Israel: Ansell v. Super Pharm—Trademark Infringement

(1) The defendants started its members club under the registered trademark LifeStyle more than 8 years ago. The Claimant knew of the members club and was aware of the marketing activity carried out under the LifeStyle mark. Yet, in all those years, the claimant never raised any arguments against defendant’s said use. Said inaction on the part of the claimant gave rise to a representation towards the defendant, that the claimant did not object to defendant’s use of the "Lifestyle" mark. On the basis of such representation, the defendant invested great resources in creating and furthering its members’ club. Raising such arguments now constitutes bad faith and, for reasons of justice, the claimant is prevented from raising them now, after the lapse of such a lengthy period of time since it first became aware of use of the mark.

(2) As far as the condoms sold under the "Life" mark are concerned—here, too, the claimant knew that all of the defendant's private label products are sold under such mark. The claimant was even aware of the defendant's intentions to expand its line of private label products, to include condoms, and even negotiated with the defendant to become a manufacturer of condoms under such private label. The claimant never raised any claim against defendant’s use of the "Life" mark on condoms distributed by it, until a year after defendant commenced distributing such condoms. For this reason, the claimant is now prevented from raising such argument now.

(3) The reasons set out in sections (1)–(2) alone are sufficient to reject the claim. Nevertheless, the court chose to discuss the various causes of action raised by the claimant.

(4) As far as trademark infringement is concerned with respect to the "Life" trademark—it was held that although the claimant's "Life Styles" trademark, encompasses the defendant's "Life" mark, there is a phonetic difference between the marks. It was also held that there is a significant visual difference between the marks, with the "Life" trademark having a prominent and unique presence, thus making it easy for the consumer to immediately discern the differences between the marks. In addition, the "Life" brands are well-known and recognised by consumers. Accordingly, it was held that there is no likelihood that a consumer, when noticing the two products on a shelf, will be confused to believe that the two products originate from the same source, namely, the claimant.

(5) It was also held that the tort of passing-off was not established, since the claimant was unable to prove any goodwill in Israel, and as it had already been held that no likelihood of confusion exists.

(6) The defendant established its goodwill on its own without needing to exploit the advantages inherent in the claimant's commercial name, which advantages the court was not convinced had gained equal recognition among the Israeli consumer public. No evidence was furnished to show any use or exploitation by the defendant of the claimant's goodwill. Thus, the tort of dilution was also denied.

(7) As far as infringement of the well-known "Life Styles" trademark is concerned, it was held that the defendant's "LifeStyle" mark is a well-know mark and appears to have acquired greater recognition in Israel than the claimant's "Life Styles" mark. Thus, the court rejected the claimant’s arguments of infringement of a well known trademark as well as passing-off, in respect of the "LifeStyle" trademark.

(8) The claimant failed to establish that the defendant had been enriched at its expense and, thus, the cause of action of unlawful enrichment was also denied.

Avi Ordo, Adv.
S. Horowitz & Co.
Tel-Aviv, Israel