McDonald in 2004. This Supreme Court judgement is one of the most remarkable ones in Israeli trademark law. It is being quoted until present.

Ariel McDonald is an American-Slovenian retired basketball player. In the late 1990’s he moved to Israel to play for the Maccabi Tel Aviv basketball team. In the year 2000 he participated in a Burger King advertisement, in which he said: “Listen to McDonald – only Burger King.”

The Israeli franchisee of McDonald’s, Alonyal Ltd., reacted with its own ad. McDonald’s ad included quotations from an interview Ariel McDonald gave to a local newspaper in Israel. In the interview, McDonald stated that he prefers eating in McDonald’s. In response, Ariel McDonald sued Alonyal for infringing his right to privacy. According to the Israeli Protection of Privacy Law, using a person’s name, image or voice to make profit could be a form of privacy infringement.

Alonyal filed a counterclaim, arguing that Burger King’s advertisement infringes the registered trademark of MacDonald’s. The Tel Aviv district court accepted Ariel McDonald’s lawsuit and dismissed Alonyal’s counterclaim. Alonyal appealed to the Supreme Court, where the district court’s decision was reversed. 

Trademark’s Reputation Plays an Important Role

The Supreme Court held that although Burger King’s ad wasn’t using the McDonald’s trademark in a misleading way, it did attempt to insult and degrade the trademark’s reputation. In such cases, one can seek a return of profits, according to the Israeli Unjust Enrichment Law. On the contrary, the court stated that as a celebrity, Ariel McDonald’s interest is to actually get as much media coverage as possible. Thus, his claims regarding the right to privacy shall not gain protection in the given circumstances.

Furthermore, although the Israeli law defends trademark use in a goodwill, in the particular matter Burger King did not use the McDonald’s trademark in a goodwill. The ad attempted to despise the competitor’s trademark while using it. Accordingly, monetary compensation was involved. Ariel McDonald was obliged to compensate Alonyal with $20,000 damages for trademark infringement.

The court held that the use of Ariel McDonald’s name is an unjust enrichment as well. However, in this particular case, the circumstances justify exempting Alonyal from an obligation to return its profits to Ariel McDonald. The reason was that the last thing in a celebrity’s interest is to be left alone in his privacy, while he seeks more coverage to remain on the headlines. Thus, the Supreme Court fully reversed the district court’s judgement, accepting the claims by McDonald’s.

Is Using a Presenter’s Lookalike a Trademark Infringement?

Is it acceptable that a company would use a lookalike of its competitor’s campaign star? What does it have to do with trademark infringement? In 2019, the Israeli Supreme Court issued an important judgement in the case of Nespresso v. Espresso Club, referring to both questions. Espresso Club is an Israeli competitor of the coffee giant, Nespresso. Both companies market coffee machines, espresso capsules and additional related products. 

Nespresso’s series of advertisements, starring George Clooney, became well-known worldwide and also in Israel. Espresso Club posted an advertisement on Israeli TV, with an actor resembling George Clooney. Nespresso then sued Espresso Club for several legal claims, including trademark infringement. 

The district court dismissed Nespresso’s lawsuit, who appealed to the Supreme Court. The Supreme Court did not accept Nespresso’s claims as well. Regarding Nespresso’s claim for trademark infringement, the court held that Nespresso’s trademark did not appear in Espresso Club’s advertisement. 

The mere fact that a campaign star’s lookalike appears in a commercial, wasn’t satisfactory in those circumstances to base allegations for trademark infringement. However, a different conclusion could have been made if the mark would have appeared or mentioned during the ad.

Trademark Components and Deception

Should the court consider a component of a trademark for determination on trademark infringement? In an important case of first impression, the decision of the Israeli Supreme Court was positive. The decision was given in the case of Ta’am HaTeva v. Supherb (2003). 

The background was as follows: two competing companies marketed food supplements that help against joint pain. One product is called Mega Gluflex and the other Mega Relpex. The company who marketed Mega Gluflex had a registered trademark for the product’s name. However, it had to waive the component “Mega” for the registration to take place. In an interim relief proceeding, the company seeked an interim injunction, which would prevent the competitor from using its mark.

The Isareli Trademark Ordinance requires a resemblance between marks for similar goods, in order to prove an infringement in such cases. The Supreme Court held that waiving the use of the component in the trademark does not mean that it cannot be considered when examining the similarity of the marks. Thus, the court held that allegedly, there is a resemblance between the marks, and returned the case back to the district court to determine in the question of the interim injunction.

Trademark Dilution and Trademark Infringement Cases

Trademark dilution means a use of a trademark which might base claims for trademark infringement, usually with regards to a well-known trademark. We elaborated on the topic of trademark dilution and Israeli trademark law in another article

Well-known trademarks were first recognized in Israel by the Supreme Court, in the Bacardi Case. In 1998, Bacardi won an appeal on a decision of the Trademark Registrar. The Registrar refused to register the mark “BAKARDI JEANS” for an Israeli clothing brand, due to an opposition of Bacardi, the famous liquor company. 

Opposition proceedings are similar to civil lawsuit proceedings in their manner. They also include filing of pleadings and evidence, investigations of declarants and final decision of the Trademark Registrar. The registrar’s decision may be appealed to court. In Bacardi’s case, the owner of the Israeli clothing brand appealed the registrar’s decision to refuse registering its brand as a trademark.

Bacardi’s main argument was that its trademark is well-known. The court held that there is indeed a great international reputation behind the Bacardi mark. Therefore, registering a deceptive brand as a trademark would constitute an unfair competition and dilute Bacardi’s trademark. Such practices cannot be allowed. Although the Israeli clothing brand wasn’t competing with Bacardi’s products directly, the court accepted the registrar’s decision and ruled that the Israeli mark is not qualified for registration.

After this precedent judgement, the Trademark Ordinance was amended and the definition of a well-known trademark was added to it. Since then, the Israeli courts have defended many well-known trademark owners. Infringers who attempt to ride on the goodwill and dilute the strength of well-known trademarks illegally, can no longer do so. 

One Stripe Can Make a Great Difference

Despite the large protection of well-known trademarks in Israel, it is important to emphasize that each case is examined according to its particular circumstances. The courts attempt to examine the question of deceptive similarity between marks according to reviewing each mark as a whole. The case of Adidas vs. Yassin demonstrates it very well.

Adidas sued an Israeli shoes importer for trademark infringement of its well-known 3-stripe brand. The importer sold shoes with a relatively similar pattern. Yet, the pattern consisted of 4 stripes, and the mark SYDNEY was imprinted on the shoes as well.

The Supreme Court dismissed Adidas’ claims, highlighting that the doctrine of trademark dilution is not a default doctrine. That is, it should not be in use in each and every case of consumers’ deception. It is relevant in cases where an unauthorized use of the mark leads to an erosion of the mark’s reputation. 

Contact Us

In summary, it is important to know the above and other trademark infringement cases, in order to understand what is right for your own battles against infringement. For more questions and information about the topic, you can contact us. A trademark expert from our firm will be happy to assist you. The law firm of Decker, Pex, Levi is well experienced with representing Israeli and international clients in trademark infringement matters. The firm is also experienced with handling trademark registration and protecting IP assets in Israel and around the world.

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