It’s safe to assume that by now most readers of this blog have heard that ice cream manufacturer Ben & Jerry’s will cease selling in Judea and Samaria in 2022.
To quickly review the background: B&J, which is owned by Unilever, licensed a local company in Israel (reported in the press as “Ben & Jerry’s Israel”, but according to the Companies Register there is no such company), to make and sell ice cream under the Ben & Jerry’s name. Presumably, as part of the arrangement, the local company also receives know-how and other proprietary information from B&J (e.g. recipes and methods of preparation), and perhaps is required to use special equipment as well. B&J’s board has for years pressured the local company to not sell in Judea and Samaria, but the owner of that company, Avi Zinger, has resisted those calls. Hence the continued availability of locally-produced Ben & Jerry’s in Efrat, Maaleh Adumim, Ariel, et al. Last week, the Ben & Jerry’s board informed Mr. Zinger that it would not renew its licensing/franchise agreement with him in 2022, and will be seeking a different licensee/franchisee. According to a subsequent press announcement from B&J, its board actually decided to terminate all activity in Israel, but Unilever overruled that board and said that activity in what it deems to constitute Israel will continue with a new to-be-named partner.
Aside from being annoyed with yet another instance of b.s. brought to us by imbeciles and Jew-haters (BDS pressure on Soda Stream led to the relocation of its plant from Mishor Adumim to the Negev, resulting in the loss of hundreds of jobs for people in the PA, showing that BDS has nothing to do with helping so-called Palestinians), my instinctive reaction as an IP attorney was, “Well, this presents some opportunities for some fun!” As in, there are ways to stick it to Ben & Jerry’s. Let’s look at what those might be.
One thing might be for the local company to continue to produce B&J’s ice cream, but to sell it under a different name, say “Jen & Barry’s” (more on the name in a moment). That will probably prove difficult because, as noted, those recipes and specific production methods are likely considered propriety B&J information, and therefore continued use of the recipes after expiration of the agreement will probably be precluded under trade secret law (and specifically the Israel Commercial Torts statute).
But ice cream is not exactly high tech, and there are few if any impediments to making ice cream using other recipes and/or methods. Indeed, patents, at least Unilever patents, probably don’t figure into this story at all. Unilever presently has only four patents in force in Israel, and Ben & Jerry’s has none. The most relevant of the Unilever patents is IL 223735, which claims an “aerated frozen confectionary product” and a method for making the product; this does not appear to apply to hard-pack ice cream. IL 164736 claims a “frozen aerated product in a container” in which the container has two compartments; that’s not your typical ice cream, and I haven’t seen any B&J products in Israel that would infringe this. Additionally, the patent will expire in May 2023. IL 156438, “Method for the production of a heterologous protein by a fungus”, and IL 207765, “Stackable cosmetic jar”, are irrelevant.
So the local company could switch to making ice cream similar to B&J’s, but without using proprietary information it obtained from B&J. And to really make things fun, it could sell its products under a name similar to but nevertheless different from “Ben & Jerry’s”. Like “Jen & Barry’s”, which has the ring of a nice Jewish couple from LA, or maybe a sister and brother from the Rockaways.
In this regard, there are two different issues, and from a story today in the New York Post, it’s clear that some people get these issues mixed up. The first issue is, Can B&J’s stop someone from selling ice cream under the name “Jen & Barry’s”? The second issue, related to but independent of the first, is, Can someone selling ice cream under the name “Jen & Barry’s” register that name as a trademark?
Regarding the first issue, I’ve no doubt that B&J’s would seek to prevent the sale in Israel (or anywhere else) of ice cream under the name “Jen & Barry’s”. And not being a trademark specialist, I won’t try to predict the outcome of such a suit. But what I can say is the obtaining of an injunction is not a slam-dunk. The basic question in trademark law is likelihood of confusion: is a consumer likely to (erroneously) think that the competing product was produced by or with the imprimatur of the mark holder? (A subsidiary claim might be that J&B is trying to free-ride on B&J’s mark, viz. to unjustly enrich itself at B&J’s expense.) Here, it would be abundantly clear to every Israeli with working brain cells that the product is NOT Ben & Jerry’s, but rather a response to B&J’s anti-Israel stance, and that the selling point is precisely that it is NOT B&J’s, but is being made by the company that B&J’s screwed. And while the judiciary in no-jury-trial-Israel has a reputation of being left-leaning, there are no doubt judges who would latch onto this fact to find no infringement any of B&J’s registered marks in Israel (they have several) and no unjust enrichment, and to thus refuse to issue an injunction.
