Israel: Are the Marks "CANALI" & and "CANAL JEANS CO. NEW YORK " Confusingly Similar?

In a decision of the Israel Supreme Court dated January 13, 2005, in the matter of Civil Appeal 1123/04 Canali S.P.A. et al. v. Canal Jean Co. (not yet published), it was held that the mark "CANAL JEAN CO. NEW YORK" (stylized) is not confusingly similar to the "CANALI" mark.

The appellant is a distributor of clothing and the owner of a registered trademark for "CANALI" (word mark) in class 25. The respondent, which also engages in the distribution of clothing, filed a trademark application for "CANAL JEAN CO. NEW YORK" (stylized). The appellant filed an opposition to the registration of said application, which was rejected by the Deputy Registrar, who held that the marks are not confusingly similar. Subsequently, the appellant filed an appeal.

The Supreme Court held that applying the phonetic and visual test—which is the main consideration—leads to the conclusion that the marks are not confusingly similar. The rule is that the marks should be compared in their entirety, while giving weight to the first impression created in the comparison. Indeed, there is a similarity between the appellant's trademark and the first word included in the respondent's application. However, the respondent's mark includes several elements which distinguish it from the appellant's mark and which nullify the likelihood of confusion between the marks. These elements are: (a) additional words are included in the respondent's mark; (b) the first word of the respondent's mark is not identical to the appellant's mark (the appellant’s mark also includes the letter "I"); and (c) the respondent's mark is stylized, as opposed to the appellant's mark.

The Supreme Court held that these differences diminish the likelihood that a potential consumer will mistakenly associate the respondent's mark with the appellant's, believing it to represent the appellant’s more casual line of clothing.

The Court concluded that the marks are not confusingly similar, although they relate to goods of the same description, and rejected the appeal.

Contributor: Avi Ordo, Adv.
S. Horowitz & Co.
Tel-Aviv, Israel

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