In the present case, the defendants do not meet the tests set forth in this regard Other Municipality Applications 3559/02 Toto Gold Subscribers Club in a Tax Appeal v. Sports Betting Regulation Council, IsrSC 59(1) 873 ("the Toto Gold case") in accordance with the "principle of fairness", according to which the prohibition on the use of a registered trademark is intended to prevent deception and ensure fair trade. In this judgment, three auxiliary tests were established for determining the question of whether a 'true use' protection has arisen: the first is the identification test, i.e., whether the product is easily identifiable without the use of the trademark. Second, the use of the trademark is to the extent that it does not exceed what is required for a reasonable and fair description of the product or service offered to consumers. Third, the use of the trademark does not indicate sponsorship or registration that the trademark owner has given to its user.
In this context, the plaintiff also referred to the judgment given in Civil Appeal 7629/12 Suissa v. Tommy Hilfiger (Nevo 16 November 2014) ("the Tommy Hilfiger case"), in which it was held that even when a trademark owner lawfully makes use of a trademark for the purpose of marketing, which is not limited to the sale of goods only, this use is subject to the tests set out in the Toto Gold case. It was further determined in this regard that with regard to the sale of vehicles, the marketer is required to emphasize prominently that it does not operate under the auspices of the vehicle manufacturer that owns the trademark.
In addition to the reference to these rulings, the plaintiff argued that in other cases, the courts rejected the claims of garage owners who did not operate under the auspices of the trademark owner but made use of the trademark, and obligated these garage owners to refrain from using the name of the owner and trademark, and alternatively, given the use of the trademark, they required a clarification that the garage is not included in the list of authorized garages of the aforementioned car manufacturers' importers. In this context, it was also argued that case law held that no actual proof of misleading the public is required, but rather that the existence of a "fear of deception" is sufficient to formulate a cause of action for trademark infringement and passing off.
- Prohibited use of the description of the business - in this case, the defendants make disproportionate and bad faith use of the Toyota trademark, in Hebrew and English, in the signage of the business, billboards, advertising materials and various websites. The trademark "Toyota" is the central and dominant name in the business name, while the word "Rehovot" is a geographical indication of a distinguishing geographical place, which is also used by authorized dealerships on behalf of Toyota. The use of the name "Toyota" alongside a geographical indication as the name of the business sends a misleading message to consumers that the garage is an integral part of Toyota's network of dealerships and operates under its auspices. According to the plaintiff, this use is not necessary to bring to the attention of consumers the fact that the defendants provide sales and maintenance services for Toyota vehicles. Many garages that provide similar services do not use the brand name "Toyota", and even the defendant itself sometimes uses the name in which it was incorporated.
It was also argued that, contrary to the defendants' claims, the Licensing of Services and Professions in the Automotive Industry (Garages) Regulations, 5782-2022 (the "Licensing Regulations") do not require the garage to call itself by the manufacturer's name. The defendant even incorporated under the name "A. Rehovot Vehicle" and not "Toyota Rehovot" since it preferred to avoid the disqualification of the name "Toyota" by the Registrar of Companies in the absence of the consent of the trademark owner and in accordance with Section 27(a)(2) ofthe Companies Law, 5759-1999 (the "Companies Law").