ISRAEL
ISRAEL
the judgment includes a new and difficult legal ruling which justifies another judicial review by the Supreme Court. It seems to us that this judgment dealt with the principal issues of trademark laws and the scope of protection to be granted to the owner of a famous trademark with enormous goodwill, so it is worthwhile allowing another review of these important questions by the court.
Parallel imports
Te District Court rendered a decision as to the extent of permitted use of trademarks by parallel importers. Te Tommy Hilfiger Company sued Israeli importers of its trademarked goods, arguing that its trademarks were massively infringed in the defendants’ stores.
Te District Court ruled that while parallel importation of trademarked goods is allowed and should be encouraged to create competition for the benefit of the public, the importer’s right to use original trademarks is limited according to the ‘genuine use’ rules. Te balance between the trademark owner’s exclusive right to use its marks and the public interest in free and fair competition does not allow the trademark owner to preclude others from using the marks on ‘original’ genuine goods. However the use of a trademark by the parallel importer should be made only to the extent necessary for identification of the goods. Use of the mark by the importer in a manner which implies endorsement by the trademark owner should not be allowed.
In this case, the court found that the defendants’ use of the mark was not made out of ‘fair and reasonable necessity’, but rather created the possibility of misrepresentation. Te defendants used the plaintiff’s trademarks as their business name (for a certain period) and as their domain name, used the plaintiff’s logo colours inside and outside their stores, and used the plaintiff’s trademarks prominently on promotional materials and on signs inside and outside the stores, all without mentioning the fact of the parallel import.
Such use exceeds what is reasonably and fairly necessary for defining or identifying the products, and could lead a consumer to assume mistakenly that the merchandise has been imported by the defendants directly from the plaintiff, or sponsored by it.
Tus trademark infringement was committed by the defendants, and there was unjust enrichment at the expense of the plaintiff—since their purpose was to promote sales taking advantage of the plaintiff’s investments and goodwill in its trademarks.
Te court ruled that 84 the plaintiff was entitled to restitution of profits incurred by the defendants and ordered the defendants to pay a substantial World Intellectual Property Review e-Digest 2013
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amount to the plaintiff. Tis judgment is subject to an appeal which is pending before the Israeli Supreme Court.
Patents Patent term extensions
Te Registrar of Patents rendered a decision regarding interpretation of Section 64d(3) of the Patents Act, 1967, which allows the registrar to issue a patent extension order if registration of the patented material in Te Pharmaceutical Journal was the first registration allowing use in Israel for medical purposes. Te registrar ruled that registration of the material for veterinary purposes prior to registration of the same material for human medical purposes, is relevant to a patent term extension (PTE) request dealing with a material for human use, and therefore the registration of the material by the applicant was not “the first registration” as required by the Patents Act.
Te registrar reviewed proceedings regarding a similar question initiated by the applicant in the UK: a decision denying request for PTE, two appeal proceedings, and a decision of the UK Supreme Court to refer the issue to the Court of Justice of the EU (CJEU), where the matter was still pending (as per March 2012).
Te applicant appealed against the registrar’s decision to the District Court and the appeal was allowed. It was ruled that registration of the material for human medicinal purposes is “the first registration” required by Section 64d(3) and that registration of the material for veterinary purposes should not be considered as a prior registration and should not be taken into consideration for the purposes of applicant’s request for extension. Te registrar rectified his decision, granting the requested PTE.
Nahum Gabrieli is a partner at Seligsohn Gabrieli & Co. He can be contacted at:
nahum@sgl.co.il
Nahum Gabrieli specialises in IP litigation. His expertise is infringement and enforcement cases before the court and litigation before the Registrar of Trademarks and Designs. He is also involved in patent infringement litigation and patent opposition proceedings before the Registrar. Gabrieli has vast experience in advising owners of famous brands and large trademark portfolios, and also represents authors in copyright matters.
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