Ehud Gabrieli, Chair of the MARQUES Education Team, reports on a ruling that Cannabis is not eligible for trade mark registration and also cannot be protected under passing off (קנביס - קנאביס Civil Case (Haifa District) 44032-04-17 Leibowitz v Sasson – Haifa District, Judge Gidon Ginat (14 June 2019)).

The Israeli District Court in Haifa has ruled that a plaintiff, who owns a domain name for the word Cannabis in Hebrew, cannot appropriate to himself the name Cannabis, and that there is no passing off by the defendant, who owns a second domain name for the word Cannabis (with an extra vowel letter).

Facts of the case

Plaintiff's website logo

The plaintiff, a journalist, has owned a website, the domain of which in Hebrew is קנאביס.com, since 2011. This website is a magazine on political, cultural and social issues concerning the cannabis plant and drug.

The defendant, a computer developer, owns the domain קנביס.com. The defendant's site is a website for licence owners for the use of medical cannabis, dealing with advice regarding options to shorten bureaucracy to receive such licences. The defendant’s website started operating in 2014.

The names "קנאביס" and "קנביס" were not registered as trade marks when the lawsuit was filed. The plaintiff contended that the defendant's use of the word "קנביס" constitutes passing off in accordance with Section 2 of the Israeli Commercial Torts Act. The defendant contended that the name Cannabis in any language is generic and at least descriptive and the plaintiff cannot appropriate it to himself. The defendant further contended that even if that were not true, the plaintiff had not proved that the public consumer identifies the name "קנאביס" or "קנביס" exclusively with him (no reputation) and that the logos that the parties use online are not misleadingly similar:

Ruling

Defendant's website logo

The Court has accepted the defendant’s contentions and ruled that Cannabis is a descriptive name. It was further ruled that the name Cannabis describes the contents of the internet site and therefore the plaintiff is not entitled to appropriate the name to himself. Anyway, the defendant should not be considered as causing a civil wrong.

The Court made also a syllogism from the provision of paragraph 11(10) of the Trademarks Ordinance, in accordance with which marks that describe the goods or services for which their registration is sought, are not eligible for registration, to the arrangement concerning passing off. According to the Court, one can learn that names describing the goods or services for which their protection is sought, do not pass off.

The Court had also compared the case before it to a famous case dealt in the Supreme Court [Civil Appeal 5792/99 "Family" newspaper v. "Good Family" paper] and ruled that a descriptive name would receive protection on the ground of passing off only if it had acquired a secondary meaning. This secondary meaning is only a derivative of the goodwill which the bearer of the descriptive name has acquired, which, in this case, is a website on the internet.

The Court asserted that the plaintiff before it did not prove the existence of the reputation as required for the tort. For the sake of the argument the Court further assumed, as claimed by the plaintiff, that his website has received extensive exposure, and concluded it was not enough to prove that the public consumers, which in this case are the website’s visitors, identify the name Cannabis only with the plaintiff's website, or that they find special importance in the specific site as the origin of its content.

The Court had also ruled that even if there was a similarity between the websites’ contents, the name Cannabis is not protectable.

Differences between sites

The Court concluded that while the plaintiff focused his contentions on the similarity between the two domain names (as in their addresses), he ignored and disregarded the difference between the logos of the two sites. The Court further highlighted that the logo of the plaintiff’s site is completely distinctive from the logo of the defendant’s site, partly due to the slogans included in them.

The Court ruled that in the matter of passing off, one should not examine the confusing similarity only with regard to the addresses of the sites. One cannot ignore the full names of the sites which are displayed as a logo at the top of the pages of these sites.

At the end of the day the lawsuit was dismissed and the plaintiff was ordered to pay the expenses of the defendant as well as his attorneys fees in the amount of NIS 20,000 (€5,000).

An appeal can be filed within 45 days of the judgment to the Supreme Court.

Ehud Gabrieli is Chair of the MARQUES Education Team and a partner of Seligsohn Gabrieli & Co. He represents the defendant in this case