By Eran Soroker
In its Judgment of October 29, 2009, the District Court in Jerusalem ruled that plaintiff’s hotel name AMERICAN COLONY is a well known trademark in Israel. The court concluded that the plaintiff proved that its unregistered mark had gained the status of a well known mark by fulfilling the obligatory requirement of proving its recognition is attributed to plaintiff’s marketing efforts.
The plaintiff had filed a claim for a permanent injunction against the defendant who intended to name its new hotel “Jerusalem Colony”. The defendant also filed trademark applications for this mark with the Israeli Trademark Office.
The District Court held that plaintiff’s mark is protected under provision 46a(a) of the Trade Marks Ordinance (New Version) – 1972 (“TMO”), as it had acquired the status of a well known mark, and granted a permanent injunction, preventing the defendant to name its hotel “Jerusalem Colony” or any other name that is similar to plaintiff’s mark.
The District court based its decision on numerous newspaper articles, magazines and WebPages the plaintiff had presented, demonstrating the goodwill of the AMERICAN COLONY hotel throughout the world and on the testimony of the plaintiff’s accountant regarding the plaintiff’s budget allocated for its publicity. The District Court stated that this was sufficient proof that plaintiff’s name is well known as a result of efforts it had applied to market and brand its mark, keeping it prestigious and unique.
This judgment has changed the way the court refers to the requirements in article 1 of the TMO, determining if a mark achieved the status of a well known trademark.
Article 1 of the TMO determines two inconclusive requirements to establish a well known trademark:
1) How known is the mark among the relevant customers;
2) The extent to which its recognition is attributed to marketing efforts.
The court asserted that it is obligatory to prove that actions were taken in order to implant the recognition of the mark among the public. A recognition that is not a result of such efforts is not sufficient.
Prior to this ruling, it was customary to refer to the requirement to prove market
ing effort as inconclusive per se. it was not treated as an essential element to prove that a
trademark had gained the status of a well known trademark.
It seems that as a result of this judgment, proof of marketing efforts has become a
fundamental requirement to substantiate an argument that the trademark in question is a well known trademark.
The article was published on INTA Bulletin vol.65 no.6 on March 15, 2010. Photo by Magister (June 2005)