Attorney Gil Nadel, Gilad Paz
The Central District Court rejected the lawsuit submitted by the home design center located in Bnei Brak called the "Dan Design Center", against their competitor in Rishon Le'Zion, the "One Design Center".
"Dan Design Center" claimed that despite having not registered as a trademark, the fact that they have been operating for many years under this name, and the clients have come to associate this name with them, they are entitled to protection as a "well-known trademark".
The court rejected this claim and in so doing permitted the competing center to continue operating under the name they had chosen.
The case and the claims made by the parties:
The owners of the "Dan Design Center" in Bnei Brak claimed to have built a strong reputation during the many years they have been operating under the name "Design Center", investing no less than 55 million NIS in advertising, branding and marketing.
According to them, by choosing to use the incorporate the words "Design Center" into their name, the competing center have misled the public and they are in fact taking advantage of the reputation that the plaintiffs worked hard to establish.
Although the plaintiffs did not register the words "Design Center" as a trademark, but they claim that their widespread use of this expression has turned it into a "well-known trademark" which is entitled to protection, under certain circumstances, even if it is not registered.
The defendants, the operators of the center in Rishon Le'Zion, claim that the words "Design Center" cannot be expropriated to the public, since these are common words that do not designate a certain business.
The court ruling:
The court referred back to the well-known rule regarding trademarks, which states that the essence of the trademark requesting protection must first be assessed, according to its classification in one of four groups: generic names, descriptive names, implied names and imaginative names. While imaginative names are afforded the highest protection, generic and descriptive names receive the least amount of protection, which would be granted only in exceptional cases, where despite its generic/descriptive nature the trademark has acquired such a distinguishing characterization to the extent that the public associates the trademark with that business.
The court determined that the expression "Design Center" is somewhere between a generic name and a descriptive name, so in any case this type of name is entitled to protection only in exceptional cases.
In this case the plaintiffs attempted to prove their strong reputation which they had acquired over many years under the name "Design Center" by means of a survey conducted by Dr. Mina Tzemah. But the court decided this survey does not prove the reputation, since only a third of the general public associated the plaintiffs with the expression "Design Center", and furthermore the survey had other faults, such as the fact that the survey coincided with an intense media campaign which the plaintiff conducted so as to further establish their reputation.
In addition, the defendants were able to prove that the plaintiff goes by the name of Dan Design Center, whereas they go by the name of One Design Center, which further serves to differentiate the two trademarks. In addition, it was proven that the plaintiffs were not consistent in the use of this trademark, since they use make use of different colors and sizes, which weakens their claim that the public associates the trademark specifically with the plaintiffs.
In addition, the court determined that there is a difference in the manner each center operates. While the plaintiffs' cener in Bnei Brak sells products that are primarily for home design, the defendants' center in Rishon Le'Zion also provides designer and architectural services for home design, and thus sets itself apart from the plaintiffs' center. Likewise, the court determined that the geographical distance between the two centers is vast, despite the fact that they are both located in central Israel, and this distance reduces the possibility for consumers to confuse them.
Finally, the court ruled that the expression "Design Center" is not entitled to protection as a trademark and the plaintiffs had not proven that they possess a well-known trademark. Therefore, the lawsuit was rejected and the plaintiffs were charged with a professional services fee of NIS 50,000.
[Civil suit (Central District Court) 31706-01-12 Dan Design Center Ltd. and others vs. B.R.A.P. Project Development Ltd. and others, Judge Ilan S. Shilo, verdict of June 19, 2012. Party representatives: on behalf of Dan Design Center- Attorney Ofer Shapira. On behalf of B.R.A.P.- Attorneys Dr. Yoav Astreicher, Tzipi Weiss and Or Bruk].
Notes:
In this case, the plaintiffs attempted to overcome their absence of formal registry as a trademark, by claiming that the expression "Design Center" is a well-known trademark that is associated with them.
The doctrine of a "well-known trademark" was primarily intended for well-known international trademarks to protect their trademarks in other countries despite not being registered.
In cases where the court recognizes the trademark as being "well-known", the plaintiff is afforded protection against misleading use, despite the absence of registry.
Thus, since this sort of circumstance blocks competition and harms the defendant's business, the court insists on recognizing any given trademark as "well-known" only in exceptional cases that have been proven convincingly.
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