Trademarks (General)

C.A. 8441/04 Unilever Plc v. Eli Segev (Israeli Supreme Court, August 23, 2006)

Unilever Plc. ("Unilever"), the proprietor of the famous trademark "DOVE" bearing a Dove Device with respect to cosmetic products, filed an opposition to a trademark application for a Dove Device with respect to cosmetic products in class 3, filed by Mr. Eli Segev ("Respondent"). The Israeli Trademark Registrar rejected the opposition in its entirety and declined to accept Unilever's contentions of likelihood of confusion, dilution and unfair competition caused by the opposed mark. Unilever, represented by advocates Liad Whatstein and Dan Adin of Dr. Shlomo Cohen & Co., appealed the decision to the Israeli Supreme Court.

The Supreme Court (Justice Dvora Berliner, joined by Justice Prokachia and Justice Chayut) accepted Unilever's appeal on the Registrar's decision and ordered the cancellation of the opposed trademark (which was previously accepted for registration as a result of the Registrar's decision). The crux of the Supreme Court judgment is that the Respondent copied the main motive in Unilever's famous trademark - the use of a dove in connection with hygiene and personal care cosmetic products. Also, the Trademark Registrar was wrong by dissecting the marks of the parties and examining the slight differences between them - the marks of the parties should be assessed as a whole. Also, the first impression on the consumer is crucial in view of the imperfect recollection of the average consumer. The fact that Unilever uses the Dove Device together with the word DOVE is meaningless, since they both convey the same message to the average consumer. It is also wrong to examine small details such as slight differences between the Dove Device used by the Respondent and the Dove Device used by Unilever, since the overall impression is the relevant factor to assess. Marks can contain different components but, nevertheless, convey the same message or idea, which creates a likelihood of confusion. The Supreme Court also rejected the Respondent's contention that differences between the pricing of the parties' products may prevent trademark infringement.

It is unquestionable (and was also accepted in the Registrar's decision) that Unilever's mark (which is combined of the word DOVE and the Dove Device) is a very famous trademark which enjoys extensive goodwill. Thus, the average consumer associates the motive of a dove with respect to hygiene and personal care cosmetic products with Unilever and, therefore, the opposed mark of the Respondent cannot be accepted on the grounds of likelihood of confusion to Unilever's famous trademark, dilution of Unilever's trademark and unfair competition.

On a final (and important) note, the Supreme Court rejected the Registrar's opinion that Unilever is unlawfully trying to appropriate the use of a Dove Device, which is a general symbol that should be left open to public use. Justice Berliner explained that this was not the case - Unilever is not trying to appropriate the general use of a Dove Device. It is merely seeking protection over the motive of association between the Dove Device and hygiene and personal care cosmetic products, which is perfectly within the scope of protection it is entitled to enjoy under trademark laws.