Non-Traditional Trademarks in Israel

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1 Non-Traditional Trademark Special Published on September 2012 Non-Traditional Trademarks in Israel By Aharon Factor and Michael Factor, IP Factor, Israel This article reviews the law and trademark office practice regarding trademark registration of nontraditional marks in Israel and considers registering holograms, moving images and single colours, the shape of a physical product, the shape of packaging of a product, and registering sounds, smell and taste marks. Although focused on the practice in Israel, we have found that other examining authorities apply similar considerations when contemplating the registering of such non-traditional marks. The author sits on the non-traditional marks committee of INTA, and has noted that internationally there is a general attempt by practitioners to widen the range of indications of the origin of goods that may be registered, beyond what may fairly be described as a being a 'mark'. Section 1 of the Israeli Trademark Ordinance, defines a trademark as: "letters, numerals, words, images, or other signs or combinations thereof, whether two-dimensional or three-dimensional". This broad definition implies that anything that can be represented graphically as a "sign" may be registered as a trademark, and this arguably includes non-traditional trademarks such as threedimensional marks, colors, sounds, scents (olfactory marks) and tastes Three-dimensional marks Whilst, three dimensional marks such as the famous Rolls Royce Spirit of Ecstasy may certainly be registered, it is not clear that the shape of a product or a container may be registered. In a ruling concerning "passing off" and unjust enrichment, the Supreme Court upheld the District Court s refusal to issue an injunction against Meshubach Food Industries, Jerusalem, and A. M. Emek Snackfoods who marketed similar shaped snacks to "Apropos" an Israeli version of General Mill's Bugles that is made under license from General Mills, the Supreme Court held that there were no rights in the shape of the snack food. However, in 11487/03 August Storck KG v. lfa Intuit Foodstuffs Ltd., concerning the distinctive shape of Toffiffee sweets, Judge Asher Gronish of the Israel Supreme Court ruled that a distinctive shape could serve as a trademark in some circumstances, but left open the question of whether distinctive packaging could be trademark protected. Following the Toffiffee ruling, the former Commissioner, Dr Meir Noam issued a Circular (Circular MN. 61) curtailing the registerability of three dimensional trademarks which depict the goods themselves, intended to be covered by the mark, are deemed to be not inherently distinctive. Noam held that the most fitting way to protect the shape of a product is by registering an industrial design rather than by a trademark. However, since a design can only be registered in Israel for a maximum of 15 years, whereas a trademark may be renewed indefinitely, there is a commercial interest in registering the shape of goods or containers as trademarks. Page 1

2 According to the Circular, it may be possible to register a three-dimensional trademark in special cases, where sufficient evidence is provided to demonstrate that 3 cumulative conditions have been fulfilled: 1. the image requested to be registered, in practice fulfils the role of a trademark, namely it indicates the source of the goods intended to be sold under the mark; 2. the image requested to be registered, does not serve an aesthetic or functional purpose; and 3. as a result of use, the mark has acquired a distinctive character, sufficiently persuasive that the mark falls into the category of a special case. By way of example, the Deputy Registrar rendered a decision relating to a three-dimensional mark depicting a bottle of Kremlyovskaya Vodka, as applied by Spirits International Intellectual Property B.V., of Strassen, Luxembourg. The Deputy Registrar ruled that an image fulfils the role of a trademark if the image alludes or provides an indication of the source (manufacturer) of the goods covered by the mark. Accordingly, only outlines of an image which from the outset are intended to serve as a trademark, that is that they do not have a functional purpose for the goods nor are they part of the aesthetic design of the goods, and over the course of time the general public has learnt to identify them as such, can be considered suitable for registration as a trademark. Due to the difficulty in making such distinctions, the Deputy Registrar provided assisting criteria, for example where the outlines of the image diverge from the general form of the image and hint at the name or other element which alludes to the manufacturer or source of the goods more than to the goods themselves. In the particular case reviewed, the Deputy Registrar ruled that the vodka bottle did not diverge from a conventional vodka bottle but rather had aesthetic features which were designed to draw the eye and attract the attention of the customer, thereby fulfilling an aesthetic function. The Deputy Registrar did however, find amongst the various elements of the bottle, one threedimensional feature which he did not consider to be part of the normal design of a bottle, specifically a relief, a symbol of the Kremlin, depicted on the neck of the bottle. This element alludes to the name of the goods, "Vodka of the Kremlin", however, the element in itself when viewing the mark in its entirety was not a central element of the three-dimensional mark. Accordingly, the Deputy Registrar ruled that the requested mark was not permissible as a trademark. In a further case, Israel Trademark Applications No and were filed by Trijicon Ltd., for telescopic rifle sights. The applications claimed priority from earlier trademark applications filed in the US. On examination, the marks were rejected for being images of the goods themselves rather than constituting the source of the goods covered by the marks. The applicant argued that threedimensional marks may be registered if they possess acquired distinctiveness and argued that these marks had achieved such requirement. The Trademark Office rejected the argument and found no acquired or inherent distinctiveness with regard to the rifle-sight applications. Unfortunately, recent decisions of the Trademark Office relating to 3D trademark registration of container shapes have lacked consistency. At the end of 2010, the Deputy Registrar addressed this issue in a ruling concerning trademark application number for tehini paste in class 29, and ruled that the three-dimensional container of the applicant could not be registered. The Arbitrator did not posit the argument that the specific mark lacked distinctiveness but issued instead a blanket Page 2

