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Vol. 5 Issue No. 3

Trademarks & Brands

ISRAEL

SC protects McDonald's Corp brandname

McDonald's vs. McDonald

Ariel McDonald, a foreign player on the Israeli basketball team, appeared in a televised commercial for Burger King, stating in Hebrew “Listen to McDonald - only Burger King”. As a counterattack, McDonald's Corporation televised an excerpt from a newspaper interview with Ariel McDonald where he stated that he ate at McDonald's restaurants. Ariel McDonald filed an action before the District Court claiming damages to his privacy rights and unjust enrichment on part of McDonald's Corporation. McDonald's Corporation filed a counterclaim for infringement of its registered trademark. The District Court accepted Ariel McDonald's claim and rejected the corporation's counterclaim.

The Supreme Court reversed the District Court's decision rejecting Ariel McDonald's claim of damage to his privacy rights and held by majority opinion that :-

  • use of the surname “McDonald”, which is almost identical to the trademark McDonald's, constitutes trademark infringement;
  • the defense of genuine use of one's own name pursuant to Section 47 of the Trade Marks Ordinance is not absolute, since it provides a weighted balance between conflicting interests, but depends on bonafide use;
  • Ariel McDonald sought to take advantage of the similarity between his name and the trademark by using only his surname in a promotional campaign, even though he knew that its use would result in direct association with the competing fast food chain. Such use was unfair and could not be protected under Section 47 of the Ordinance;
  • although McDonald's Corporation was unjustly enriched at Ariel McDonald's expense, the special circumstance of the case justified this.