Appeal against the judgment of the Tel Aviv-Yafo District Court delivered by the Honorable Judge M. Agmon-Gonen. The appeal was filed by ADIDAS SALOMON A.G against Jalal Yassin and the State of Israel, the Customs and VAT Department (formal respondent). The appeal was heard by the Supreme Court, before a panel composed of Deputy President (Ret.) A. Rivlin, Judge A. Rubinstein and Judge A. Hayut. On August 27, 2012.
Facts:
The appellant, Adidas, is the owner of trademarks including a logo of three parallel and diagonal stripes on the side of sneakers.
In 2005, the respondent imported shoes with four diagonal stripes and the name “SYDNEY” stamped on them in three different places.
Adidas argued that the appearance of the shoes was indeed confusingly similar to the shoes it produces and that it constituted an infringement of its trademark.
District Court Judgment:
The District Court dismissed the claim.
It held that the use of four stripes, when the shoes do not include any other sign or symbol similar to those of Adidas, does not constitute an infringement of the three-stripe trademark.
It also found that the tort of passing off does not exist because there is no reasonable likelihood of deceiving consumers.
The court further rejected Adidas’ alternative claim that the respondent, by trying to benefit from its reputation, was unjustly enriched at its expense, even if it was found not to have infringed its registered trademark.
This is because the use of the four-stripe mark does not harm Adidas and the respondent’s actions are not exceptional, outrageous or constitute unfair competition.
Finally, the District Court dismissed Adidas’ claims for theft and dilution of reputation.
In this regard, the court held that the respondent did not make any unfair use of Adidas’ reputation, as mentioned, and that a central reason for using the four stripes could be “to create a market for designer sneakers for people who cannot afford to buy branded sneakers.”
For all these reasons, the District Court concluded that there was no proof of a likelihood of deception and unfair competition on the part of the respondent or an attempt on its part to benefit from Adidas’ reputation.
The court added that, given the above, everything that is not included in the trademark should be left in the public domain.
Supreme Court Appeal Results:
The appeal was dismissed by a majority (2 out of 3).
Justices Hayut and Rubinstein ruled that there was no trademark infringement, no passing off, and no cause of action for unjust enrichment.
It was also ruled that Adidas would pay the respondent legal fees in the appeal of NIS 25,000.
Justice Rivlin, in a minority opinion, proposed accepting the appeal in part on the grounds of unjust enrichment and proposed a remedy whereby the respondent would add a fifth stripe to reduce the likelihood of deception.
Additional Hearing in the Supreme Court:
- On August 27, 2014, in case number 6658/12, a request for an additional hearing on this judgment was dismissed.
- It was ruled that no new precedent was set in this judgment, but rather that it was a development of the law, and not every development of the law warrants a further hearing.
- It was ruled that the determination that it is appropriate in the present case to consider the question of the similarity of a visual mark by examining the product as a whole is indeed a novelty in Israeli law, but does not contradict the previous law but rather constitutes a development of it.
- The determination that only in exceptional cases will it be appropriate to recognize a cause of action for dilution of reputation where there was no deception is also a development of the law.
DWO’s Note:
This is a fascinating and comprehensive judgment that clarified and developed a number of precedents in the field of trademarks, passing off and unjust enrichment, including:
A. Clarification of the Precedent of the Supreme Court: The law of unjust enrichment does not apply in a case of infringement of a similar trademark as opposed to an identical one. For example, four stripes will not be considered unjust enrichment where there is no deception, while the use of the Adidas mark (written) where there is no deception (for example, where it is clear that the product is a counterfeit) will be considered unjust enrichment. [Justice Rivlin, in a minority approach, thought that both situations should give rise to a cause of action for unjust enrichment].
B. To prove trademark infringement, it is necessary to prove deception only in a situation where the marks are similar. There is no need to prove deception in a situation of identical marks.
C. Development of the Precedent of the Supreme Court: In the examination of a visual trademark (as opposed to a verbal one), weight is also given to the degree of similarity in the appearance of the products or their packaging, in contrast to the law that previously stated that this weight should be given only in the context of the tort of passing off. Therefore, one should not only compare the marks themselves, but also examine the shoe as a whole. However, one should not examine the “totality of the defendant’s actions” as is done in the context of the tort of passing off.
