Adv. Gill Nadel, Keydar Halali
Lately a verdict on an appeal was given by the Supreme Court on a case that dealt with intellectual property (trade marks, passing off) between two newspapers distributers in Russian .
The facts of the case:
Mr Boris Gail started in 1996 to use the trade mark “Mig” together with a picture of a watch for a weekly magazine in Russian, among others.
In spite of this, Mr. Gail filed a request to register the name “Mig” as his trade mark only during June 2000.
Another journalist company named “Migdor” started on 2000 to publish a weekly magazine with the same name on it- “Mig”.
In the district court it was ruled that “Migdor” violated the trade mark of Mr. Gail, but in spite of this a permanent injunction was not issued and compensation for the violation were not issued.
Nevertheless, the District Court forced Migdor to pay 300,000 NIS to Mr. Gail on the count of passing off.
Both sides appealed against the verdict and recently the Supreme Court gave its own verdict.
The claims of the parties in the appeal:
Mr. Gail claimed that in light of finding Migdor’s accountable on the matter of violating a newspapers trade mark a permanent injunction should be given in order to ban it from using this trade mark. Mr. Gail further claimed he is entitled of compensations for violating his trade mark.
Opposing this, Migdor claimed that there is no risk of misleading because the newspapers it publishes were non advertising weekly magazines whereas Mr. Gail’s newspapers were commercial pamphlets, thus the two bare no resemblance to each other. Migdor further claimed that the trade marks were not identical and at best merely similar, so that a deeper examination on the misleading component is needed.
The court’s verdict on the appeal:
The court went along with the District court’s ruling and ruled that Migdor did indeed violated the trade mark of Mr. Gail, one of the reasons being that both products were from the same field – the newspaper and pamphlet for Russian speakers.
In light of this, it was ruled that there was no doubt to whether or not the two sides operate under the same “commercial family”, and this in turn risks that the consumer might mistakenly think the two products are connected.
Yet the court did note that items such as “newspapers, newsletters and monthly magazines” were removed from the merchandises mentioned in Mr. Gail's trademark, and therefore a permanent injunction was not in place, and Migdor can in fact continue to use the name. Further more, the court ruled that Mr. Gail did not prove loses or damages that were caused to him as a result of violating the trade mark, and therefore compensation for violation are not in need.
In spite of the above, the court ruled that Mr. Gail proved his claims on the matter of passing-off. And since the law requires compensation even in cases were damages are not proven , the court embraced the district court’s decision to oblige Migdor with a compensation of 50,000 NIS for each newsletter it published ( all in all 6); in other words 300,00 NIS. The court refrained from obliging either side with the appeal’s expenses.
(C.A. (Civil appeal) 45/08 Migdor Inc. and et al. Vs. Boris Gail et al. verdict handed on 29.12.10, Judges: Rivlin, Jubran and Hendel. the parties representatives - Mr Gail- adv. Y. Weinrott, adv. A. Weinrott, adv. S. Shif and adv. For Migdor- adv. A. Friedman).
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