This article concerns an interesting trademark case in Is- rael’s legal landscape, Chloe S.A.S & Others v. Oil De Lam- or Ltd.,1 which led to a precedential ruling by the District Court of Tel Aviv in July 2023. The case involved a head–on conflict between trademarkholders’ interests in protecting their trademark rights and the public interest in maintain- ing the competition on the free market andthe freedom of occupation.
In a nutshell, trademark infringement lawsuits were brought in Israel by some of the largest companies in the fragrance industry against a small Israeli company called Oil De Lamor Ltd., which produces and markets “smell-alike” perfumes. The lawsuits were filed by ten plaintiffs: (1) Chloe S.A.S., (2) ZINO DAVIDOFF SA, (3) Hugo Boss Trade Mark Management Gmbh & Co Kg, (4) Coty B.V., (5) Coty Germany GmbH, (6) Lancôme Perfumes Et Beaute &Cie, (7) Giorgio Armani S.p.A., Milan, Swiss Branch Nedrisio, (8) The Polo/Lauren Company, L.P., (9) L’Oréal, and (10) Britney Jean Spears (“Plaintiffs”). Plaintiffs alleged that using names similar to their famous perfume brands constitutes an infringement of their well-known trademarks, as well as free–riding on their reputation. In response, Oil De Lamor alleged that such use of well-known perfume brands made for a genuine description of the character of their products as smell-alike perfumes.
Ultimately, after an evidentiary hearing, the lawsuits were dismissed while charging the plaintiffs with over 180,000 NIS in legal expenses. The court held that Plaintiffs failed to prove a danger of confusion and, in a precedential ruling, that the use of a perfume brand name to describe the smell of a smell-alike perfume was considered to be a genuine use under Israeli law.
I. Genuine Use Under Israeli Law
Trademark infringement under Israeli law occurs when one party uses a trademark that is identical or confusingly similar to anotherparty’s registered trademark in a way that may cause confusion among consumers regarding the source of goods or services. In Israel,the TRADE MARKS ORDI- NANCE [NEW VERSION] 5732-1972 governs trademark protection. In order to establish trademarkinfringement, the following elements typically need to be proven:
1.) The plaintiff must demonstrate that they own a valid and registered trademark in Israel. This registration gives thetrademark owner exclusive rights to use the mark in connection with the goods or services specified in the reg- istration;
2.) The defendant must have used a mark that is identical or similar to Plaintiff’s registered trademark. This similar- ity can extend to the overall impression created by the mark, including visual, phonetic, and conceptual similari- ties;
3.) The use of the similar or identical mark must be likely to cause confusion among consumers regarding the source of goods or services. This confusion could lead consumers to believe that the defendant’s infringing goods or services areaffiliated with or endorsed by the plaintiff trademark owner;
4.) The unauthorized use of the mark must typically occur in commerce, such as on products, packaging, advertising materials, or in connection with services.2
Infringement may entitle the trademark owner to seek various remedies, including injunctive relief to stop the in- fringing activity, monetary damages, or an account of prof- its derived from the infringement. In addition toregistered trademarks, Israel also recognizes unregistered trademarks based on use in commerce, which canprovide some level of protection. However, the scope of protection for unregistered marks may be narrowercompared to registered trademarks.
Under Israeli law, Section 74 of Trade Marks Ordinance [New Version] 5732-1972 codifies the entitlement of any person to use any registered mark owned by another party for genuine description of the character or the quality of his product. Section 74 states: “Registration under this ordi- nance shall not prevent any genuine use by a person in his own name or in the name of his business or in the geographi- cal name of his place of business, or of any his predecessors in business, or the use by any person of any genuine description of the character or the quality of his goods.” This is referred to as “genuine use.” However, the burden of proof rests on the shoulders of the claimant raising the doctrine. Israeli legal doctrine establishes three concurrent conditions for the at- tainment of such protection: 1) the use of the registered mark is necessary for genuine description or identification of the product; 2) the use of the registered mark should not surpass the extent required for accurate description and identifica- tion of the product; and 3) the use of the registered mark may not mislead consumers into believing there is a sponsorship or any connection between the product and the registered mark owner. The concept of “genuine use” under Israeli law is similar to protections in other jurisdictions, such as nomi- native fair use under U.S. law3 or referential use in Europe.4
II. Facts of the Oil De Lamor Case
Defendant Oil De Lamor is a small business run by a couple, Shlomit and Amir Artzi. The company produces and markets smell-alike (“odor compatible”) perfumes. In contrast to renowned fragrances formulated with water or mostly alcohol-based solvents, the perfumes produced by the defendant are oil-based and retailed at markedly reduced price points. The defendant’s customer base predominantly comprises clients who cannot afford buying the well-known fragrances or those who prioritize oil-based perfumes to safe- guard their skin from the adverse effects of alcohol exposure. The defendant adopts a utilitarian approach by packaging its fragrances in unadorned, generic bottles bearing its registered trademark Oil De Lamor, alongside the designation of the corresponding scent-emulating perfume, i.e., the name of the compatible odor. For the sake of clarity, some examples in- clude: Oil De Lamor, R. Blue Men for a compatible perfume to POLO RALPH LAUREN BLUE; Oil De Lamor, A. Kod Men for compatible perfume to Armani Code Men; Oil De Lamor, Laviboel for compatible perfume to La Vie Est Belle Lancôme.
