In a ruling recently issued by the Supreme Court of Israel, the court stated the differences in the application of the “triple test” in a lawsuit under trademark law and a lawsuit based on the tort of passing off established in Section 1 of the Commercial Torts Law of 1999.
The ruling dealt with an appeal against a request for a temporary injunction order requested by an importer of a product for cleaning vehicle fuel systems, bearing the registered trademark “Gold Label” against a company marketing a similar product bearing the name “Gold 55“. In addition, the appellant claimed that not only is there a competing product in the name to mislead the consumer public, but also that the product’s container was replaced over the years with a new container that is deceptively similar to the appellant’s container.
The court reviewed the two main causes of action that are part of intellectual property law and got down to the depth of them, while explaining the essence of each cause of action on the one hand and standing for the differences in the basics of each of them that need to be proven.
Trade Mark
A trademark is supposed to create an affinity between the goods bearing the trademark and their origin, in such a way that a distinction is made between the product of one dealer and the products of other dealers, while this makes it easier for consumers to locate and purchase the goods they are interested in. This distinction actually serves two purposes: on the one hand, protection is provided to the dealer against damage to his property and the reputation his products have accumulated, and on the other hand, the public is prevented from being misled by unauthorized use of the trademark.
In order to examine whether there is a violation of a registered trademark, it is necessary to examine whether there is a deceptive similarity between the registered mark and the allegedly infringing mark. The existence of this deceptive similarity is tested according to the “triple test”:
A. the sight and sound test;
B. the type of goods and customers test ;
C. examination of the other circumstances of the matter.
When applying the threefold test in examining the infringement of a registered trademark, the registered mark in its entirety is compared to the allegedly infringing mark in its entirety and it is checked whether the set of characteristics of the marks amounts to a deceptive similarity. The intention is that you should not examine only part of the mark (such as the type of font or the color of the letters), but rather the entire mark in all its parts.
Passing off
The purpose of a lawsuit for the tort of passing off is to prevent various dealers from causing the products they sell or a service they provide to be mistakenly considered by the consumer as the products or services of another dealer. In order to prove the existence of this wrongdoing, it must be shown that two elements are met: the plaintiff has a reputation for the product or service; And that there is a reasonable fear of misleading the public into thinking that the defendant’s product or service is the plaintiff’s.
Here too, the examination of the reasonable fear of deception is done in light of the “triple test”. However, as the court clarified and explained in the ruling, while when trademark infringement is examined, the examination focuses on comparing the trademarks alone, in examining the tort of passing off , the examination is whether the entirety of the defendant’s conduct and activity rises to create a fear of deception.
Therefore, as a principle, the protection given to a product or service following a claim for the tort of passing off is more limited than the protection given by virtue of a claim for infringement of a registered trademark and/or other laws. However, “the determination that the object of the examination is the totality of the defendant’s representations may in some cases lead to the expansion of the protection. This will be the case where a comparison between the components of the products or services will show a certain similarity between each component and a component which, on its own, does not raise a fear of deception, but the combination of all the components Together, it accumulates into a “critical mass” that creates a reasonable fear of deception.
In the ruling, the court applied the triple test both to the ground of trademark infringement and to the tort of passing off and found that as far as the infringement of the applicant’s trademark is concerned, “a comparison of the mark ‘Gold 55’ with the mark ‘Gold Label’ clearly shows that there is no similarity between them that is misleading”. The court also determined that the use of the word Gold as part of a trademark that is not related to goods made of the precious metal, is in fact the use of a descriptive name that is supposed to testify to the nature of the product. Descriptive names are names whose scope of protection they receive under trademark law is extremely limited. Therefore, the court ruled that when the two marks are compared in their entirety to each other, they come to the conclusion that there was no infringement of the applicant’s trademark.
In fact, the court ruled that it is not enough to include a certain word existing in the applicant’s registered trademark in the commercial name of the product marketed by the respondent, especially when comparing the two marks as a whole clearly show that the marks are different and “the color of the letters and their shape are not the same”.
Thus, we see that the application of one test to different legal systems can lead to different results. Hence the importance of knowing the law thoroughly when a person comes to claim his rights in court. An intellectual property claim that is not based on the application of the facts to the various laws, may in some cases end in the dismissal of the claim, and this despite the fact that if the facts had been applied to another legal system, the plaintiff would have had his day in court.