New District Court Ruling Broadens Protection For International Brands

Author:Ms Rakefet Peled and Tomer Rosenfeld
Profession:Reinhold Cohn Group
 
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The Tel Aviv District Court issued a temporary injunction against the Israeli chain Max (also known by its former name Max Stock) which used and applied to register a trademark for its logo that is similar to that of Miniso, a Japanese retail giant which has registered trademarks in Israel, yet as of the date of the ruling, is inactive and not well-known to the Israeli market. This judgment by the district court broadens the protection afforded to international brand owners having registered trademarks in Israel, regardless of whether the brands themselves are used or even well-known in Israel.

Miniso is an international chain of affordable retail stores for home appliances, stationary, cosmetics, toys and more, which was founded in Japan in 2013 and which currently runs over 2600 branches around the world.1

Miniso is the holder of registered trademarks in Israel. At the time of the ruling Miniso had not yet begun its operations in Israel, but a few months after the ruling, at the beginning of August, it opened its first branch in Tel Aviv.

Max (formerly Max Stock) is a local chain of affordable retail stores, now active in Israel for over a decade, selling a wide variety of products, among them home appliances, office supplies, fashion accessories and toys. Max is also the owner of trademarks registered in Israel, including the mark:

At the end of 2017 Max filed another trademark application with respect to a stylized trademark in the form of a shopping bag, as follows:

Miniso opposed Max's application arguing that it was confusingly similar to Miniso's registered trademarks.

Below is Miniso's registered mark alongside the opposed trademark of Max:

In addition to the opposition, Miniso filed with the Tel Aviv District Court a motion for temporary injunction against Max contending that the logo used by Max, whose registration as a trademark was sought, was blatantly copied and that it was likely to mislead the consumer public. Miniso argued that Max's conduct constituted, among others, passing off and infringement of a registered trademark of Miniso.

Miniso claimed in its motion for temporary injunction that it is one of the most successful, fastest-growing and recognized affordable retail chains in the world, that its products are sold at thousands of branches worldwide and that it makes extensive use of its logo upon its products and on the signage of its branches. It contends that although Miniso, is currently not running operations in...

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