The IP Factor

Moroccanoil is an Israeli company that manufactures hair products from Argan oil, which is apparently used in Moroccan cooking, and is native to Morocco.

Determining the brand to be descriptive as to origin, the Deputy Commissioner of Patents and Trademarks at the Israel Patent Office has rejected trademark numbers 205142 and 205143 for the stylized name in English and for Moroccan Oil in Hebrew.

The Deputy Commissioner rejected arguments that other countries have registered the mark, and that the product was developed here.

Comment

The company Morrocanoil does not sell oil, but hair products containing argan oil. The name, even in Hebrew, is therefore not descriptive in the sense that something labelled as Golan Wine or Cheddar Cheese is.  

Nevertheless, I consider the decision reasonable, but somewhat arbitrary in that it is not totally consistent with other Israel patent office decisions. Indeed, I fail to see any trend at all in cases like this. The arbitrary nature and the fact that other countries rule differently should strike a warning bell to Israeli companies planning on filing via the Madrid Protocol. A decision like this in the registrant’s national trademark office could invalidate marks filed elsewhere. The moral is that come September 1, with Israel implementing the Madrid Protocol, it will be necessary to seek expert advice as to whether to go the potentially cheaper Madrid route, or whether it would be safer to file separate applications directly in each jurisdiction.

Another question of interest, is whether it ever makes sense to choose a place name as a mark? Think what aggravation could have been saved if neither Budweiser beer had chosen the place name, but had given an arbitrary name to their beer like Mudwise or something.