No BIG DEAL? Supreme Court Confirms Likelihood Of Confusion Between Marks As Used

Author:Mr David Gilat
Profession:Reinhold Cohn Group

IP adjudicator found no likelihood of confusion between word mark BIG DEAL and stylised mark BIG DEAL District court held that adjudicator should have examined similarity between marks as used by parties Supreme Court agreed that likelihood of confusion was obvious when comparing marks as used In a motion for leave to appeal from a district court judgment, the Israeli Supreme Court has upheld the district court's finding of a likelihood of confusion between the trademark BIG DEAL (registered as a word mark), used by the opponent with respect to a retail business, and the trademark BIG DEAL (stylised), used by the applicant to offer merchandise for sale over the Internet.

In Yediot Internet v HAB Trading Ltd (RLA 8545/17), Supreme Court Justice M Mazuz upheld a district court judgment reversing a Trademark Office decision finding that there was no likelihood of confusion despite the similarity of the marks (depicted below).

Trademark Office decision

In a decision issued by the IP adjudicator in opposition proceedings, the Trademark Office held that the opponent's BIG DEAL mark, registered in uppercase letters, and the applicant's BIG DEAL stylised mark were mutually distinctive and that, under the circumstances, less weight was to be attributed to the fact that both marks shared the word combination 'big deal'. The IP adjudicator added that, although there was an overlap in the target audiences, the fact that the opponent used the mark for retail stores, while the applicant used it on the Internet to offer deals in fields such as tourism, lenses and optics, and health and sport products, was sufficient to eliminate a risk of confusion. The IP adjudicator concluded that the rival marks did not cover goods of the same description, and added that the 'common sense' test indicated that no confusion could occur. In this regard, the adjudicator pointed to a survey conducted by the applicant which showed that its own mark had acquired secondary meaning in connection with the online promotion and sale of coupons and products.

District court decision

The opponent filed a request to appeal the IP adjudicator's decision to the Tel Aviv District Court, which accepted the appeal. The district court held that the adjudicator was supposed to examine the similarity between the marks as used by the parties, namely:

Such comparison, it was held, would have led to the conclusion that "there was a considerable similarity between the trademarks and that...

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