Gill Nadel, Adv, Kedar Hileli
The District Court of Tel Aviv issued a temporary writ forbidding Shufersal to market imitation Crocs shoes (בש"א 12803/07, for Crocs- Zeluf, Adv et al, for Shufersal- Riter, Adv et al)
The case began on 12.6.07, when Shufersal published an advertisement regarding the marketing of shoes, which according to the Crocs companies constitutes an imitation of the Beach model shoes, which are manufactured and marketed in Israel by Crocs. After Crocs' request that Shufersal stop marketing the shoes was not answered, Crocs filed suit against Shufersal, in which Crocs requested that the court issue a permanent preventative writ forbidding Shufersal, inter alia, to market products that infringe on the designs of Crocs, products similar enough to its products that they might deceive the public, and any other product that infringes on its rights.
Similarly, Crocs requested a temporary writ forbidding the marketing of the shoes until a final decision is given by court on the matter.
The court recently gave an intermediate decision regarding the temporary assistance, in which it accepted the stance of Crocs and issued the requested writ, while discussing the question of similarity in external design of the Shufersal shoes versus the Crocs shoes.
On one hand, the court reached a decision (seemingly, as this is an intermediate proceeding), that the Shufersal shoes do not constitute an infringement on the designs that Crocs registered regarding the external form of the shoe. The court ruled that given the simplicity of the protected form of the shoe and the simplicity of the design of the openings in a shoe and their form, it seemed at first glance that the Shufersal shoes did not constitute an imitation of Croc's above designs.
On the other hand, the court ruled that Shufersal seemingly committed the tort of fraud, since Crocs shoes in the Beach design gained a reputation in Israel and there is a chance that the consumers will err and think that the shoes marketed by Shufersal are those of Crocs or associated with it.
The court did not accept Shufersal's argument that in the advertising and marketing of the Crocs shoes, Crocs company relies on the material from which the shoe is made, not the form or the design, and therefore they should not be forbidden to use the design of the shoe and the strap. On the contrary, the court noted that despite the functional need for designing openings on the shoe, it isn't necessary that the shape of the openings be the same as that of Crocs and therefore, the fact that Shufersal chose to use a design similar to that of Crocs shoes can be used to derive that Shufersal wished to rely on Crocs' reputation.
We will note that Shufersal filed a request for appeal with the Supreme Court on the above decision (רע"א 6375/07)
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