The plaintiffs claimed that Oil De Lamor’s perfumes in- fringed the the following famous marks: (1) CHLOE , (2) DA- VIDOFF, (3) BOSS, (4) LA VIE EST BELLE, (5) MIRACLE, (6) ARMANI, (7) GIORGIO ARMANI SI, (8) LAUREN, 9) RALPH LAUREN, (10) BRITNEY SPEARS, and (11) BRITNEY SPEARS FANTASY.
III. The Parties’ Arguments
Israeli law does not grant direct protection of the smell it- self, and there is no prohibition under Israeli law on produc- ing compatible odors. In the Oil De Lamor case, the plain- tiffs did not hold any patents in Israel covering the chemical formulas of their perfumes. Instead, they claimed the use of names similar to their famous brands constituted trademark infringement and free-riding on their reputation, which caused a danger of confusion among the public. Under Israeli law, misleading use of a trademark occurs when there is a likelihood of confusion, due to deceptive similarity between the marks. In the Oil De Lamor case, Plaintiffs claimed that Defendant’s use of Plaintiffs’ marks to identify the Plaintiff perfumes that Defendant’s perfumes smell similar to misled consumers into believing there is a connection between the plaintiffs and Oil De Lamor perfumes.
Oil De Lamor denied these allegations, claiming there is no danger of confusion due to the differentiation between marks, and especially the overall look and feel of the prod- ucts. Moreover, Defendant claimed that, given the products’ price differences, such confusion is highly unlikely to occur because consumers are likely to exercise more care in select- ing a perfume. Defendant also emphasized that its smell-alike perfumes used Defendant’s own registered trademark Oil De Lamor to indicate the source of the smell-alike perfumes.
Furthermore, Oil De Lamor argued that its use of names similar to the famous brands constituted a “genuine use” according to Section 74 of the TRADE MARKS ORDI- NANCE [NEW VERSION] 5732-1972. Specifically, De-fendant argued that it uses names with some similarity to the famous marks in order to describe its products as smell-alike perfume. In addition, Defendant emphasized that such use is necessary to identify the article effectively, especially due to the essential difficulty in describing fragrances.
In response, Plaintiffs argued none of the genuine use conditions under Israeli law were met. Plaintiffs relied on two main arguments. First, Plaintiffs argued that there was a danger of confusion, which could lead consumers to think there is a connection between their famous brands and De- fendant’s products. Second, Plaintiffs argued that genuine use protection did not apply to the circumstances of the case because there was, in fact, no similarity between the smells of Plaintiffs’ famous brands protected by well-known trade- marks and the smells of Oil De Lamor’s smell-alike perfumes. Thus, according to Plaintiffs, instead of it being a genuine de- scription of Defendant’s product characteristics, Defendant’s use of Plaintiff’s trademarks is actually a false description.
Both sides submitted extensive evidence and expert opin- ions. Of note, in response to Plaintiff’s second argument against genuine use, Oil De Lamor’s experts conducted a public smelling survey to prove the similarity between the odors. Defendant’s experts demonstrated perceptual similar- ity between odors through two steps: first, they determined the sufficient similarity index in the fragrance industry (the “common similarity index”). Second, they measured the sim- ilarity level between each original and smell-alike perfumes as compared to the common similarity index.
