The petitioner was the publisher of a well-established magazine in the orthodox community named FAMILY. The respondent was the publisher of a new magazine named GOOD FAMILY, intended to be distrubuted in the orthodox community as well. The petitioner filed a lawsuit on the ground of passing off and asked the Supreme Court prevent the respondent from using the name GOOD FAMILY. The Court ruled that the tort of passing off applies only at the occurrence of two combined conditions: one's product or service must have acquired goodwill and there must be a reasonable suspicion of misleading the public. The Court held that none of these conditions applied in this case. The name FAMILY was descriptive, and since it had not acquired secondary meaning, it was not entitled to protection under the tort of passing off. As for the second condition, Israeli Courts tend to reject publishers' claims based on similarity of the magazine title alone. This attitude is based on the assumption that people develop loyalty to a specific newspaper and, therefore, would not make mistakes even if te titles are similar.

CA 5792/99 Religious Communication and Education v. S.B.C. et al., Supreme Court 2001.

III.F.. Cancellation

The respondent, an assets management company, owned an Israeli registration for the service mark CAPITAL. The petitioner applied for the cancellation of the respondent's service mark before the Trademark Registrar found that the word CAPITAL was a descriptive word commonly used in the respondent's field of business. The respondent claimed that the mark CAPITAL had acquired secondary meaning through extensice use. The Trademark Registrar rejected this argument on the ground that use of the mark had been made by the respodent's affiliated companies but not by the respondent itself. The Trademark Registrar held that use of a mark by affiliated companies without a registered licence by the owner of the trademark could not benefit the owner of the mark.


Capital Online Ltd v. V.S.P. Capital Property Management Ltd., Patent and Trademark Registrar, October 30, 2001