3 rejection of the registerability of containers, despite the fact that containers such as liqueur bottles and perfume containers may be sufficiently distinctive to serve as an indication of the source of the goods contained in the bottles. Other recent decisions of the Trademark Office have ruled that 3D containers may be protected by trademarks. Israel Trademark Application Number TM , concerning the distinctive Crown Royal Whisky bottle of Diageo North America, Inc, was refused based on the aforementioned circular MN 61. The applicant appealed, arguing that the shape of the bottle, the engraving and the distinctive cap were distinctive and indicated the source of the goods and were not merely aesthetic or functional. The applicant argued that the test to apply for cosmetics and liqueur bottles is the availability of alternatives. If other packaging choices are available, then use of a distinctive package could indicate the source of the goods. The Deputy Registrar ruled that the shape of a container may be used for branding purposes and this is in the common interest of the manufacturer and the public, and held that the crisscrossing cut lines of the Crown Royal bottle are designed to evoke a crown, the bottle is long-identified with the product and there is a public interest in allowing such a mark to be unique to the supplier. The bottle was accordingly accepted as a trademark. In TM Application relating to the registerability of a cognac bottle by Martell & Co., the bottle had a swallow embossed on it together with a raised dome base. The applicant argued that the bottle s raised dome indicated the interface between different cultures. Here, the Deputy Registrar ruled that the combination of the unique bottle shape and the flying bird had been long identified with the manufacturer and the unique bottle shape was sufficient to allow the bottle to be registered as a trademark. Martell supplies a range of Cognac in a range of bottles and the bottles identify products not the supplier. The bird is a trademark and is used as a trademark. It is a mark fixed onto the bottle and should be registerable as a trademark rather than the specific bottle. In a ruling concerning TM Applications and , an image of a distinctive L Oreal perfume bottle was filed as a trademark. Since its launch in 2008, the perfume had sold some 15,000 units in Israel. The Deputy Commissioner ruled that whilst it is easy to distinguish between the design of a bottle and its appearance, it is difficult to define the differences between the two. In that particular case, the application included color, words on the bottle and a distinctive lid on the bottle. The Deputy Commissioner accepted the perfume bottles and ruled that infringement could be avoided by changing the color or the words on the bottle. In a ruling relating to Israel Trademark Application TM for Proctor & Gamble's Head and Shoulders shampoo bottle, the Deputy Registrar ruled that there was nothing sufficiently distinctive in the design of the bottle to allow it to be registered as a trademark, this despite the unique shape of the bottle and the lid, the logo and words on the bottle. Unfortunately, therefore, despite the Supreme Court ruling which should be binding, there is a lack of consistency in the Israel Trademark Office rulings, and it is very difficult to predict how a threedimensional trademark application for a container will be considered. Colors Colors are registerable as trademarks in Israel. However, a single color is generally regarded as lacking inherent distinctiveness. Accordingly, single colors per se will be allowed for registration in rare cases. In Eastman Kodak Company v Conko Lt., the Tel Aviv District Court ruled that Kodak alone was entitled to use the color yellow as a trademark with regard to film and other photography products, since Kodak had used the color yellow for more than 30 years to market its products globally. The Page 3