In order to determine the common similarity index, as a benchmark, Defendant’s experts measured the similarity level between one of the plaintiff’s perfumes, Fantasy Brit- ney Spears, and body lotion Fantasy Britney Spears taken from the same Fantasy kit.5 The rationale behind the choice was the difference between the type of solvent, alcohol-based solvent versus oily-based solvent (which would be the same difference in solvents between Plaintiffs’ perfumes and De- fendant’s smell-alike perfumes, and therefore, comparing apples to apples). Another rationale behind the choice was Plaintiffs’ statement that the Fantasy Britney Spears fragrance was created, developed and marketed in collaboration with Elizabeth Arden, a subsidiary of Revlon Inc., which is one of the most renowned corporations in the perfumes industry. Based on this statement, Defendant’s experts opined that if that was the case, there would be no question thatthe degree of similarity between these products, both carrying identi- cal brand names and fragrances, meets the common similarity standard in the industry. As illustrated below, Defendant’s ex- pert analysis found an equal or even higher level of similarity than what was accepted in the field:.
IV. The District Court of Tel Aviv’s Ruling
In light of all of the evidence, the District Court of Tel Aviv held in a precedential ruling that the use of a perfume brand name to describe the smell of a smell-alike perfume constituted a genuine use. The court held Oil De Lamor’s use of names similar to Plaintiffs’ registered trademarks met all of the conditions under the applicable doctrine to gain the protection of genuine use. The court also rejected Plain- tiffs’ arguments that Defendant’s use of their trademarks was likely to create confusion about the source of Oil De Lamor’s products or whether Oil De Lamor had any connection to Plaintiffs. Within his ruling, Judge Gershon Gontovnik em- phasized the importance of maintaining and encouraging competition in the free market.
Similar to the Smith v. Chanel, Inc. under U.S. law,6 this ruling in Israel is another milestone that sharpens the bound- aries of trademark protection in the perfume industry.
1. CA/ 61865-03-17; 10499-04-17; 54008-07-17.
2. Section 1 of Trade Marks Ordinance.
3. See, e.g., Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002).
4. Case C-2/00, Holterhoff v. Freiesleben, ECR 2002 i-04187.
5. Namely, both the perfume and the body lotion were marketed together in the same packaging, under the same brand name, and the same fragrance name and description.
6. Smith v. Chanel, Inc. 402 F. 2d 562 (9th Cir. 1968).
In a nutshell, trademark infringement lawsuits were brought in Israel by some of the largest companies in the fragrance industry against a small Israeli company called Oil De Lamor Ltd., which produces and markets “smell-alike” perfumes. The lawsuits were filed by ten plaintiffs: (1) Chloe S.A.S., (2) ZINO DAVIDOFF SA, (3) Hugo Boss Trade Mark Management Gmbh & Co Kg, (4) Coty B.V., (5) Coty Germany GmbH, (6) Lancôme Perfumes Et Beaute &Cie, (7) Giorgio Armani S.p.A., Milan, Swiss Branch Nedrisio, (8) The Polo/Lauren Company, L.P., (9) L’Oréal, and (10) Britney Jean Spears (“Plaintiffs”). Plaintiffs alleged that using names similar to their famous perfume brands constitutes an infringement of their well-known trademarks, as well as free–riding on their reputation. In response, Oil De Lamor alleged that such use of well-known perfume brands made for a genuine description of the character of their products as smell-alike perfumes.
Ultimately, after an evidentiary hearing, the lawsuits were dismissed while charging the plaintiffs with over 180,000 NIS in legal expenses. The court held that Plaintiffs failed to prove a danger of confusion and, in a precedential ruling, that the use of a perfume brand name to describe the smell of a smell-alike perfume was considered to be a genuine use under Israeli law.
