JURISDICTION REPORT: ISRAEL
RIPPING OFF RINGS: A CONFUSED DECISION
Dr Michael Factor JMB, Factor & Co
H Stern, a Brazilian jewellery manufacturer with many retail outlets in Israel and abroad, sells a flat gold band with an oblong section of pavé diamonds. Te remainder of the band is polished to a mirror finish. Te band is also decorated with a pentagram or Seal of Solomon on the shiny part on each side of the diamond oblong. Five-pointed stars are also engraved on the inside of the band. Te ring is known as the Juliana model.
Aryeh Pozylov, through various companies including Orneal Ltd., Nitfaz (a pun on the Hebrew word nitfas, meaning snapped up, and faz meaning gold) and Pozylov Diamonds marketed a somewhat similar but substantially cheaper ring that has a Star of David (Magen David, or Hexagram) decoration instead of the pentagram. Te pentagram is a registered trademark of H Stern, chosen since stern means star in German and Yiddish.
Stern sued Pozylov, invoking a number of causes of action including: • Trademark infringement • Well-known mark infringement • Passing off • Copyright infringement • Unjust enrichment • Dilution • Stealing reputation and confusing the consumer.
The ruling
Regarding the alleged trademark infringement, Judge Drora Pilpel ruled that the pentagram and the hexagram are arguably confusingly similar to look at, but when purchasing jewellery, the purchaser is particularly careful. However, she went on to rule that this is not all that relevant since according to Judge Asher Gronish in the Taam Teva decision, when applying the so-called triple test, the appearance of the mark is of less importance than the sound of the mark when considering the ‘sight and sound test’, and ‘pentagram’ sounds different from ‘Magen David’; therefore, there is no likelihood of confusion. Since the mark is a graphic mark and not a word mark, this conclusion was somewhat surprising.
Although the products under consideration are rings in both cases, she went on to rule that since H Stern does not sell via third parties, the distribution channels are different. Finally, Judge Pilpel applied the fourth part of the triple test, the so-called ‘clear thinking test’ and decided that even though the sound of the mark is different since the conceptual idea of Stern’s mark is to imply the maker, using a star as a maker’s mark, whereas the defendant’s Star of David implies ‘made in Israel’, there is no likelihood of confusion.
58 World Intellectual Property Review May/June 2011
“ REGARDING THE ALLEGED TRADEMARK INFRINGEMENT, JUDGE DRORA PILPEL RULED THAT THE PENTAGRAM AND THE HEXAGRAM ARE ARGUABLY CONFUSINGLY SIMILAR TO LOOK AT, BUT FOR JEWELLERY, THE PURCHASER IS PARTICULARLY CAREFUL.”
As to whether the pentagram trademark is well known, Judge Pilpel considered the issue at some length, even though she had already decided that there is no trademark infringement. She concluded that it wasn’t well known.
Te defendant argued that copyright could not be applied since the ring could and should have been protected as a design. Te judge dismissed this in a strange line of reasoning that is difficult to follow. Essentially, she argued that this was true of mass-produced machine-manufactured objects but not of hand-made goods, and although clothing could and should be protected as designs and not copyright, jewellery could rely on copyright protection. She went on to rule that the combination of the shiny band, pavé diamonds and pentagram stars is protected by copyright.
Having recognised copyright in the combination of the three design elements, the judge ruled that the fact that one ring has hexagrams and the other pentagrams is not significant enough to alter the fact that the defendant’s ring is a blatant copy.
Since she had found copyright infringement, the judge considered the question of unjust enrichment irrelevant.
As to the claims of dilution and stealing reputation, the court threw this out for lack of proof of damage to H Stern.
Te judge found statutory damages of NIS20,000 ($5,800) under the Copyright Ordinance of 1911, which was in force when the case was filed. She also found that as an alternative to statutory damages, the plaintiff would be entitled to profits made by the defendant from the infringing rings. Te judge also awarded NIS40,000 ($11,500) costs.
Finally, the judge ordered the unsold stock of rings and moulds to be destroyed and for the defendant to cease advertising or selling these rings.
Dr Michael Factor is a partner at JMB, Fa©tor & Co. He can be contacted at:
mfactor@israel-patents.co.il.
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84