D. Development of the Precedent of the Supreme Court: Regarding dilution of reputation – goodwill can be diluted even when there is no deception, but when there is use of the mark on products of the same definition and it is found that there is no confusing similarity between the products or marks and there is differentiation between them, it seems that there is no room for the argument that the reputation of the owner of the mark will be diluted.
Key Points Discussed in the Judgment:
The Purpose of Trademark Law:
Section 1 of the Trademarks Ordinance defines, among other things, the following terms:
- “Mark” – letters, numbers, words, figures or other signs or their combination, in two or three dimensions;
- “Trademark” – a mark used, or intended to be used, by a person in relation to the goods he produces or trades in;
- “Registered Trademark” – a trademark registered in the Register of Trademarks according to the provisions of this Ordinance and is a national trademark or an international trademark registered in Israel;
The institution of trademarks was born out of the need to distinguish between the products of one trader and those of his competitor, and in order to protect in this context both the interests of the trader and those of the consumer.
The Trader: Enjoys protection for his reputation and reduces the fear that the consumer will confuse his product with that of another trader.
The Consumer: Can more easily find the specific products he wants to buy and is protected from deception as to the source of the goods.
In order to achieve these goals, the Ordinance grants in Section 46 an “exclusive right” to the owner of a registered mark to use that mark in relation to the goods for which he registered his mark, and in this sense the mark is in fact expropriated in its commercial context from the public domain and the trader is given a monopoly on its use.
Distinctive Character of a Trademark:
In order to be eligible for registration, a trademark must have a “distinctive character,” meaning that it must be ensured that the mark does indeed allow the desired differentiation between the goods of the owner of the mark and those of his competitors (Section 8 of the Ordinance).
Here are some additional points that were discussed in the judgment:
- The importance of protecting the public interest in preventing the registration of marks that are likely to deceive or confuse consumers.
- The need to balance the interests of the trademark owner with the interests of other traders and the public.
- The importance of considering the distinctiveness of a mark in the context of the relevant market.
- The role of evidence in determining whether a mark is likely to deceive or confuse consumers.
Inherent Distinctiveness:
A mark may have inherent distinctiveness from the day it is created. In most cases, these are marks that are the product of imagination and are unique, original or unexpected and are not naturally associated with the type of product they denote, to the extent that the connection between the mark and the product is arbitrary.
For example, the arbitrary use of the mark “Apple” to denote the name of a computer company.
Acquired Distinctiveness:
However, even in cases where a mark does not have inherent distinctiveness, it can acquire a secondary meaning through extensive use, so that the consumer public associates it with goods from a particular source. This is a mark with acquired distinctiveness.
For example, the marks General Motors or Office Depot are marks whose inherent distinctiveness is weak because they are descriptive marks that are not arbitrary or imaginative and the connection between them and a car manufacturer or a store selling office products is natural, but over the years these marks have acquired distinctiveness so that there is hardly a consumer in the world who will encounter them and not associate them with the specific companies.
Acquired distinctiveness is evidence of the demand and popularity of the goods and of the reputation that has been built up since its “birth” as a result of the marketing and advertising efforts devoted to it by or on behalf of the owner of the mark.
The Adidas trademark – three stripes – is today absolutely identified with the company worldwide and is a distinctive mark that identifies its shoes. Since it is possible that a person who has no prior knowledge of it will see it as a design element on a shoe (as opposed to a trademark). It seems difficult to argue that if Adidas had not chosen this mark, shoes with stripes on the sides would not have been produced. Therefore, the inherent distinctiveness of the three-stripe mark is weak.
Lack of Inherent Distinctiveness – Protection Only for the Mark Itself:
The weakness of the inherent distinctiveness of the three-stripe mark affects the scope of protection that should be given to it. On the one hand, the fact that the three-stripe mark has acquired, as described above, a particularly strong distinctive meaning, suggests to us that there is justification for maximum protection. However, the weak inherent distinctiveness of the mark justifies protection which is generally limited to the trademark itself and to derivatives that are particularly similar to it.
In other words, granting Adidas a monopoly also on two or four stripes (and of course also on any other number of stripes) is problematic because in doing so we are removing the design of the stripes from the public domain and preventing other manufacturers from using this design for their shoes.
