“DIVA’S LASHES” – How the Israel Supreme Court Does Justice

An Italian multinational cosmetics manufacturer, Micys Company S.p.A, sells its products worldwide under the “PUPA” brand. Its mascara is marketed as ”DIVA’S LASHES.”.

After this product was put on sale in Israel, a small, Tel Aviv family firm called Diva Cosmetics and Perfumes that manufactures cosmetics under the name DIVA and has a registered trademark for same in International Classes 3 and 5 sent Micys a cease & desist letter and a demand for compensation for trademark infringement.

According to the findings reported in the ruling by the Israel Patent Office, which was the Court of First Instance, most of the Israeli firm’s activity is in bulk manufacturing for other distributors and their name appears on the repackaged goods as ‘manufactured by Diva’ in small print. Nevertheless, they do market a little known toothpaste bearing the DIVA trademark; toothpaste, like mascara, is a Class 3 product.

Micys responded to the Cease and Desist letter by filing for cancellation of the DIVA registration in both classes on the grounds of non-use, or in the alternative restricting the specification of goods in the registrations to products actually sold.

Yaara Shoshani Caspi, Adjudicator for Intellectual Property at the Israel Trademark Office ruled that there was use in the classes, upheld the registrations, and refused to restrict the specification of goods.

Micys appealed Shoshani Caspi’s ruling to the Supreme Court, and was represented by Advocates Reuven Bilet and Aaron Lewin (who recently joined our firm). We note that these attorneys did not handle the cancellation proceedings at the patent office.

taking the opportunity to watch an IP related decision at the Israel Supreme Court I went along last Thursday to see justice in action.

I wasn’t surprised but was, nevertheless disappointed to learn that my Israel Patent Attorney card wasn’t recognized to allow me to avoid a security check.

The case was heard by a panel of three judges (E. Hayut, H.Melzer, I. Amit) who had clearly read the submissions and prepared themselves for the case. They made some initial jokes about putting on mascara in the morning, etc. which I think was somewhat inappropriate as the case may have seemed trivial to them, but was clearly of significance to the parties.

Rather than hear the case and rule on the substantive issues of what type of use must be made of a registered mark to repel cancellation, and whether a registration could be restricted to the goods actually sold, they bullied the counsel for the mark-holder to negotiate an agreement with Micys according to which the appeal would be withdrawn in return for their renouncing any claim against Micys for selling mascara under ‘DIVA’S LASHES”.

The Supreme Court justices used various arguments such as:

o Diva Cosmetics didn’t make or market mascara
o Their attorney was leading them on and not explaining to them the legal issues
o The use by Micys of “DIVA’S LASHES” could help the sales of Diva Cosmetics
o If they were to hear the case they would be inclined to restrict the scope of the registration which would not be in Diva Cosmetic’s interest
Seeing which way the wind was blowing, Diva Cosmetics agreed to the compromise.

COMMENTS

I was not comfortable with the proceedings. I think the compromise reached was in the interest of Micys and may also have been in the interest of Diva Cosmetics, but I feel that the function of the Supreme Court is to establish legal precedent and not try to get cases resolved by compromise. I also don’t think that Supreme Court Judges should undermine an attorney by accusing him of looking at legal fees and not at the client’s interest. I don’t believe that the training and experience accumulated by a Supreme Court judge gives insight or authority to judge commercial interests and to tell one side of a dispute that something will or won’t increase their sales. The competence of Supreme Court judges is the law. They had an opportunity and should have ruled on the legal issues before them and created binding precedent.

They failed to do so.