What Constitutes Misleading Similarity When Packaging Competing Products? The Court Rules On Sandwich Cookies

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by: gill@nadel-law.co.il
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Date: Sun, 8 May 2011 Time: 9:46 AM

What Constitutes Misleading Similarity When Packaging Competing Products? The Court Rules On Sandwich Cookies

Adv. Gill Nadel, Keydar Halali

Recently, the court dismissed a petition filed by the manufacturer and marketer of Oreo cookies to forbid an importer marketing Go Go's brand cookies from marketing them, as they were  misleadingly  similar to Oreo cookies and therefore deceiving to the public. The court dismissed this on the grounds that there was no misleading similarity between the packaging and therefore no risk of deception.

The claims of the parties:

The claims of the foreign manufacturer:

The manufacturer claimed that the importer designed the Go Go's sandwich cookies' packaging in such a way that intend to mislead consumers into thinking that the product was related to Oreo cookies as an additional product from the manufacturer's line of products, or as  an associated product to this line. Thus, he claimed, the importer attempted to take advantage of his  products’ well known reputation and pass them off as his own while violating  a well-recognized trademark.

The manufacturer claimed that the Oreo sandwich cookies which it manufactures are packed in a special package with a unique print that make it stand out from other sandwich cookies on the market. Further more, the manufacturer claimed that the Go Go cookies' packages look  almost exactly the same as the  Oreo cookies’ famous package. According to the manufactor’s claim, the  similarity was partially owed to  the  combination of colors used on the package and the picture of the black sandwich cookies with  splashes of milk in the background.

The manufacturer further claimed that in a consumer survey conducted among around 500 participants between the ages of 12-70 (whom, to his words, served as a representative national sample), over 36% of the respondents believed  the Go Go cookies were  associated with the Oreo cookies, and that this proves the risk of deception.

In light of this, the manufacturer requested that the court oblige the importer in damages of one million shekels, order that the imported products be destroyed, and forbid the continuation of their marketing. The action was also filed against Diplomat, the product distributor.

The importer's claim:

In opposition, it was claimed by the importer that there is no misleading similarity between the manufacturer's packaging design and that of his imported goods, since the size of the package was different and also unlike the manufacturer's claim, the color of the package was completely different. The importer further claimed that there is nothing unique in the  manufacturer's packaging design since both in Israel and around the world, other brands of cookies are sold in rectangular packages including- , an illustration of the cookies, the use of the color blue, the picture of the splashing milk, etc. The importer also claimed that ever since it began marketing the Go Go cookies, not a single complaint was received by a consumer on the count of  purchasing  this brand by mistake instead of the  manufacturer's cookies. Regarding the action against Diplomat, the importer? claimed that it was merely a distribution company and thus it had nothing to do with this case and any how there was no cause  action against it.

The Decision:

The court rejected the manufacturer's claimed and ruled that there was no misleading similarity between the appearance of the packages and  based  this, inter alia,   on the fact that the dominant color of the manufacturer's packaging design  was blue, where as the  importer’s was purple. Additionally, it was ruled that the dominant component used in the manufacturer's advertisements and commercials was the symbol "OREO" and even on the Oreo cookies' packages, the symbol OREO was a prominent feature. Therefore, it was ruled that the weight of the decision should be given to the fact that there was no similarity between the symbol "OREO" and the symbol "GO-GO'S" which stands out on the importer's Go-Go's cookies. Additionally, the court attributed importance to the fact that the importer's package was significantly bigger than that of the manufacturer.

The court accepted the importer's claims and ruled that since an illustration or picture of similar sandwich cookies appears on a variety of packages of similar products, it cannot be ruled that having such an illustration on the importer's package creates a risk of deception. Regarding the consumer survey conducted by the manufacturer, the court ruled that the results of the survey indicate of the reputation that the Oreo brand has among the relevant consumers, but does not indicate of "a real potential risk of deception from (competing) products".

In light of this, the court ruled that  there was no misleading similarity between the packages of the importer and the packages of the manufacturer, and that there is no risk that the relevant consumer population will be misled into thinking that the importer's cookies are those of the manufacturers’ or associated to them.

Therefore, the court dismissed the action and obliged the manufacturer in legal expenses plus attorneys' fees of 40,000 NIS, towards the importer and the distribution company jointly.

(CA (District Tel Aviv) 20277-09-10 Kraft Foods Global Brands LLC v. Y. Marbeh Israel Ltd et al, Judge Yehuda Zeft, issued 27.12.10. Advocates: Kraft was represented by Adv. L. Watstein, S. Israel, and K. Ben-Shachar. Y. Marbeh was represented by Adv. A. Shaulski. Diplomat was represented by Adv. H. Cohen-Haramati.)

About the Author

Gill Nadel - Born in Israel in 1969, graduated from Bar Ilan University&s Faculty of Law (cum laude) and from the Department of Musicology. He also has a master&s degree in law from the same institution. Member of the Israel Bar since 1999. Speaks Hebrew, English and Polish. Fields of expertise: Commercial and Business Law, International Trade Law, Import and Export Law, Intellectual Property Law, Maritime and International Forwarding Law, Litigation and Court Representation. Adv. Nadel provides lectures on international trade law and import and export law to in courses organized by the Bar Ilan University Center for Commercial Law, Israel Bar, Israel Chambers of Commerce, Manufacturers Association of Israel, Israel Export Institute, Customs Brokers Association, International Forwarders, and more.

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