Trademark Infringement:
Section 1 of the Ordinance defines what is an infringement of a trademark from which the owner of a registered mark is protected. The section lists a number of possible alternatives and the one relevant to our case is the first alternative: “”Infringement” – use by a person who is not entitled to do so… (1) of a registered trademark or a mark similar to it, in relation to goods for which the mark is registered or goods of the same definition;”
Section 1 does not specify the level of similarity required between the marks in order for it to be considered an infringement of the registered trademark. However, the case law has repeatedly held that the test in Section 11(9) of the Ordinance, which determines how a mark is examined for the purpose of its registration, should be applied in this case, and according to which a mark that is similar to another registered mark to the extent that it is likely to deceive is not eligible for registration. This is in view of the similar purpose of the two sections – protecting the public from deception and protecting private property and the reputation that has been acquired.
The Need to Prove Deception in Trademark Infringement in Relation to a Similar Mark:
When we are dealing with the use of a similar mark – as opposed to the use of an identical mark – the party claiming infringement must prove that the other mark is similar to its mark to the point of deceiving the public, and the examination in this context is made “in relation to people of ordinary intelligence, who exercise reasonable care.”
What is a Trademark Deceptively Similar? The Tripartite Test:
The accepted test for determining whether there is a deceptive similarity is the “tripartite test”, which includes the test of appearance and sound; the test of the type of goods and the circle of customers; and the test of the circumstances of the case.
The weight to be given to each of the sub-tests is also not uniform and it changes according to the specific circumstances of the case.
In addition to the tripartite test, the case law has applied in certain cases a general test of “common sense”, especially when it is necessary to examine whether there is a common idea message between the marks.
In the present case, the respondent’s shoes are of the same type of goods for which Adidas’ mark is registered – sports shoes, or at least goods of the same definition, i.e. of the same “trade family”.
It was held that the conclusion arising from the application of the above tests, taking into account the preliminary normative determinations regarding the scope of protection appropriate for the three-stripe mark, is that the respondent’s shoes do not raise a fear of misleading the public and therefore they do not infringe Adidas’ trademark.
The Manner of Comparison Between the Marks – Examination in Their Entirety and Examination Together with the Product:
At the stage of applying the tests, it was held that the comparison should be made between the marks in their entirety and not between specific parts of them and that the examination should focus on the existence of a deceptive similarity between the marks themselves, unlike, for example, the tort of passing off where the entire conduct of the infringer is examined.
In examining the infringement of a registered trademark “less weight should be given, or in some cases no weight at all, to the similarity in the appearance of the products or their packaging.”
In our case, it was held that it is not possible to examine the marks – Adidas’ three-stripe mark versus the four stripes appearing on the respondent’s shoes – in a way that is completely detached from the goods on which they are stamped.
First, even if the consumer is not standing with both products in his hands and comparing the marks in detail, it cannot be assumed that he disconnects the marks from the shoes themselves and examines the marks separately from the shoes.
Second, the rule that only the marks should be compared was formulated in judgments that dealt with verbal marks and not visual marks as in our case. This distinction is important because while verbal marks are easier and even more reasonable to separate from the products they denote, especially when it comes to a verbal mark that is used for advertising and marketing the product (such as the mark “Bamba” in the Pikanti case), a complete separation of a visual trademark from the product on which it is stamped, especially when it comes to a mark that can be interpreted as a decorative element as in our case, is an artificial and problematic separation. Therefore, the appropriate application of the infringement tests should be adapted to the unique circumstances of the case at hand and taking into account the circumstances of the present case, it seems to me that although we should not examine the “entire conduct of the defendant” as is done in the framework of the tort of passing off, we should examine the shoe as a whole.
This decision was given in spite of previous decisions in the field that were given in the context of applications for leave to appeal against decisions regarding interim relief (in the case where the shoe fits and in the Brill case) where this Court (Justice A. Grunis (as he was then titled)) accepted that the two marks should be compared in isolation from the shoes on which they appeared.
Despite these decisions, the Court held that in our case the marks should be examined together with the shoes on which they appear and not in isolation from them, as was done in the aforementioned interlocutory proceedings.
The Look and Sound Test:
This test is the main test among the three sub-tests. At this stage of the examination, the appearance and sound – when relevant – of the two marks should be compared, in order to examine the degree of similarity between them. The emphasis in this test is on the first impression created when comparing the marks, taking into account the fact that the average consumer’s memory is not perfect.
In our case, it was held that apart from the clear difference between the respondent’s shoes and Adidas’ shoes, which stems from the fact that the respondent’s shoes have four stripes and not three, there are other differences that are obvious in this comparison. The name “SYDNEY” appears in two prominent places on the shoe – on the back of the shoe and on the tab. The name “SYDNEY” also appears on the inner sole of the shoe and this name has no similarity – neither in design nor in sound – to the name Adidas or to any trademark registered in its name. This largely removes the fear of misleading the consumer public, as the lower court rightly found.
