Legitimate Use Of Trademarks Within Advertising And Promotion

Author:Mr David Wolberg (Kuperschmit, Goldstein & Co.)
Profession:Global Advertising Lawyers Alliance (GALA)

Companies are often faced with the dilemma of using trademarks within their advertisements and promotion material. For example: Is a company entitled to advertise the fact that it is marketing Ralph Lauren products, under Ralph Lauren trademarks, without permission from Ralph Lauren?

This question has often been dealt with by the Israeli Courts when examining parallel importation. It has long been established that companies are entitled to sell branded goods without the brand owner's blessing. For example, a "parallel" importer may sell Dyson vacuum cleaners in Israel while competing with the Dyson's "official" Israeli importer/distributor. Provided, of course that the parallel importer is marketing bona fide Dyson products, in contrast to counterfeit goods. In other words, once Dyson sells a vacuum cleaner, it parts with control over that product, and any vendor may sell it under the Dyson trademark.

Though several court rulings dealt with parallel importation, there were no clear cut rulings which specifically addressed unlicensed trademark use within advertisements and promotions. The matter has finally been dealt with extensively by an Israel District Court in TOMMY HILFIGER LICENSING LLC et al vs. Swissa et al (C.F. 11296-09-10), (hereinafter, the "Tommy Hilfiger Case.")

The Tommy Hilfiger Case - Factual Background

The facts of this case are quite complex and will not be specified in their entirety within this article. It is worth noting the following facts:

Defendants marketed Tommy Hilfiger's ("Plaintiff") apparel within a warehouse titled "Tommy Hilfiger - Importer Depot." Road signs, directing consumers to the warehouse, contained Hilfiger trademarks, logos and the colors red white and blue. Red, white and blue form part of Tommy Hilfiger's trademarks and are closely associated with the Company. The warehouse's roof was painted red, white and blue. The warehouse's walls were painted red, white and blue. Curtains within the changing rooms were red, white and blue. Walls within the premises displayed the Plaintiff's trademarks. Defendants distributed advertising leaflets, depicting the TOMMY HILFIGER trademark and logo. Some of the leaflets contained the wording, "Importer Depot," yet failed to mention the fact that they were actually "parallel" importers. Defendants' website address was "www.tommy4less.co.il. Within the website, Defendants extensively used Plaintiffs' trademarks and colors. The Ruling

The questions at hand, identified and addressed...

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