4 Trademark Office has registered a specific shade of Orange for telecommunications company, Orange Brand Services Limited, and a specific shade of red for Kapro Industries Ltd., for level and measuring tools in class 9. In a recent decision of the Tel Aviv District Court, Dexon Ltd., v Agis Commercial Agency (1989) Ltd., and Bayer Schering Pharma AG, the court dismissed the plaintiff's claim to exclusive rights to the concept of "a purple birth control pill" for white pills sold in purple blister packing. The Court ruled that purple and pink are female colors widely used for packaging goods and pharmaceuticals aimed at women, and it would be trade restrictive and unjustified to grant the plaintiff exclusive rights to the color purple for the packaging of its pills. The Court referred to the "color depletion theory" whereby there are only a limited number of colors in the spectrum which will soon run out if trademarks were granted for all shades of a color, see further: U.S. Supreme Court decisions, Campbell Soup Co. v. Armour & Co., 175 F. 2d 795; and First Brands Co. v. Fred Meyer Inc., 809 F. 2d Sounds Sounds fall under the legal classification "other signs". Accordingly, they are registerable in Israel as trademarks, provided that they are sufficiently distinct. At the time of filing, the sound mark will need to be displayed graphically and visually. Accordingly, a graphical, representation of the mark in the form of a musical notation or score should be filed for the requested sound, together with an audio sound recording. By way or example trademark No is a sound mark filed by Intel, which protects the sequence of notes played when a computer driven by an Intel processor is booted up. The mark was filed on paper as a sheet of music and an audio recording of the mark was also submitted. Scent marks and taste marks The rapid technological and commercial developments in the food and cosmetic industries arguably justify the registerability of scent and taste marks under the legal classification "other signs". However, to date no such marks have been registered in Israel. To register a taste or smell, the applicant would presumably need to show the inherent distinctiveness of the taste or smell and that it actually serves as a trademark indicative of the supplier of the good, and is not inherent to the product itself. A literal interpretation of the law has been suggested as grounds for rejecting such marks unless they can be simply and easily depicted in words or images. Unlike sounds, presently there does not appear to be appropriate conventions for so doing. Holograms and moving images In principle, holograms and moving images should be registerable as trademarks as they fall under the legal category of "images or combinations" thereof. Here too, the applicant will need to file a graphical representation of the image and will be required to show that the image is intended to serve in practice as a trademark, and is an indication of the source of the goods to be supplied under the mark. In conclusion, it is to be assumed that the rapid developments in industry, technology and commerce will lead in their wake to the development of new types of trademarks appealing to different senses. As we've seen with copyright and patents, there is a tendency to separate the goal posts, widening the registerable subject matter. This may, howver, lead to a backlash. Page 4

5 Whether the Israel Trademark Ordinance is sufficiently wide to accommodate these new, nontraditional types of trademarks and whether the registrar is sufficiently open-minded to creatively interpret the Ordinance remains to be seen. The challenge for the Israel Trademark Office is to provide clear, consistent guidelines for registering these non-traditional trademarks. It is however likely that whatever the registrar does, the courts will reconsider.this makes advising clients regarding the likelihood of such marks registering and being enforceable is not easy. Due to telle-quelle considerations, it is not unlikely that if a non-traditional mark issues abroad, it will also issue in Israel. Thus as far as trademarks are concerned we live in interesting times. For more information, please contact: Aharon Factor aharon@ipfactor.co.il Michael Factor mfactor@ipfactor.co.il IP Fa tor Israel's International Patent and Trademark Attorneys Page 5

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