Can the appearance of a smartphone be trademarked?

April 12, 2015

We recently reported a circular summing up Israel Patent Office policy regarding 3D trademarks. Whilst radiator caps and the like are clearly registerable, in general, the Israel Patent Office is wary of allowing trademarks for the shape of functional articles or for novel packaging and it is necessary to show that the shape is not merely functional but has acquired distinctiveness.

Smartphone

It seems that the circular was a prequel to a recently published ruling wherein the Israel Patent Office refused to allow the shape of an Apple i-phone to be registered as a trademark. The mark in question is IL 236294 as shown above. The mark covers “Handheld mobile digital electronic devices for use as a mobile phone, digital audio and video player, handheld computer, personal digital assistant, electronic organizer, electronic notepad, electronic calendar, electronic book reader, calculator, and camera, for sending and receiving electronic mail and other digital data, and for accessing the Internet; all included in class 9″. The mark was filed in March 2011 and claims priority from a Hong Kong mark filed in September 2010.

The Examiner considered the requested mark as an image of the good being sold and not a trademark showing the origin of the good and therefore refused it under Section 8a of the Israel Trademark Ordinance 1972, following the guidelines of Circular MN 61 from 2008.

The examiner considered the correct protection for that shown is as a registered design and that in order to register the design as a trademark it is necessary to show that it is neither aesthetic or functional in essence, and has acquired the trademark characteristic of indicating origin through usage.

The Applicant responded that the image was of an I-Phone 4 which was exclusively associated with Apple and was well recognized and respected worldwide, and had successfully been registered as a trademark in many countries, including Australia, the US, Ukraine, turkey, Switzerland, Japan, France, the EU, and Hong Kong. The Applicant further requested that the mark be allowed under Section 16 based on the corresponding US registration no. 3,470,983. (Section 16 allows marks having minimal distinctiveness to be registered based on a registration in Applicant’s home country).
The examiner pointed out that the issue wasn’t minimal distinctiveness or the lack of it, but rather if the requested mark is the appearance of an article that is aesthetic or functional in essence, and so upheld the refusal.

The Applecant Applicant reiterated that the mark had acquired distinctiveness and that it was identified with the applicant and brought an Affidavit from Thomas R. La Perel, Apple’s general legal counsel. In the Affidavit, La Perle stated that “The Application is for the design of Apple’s distinctive iPhone telecommunications device featuring Apple’s unique product configuration and colorful icon display”. La Perle stressed the product’s design and that “Consumers identify the get up with the product and Apple as its source. He noted that Apple had spent vast sums advertising and promoting their product and gave evidence for this.

RULING
In her ruling, Ms Bracha noted that trademarks may be 2 or 3 dimensional and are suppose to be indications by the manufacturer of the origin of the goods. In this case, the mark was not indicated as being a three dimensional mark and it is correct to assume that it is a two dimensional mark, and the applicant argued that it was a two dimensional mark of the face of the i-phone which is rectangular with curved corners, with icons in rows of four, as a feature that can be changed.
In Appeal 11487/03 August Storck KG vs. Alfa Intuit food Products LTD (Toffiffee) the Supreme Court ruled that the appearance of a good (whether 2d or 3d) may serve as a trademark but only if it is very different from that typical of the type of product, such that the consumer comprehends it as an indication of origin. This is eseentuially what the ECJ ruled in C456/01, 457/01 Henkel KGaH v. OHIM (2005) 34-39 http://curia.europa.eu/en/content/juris/index.htm which referred to August Storck KG vs. OHIM sections 25-29 to the effect that the law applies to two dimensional images of the three dimensional product.

Thus whether or not the mark is two or three dimensional, if it is a representation of the product or its wrapping, the issue is whether it is functional or aesthetic in essence, or serves as an indication of origin.

Applicant argued that the image is of the front surface and is flat, so three dimensionality and product appearance is not an issue. The deputy commissioner disagrees.

Here the Deputy Commissioner related to recently issued circular 032/2015 that replaces MN 61 and provides a certain leniency to representations of flagship products.

