Co-published editorial

Luzzatto & Luzzatto Attorneys Unregistered marks have rights too

Brand owners are advised to register their rights, but several grounds protect unregistered

Unregistered trademarks, such as trade Section 3, which provides that a trader may exists independently of the films in which it names, get-ups, trade descriptions, labelling not unfairly prevent or hinder the access of features. It found that the image in question or packaging and other commercial signs, customers, employees or agents of business includes the character’s design, costume and are protected in Israel under various to the or services of another trader. make-up and the special features of the grounds and actions. These provisions are intended to prevent a performance, such as the acting and competitor from unfairly interrupting the distinctive gait. As such, it is protected activities of a business establishment. under law. Unregistered trademarks are mainly In CC 1627/01 the district court dealt with protected on the basis of passing off, which the interpretation of the terms ‘hinder’ and Unjust enrichment is a tort under Section 1 of the Commercial ‘access’ in the context of unfair interference. Section 1 of the Unjust Enrichment Act Wrongs Act. It is intended to protect the The defendant had registered a domain provides that a party which unlawfully owner of a trade name from damage to name which was identical to the plaintiff’s receives a property, service or other benefit goodwill. In order to have grounds for a registered . The court held that from another party must return it or – if passing-off action, the plaintiff must prove access may be hindered by various means, such return is impossible or not reasonably that its goods have acquired goodwill and such as by blocking a telephone line or practicable – must compensate the other that the use that the defendant makes of its damaging a mailbox, sign, commercial party for its value. trade name may mislead consumers. advertisement or website. In this case, the The Supreme Court dealt with the issue of Protection of an unregistered trademark court ruled that the defendant’s sole purpose protection of unregistered intellectual rights has evidential disadvantages compared with in registering the domain name had been to with reference to the Unjust Enrichment law protection of a registered trademark. A prevent the plaintiff from creating a uniform (CA 5768/94, AShIR). There was no consensus plaintiff basing an infringement claim on a resource locator containing the commercial among the judges in this case. The leading registered trademark need not necessarily name by which the plaintiff was recognised judgment stated that in order to establish this prove use of the trademark, whereas the by the public. In so doing, the defendant claim in the case of unregistered IP rights, it is owner of an unregistered trademark must hindered customers and agents that sought necessary to prove an "additional element": an prove, in a passing-off action, that it has access to the plaintiff’s business by infringement of the objective good-faith acquired goodwill through extensive use. preventing the plaintiff from creating a principle. According to this approach, copying website bearing its trademark. or imitation of an unregistered trademark may False description entitle the owner to damages under the law, The tort of false description is defined in Copyright even if the trademark owner is not entitled to Section 2 of the act. It may apply to trademark Images, such as cartoons, are protected remedies under a passing-off action. infringement claims for the unauthorised use under copyright law if they are original and In CC 2343/03 the district court of trademarks in advertisements. Section 2 involve unique figures that are sufficiently summarised the evidence that is required in addresses the issue of advertisements developed to be regarded as independent order to prove this additional element. A containing wilful false descriptions in relation creations. claimant must show: to another party’s business, profession, In CC 1376/91 the petitioner sought a • the extent to which the competitor was property or service. The act applies to claims preliminary injunction against the aware of the existence of the product for relating to comparative advertisements that respondent, requiring the latter to cease its which protection is sought; make false representation regarding the use of the image of the ‘Little Tramp’ • the degree of difficulty involved in the quality of goods bearing the trademarks, character played by the actor Charlie imitation process; which may lead to the dilution of the Chaplin. The respondent had used a • the scope of imitation; trademark’s distinctiveness. representation of the figure in a television • the date of imitation; advertisement for a lottery. The court ruled • the isolated or systematic nature of the Unfair interference that the unique image of Chaplin’s character imitation; and Unfair interference is also a tort under is an independent artistic creation that • the existence or absence of alternatives