The new brand could make this decision even easier for a judge if the brand were to add further distinguishing feature, e.g. use a different font, and/or a different color scheme, and/or instead of having a bucolic Vermont scene in the background including a cow, have a more typical Israel scene, e.g. one showing a sabra plant, viz. a prickly pear cactus.
A particularly interesting legal question would arise if sales of the new brand were geographically limited to those areas where B&J’s has publicly announced it won’t sell. If the new brand were to be launched only after the current agreement with B&J’s has expired – and thus after cessation of sales in those areas – then the new company could (a) argue that Unilever (the mark owner) has no case, because B&J’s announcement – which, as noted, was originally going to apply to all of Israel, and was made only after modification by Unilever – means that Unilever has forfeited its rights in those areas by publicly announcing its view that those areas are not part of Israel, and (b) seek cancellation of B&J’s marks, on grounds of non-use in Judea and Samaria. I’m doubtful the latter argument will gain traction – B&J’s will presumably still be sold in other parts of Israel – but a decision in favor of the competitor on the first grounds is not out of the question, and would send a powerful message to the BDS people.
Turning to the question of registration of the “Jen & Barry’s” mark, this would initially lie within the province of the Israel PTO, where there is already precedent for co-registration of similar marks. In 1972 two Israelis started a pizza chain that they called “Pizza Domino”, but didn’t bother to register their mark. In the 1990’s, the American pizza giant Domino’s Pizza opened branches in Israel, and a fight ensued over TM registrations. In the end, the Commissioner allowed simultaneous registration of the marks of both companies, on the grounds that their respective marks used different color schemes (green and yellow vs. red and blue), and that there were different numbers of dots in the dominoes of the two marks. So while it’s possible a TM examiner might initially object to registration of “Jen & Barry’s”, and a certainty that if allowed, registration would be opposed by Unilever, given the political nature of the dispute over registration of the hypothetical ‘’Jen & Barry’s” mark, it wouldn’t be surprising if ultimately the ILPTO decided to allow the registration of “Jen & Barry’s”. Ditto for the disposition of an appeal of that decision.
The NYPost story linked to above says that Shurat Hadin, a non-profit headed by Nitsana Darshan-Leitner, has filed with the ILPTO to register the mark “Judea and Samaria Ben & Jerry’s”. I have tremendous respect for Ms. Darshan-Leitner and the work that her organization has done over the years. In this particular case, I’m not sure that their tactics make sense, if the goal is to ultimately prevail. Israel TM law does not have a mechanism for TM registration only in Judea and Samaria – you register in all of Israel, which includes Judea & Samaria. And using the name “Ben & Jerry’s”, even if it’s supplemented with other words, in the same font, and with the same color scheme and cow scene, is not a winning formula to register a competing mark. Moreover, the proposed mark is not even in use yet, so there’s no way to show acquisition of secondary meaning. I’ll be surprised if this particular mark gets registered, and I think it would be prudent to withdraw the application and come up with a strategy that has a greater likelihood of success, rather than setting the stage for the ILPTO a court to render a decision that could come back to bite a party that really wants to sell ice cream in Judea & Samaria, under a name that mocks B&J.
Finally, there is one other possibility, and that is that the new licensee could officially not sell in Judea and Samaria, but could turn a blind eye to sales in those areas by others. Since the product was made under license, trademark law would be of no avail to Unilever to prevent such sales – parallel importation is allowed under Israel TM law, and from Unilever’s perspective, that’s exactly would this would be.