The Test of the Type of Goods and the Circle of Customers:
This test deals with the impact of the type of goods in question on the degree of risk of misleading consumers. As for the test of the type of goods, it was previously determined that when it comes to expensive products or services of great importance, it is reasonable to assume that consumers will tend to conduct a more thorough investigation before making the transaction and therefore the fear of misleading decreases. The circle of customers test examines two complementary issues – one, whether it is reasonable that the same circle of customers will be interested in both products; and the second, how the characteristics of the relevant circle of customers affect the likelihood of misleading.
The Test of the Type of Goods and the Circle of Customers: Large Price Difference:
For example, it was determined that even if there is a price difference between the products, but the difference is not high, this does not lead to the conclusion that each of the products has a distinct customer base that prevents the fear of deception. This is especially true since if the product that is claimed to be infringing is only slightly cheaper than the other product, then it is reasonable that the customer will prefer to pay a lower price without wondering about the reason for this price.
In our case, it was held that a comparison of the types of goods in this case shows that while in both cases we are dealing with sports shoes, they are in completely different price categories (and not a small price difference). Adidas shoes are marketed as a successful brand at medium and high prices in its stores and in selected sports stores throughout the country, while the respondent’s shoes are intended for marketing at low prices and mainly in stalls in markets.
This difference in price and marketing method significantly reduces the risk of misleading consumers, not because the Adidas consumer is a “specific consumer” but because it is not reasonable that a consumer who wants to buy a simple and cheap shoe will mistakenly think that the shoes sold to him in the market at a low price are Adidas shoes.
On the other hand, it can be assumed that a consumer who wants to buy a high-quality shoe from a reputable company and is willing to pay a price accordingly, will examine the shoe before purchase.
The Test of Other Relevant Circumstances:
This test accompanies the previous tests and is intended to take into account the specific circumstances of the case, insofar as they were not examined within the framework of the previous tests. In our case, no such additional circumstances were presented, which may be relevant.
Passing Off:
Section 1 of the Torts Law (Commercial Torts) states: “A trader shall not cause it to be mistakenly believed that a product he sells or a service he provides is the product or service of another trader or that it is connected with another trader.”
The tort of passing off has two elements, the proof of which is incumbent on the party claiming that the tort has been committed against him:
- Reputation acquired in the product or service he offers; and
- A fear of misleading the public into thinking that the product offered by the defendant belongs to the plaintiff.
This requirement of proving both elements together is what balances the property interest of the trader with other interests such as the freedom of occupation of competing manufacturers and the desire to encourage free competition and avoid creating monopolies that harm the market.
Examining Deception in Passing Off Compared to Trademark Infringement:
It should be noted that despite the similarity between the tests by which the existence of trademark infringement is determined and the tests for the tort of passing off, there is no guarantee of an identical outcome in all cases. Sometimes it may be determined that the trademark has been infringed but passing off has not been proven. For example, when a manufacturer uses a sign identical to the registered trademark, but there are other characteristics of the product that distinguish it from the products of the owner of the registered trademark.
And the opposite – sometimes the totality of the manufacturer’s actions will lead to the conclusion that he committed the tort of passing off, even though he did not infringe the registered trademark in that matter.
Passing Off: Fear of Deception:
It was held that there is no dispute about the reputation of Adidas and its trademarks in the field of sports shoes in Israel and around the world. Therefore, the first element required exists in our case and we must focus on the second element of the tort, which is the fear of deception.
In order to examine the existence of this element in relation to the tort of passing off, it is necessary to examine the totality of the defendant’s actions and behavior. This examination does not lead to a different conclusion than the one we reached regarding the lack of fear of deception regarding the trademark. This is because the respondent’s actions in this case further remove the fear of deception, including attaching a label to the shoe with the name “SYDNEY” in large letters and packaging the product in a box with that name clearly displayed on it as well. It therefore appears that in these circumstances the fear of deception does not exist.
Therefore, it has not been proven in our case that the respondent committed the tort of passing off against Adidas.