78 World Trademark Review December/January 2011 www.WorldTrademarkReview.com Country correspondent: Israel

other than the imitation for achieving the plaintiff (CC 2308/02). the desired goal. In another case the Israeli Bar Association petitioned for the transfer of the domain Unregistered well-known trademarks name ‘hapraklit.com’ (‘thelawyer.com’ in Well-known trademarks are protected in Hebrew), which was registered in the name of Israel under the Trademarks Ordinance, even several Israeli attorneys. The plaintiff argued if they are unregistered. The ordinance was that the domain name with the American amended in 1999 in order to comply with suffix ‘.com’ infringed its registered Article 16 of the Agreement on Trade-Related trademark, which was well known to Israeli Aspects of Rights and attorneys. The court accepted this argument Article 6bis of the Paris Convention for the and ordered the transfer of the domain name Protection of Industrial Property. (CC 810/01). Even before the amendment of the A quick and inexpensive way to counteract ordinance in 1999, Israeli courts protected is to file a petition with the well-known marks that were not registered Israeli Internet Association. The association is or used in Israel. Thus, the Supreme Court responsible for the registration of domain ruled that the marks ST DUPONT (Orlogad Kfir Luzzatto names with the Israeli top-level domain ‘.il’. HCJ 476/82), LEE (The HD Lee Company HCJ Senior partner Any owner may approach the Israeli 95/68) and BACARDI (Bacardi CA 6181/96) [email protected] Dispute Resolution Panel (IL-DRP), an were well-known marks, even though they organisation within the association which is were not used in Israel in relation to the Kfir Luzzatto was born in Italy and responsible for settling disputes concerning relevant goods (ie, watches and clothes educated in both Italy and Israel, where he the allocation of ‘.il’ domain names. The IL-DRP respectively). Similarly, the district court received a PhD in chemical engineering. has the authority to cancel a domain name or ruled that CHANEL was a well-known mark Mr Luzzatto received a number of transfer it to another owner on the basis of in respect of articles such as bags, even academic awards, including the Landau arbitration proceedings. though it was not used in Israel in relation Award for Research. He has taught university Under the association’s regulations, a to bags (CC 2070/90). courses on and technology, and is domain name will be transferred to the A well-known mark that is not registered in the author of numerous technical, scientific brand owner if: Israel is entitled to protection against use and and professional articles. • the domain name is identical or similar registration of a confusingly similar mark in to a registered trademark or the brand respect of goods for which the mark is known owner’s name; or goods of the same description (Sections 1(3), • the holder of the domain name does not 11(13) and 46A(a) of the ordinance). have rights in the name; and • the holder registered or used the domain Domain names name in bad faith. The phenomenon of cybersquatting is well known and widespread. Many companies The association has previously accepted a that wish to acquire domain names petition from the pharmaceutical company containing their name or brand are Pfizer, which owns the registered trademark surprised to find that the domain names VIAGRA, against the holder of a website under have already been taken by third parties. the domain name ‘viagra.org.il’. The holder There are several ways in which brand marketed medicines under the mark VIAGRE owners can act against cybersquatting. through its website. The association ruled that Primarily, they can file civil claims based on the holder had registered and was using the , unjust enrichment, domain name in bad faith – it was seeking to unfair interference and passing off. They can attract customers looking for Viagra to its also petition the Israeli Internet Association website, intending to mislead them and create to transfer such domain names. Ronen Sasson an erroneous association between Pfizer and The owner of a registered trademark can Lawyer the medicines marketed through the website. prevent the registration and use of a [email protected] domain name which is similar to its Comment registered trademark. Ronen Sasson holds a law degree from Tel- Although the protection of registered In one case a defendant had registered Aviv University and a master’s degree in trademarks has evidential and procedural the domain name ‘www.zer4me.co.il’. The law from the University of London advantages over the protection available to plaintiff was the owner of the registered (focusing on intellectual property). He has unregistered trademarks, there are still trademark ZER FOR YOU. The court ruled been a member of the Israeli Bar various effective means and legal grounds to that the element ‘zer4me’ in the domain Association since 1990. Mr Sasson deals provide sufficient protection for name was phonetically, visually and with various aspects of trademark and unregistered trademarks and other conceptually similar to the registered mark. patent protection, including opposition commercial signs. Trademark owners should Therefore, such use constituted trademark and cancellation proceedings, as well as be aware of these protection methods to infringement. Accordingly, the court trademark prosecution and enforcement. ensure that they can safeguard their ordered the transfer of the domain name to unregistered rights effectively. WTR www.WorldTrademarkReview.com December/January 2011 World Trademark Review 79