In this instance, the registration in the US is for the shape of the phone with specific icons in a specific pattern and the application in Israel is very much broader.

In Europe, EC Regulation 207/2009 states that:
“1. The following shall not be registered or, if registered, shall be liable to be declared invalid:

(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;”
Regulation 3 continues to state that marks that have an acquired distinctiveness may be registered provided that they are not one of the alternatives in Regulation 1 which is an absolute bar to registration.
Citing T.C. Jehoram, C. van Nispen, T. Huydencoper European Trademark Law, p. 103 (2010(:
“In connection with the fact that the absolute ground for exclusion of Article 3(1)(e) Directive cannot be overcome by acquiring distinctive character through use, it is also relevant to asses whether or not the shape previously gave the product substantive value. The grounds for exclusion may not arise before the shape has acquired a reputation as a distinctive sign. In that case: once affected by the absolute exclusion, this exclusion always applies.
In other words, before considering whether or not the mark has acquired distinctiveness, it is necessary to address whether it is in a class of goods that can not be registered under any circumstances without the company name or the like.
The Applicant argued that the issue is not whether the design is aesthetic or functional, but if it is exclusively aesthetic or functional. Thus in cases like this where the appearance is functional or aesthetic but not exclusively so, and where the consumer would identify the appearance as a source of indication of the product, the appearance should be registerable.
The Supreme Court used the word significant functionality or aesthetic character (ממשי) where as the European court used the word exclusive (בלעדי), to the effect that as far as Israel is concerned, a significant functional / aesthetic characteristic is sufficient to prevent registration, even if the good has acquired distinctiveness.

The applicant tried arguing that since the appearance could vary somewhat, the appearance of a smartphone cannot be considered essentially functional / aesthetic and thus not registerable.

The Deputy Commissioner accepted that function could be attained differently, but considered the design as aesthetic and thus non-registerable as a trademark, though registerable as a design. She was not prepared to allow registration on the grounds that other smartphones were variations on the theme, considering the design aesthetic.

In the State of California, the I-phone was recognized as having “unregistered trade dress” and the applicant considered this fact as indicative that there was something that could be registered as a trademark. The Deputy Commissioner cited IL 169447- IL 16949 Ein Gedi Cosmetics to the effect that even in the US trade-dress is relevant to unfair competition but to trademark registerability:

Restatement of Unfair Competition (3rd):
“The term ‘trade dress’ is often used to describe the overall appearance or image of goods or services as offered for sale in the marketplace. ‘Trade dress’ traditionally includes the appearance of labels, wrappers, and containers used in packaging a product as well as displays and other materials used in presenting the product to prospective purchasers […]”
Furthermore, in the US, as far as trade dress of a product and not its packaging is concerned, one requires acquired distinctiveness.
The Deputy Commissioner considered arguments by the Applicant as beign the first to launch a product with this appearance as of relevance to the issue of design registerability but irrelevant to trademark registerability per se.
As far as the graphic user interface GUI is concerned, the Deputy Commissioner cited Rachel Stigler, Ooey GUI: The Messy Protection of Graphical User Interfaces, 12 Nw. J. Tech. & Intell. Prop. 215 (2014).http://scholarlycommons.law.northwestern.edu/njtip/vol12/iss3/3 to the effect that:
“…trade dress right only attach once the GUI becomes so distinctive that it is recognizable by a majority of consumers (i.e., achieves near-famous status)…”

In general,design registration is preferable to copyright or trade dress:

“While at least one commentator suggests that design patents should be eliminated, arguing that protection afforded by copyright and trade dress is enough, design patents provide a more clearly-defined scope of GUI protection than copyright or trade dress (individually or combined), are gaining momentum in the courts and in the software industry, and are becoming faster and cheaper to obtain.”

In conclusion, Ms Bracha considers that since Toffiffee, the Israel Court has departed from the US and considers that not only does a product shape not have inherent distinctiveness but to be registered, it cannot have a significant inherent functionality or aesthetic character.