Reputation Dilution:
The doctrine of reputation dilution is relevant in a situation where:
“A strong trademark is used without the permission of its owner and without creating deception, which leads to the erosion and blurring of the unique and high-quality image that the mark has managed to convey to its consumers… Erosion of the image of a trademark among the consumer public also leads to a decrease in the commercial value of the trademark, as a result of a decrease in its inherent selling power” (Jacob and Hannah Kalderon, Commercial Imitations in Israel 189 (1996)). For the adoption of the doctrine according to this definition, see CA 6181/96 Cardi v. Bacardi & Company Limited, PD 52(3) 276 (1998)).
It emerges from this description that the doctrine of trademark dilution does not require proof of a likelihood of deceiving consumers. However, it seems to me that the cases in which it is appropriate to determine that trademark dilution has occurred even if no deception has been proven are exceptional cases in which the lack of deception resulted, for example, from the fact that the product belongs to a completely different definition.
It was held that this doctrine should not be adopted as a default rule in every case where consumer deception has not been proven – as is the case before us.
The first case in which this doctrine was applied was Eastman Photographic Materials Co. v. John Griffith Cycle Corp., 15 R.P.C. 105 (Eng. 1898) (hereinafter: Kodak Case)), where it was held that the use of the name of the photography company Kodak for a bicycle company does not mislead consumers but dilutes the company’s reputation. Thus, this doctrine is intended to protect the positive reputation and image that have attached to a well-known trademark and it provides a kind of proprietary protection for the reputation itself against attempts by unscrupulous traders to benefit from the reputation of the trademark owner by creating a false impression of a supposed receipt of a license, authorization, sponsorship, promotion, or any other connection between the reputable product and their product.
Indeed, as Adidas argued and as mentioned above, in order to establish a cause of action under the doctrine of trademark dilution, it is not necessary to prove that deception has occurred. However, this does not eliminate the requirement of proving erosion and blurring of the reputation acquired by the registered mark as a result of the use of the other mark, due to the creation of some kind of connection between the allegedly infringing product and the product of the party claiming infringement. This approach is also reflected in Section 46A(b) of the Ordinance, which exclusive use for a “well-known” trademark that is also a registered mark for goods that are not of the same definition. While the section does not require proof of deception and is satisfied with use that “may indicate a connection between the goods” only, it conditions this protection on proof that “the owner of the registered mark is likely to be harmed as a result of such use”.
On the other hand, when we are dealing with the use of a mark on goods of the same definition and to the extent that it is found that there is no deceptive similarity between the goods or the marks and there is a differentiation between them, it seems that there is no room for the argument that the reputation of the owner of the mark will be diluted.
In our case, it was held that, in light of the determination that it was not proven that the average consumer would be misled into thinking that the respondent’s shoes are manufactured by Adidas, there is no fear that the consumer will associate the quality of the respondent’s shoes with Adidas, and therefore the cause of action for dilution does not arise in our case.
Unjust Enrichment and Intellectual Property – An Additional Element
The leading case on the relationship between intellectual property law and unjust enrichment law is the A.SH.Y.R. case. In that case, there were three cases in which the respondents did not register a patent or design for the product in dispute. The District Court also rejected the respondents’ claims that there was a cause of action for the tort of passing off, and the common question that was considered on appeal was whether, in these circumstances, there was any basis for granting the respondents relief under the Unjust Enrichment Law.
The rule that can be derived from A.SH.Y.R. is: “The individual’s interest in preventing the copying of creative work that he has done and in which he has invested his time, energy, thoughts, skills and resources, is in principle worthy of protection within the framework of the law of unjust enrichment, and there is no reason to deny a priori its application to such an interest simply because it is not a ‘formalized right’ under intellectual property law.”
However, it was held in A.SH.Y.R. that the scope of application of the law of unjust enrichment depends on the extent to which the specific law in question constitutes a comprehensive scheme that precludes the intervention of external laws; that a condition for establishing a cause of action under the Unjust Enrichment Law is that the enrichment of the winner must be “not according to law”, that is, that the copying or imitation must be accompanied by an “additional element” with a negative value content; that before granting compensation under the law of unjust enrichment, it must be ensured that there is no double compensation; and that under the law of unjust enrichment, a variety of remedies can be granted, including injunctions, even though these remedies are not explicitly mentioned in the Unjust Enrichment Law.
In A.SH.Y.R., the majority of the judges held that the respondents did have a cause of action for unjust enrichment, because in that case the appellants had made a “perfect copy” of the product using “reverse engineering” and because the respondents had invested considerable effort in developing the product, which was not a simple and standard product.