I. Genuine Use Under Israeli Law
Trademark infringement under Israeli law occurs when one party uses a trademark that is identical or confusingly similar to anotherparty’s registered trademark in a way that may cause confusion among consumers regarding the source of goods or services. In Israel,the TRADE MARKS ORDI- NANCE [NEW VERSION] 5732-1972 governs trademark protection. In order to establish trademarkinfringement, the following elements typically need to be proven:
1.) The plaintiff must demonstrate that they own a valid and registered trademark in Israel. This registration gives thetrademark owner exclusive rights to use the mark in connection with the goods or services specified in the reg- istration;
2.) The defendant must have used a mark that is identical or similar to Plaintiff’s registered trademark. This similar- ity can extend to the overall impression created by the mark, including visual, phonetic, and conceptual similari- ties;
3.) The use of the similar or identical mark must be likely to cause confusion among consumers regarding the source of goods or services. This confusion could lead consumers to believe that the defendant’s infringing goods or services areaffiliated with or endorsed by the plaintiff trademark owner;
4.) The unauthorized use of the mark must typically occur in commerce, such as on products, packaging, advertising materials, or in connection with services.2
Infringement may entitle the trademark owner to seek various remedies, including injunctive relief to stop the in- fringing activity, monetary damages, or an account of prof- its derived from the infringement. In addition toregistered trademarks, Israel also recognizes unregistered trademarks based on use in commerce, which canprovide some level of protection. However, the scope of protection for unregistered marks may be narrowercompared to registered trademarks.
Under Israeli law, Section 74 of Trade Marks Ordinance [New Version] 5732-1972 codifies the entitlement of any person to use any registered mark owned by another party for genuine description of the character or the quality of his product. Section 74 states: “Registration under this ordi- nance shall not prevent any genuine use by a person in his own name or in the name of his business or in the geographi- cal name of his place of business, or of any his predecessors in business, or the use by any person of any genuine description of the character or the quality of his goods.” This is referred to as “genuine use.” However, the burden of proof rests on the shoulders of the claimant raising the doctrine. Israeli legal doctrine establishes three concurrent conditions for the at- tainment of such protection: 1) the use of the registered mark is necessary for genuine description or identification of the product; 2) the use of the registered mark should not surpass the extent required for accurate description and identifica- tion of the product; and 3) the use of the registered mark may not mislead consumers into believing there is a sponsorship or any connection between the product and the registered mark owner. The concept of “genuine use” under Israeli law is similar to protections in other jurisdictions, such as nomi- native fair use under U.S. law3 or referential use in Europe.4
II. Facts of the Oil De Lamor Case
Defendant Oil De Lamor is a small business run by a couple, Shlomit and Amir Artzi. The company produces and markets smell-alike (“odor compatible”) perfumes. In contrast to renowned fragrances formulated with water or mostly alcohol-based solvents, the perfumes produced by the defendant are oil-based and retailed at markedly reduced price points. The defendant’s customer base predominantly comprises clients who cannot afford buying the well-known fragrances or those who prioritize oil-based perfumes to safe- guard their skin from the adverse effects of alcohol exposure. The defendant adopts a utilitarian approach by packaging its fragrances in unadorned, generic bottles bearing its registered trademark Oil De Lamor, alongside the designation of the corresponding scent-emulating perfume, i.e., the name of the compatible odor. For the sake of clarity, some examples in- clude: Oil De Lamor, R. Blue Men for a compatible perfume to POLO RALPH LAUREN BLUE; Oil De Lamor, A. Kod Men for compatible perfume to Armani Code Men; Oil De Lamor, Laviboel for compatible perfume to La Vie Est Belle Lancôme.
The plaintiffs claimed that Oil De Lamor’s perfumes in- fringed the the following famous marks: (1) CHLOE , (2) DA- VIDOFF, (3) BOSS, (4) LA VIE EST BELLE, (5) MIRACLE, (6) ARMANI, (7) GIORGIO ARMANI SI, (8) LAUREN, 9) RALPH LAUREN, (10) BRITNEY SPEARS, and (11) BRITNEY SPEARS FANTASY.
III. The Parties’ Arguments
Israeli law does not grant direct protection of the smell it- self, and there is no prohibition under Israeli law on produc- ing compatible odors. In the Oil De Lamor case, the plain- tiffs did not hold any patents in Israel covering the chemical formulas of their perfumes. Instead, they claimed the use of names similar to their famous brands constituted trademark infringement and free-riding on their reputation, which caused a danger of confusion among the public. Under Israeli law, misleading use of a trademark occurs when there is a likelihood of confusion, due to deceptive similarity between the marks. In the Oil De Lamor case, Plaintiffs claimed that Defendant’s use of Plaintiffs’ marks to identify the Plaintiff perfumes that Defendant’s perfumes smell similar to misled consumers into believing there is a connection between the plaintiffs and Oil De Lamor perfumes.
