BACKGROUND
There is consensus that the correct protection for a distinctive object that is mass-produced is by a registered design. In the US, designs are protected by design patents and are required to be aesthetically non-obvious and not merely novel and original. There are various formal requirements for registering a design. In Israel, absolute local novelty is required.
Offering the articles for sale or displaying them locally prior to filing a design registration makes its unregisterable. There is a further drawback. Designs are protectable in Israel for up to 15 years and then the design enters the public domain and third parties can freely copy the design. In contrast, trademarks are renewable indefinitely if the mark is in active use, so there have been many attempts to protect three-dimensional objects, including packaging, as trademarks.
Previous decisions in Israel
In the past, various bottles and other containers were recognized as trademarks in Israel, but in recent years, the policy of the Israel Patent Office has been to refuse such marks on the grounds of double protection. In 2004 former Israel Patent Commissioner Dr. Meir Noam ruled in a circular (MN 28) that three-dimensional trademark applications were to be indicated as such in the filing. This was to clear up the possible confusion of whether an image of a three-dimensional object is the trademark, or the three-dimensional object itself is the mark.
In 2007, Attorney Moshe Goldberg, himself a former Commissioner of Patents and Trademarks, now in private practice, attempted to register a rectangular box with cut-outs for viewing the perfume bottles within, as a trademark. This was rejected as lacking distinctiveness.
In 11487/03 August Storck KG vs. Alfa Intuit Foodstuffs Ltd., concerning the distinctive shape of Toffiffee sweets, Judge Asher Gronish of the Israel Supreme Court ruled that a distinctive shape could serve as a trademark in some circumstances, but left open the question of whether distinctive packaging could be trademark protected.
At the end of 2010, Noah Shalev Shlomovits, the Arbitrator of Intellectual Property addressed this issue in a ruling concerning trademark application number 198897 for tehini in class 29 of the trademark register and ruled that the three-dimensional container that A.G.S. Green Ltd. uses for selling their raw tehini paste could not be registered.
Notably, he did not argue that the specific mark lacked distinctiveness but issued a blanket rejection of the registerability of containers. See 3D Trademark Application for tahini container rejected – but for all the wrong reasons.
I was very critical of that decision because containers such as liqueur bottles and perfume containers are often sufficiently distinctive to serve as an indication of the source of the goods. Furthermore, there is no logic to accept the appearance of an object of manufacture as registerable as a trademark but not the shape of the packaging, since the object is usually sold wrapped, and it is at least as easy to analyze whether the shape of a container is functional /aesthetic and thus should not be a perpetual monopoly, or arbitrary and serves to indicate the brand or origin, or is functional /aesthetic and thus should not be a monopoly.
Several decisions have recently issued that suggest that the Israel Patent Office has backtracked from its position that three-dimesnional containers cannot be protected by trademarks. Unfortunately, the new decisions appear to be inconsistent with each other and provide little guidance to the applicant as to what the policy of the Israel Patent and Trademarks Office is in this regard. What is registerable and what isn’t.
Concerning Israel Trademark Application Number TM 174402 to Diageo North America, Inc, the bottle shown above (Crown Royal Whiskey) was refused based on the circular MN 61 and the Toffiffee precedent (see Previous decisions in Israel above). The applicant appealed, arguing that the shape of the bottle, the engraving and the distinctive cap provided a distinctiveness that could not be considered merely aesthetic or functional. Therefore it could serve as a trademark, i.e. as an indication of the origin of the goods enclosed.
The applicant argued that the test to apply for cosmetics and liqueur bottles is the availability of alternatives. If other packaging choices are available, then use of a distinctive package could indicate the source of the goods, and pointed out that Australia, the US and the European Union had all allowed the trademark. Furthermore, the applicant argued that with liqueurs, the bottle shape is the distinctive feature when purchasing a drink, particularly in a wine bar.
Can container designs be registered? With a warning that the identification of a product by the design of its container is not enough for it to be registerable as a trademark, Shlomovits indicates that
“the shape of a container may be used for branding purposes and this is in the common interest of the manufacturer and the public.”
This statement is very clear and helpful. Unfortunately the meaning of his next statement is somewhat more obscure:
“However, not every bottle, or indeed every bottle that is identified with a particular manufacturer is registerable as a design, but only those that fulfill three requirements: •
Identifying elements beyond the design that have no aesthetic or functional purpose
• Both the public and the supplier view consider the bottle design as indicative of origin
• Identification of container with the product over many years I do not understand what visible design features that are non-functional, can be considered as having no aesthetic purpose.
Designs do not need to be attractive to be registerable. Having clarified the legal framework, Shlomovits goes on to argue that the crisscrossing cut lines of the Crown Royal bottle in question are designed to evoke a crown, that the bottle is long-identified with the product and that there is a public interest in allowing such a design to be unique to the supplier. Consequently he allowed the bottle to be registered as a design.
COMMENT
I don’t know what non-aesthetic design features are. I suspect that the original design purpose of the crisscrossing lines is to evoke a Royal Stuart cut glass pattern as is common in whiskey decanters and glasses. This was probably the consideration behind the rectangular shape of the bottle as well. I am, therefore, not sure that other manufacturers should be prohibited from using cut glass designs on their bottles or the shape, but possibly the combination of both could be registered as a trademark or considered as passing off or unjust enrichment.