The case before us is different in several respects. First, Adidas is the owner of a registered trademark and it based its claim primarily on the infringement of that mark, although it also raised additional causes of action, including passing off and unjust enrichment.
No Intellectual Property Infringement or Passing Off – Can There Be Unjust Enrichment?
The question arises whether, in a case where it was determined that the elements justifying protection for the trademark owner under intellectual property laws were not met, and it was further determined that there was no cause of action for passing off in the circumstances, the plaintiff should be allowed to raise claims of unjust enrichment as an alternative cause of action.
In previous cases, the Supreme Court held that if the plaintiff fails to prove infringement of a registered trademark and is not entitled to proprietary protection under this “formalized right”, there is no basis for granting relief under an alternative cause of action based on the Unjust Enrichment Law.
The majority of the Court (Justices Hayut and Rubinstein) held that even if we assume that the rejection of a claim of infringement of a registered trademark does not preclude an alternative cause of action for unjust enrichment, this rejection carries very significant weight for the purpose of examining the existence of the elements of the alternative cause of action, especially in light of the finding of no deception.
For the reasons set forth above, the majority (Hayut and Rubinstein) also rejected Adidas’ claims with respect to the cause of action for unjust enrichment.
Justice A. Rubinstein (majority opinion) added that in a case where intellectual property laws did not apply because there was no registration under them, it is possible to recognize a cause of action for unjust enrichment.
The A.SH.Y.R. case came to the place where intellectual property laws fell short, not because of the essence but because there was no registration, and therefore some protection was given under the laws of unjust enrichment. The law does not provide protection of “quasi-intellectual property” where intellectual property laws have been examined and found not to have been violated.
The Deputy President (Ret.) A. Rivlin (minority opinion) ruled that the consumer purchases an imitation that benefits from the manufacturer’s reputation, Adidas, at a cheap price, and the imitator (respondent 1) benefits from the manufacturer’s efforts without giving anything in return. Justice Rivlin held that this issue is not properly regulated in trademark law, and therefore there is a basis for granting relief against imitation of a registered trademark, and allowing the purchase of shoes that “are somewhat reminiscent of Adidas shoes” should not be seen as a legitimate goal.
This is a situation where the consumer is aware that the product he is purchasing is an imitation – and that is why he is interested in this product. The imitator and the consumer, both together, benefit from this situation: the imitator enjoys the advantage of selling a product similar to a well-known, popular and branded product while riding on the back of the reputation that the manufacturer has built by investing effort and resources; while the consumer enjoys an experience close to that of purchasing a well-known and popular product, without having to pay a high price for it. The harm in this case is to the manufacturer and the reputation he has created for himself.
Today, trademark law does not regulate this issue – of imitations that the consumer purchases intentionally and not out of mistake – since its protection is against joint harm to the manufacturer and the consumer, and not against harm to the manufacturer, which the consumer is a party to.
The lack of application of the cause of action for trademark infringement in relation to “blatant” imitations (i.e., products that are clearly imitations, and even the consumer is aware that they are imitations) does not reflect a policy decision that the “imitation market” is desirable from the legislator’s point of view. If this were the case, it is clear that even a perfect imitation of the trademark would be allowed – as long as it does not involve deceiving the consumer (such a situation can exist where “external” circumstances, such as packaging, price and marketing method, indicate that it is an imitation). This is, therefore, at most a deficiency in trademark law.
Justice Rivlin held that the time has come, after the ruling in the A.SH.Y.R. case, for Israeli law to provide relief against imitation, at least in the case of imitation of a registered trademark, the sole purpose of which is to benefit from the reputation of another – when the latter has even taken care to duly register the trademark that bears the reputation.
Justice Rivlin (minority opinion) ruled that there is no impediment, from the point of view of intellectual property law, to recognizing a cause of action for unjust enrichment in relation to the imitation of a registered trademark, in which there is no “deceptive similarity” because the consumer is aware that it is an imitation.
Therefore, Justice Rivlin (minority opinion) held that the appellant has a cause of action for unjust enrichment.
Relief of Injunction in the Framework of Unjust Enrichment
The Court has the authority to grant an injunction in the framework of a cause of action for unjust enrichment. In the case before us, Justice Rivlin proposed making a specific change to the shoes – adding a fifth stripe. Making such a change would dissipate the similarity between the mark on the shoe and the appellant’s trademark.
