In general, container shapes are registerable as designs. However, designs have a relatively short lifespan. Trademarks may be renewed indefinitely. Consequently, where trademark registration is possible, this may be preferred.
The previous Commissioner of Patents and Trademarks, Dr Meir Noam, believed that registerability of a package shape as a design precluded registerability as a trademark, using a sort of ‘double jeopardy’ logic to argue that by the law providing one channel for protection, it was effectively disallowing the other channel. After the Toffiffee decision by the Israel Supreme Court, several iconic bottle designs, such as Royal Crown Whisky and Christian D’Or pefume bottles were registered as trademarks.
The Coca Cola Company filed a trademark application No. 184325 for a special bottle design for Fanta. The trademark application depicts is a distinctive short, bottle that had an almost spherical chamber and a short neck. One presumes that the underlying logic is that an orange flavored soft drink be sold in what is close to an orange shaped bottle. That as may be, following guidelines drew up by Dr Noam, the trademark examiner rejected the application as being a 3D representation of the container for the goods, and thus not registerable.
After taking a couple of years worth of extensions, the IP Director of Coca Cola, Ms Danise Van Vuuren filed an affidavit in response to the Office Action, and the trademark department rejected this as well, and suggested turning the case over to the Commissioner of Patents and Trademarks for a ruling on the subject. The Applicant claimed that the bottle design was significantly different from other soft drink bottles and that consumers identified it with the applicant. The Applicant went on to stress the inherent ergonomic disadvantages of the bottle which was more difficult to hold than conventional bottles, and therefore argued that protection for perpetuity would therefore hardly adversely affect free competition. Finally, the Applicant claimed that the bottle shape had acquired distinctiveness through sales and marketing over a five year period and consequently was identified with the product and could serve as a trademark. This assertion was backed with impressive statistics regarding Coca Cola’s history, international sales volume in over 200 countries, and, perhaps more relevantly, more than 1.5 million Fanta bottles of the requested shape had sold in Israel over the previous 5 years, generating $750,000. (This implies that the bottles sold in Israel for 50 cents which appears unlikely, certainly not at recommended retail prices). Finally, the mark had successfully been registered in Europe, South Africa, Columbia and Singapore.
In the ruling, Ms Jaqueline Bracha noted that there were three types of 3 dimensional trademarks. Where the mark is not the shape of the article or its package, there is no problem registering the mark. Then, quoting a decision of Dr Noam’s concerning cosmetic packages, she went on to rule that the considerations regarding registerability or otherwise of 3D package shapes should be clear and straight forward. She went on to rule that 3D trademarks should have inherent or acquired distinctiveness that indicates the source of the goods to the consumer without limiting fair competition. Then she cited Seligsohn (the classic, though dated Israeli treatise on trademarks), and Kerly’s Law of Trademarks and Trade names, 15th Edition. Essentially, she seems to argue that containers should be considered like any other mark, but then retracts and notes that anyway, the shape includes the word Fanta embossed thereon. She then noted that the applicant has not proven that the mark should be considered a well-known mark, but had proven 750,000 items sold over the previous 5 years.
In conclusion, she ruled that so long as the word Fanta is clearly embossed on the container, the shape of the bottle (including the word) should be registerable.
The Case: TM 184325 to Coca Cola (Fanta bottle), before Adjudicator Jaqueline Bracha, 27 September 2012.
It seems that the doctrine of double protection is well and truly dead, and theoretically, the shape of a container may be protectable as a trademark in Israel. However, it also appears that unless the name of the product is part of the design, or the bottle shapes are trully iconic, in practice such marks will generally be refused.