As to the trade dress issues, Ms Bracha noted that Israel law was not sufficiently clear if this is to be considered passing off, but did not consider that the design could be registered as a trademark due to its functional and aesthetic aspects.
Ms Bracha considered the acquired distinctiveness issue moot, but nevertheless argued that in this instance, the i-phone does not have acquired distinctiveness as a trademark. She did not consider Section 16 relevant.

Ruling re IL 236294 by Deputy Commissioner Ms Jacqueline Bracha, 19 March 2015.

COMMENT

apple suaceThe issue is whether the design is used to indicate Apple as the sauce source.

The problem remains that the design is identified with Apple, and is a design and should be treated as such. It cannot fairly be registered as a trademark. In my opinion, after A.Sh.I.R. torts of unjust enrichment and passing up could be brought if there is a case of passing off. Once competitor clearly writes Samsung or similar on the front of the case, I am not sure that they can’t copy the design unless it is registered.

This case is reminiscent of Interlego where Lego tried to obtain copyright for their distinctive brick design. Lego is a design and not a copyright. The appearance of the i-phone is a design and not a trademark.

The Israel Patent Office does not generally allow marks for functional or aesthetic elements, but only if they are used as an indication of origin, i.e. as a trademark. If the above image is shown on the outside of a box, is a graphic label of what is inside, or is it an image of what is inside?

The Israel Patent Office is applying its policy fairly in what is perhaps a difficult case. We understand that Apple may appeal this decision to the courts. That is the correct procedure with regards to patent office policy.


WIPO To Make Two Stops in the Holyland

March 18, 2015

road show

WIPO, the World Intellectual Property Organization that is manages the PCT system for filing International patents and the Madrid Protocol for filing international trademarks has a team of roving lecturers who will be performing lecturing in Israel.

Concerts Seminars are scheduled for 13th April in Beer Sheva and for the 15th April in Haifa.

More details may be found here

The provisional program in Beer Sheva Park Carusso for Science, 79 Atzmaut Street, is as follows:

Monday, April 13, 2015

9.30 a.m. – 9.50 a.m. Opening Session

Welcome addresses by:
Mr. Asa Kling, Director, Israel Patent Office (ILPO)
Local industry\Chief Scientist\Politician TBD
Mr. Yoshiyuki Takagi, Assistant Director General, Global Infrastructure Sector (GIS), WIPO

9.50 a.m. – 10.10 a.m. Topic 1: The ILPO as WIPO’s cooperation partner and service provider for the users of the IP system

Speaker: Mr. Asa Kling, ILPO\

10.10 a.m. – 10.30 a.m. Topic 2: Introduction to WIPO
Development of the International Legal Framework
Major Intellectual Property Economic Studies

Speaker: Mr. Moshe Leimberg, Senior Program Officer, Section for Coordination of Developed countries, Department for Transition and Developed Countries (TDC), WIPO

10.30 a.m. – 10.45 a.m. Topic 3: The Patent Cooperation Treaty (PCT) –
Introduction and Future Developments

Speaker: Mr. Matthew Bryan, Director, PCT Legal Division, Patents and Technology Sector, (PTS), WIPO

10.45 a.m. – 11.00 a.m. The PCT – The actual practice (questions, experiences, discussion)

Moderator: Mr. Michael Bart, Head, PCT division, ILPO

Speakers: Mr. Matthew Bryan, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.00 a.m. – 11.15 a.m. Coffee break

11.15 a.m. – 11.35 a.m. Topic 4: Global Intellectual Property Systems
The Madrid System for the International Registration of Marks
The Hague System for the International Registration of Industrial Designs

Speaker: Mrs. Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector (BDS), WIPO

11.35 a.m. – 11.50 a.m. Global Intellectual Property Systems: The actual practice (questions, experiences, discussion)

Moderator: Ms. Anat Levi-Ne’eman, Head, Trademarks Division, ILPO

Speakers: Ms. Debbie Roenning, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.50 a.m. – 12.10 p.m. Topic 5: WIPO’s Arbitration and Mediation Center