CASE: TM 174402 to Diageo North America, Inc. 13 April 2011 before Noach Shalev Shlomovits.
In TM Application 195184 to Martell & Co. the registerability of a cognac bottle is discussed. The bottle in question has a swallow embossed thereon and a raised dome base. The bottle also included the manufacturer’s name (Martell), but the applicant wanted this removed from the trademark. According to applicant’s statements, the raised dome was supposed to indicate the interface between different cultures. The Deputy Commissioner of Patents and Trademarks decided that the combination of the unique bottle shape and the flying bird that has been long identified with the manufacturer and the unique bottle shape was sufficient to allow the bottle to be registered as a trademark.
COMMENT
The decision notes that the bottle has been in existence since 2005 and in Israel since 2006. Although since 2006 some 2,656,500 liters have been sold worldwide, apparently only 1208 70CL bottles. have been sold in Israel which is a mere 846 liters. Consequently, I don’t think this bottle can be considered as well-known in Israel. If the bottle is supposed to indicate the supplier, disclaiming the name makes little sense. If the domed base is to provide a cultural message it is probably not an indication of the supplier. All that is irrelevant. Martell supplies a range of Cognac in a range of bottles and the bottles identify products not the supplier. The bird is a trademark and is used as a trademark. It is a mark fixed onto the bottle and should be registerable as a trademark.
In Appeal Proceeding TM 169606, Shmulovich considered whether to allow a registered trademark for the shape of the Kremlyovskaya vodka bottle, and dissallowed refused the trademark for the bottle but indicated that the glass Kremlin embossed onto the neck could be registered as a trademark. The same logic applies here. The bottle is distinctive and should have been registerable as a design in Israel if an application was filed before it was advertised or marketed. It is not and should not be considered as being a trademark. The embossed flying bird is, however, registerable as a trademark. In a ruling concerning trademark applications 200689 and 200690, an image of a distinctive L’Oreal perfume bottle was filed as a trademark. Since its launch in 2008, the perfume in the bottles has sold some 15,000 units. In his analysis, Noach Shalev Shlomovits states that it is easy to distinguish between the design of a bottle and its appearance, though difficult to define the differences. In this case, the application includes colour, words on the bottle and a distinctive lid. He went on to allow the bottles stating that infringement could be avoided by changing the colour or the words.
COMMENT
Shlomovits develops his doctrine that the test of trademark registerability of a container is whether the visual elements are part of the design or peripheral to it. Unfortunately with regard to the l’Oreal bottle, this is as meaningless in this case as it is in Royal Crown, nor does it explain why the domed base of the Martell cognac bottle which is clearly a design element, is also a trademark. The question is whether the l’Oreal bottle is indicative of perfume or of l’Oreal perfume. I can’t answer that. Nor, however, can Shlomovits. It requires market surveys and questionnaires. CASE: TM 200689 and 200690 to L’Oreal, 13 April 2011, before Noach Shalev Shlomovits
The final case relates to Head and Shoulders shampoo. Israel Trademark Application TM 210043 to Proctor and & Gamble, is reproduced below.
Despite the unique shape of the bottle, which makes it unstable and wastes space in packing, despite the unique shape of the lid, and despite the logo and words that are part of the image, Shalev Shlomovits decided that there was nothing sufficiently distinctive in this design to allow it to be registered as a trademark.
COMMENT
I can’t see a common logical thread through the above decisions. Head & Shoulders is widely purchased for its anti-dandruff properties and is a brand leader that is more expensive than other shampoos. The bottle is distinctive. Arguably to stop competitors adopting the bottle, a design registration is required. That as may be, if over time the bottle is identifiable with the supplier, why should this be different to a perfume or liqueur bottle? The law only distinguishes between goods for classification purposes. The legal requirements for trademark registration are the same for shampoos, perfumes and liqueurs and spirits.
A distinctive bottle recently allowed as a trademark in Japan is the famous Gaultier perfume bottle which is in the shape of a female torso. The bottle is distinctive and arguably indicative of the supplier. The bottle does not evoke Gaultier though. It may or may not provide messages of femininity, beauty and sensuality. I don’t think that Shlomovits would allow it as it does not have non-aesthetic design features, but I am not sure.
The trademarkability of containers was discussed back in 1964 in the US, in Mogen David Wine Corp relating to Kosher wine containers, where the judge stated that:
”trademark rights which happen to continue beyond the expiration of a design patent, do not extend the patent monopoly. They exist independently of it, under different laws and for different reasons. The termination of either has no legal effect on the continuance of the other. When the patent monopoly ends, it ends. The trademark rights do not extend it.” Mogen David Wine Corp 328 F.2d 925 (CCPA 1964)
The issue of whether a container can serve as a trademark is whether it is used as a trademark by the supplier and is identified as being an indication of the origin of the goods by the purchaser. I think the concept of visual elements distinctive of the design is a meaningless distinction.
Posted by Dr Michael Factor 
