“Teva Express” lacks distinctiveness for heath foods

Murder on the Orient Express

The Hebrew word Teva means nature.  I am not sure why Israel’s largest pharmaceutical company calls itself nature as their products are anything but. It may be an example of the classical Hebrew idiom Sagi Nahor by which the  blind are called enlightened.

There is a sandal company called Teva Naor which makes a health sandal whose design is almost Biblical, and is what we used to call Jesus Creepers when I was a teenager. The materials used are synthetic and instead of buckles, they fasten with Velcro fasteners.

Both the above companies are known abroad; the sandal manufacturers partly due to the activities of Mark Thatcher.

Abroad, the term teva may seem distinctive. In Israel, it appears in the name of Nature magazines and environmental pressure groups.

Teva Express LTD. is a company that sells health foods. The Israel Patent and Trademark Office refused to allow the term Teva Express to be registered as a trademark for health foods in class 35 and for health food shops on the grounds that it totally lacks distinguishing futures and that there were a number of other players with similar names.

A device mark including the term Teva Express together with graphical elements was deemed registerable on condition that the mark owners with similar names be alerted and allowed to oppose the registration.

The applicant was unhappy with this and requested an oral hearing at which the trademark office explained that the competing marks Teva Group and Teva Way and (in Hebrew) Teva Col (Col means all) were all registered in the same class 35, and there were also a number of marks in class 5 for pharmaceuticals and cosmetics.

The applicant’s position was that the mark should be considered in its totality and the emphasis is on the second word Express and not on the word Teva. He went on to allege that the term express indicates straight from the (natural) source and fast or quick.

The Deputy Registrar Jaqueline Bracha rejected this argument. Citing Trademark and Related Laws by Seligsohn, 1972 (which is the staple work in Hebrew and a favorite of the Trademark Department) she reasoned that the term express is laudatory and should remain available for others to use. She did not consider the usage to represent a unique idea or to have other redeeming features.

To strengthen her position, Bracha cited the Supreme Court ruling (Appeal to Supreme Court 305/63 Tambour Paint LTD. vs. Commissioner of Trademarks) concerning Super-lac. Lac is the “Hebrew” for lacquer, and Tambour, a paint manufacturer, attempted to register a trademark for Superlac, used as a name for a quality paint. Tambour appealed to the Supreme Court who ruled that the combination Super-lac was perhaps even more generic than lac or super alone.

Bracha also cited the Trademark Office Decision concerning “Achla Yayin” (Israel trademark No. 153408) approximately translated as ‘Great Wine’, where the word Achla was considered totally laudatory and the mark was refused.

In summary, since the mark was originally filed in English in a distinctive font and with a stylized V, the device mark was considered registerable. However, if the applicant wished to pursue the word mark, he was  the word mark was refused, the applicant was allowed a further 14 days to file further evidence and arguments.

Decision of Israel Trademark Office concerning Israel TM Application Number 238745 Teva Express.

COMMENT

The word teva should not be registerable for health foods. The word express is a common word for fast service, and is often used in fast food outlets and the like.

However, the word express is not laudatory. It is different from achla which is slang for great, or super which means better than normal.

I suppose it would be churlish to point out that there are 304 Israel trademark registrations including the term express.  The list includes American Express, Federal Express and Pizza Hut Express, but also Photo Express, Bagel Express and Digital Music Express.

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