Case Number

CA 11487/03

Date Decided

3-23-2008

Decision Type

Appellate

Document Type

Full Opinion

Abstract

Facts: The appellants filed suit against the respondents for violation of a registered trademark and unjust enrichment. The appellants argued that the marketing by the respondents of a candy with a similar shape to the Tofifee candy that the appellants manufacture and market constitutes a violation of the appellants' trademark. The District Court dismissed the appellants' claim that their commercial trademark is a three-dimensional mark comprised of the shape of the Tofifee candy and determined instead that the appellants' mark is a two-dimensional mark that does not protect the shape of the Tofifee candy, but rather only the graphic shape as presented in the Trademark Registry's abstract. It was further held that even if the Trademark Ordinance [New Version] 5732-1972 enables the registration of three-dimensional trademarks, the shape of the product itself cannot be registered as a trademark. The District Court held that the marketing of a candy similar in shape to the shape of the candy that appears under the appellants' trademark does not constitute a violation of the trademark. The District Court also compared the packaging of the respondents' and appellants' candy and concluded that the packaging of the respondents' candy does not create a risk of misrepresentation and does not violate the appellants' mark. The appellants appealed the District Court's decision.

Held: The Court held that the three-dimensional shape of a product is not eligible for registration based on its possession of an inherently distinctive character. However, it is eligible for registration on the basis of its possession of an acquired distinctive character. The Court further held that to the extent that the shape of the product fulfills a functional or aesthetic role (beyond a negligible role), the trademark will not be eligible for registration even if it acquired a distinctive character in fact. The judgment of the District Court was overturned, such that the proceeding was remanded to the lower Court for determination of the validity of the appellants' mark according to the rules set out in the judgment. As to attorneys' fees for the appeal, it was held that they be ordered based on the outcome in the District Court.

Keywords

Trademarks -- Eligibility for registration

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