Alexandria Real Estate Equities Inc. filed Israel Trademark Applications Numbers 203221 to 203225 for the word mark Alexandria – Health Science in classes 35, 36, 27, 39 and 42 for a variety of services relating to real estate. On examination, the marks were refused unless the applicant disclaimed the phrase “health science”.
Usually disclaimers are required where words are generic or descriptive to prevent an applicant from preventing third parties from using the term. In this case, the trademark examiner felt that the term was misleading since the services provided had nothing to do with health or science.
Arguments that the term had been trademarked abroad were (correctly) dismissed as being hardly relevant.
The applicant claimed that there were no grounds for refusing the mark for confusion but agreed to disclaim the words science and health individually. The examiner wasn’t satisfied and the applicant appealed to the Commissioner of Patents and Trademarks.
Ms Yaara Shoshani Caspi upheld the right of the patent and trademark office to defend the populace against confusing brands under Section 6(11) and 18 of the Law, but felt that marketing storage rental, architectural design services, real estate development services and the like as health science was unlikely to create a confusion with the regular customers or with the medical profession as to the scientific or health benefits of such services. Furthermore, following Commissioner of trademarks Circular MN 84 from 6 September 2010, there is no need to disclaim generic terms, so she allowed the mark to continue to allowance with neither word science nor health disclaimed.
COMMENT
I am pleased that the patent office has decided not to widely refuse marks as being confusing to the public. Israel’s largest company, Teva, meaning natural, makes pharmaceuticals. The term Christian Science http://en.wikipedia.org/wiki/Christian_Science is not science as commonly used. Were this refusal to have been upheld, there would be room for a lot of mischief.
I am not sure why the Realty company has called itself health science, but submit that it hardly matters.
