A global fashion company with a registered trademark consisting of a figure of a polo player riding a horse, contended that goods of a competing company are to be destroyed because it imported, marketed and distributed in Israel goods bearing a mark with similar characteristics.
The Court dismissed the claim and held that although both marks include the figure of a polo player riding a horse and waving a bat there is no apprehension of misleading consumers. The main test for examining consumers' misleading is a test best known as the "triple test": the test of appearance and sound; the test of the type of goods and the circle of customers; and the test of other circumstances, under which a comparison is made between the various marks. Here, although there is an overlap in terms of the type of goods and the circle of consumer base that raises an alleged apprehension of misleading, this apprehension has been refuted. Although there are conceptual similarities in several components such as: the rider figure, the galloping horse figure and the inscription POLO CLUB, in terms of appearance the marks are not at all similar and they differ significantly from each other in significant aspects both in terms of the horse galloping direction, the content of the inscription itself and more. A figure of a polo player riding a horse and waving a polo racket is not the private property of anyone and shall not be granted protection and exclusivity to any business in the fashion market, just the same as a figure of a football or basketball player or skier should not be given exclusivity.
Published in Afik News 319 07.10.2020