Mobileye has reputation in the AWACS mark used by its previous distributor

The Jerusalem District Court was motioned on March 28th, 2011 by Mobileye Technologies Ltd. to enjoin L.D. Israel Auto Equipment Investment and two others from using or presenting the mark AWACS on the following day (March 29th, 2011) in a conference held in the Tel Aviv area.

Mobileye developed a system designed to prevent traffic accidents. The parties had a distribution agreement which was terminated in January 2011. L.D. contracted Safe Drive Systems to import her products into Israel and was about to launch one of these products in the conference under the mark “RD140 Radar AWACS”. Mobileye sought injunctive relief arguing that in the agreements between the parties L.D. undertook to market Mobileye under Mobileye marks, but instead used the mark AWACS and therefore Mobileye products in Israel are known under the AWACS mark and the reputation in this mark belongs to Mobileye. L.D. argued that the mark AWACS belongs to her because it was agreed between the parties that: L.D. will market Mobileye products under the AWACS mark, it registered a trademark over the AWACS mark, it set up a company named AWACS and an Internet web site <>. L.D. also argued the new product will not use the name AWACS although the AWACS mark belongs to L.D..

The Court decided to issue an injunction stating that L.D. did market Mobileye products and that during the first two years the products were marketed by agreement of the parties under the AWACS mark. There is therefore no doubt, the court said, that the AWACS mark is identified with the products of Mobileye. Moreover, the evidence showed that L.D. took the AWACS mark off the invitation to the conference. This fact served against L.D.

The court also held that the balance of convenience weighed against L.D. and in favor of Mobileye in view of the fact that continued use of the marketing of Drive Safe Products under the AWACS mark would cause injury to Mobileye, but would cause injury to L.D.

Finally, the court held that Mobileye unreasonably delayed the filing of the motion because it knew that L.D. continued to use the AWACS mark after the termination of the distribution agreement and was aware that L.D. distributed an invitation to the conference on which the AWACS mark appeared. The court held laches did apply in this case but to avoid a likelihood of confusion as to the product issued the injunction.

It is notable that L.D. still owns the AWACS registered trademark and that Mobileye does not appear to making use of the AWACS trademark herself. These facts were not dealt with in the decision of the court.