12-34-56-78 Chekhov v. State of Israel, IsrSC 51 (2)(b) Trademark No. 80649 - "TOYOTA" Class 12 including cars, parts and accessories for vehicles manufactured in their manufacture ("Class 12");
(c) Trademark No. 169664 - "Toyota", Class 12;
(d) Trademark No. 169665 - "Toyota" in Type 37;
(e) Trademark No. 80636 - Toyota logo, type 12;
(f) Trademark No. - 163654 of the Toyota logo, type 37.
(The aforementioned trademarks, togetherwith the "Trademarks").
- The plaintiff's activities around the world are carried out through regional sub-headquarters, which are operated by its subsidiaries. Toyota Motor Europe in a Tax Appeal is a wholly-owned subsidiary of the Plaintiff that operates, inter alia, throughout Europe as well as in the State of Israel ("Toyota Europe").
- Union Motors is the official importer of Toyota vehicles in Israel ("Union Motors"). Union Motors provides repair and maintenance services for Toyota vehicles through authorized dealerships located throughout the country and operate in accordance with professional guidelines and standards required by Toyota. These authorized agencies enter into authorization agreements with Union Motors for the provision of services for the sale of the plaintiff's vehicles, the provision of service and maintenance for these vehicles, and the sale of spare parts, accessories and other transportation products. These authorized dealerships are called "Toyota Authorized Dealerships."
- The defendant is a company that was established in 2016 and is engaged, inter alia, in the marketing of vehicles and original spare parts made by Toyota, and also owns a garage licensed by the Ministry of Transportation where repair services and routine maintenance of Toyota vehicles are provided. The defendant even served on the relevant dates of the claim as an authorized garage on behalf of Global Automax in a tax appeal, which is a parallel importer.
- The defendant presents itself in its publications as 'Toyota Rehovot - Authorized Service Center Parallel Importer' and also as 'Toyota Rehovot - Parallel Importer'. The defendant also operates a website whose domain name is "Toyota-rr.co.il". The defendant made use of these names and descriptions on signs in and around the business, in various advertisements and advertising spaces, on its website, and more.
- On March 5, 2017, Union Motors sent a warning letter to the defendant regarding an allegation of a false representation by the defendant that the garage operated by it is an authorized agency on behalf of Toyota, as well as a warning of infringing of its rights under trademark law. Counsel for the defendant rejected these arguments in his response. Subsequently, a warning letter was sent to defendant 1 on behalf of the plaintiff herself.
- Copied from NevoThe defendant filed an application to cancel the plaintiff's trademark, but this petition was heard and rejected in the decision of the Registrar of Patents, Designs and Trademarks dated April 16, 2016 ((Registrar of Patents Jerusalem) 169665/ Rehovot Vehicle in Tax Appeal v. TOYOTA JIDOSHA KABUSHIKI KAISHA (also trading as TOYOTA MOTOR CORPORATION) (Nevo, April 16, 2020) ("Registrar of Patents Decision").
- Hence the lawsuit before me.
III. The parties' arguments
C1. The plaintiff's arguments
- The plaintiff's reputation in its trademarks - the plaintiff is the sole owner of the rights in its various trademarks, both by virtue of the enormous volumes of marketing and advertising and by virtue of registered trademarks in Israel and around the world. The plaintiff has acquired a great reputation in all aspects of its activity and is considered a global leader in the automotive field thanks to the quality of its products and services and the scope of investments in marketing and advertising. The "Toyota" brand has been ranked for many years at the top of the list of high-value brands in the world and is considered a leading car brand that enjoys great commercial success, especially in Israel. Therefore, the plaintiff's trademarks - both its name in English and Hebrew and its logo - are considered a "well-known trademark" that is entitled to broad protection.
The defendants' attempt to attack the plaintiff's service marks in type 37 was rejected by the decision of the Registrar of Patents. The defendants did not appeal this decision and it is final and within the scope of the act of the court. In this decision, it was determined, inter alia, that the plaintiff makes use of the marks in question herself and through licensees on its behalf, and that her trademarks, the name and the logo, are well-known trademarks. In any event, even if the trademarks were not registered, the defendants were not entitled to make use of them in light of the broad protection available to the plaintiff regarding them, as they are well-known trademarks.