Attorney Gil Nadel, Gilad Paz
Many business owners import products to Israel for the purpose of selling them in Israel- products such as shoes, watches, jewelry, sports products, toys and more.
Often, a shipment of fake products arrives in Israel, that is, products that bear a trademark without the permission of the trademark's owner.
In this type of situation, the Customs Authority confiscates the shipment and encourages the trademark owner to submit a lawsuit against the importer who committed the violation.
In such cases, when there is no question regarding the products' lack of authenticity, the importers will often use the bona fide claim in their defense, claiming that the violating products had been imported without his knowledge of their true nature, or in other words, that this was a mistake committed by the overseas supplier. This claim is made so that the court will not charge them with compensation fees.
Recently, two verdicts had been given on this subject. In one case, the bona fide claim was accepted, but in the other case it was deferred and the importer was charged with paying compensation.
The case of the "Roncato" suitcase importation:
The Idan H. Pirsumit company had served as the exclusive importer of Roncato suitcases to Israel for many years and had even marketed these suitcases to various retail chains and airlines such as El Al.
At a certain point, following the introduction of another Israeli importer to the market, some difficulties arose in the relations between the importer and the suitcase manufacturer, when the suitcase manufacturer ceased to sell the suitcases directly to the importer, and the importer was left with an accumulation of orders from customers (including El Al), which they could not supply.
In order to solve this situation, the importer turned to an agent for assistance in purchasing original suitcases from other suppliers around the world. The agent located a Chinese supplier who promised to supply the importer with a container of original suitcases.
When the suitcases arrived in Israel it became apparent that the suitcases were fakes, and the shipment was seized by Customs and destroyed.
The suitcase manufacturer wanted to charge the importer with compensation fees for plagiarism and the importer claimed that he had been swindled and must therefore not be charged with compensation fees of any kind.
After weighing the evidence, the court was sufficiently convinced that the importer had ordered original suitcases and not fakes. The court reached this conclusion in light of the fact that the importer had been the exclusive importer of this suitcase manufacturer in the past, and since El Al, one of the importer's customers, had demanded original suitcases.
Thus the court accepted the importer's bona fide claim and deferred the demand for compensation, without charging expenses.
[Civil suit (District Court of Tel Aviv) 1856/08 Valigeria Roncato S.P.A. vs. Idan H Prisumit et al, Judge Yehuda Fergo, verdict of November 13, 2012. Party representatives: on behalf of the suitcase manufacturer- Attorney Saar Gershoni; on behalf of the importer- Attorney Ahikam Greidi].
The case of the "Nike" bracelet importation:
An importer by the name of Eli Avital had attempted to import a package of 300 bracelets from Turkey in his personal luggage. The bracelets bore the well-known "swish" logo of Nike as well as the Nike logotype, both of which are protected as trademarks.
The importer claimed in court that he had placed an order with well-known sellers in Turkey for bracelets with the word "Love" written on them, but had received bracelets with the word "Nike" on them instead, and since he had received the bracelets in a sealed black bag, which he placed in his suitcase, he discovered this mistake only when the shipment had been seized in Customs.
After the shipment had been confiscated in Customs and destroyed, Nike had tried to reach a settlement, suggesting that the importer compensate them for only NIS 5,000 but the importer refused to do so.
In light of this, the lawsuit was submitted against the importer at a sum of NIS 75,000, with claims of passing off and trademark violations, all this in light of the fact that by law it is possible to demand up to NIS 100,000 without proof of damage.
The court noted that its basic assumption is that the imported bracelets are fakes, and this is due to the lack of any reservations regarding this point on the part of the importer.
Despite the fact that the law allows for demanding up to NIS 100,000, and despite the fact that Nike demanded a sum of NIS 75,000, the court chose to charge the importer with a relatively lower sum of NIS 10,000 in and another NIS 15,000 for legal expenses, as well as issuing an order which prevents the importer from importing products in violation of the Nike trademark in the future.
The importer chose not to present comprehensive proof that the importation of the forged products had occurred without his knowledge, and found it sufficient to make the claim without proving it.
The court took it into account that this was a small shipment of little value. Therefore, it did not justify charging the importer with a high compensation fee as demanded at first.
[Civil suit (Haifa District Court) 30720-11-10 NIKE International Ltd. et al vs. Eli Avital et al, verdict of November 11, 2012, Judge Rivka Lemelstreich-Letter. Party representatives: on behalf of Nike- Attorney Nof-Sabag; on behalf of Avital- Attorney Cohen]
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