On June 1st, 2011, the Central District Court (Judge Varda Meroz) held Anderson Medical was infringing Unipharm’s MEMORIT registered trademark (Civil Complaint 20397-09-09). Unipharm, a private company, which has been in the marketing and distribution of generic drugs, the owner of the MEMORIT trademark for pharmaceutical products has been marketing a drug for the treatment of Alzheimer disease for past 11 years. Anderson Medical manufactures and distributes natural supplements for the treatment of various ailments. In 2009 Anderson filed an application to register the trademark MEMORIX and started distributing a food supplement under the MEMORIX mark for treatment of Alzheimer’s disease.
In its web site Anderson noted several “parallel” chemical drugs including the MEMORIT. Anderson removed MEMORIT as a parallel drug after Unipharm sent Anderson a cease and desist letter. Anderson refused to discontinue its use of the mark MEMORIX. Unipharm argued that Anderson was infringing its MEMORIT trademark and performing other torts. Anderson admitted it knew of MEMORIT and the plaintiff but that it devised the mark MEMORIX from the word memory.
The MEMORIT trademark:
The MEMORIX product:
The MEMORIT product:
The court analyzing section 46 of the Trademark Ordinance restated that to prove trademark infringement the plaintiff must show the similarity between the registered trademark and the allegedly infringing mark, which is likely to mislead the public. The confusing similarity is judged through the eyes of people having ordinary logic who are reasonably diligent. The Court went on to reconsider the three tests – the visual and auditory test, the relevant goods and customers test and the other circumstances test – used to assist the court in determining if confusing similarity exists. Misleading of the public, the court said, is judged through the use of a reasonable apprehension that the behavior of the defendant would cause and ordinary customer to be mislead to think that the goods offered by the defendant are these of the plaintiff.
The court concluded that the marks MEMORIT and MEMORIX look similar and have similar sound. The defendant’s argument that he was entitled to use the generic mark MEMORY was denied since he registered and was using the mark MEMORIX and because a mark is to be reviewed as a whole and not divided into elements. In addition, the fact that the defendant was once employed by the plaintiff and has in the past sold on behalf of the plaintiff the MEMORIT drug was found to be an indication of his bad faith in selecting the MEMORIX mark. Moreover, since the MEMORIT drug was designed to assist patient suffering from Alzheimer’s disease, the risk of confusion was even greater. The defendant’s argument that a food supplement should not be considered close to a drug when reviewing the relevant goods test was rejected because, the court said, both products were sold in pharmacies and would be considered a replacement to each other. The fact that MEMORIX is a food supplement product, which would not require a prescription and is sold over the counter, meant that consumers may be confused to think that this is the MEMORIT drug.
The court also found that the plaintiff proved the elements of passing off. The court issued a permanent injunction against the defendants to refrain from making any infringing use of the MEMORIT trademark, including the mark MEMORIX and awarded the plaintiff NIS200,000 in damages, attorneys fees and expenses.