1 August 2010CopyrightMichael Factor

Trademark developments in Israel

Israel accedes to Madrid Protocol

Israel submitted accession papers to WIPO at the end of May, and from September 1, 2010, it will be possible to file trademarks in Israel using the Madrid Protocol. Additionally, multi-class trademark applications will be allowed.

Meanwhile, the Israel courts and the Patent and Trademark Office are busy issuing sometimes controversial trademark decisions.

Elle’s Belle

When Venus Fashions and Grapholite Moses Printers LTD launched their Hebrew language magazine Belle in Israel, Elle, the international women’s magazine, sued for an injunction. Both magazines focus on women’s fashion, beauty, health and entertainment.

Elle has a circulation of over a million copies a month and is one of the world’s most popular women’s magazines. Although translated into some two dozen languages, there is no Hebrew edition. However, it is available in Israel in English.

‘Elle’ means ‘she’ in French, while ‘belle’ means ‘pretty woman’. In granting a temporary injunction, Judge Yehuda Zefet ruled that many readers would not know what Belle meant. The judge correctly pointed out that the magazine covers are similar in that, in each case, the name is written across the top and there is a photo of an attractive female underneath. However, this style of magazine cover design is hardly unique to Elle and is shared by other women’s (and indeed men’s) magazines.

“From September 1, 2010, it will be possible to file trademarks in Israel using the Madrid Protocol.”

Though it is not impossible that someone would see the magazine and assume it was Elle in Hebrew, since Elle does not have a Hebrew version yet, confusion would hardly be likely to affect Elle’s sales. Nevertheless, the judge ruled that Elle had a good chance of prevailing in the main judgment and that Belle, with only one issue under its belt, is not well known, meaning a temporary injunction against using the name would have only minor consequences.

Judge Zefet issued a temporary injunction against Belle, awarding Elle costs of NIS35,000 (approximately $10,000). Belle’s owners have been ordered to collect unsold magazines from distributors in the meantime, with Elle posting a security to cover damages if it loses the main case.

Health bread passing-off

Eynan is the trademarked name of a popular wholemeal bread made from germinated but non-sprouted wheat flour. This bread has been made for 20 years by Angel’s, the largest bakery in Jerusalem. Eynan is sold in 750 gram pre-sliced loaves, in distinctive yellow striped bags labelled ‘Lehem Eynan’. This brand represents more than half of the health bread market.

Berman, another large Jerusalem bakery, started selling Lehem l’Inyan, or Berman l’Inyan—the word ‘l’inyan’ is probably best translated as ‘serious’ or ‘down to earth’. Even ignoring the similarity of the name, we note that Berman l’Inyan uses a similarly striped bag, sells in similar sizes and uses the same slogan—that the bread is made from germinated but non-sprouted grain.

Judge Pilpel, in a learned and erudite, but in my opinion essentially wrong decision, ruled that there was no passing-off, no unjust enrichment and no likelihood of confusion.

Amongst noticeable differences is the fact that one bakery uses a weak tie to close the bag and the other a stronger tie-wire with the sell-by date on it. The fact that supermarkets bundle the bread together as Eynan for sales purposes is irrelevant—since that is the supermarket’s and not the baker’s decision.

To add insult to injury, Judge Pilpel awarded NIS50,000 ($13,000) in costs against Angel’s bakery for filing a frivolous lawsuit.

According to the judge, despite the similarity between the products, inadvertently buying the wrong bread is the sort of mistake that is only made once. I find this argument ridiculous. This bread made from germinated but not sprouted wheat is not standard bread, by definition. Even if some people only mistake one bread for another once, that does not necessarily hold true for all customers, and any confusion is still damaging.

This is the sort of decision that eloquently presents the case for having professional IP courts.

Dr. Michael Factor is a partner at JMB, Fa©tor & Co. He can be contacted at: mfactor@israel-patents.co.il

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