In a somewhat odd decision, Israel IP Arbitrator, Noach Shmulovich has ruled to allow registration of slogan ‘A Diamond in Your Pocket’ as a trademark on appeal.
Background
In general, the Israel Patent and Trademark Office does not like registering slogans as trademarks as they are generally NOT considered as indicative of origin since the public does not consider them as being indicative of origin.
Additionally, purely descriptive marks are considered as lacking distinguishing features and are thus also not protectable by trademarks.
Occasionally however, a slogan can become established with a product or service and can be indicative of origin. Thus established usage can over-ride the above considerations.
The case in question
The application relates to a card having diamond dust thereupon. Diamond dust is a by-product of the diamond polishing industry that Israel is a major player in. It’s more or less worthless, but applicant had bright idea of sticking such dust onto a card, and selling it as a gimmick.
Back in January 2007, a trademark examiner rejected the application as lacking distinctive character required under Section a of the Trademark Ordinance, and contravening Registrar of Trademarks Circular Number M.N. 29.
The applicant appealed, pointing out that the above referenced Circular actually provides criteria for registering slogans:
1. distinctive character from usage and
2. if the slogan provides a link between supplier and product.
In consequence, usage can render a slogan registerable.
Shmulovich goes on to explain that marks can be abstract creations and thus worthy of strong protection, generic descriptions that are not protectable at all, and something in between that is indicative of product but not totally descriptive thereof.
In this regard, Israel practice is similar to that of the CFI in Europe.
The adjudicator then goes on to quote a decision where ‘Zach water returns the nature to water’ was considered registerable by Shlomo Zach.
Essentially, according to Shmulovich’s analysis, the slogan ‘a diamond in one’s pocket’ is not an advertising slogan but rather is indicative but not descriptive of goods which don’t include a pocket per so. but is merely pocket sized.
I lose the adjudicator here. He seems to draw a logical inference:
Since the mark under discussion is not a sales slogan, but is indicative and maybe even hints at the product, it is inherently distinctive and despite it never having actually been used, is registerable.
I don’t follow the logic. Apparently Shmulovich divides slogans and phrases into sales jingles which are not distinctive and into non-sales jingles which are distinctive?, regardless of whether the slogan is largely generic and has no redeeming feature like established usage.
I am confused. I suppose the slogan is protected by copyright. No doubt the product, a cheap pocket diamond on a card, has sufficient utility to be patentable if novel and inventive, and since a card has some thickness, it is a three dimensional object and no doubt may be registered as a design as well.
For reasons that I also fail to follow the logic of, the Commissioner of Patents and Trademarks, Dr. Meir Noam, is generally not happy with allowing ‘double protection’, and thinks that 3D objects should be protected by designs and not trademarks, software by copyright and not patents etc. That being his general approach why should this fairly useless vendable product by protectable by tradmark and not merely copyright?
i’m afraid i have to agree with you on that. a doubtful decision in a serious of puzzling verdicts by the same arbitrator seemingly contradicting official declared policy (see the decision concerning TM 163849, 163850, 163853 for gas containers) supported by faint arguments and avoiding real thorough dicussion.
and btw, designs can be 2D as well (prints etc.) – see the defintion in the ordinance.
[...] With a name like Bodtrade, I suspect that the services provided are the sort of thing that should best be used with discretion and without leaving itemised phone statements for family members to find. That as may be, it contrasts nicely with the Virgin candles ruling in Israel see http://blog.ipfactor.co.il/2007/11/10/david-loses-virgin-to-goliath/, where Virgin enterprises succeeded in crushing a small business making candles out of olive oil, presumably for sacramental purposes. Unlike the classification for candles, Virgin Enterprises does have telecommunication and hotel businesses, so the case for Branson’s conglomerate arguing dilution, and if my suspicions are correct, tarnishing, are far stronger than they were in Israel. Generally, slogans of the type above are not considered in Israel at all, with the notable exception of “a diamond in your pocket” http://blog.ipfactor.co.il/2009/03/17/israel-patent-office-allows-descriptive-slogan-to-be-registere…. [...]
Earlier, I was trying to get an feed for the RSS to your blogsite & for some odd reason it isn’t properly displaying in Google Chrome. Any suggestions???