Oil De Lamor denied these allegations, claiming there is no danger of confusion due to the differentiation between marks, and especially the overall look and feel of the prod- ucts. Moreover, Defendant claimed that, given the products’ price differences, such confusion is highly unlikely to occur because consumers are likely to exercise more care in select- ing a perfume. Defendant also emphasized that its smell-alike perfumes used Defendant’s own registered trademark Oil De Lamor to indicate the source of the smell-alike perfumes.
Furthermore, Oil De Lamor argued that its use of names similar to the famous brands constituted a “genuine use” according to Section 74 of the TRADE MARKS ORDI- NANCE [NEW VERSION] 5732-1972. Specifically, De-fendant argued that it uses names with some similarity to the famous marks in order to describe its products as smell-alike perfume. In addition, Defendant emphasized that such use is necessary to identify the article effectively, especially due to the essential difficulty in describing fragrances.
In response, Plaintiffs argued none of the genuine use conditions under Israeli law were met. Plaintiffs relied on two main arguments. First, Plaintiffs argued that there was a danger of confusion, which could lead consumers to think there is a connection between their famous brands and De- fendant’s products. Second, Plaintiffs argued that genuine use protection did not apply to the circumstances of the case because there was, in fact, no similarity between the smells of Plaintiffs’ famous brands protected by well-known trade- marks and the smells of Oil De Lamor’s smell-alike perfumes. Thus, according to Plaintiffs, instead of it being a genuine de- scription of Defendant’s product characteristics, Defendant’s use of Plaintiff’s trademarks is actually a false description.
Both sides submitted extensive evidence and expert opin- ions. Of note, in response to Plaintiff’s second argument against genuine use, Oil De Lamor’s experts conducted a public smelling survey to prove the similarity between the odors. Defendant’s experts demonstrated perceptual similar- ity between odors through two steps: first, they determined the sufficient similarity index in the fragrance industry (the “common similarity index”). Second, they measured the sim- ilarity level between each original and smell-alike perfumes as compared to the common similarity index.
In order to determine the common similarity index, as a benchmark, Defendant’s experts measured the similarity level between one of the plaintiff’s perfumes, Fantasy Brit- ney Spears, and body lotion Fantasy Britney Spears taken from the same Fantasy kit.5 The rationale behind the choice was the difference between the type of solvent, alcohol-based solvent versus oily-based solvent (which would be the same difference in solvents between Plaintiffs’ perfumes and De- fendant’s smell-alike perfumes, and therefore, comparing apples to apples). Another rationale behind the choice was Plaintiffs’ statement that the Fantasy Britney Spears fragrance was created, developed and marketed in collaboration with Elizabeth Arden, a subsidiary of Revlon Inc., which is one of the most renowned corporations in the perfumes industry. Based on this statement, Defendant’s experts opined that if that was the case, there would be no question thatthe degree of similarity between these products, both carrying identi- cal brand names and fragrances, meets the common similarity standard in the industry. As illustrated below, Defendant’s ex- pert analysis found an equal or even higher level of similarity than what was accepted in the field:.
IV. The District Court of Tel Aviv’s Ruling
In light of all of the evidence, the District Court of Tel Aviv held in a precedential ruling that the use of a perfume brand name to describe the smell of a smell-alike perfume constituted a genuine use. The court held Oil De Lamor’s use of names similar to Plaintiffs’ registered trademarks met all of the conditions under the applicable doctrine to gain the protection of genuine use. The court also rejected Plain- tiffs’ arguments that Defendant’s use of their trademarks was likely to create confusion about the source of Oil De Lamor’s products or whether Oil De Lamor had any connection to Plaintiffs. Within his ruling, Judge Gershon Gontovnik em- phasized the importance of maintaining and encouraging competition in the free market.
Similar to the Smith v. Chanel, Inc. under U.S. law,6 this ruling in Israel is another milestone that sharpens the bound- aries of trademark protection in the perfume industry.
1. CA/ 61865-03-17; 10499-04-17; 54008-07-17.
2. Section 1 of Trade Marks Ordinance.
3. See, e.g., Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002).
4. Case C-2/00, Holterhoff v. Freiesleben, ECR 2002 i-04187.
5. Namely, both the perfume and the body lotion were marketed together in the same packaging, under the same brand name, and the same fragrance name and description.
6. Smith v. Chanel, Inc. 402 F. 2d 562 (9th Cir. 1968).