Speaker: Mr. Matthew Bryan, WIPO

12.10 p.m. – 12.40 p.m. Topic 6: Global Databases for Intellectual Property Platforms and Tools for the Connected Knowledge Economy, with an emphasis on WIPO Green and WIPO Re:Search

Speaker: Mr. Yoshiyuki Takagi, WIPO

12.40 p.m. – 1.00 p.m. Topic 7: WIPO digital copyright developments

Speaker: Mr. Paolo Lanteri, Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO

1.00 p.m. – 1.30 p.m. CLOSING SESSION

Questions and Answers

1.30 p.m. – 2.30 p.m. Lunch break with specific Sessions (Patents, Trademarks, Databases, and Copyright)

2.30 p.m. – 3.00 p.m. Ceremony to present the ILPO prize for an academic thesis on various fields of IP

Presenter: Dr. Daniel Ben Oliel, Associate Professor, Faculty of Law, Haifa University

The Wednesday Program in Haifa will be held on Wednesday, April 15 2015 at the Technion in the Batler Hall, Neeman Centre, Technion:

9.00 a.m. – 9.20 a.m. Opening Session

Welcome addresses by:
Mr. Asa Kling, Director, Israel Patent Office (ILPO)
Local industry\Chief Scientist\Politician TBD
Mr. Yoshiyuki Takagi, Assistant Director General, Global Infrastructure Sector (GIS), WIPO

9.20 a.m. – 9.40 a.m. Topic 1: The ILPO as WIPO’s cooperation partner and service provider for the users of the IP system

Speaker: Mr. Asa Kling, ILPO

9.40 a.m. – 10.00 a.m. Topic 2: Introduction to WIPO
Development of the International Legal Framework
Major Intellectual Property Economic Studies

Speaker: Mr. Moshe Leimberg, Senior Program Officer, Section for Coordination of Developed countries, Department for Transition and Developed Countries (TDC), WIPO

10.00 a.m. – 10.15 a.m. Topic 3: The Patent Cooperation Treaty (PCT) –
Introduction and Future Developments

Speaker: Mr. Matthew Bryan, Director, PCT Legal Division, Patents and Technology Sector, (PTS), WIPO

10.15 a.m. – 10.35 a.m. The PCT – The actual practice (questions, experiences, discussion)

Moderator: Mr. Michael Bart, Head, PCT division, ILPO

Speakers: Mr. Matthew Bryan, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

10.35 a.m. – 10.50 a.m. Coffee break

10.50 a.m. – 11.10 a.m. Topic 4: Global Intellectual Property Systems
The Madrid System for the International Registration of Marks
The Hague System for the International Registration of Industrial Designs

Speaker: Mrs. Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector (BDS), WIPO

11.10 a.m. – 11.25 a.m. Global Intellectual Property Systems: The actual practice (questions, experiences, discussion)

Moderator: Ms. Anat Levi-Ne’eman, Head, Trademarks Division, ILPO

Speakers: Ms. Debbie Roenning, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.25 a.m. – 11.45 a.m. Topic 5: WIPO’s Arbitration and Mediation Center

Speaker: Mr. Matthew Bryan, WIPO

11.45 a.m. – 12.15 p.m. Topic 6: Global Databases for Intellectual Property Platforms and Tools for the Connected Knowledge Economy, with an emphasis on WIPO Green and WIPO Re:Search

Speaker: Mr. Yoshiyuki Takagi, WIPO

12.15 p.m. – 12.35 p.m. Topic 7: WIPO digital copyright developments

Speaker: Mr. Paolo Lanteri, Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO

12.35 p.m. – 1.00 p.m. CLOSING SESSION

Questions and Answers

1.00 p.m. – 2.00 p.m. Lunch break with specific Sessions (Patents, Trademarks, Databases, and Copyright)

COMMENTS

We suspect that this portends Israel joining the Hague System for the International Registration of Industrial Designs or some other design upheaval.

In general I applaud the idea of not doing every seminar in Tel Aviv or Jerusalem. However, the majority of practitioners to not live in Haifa or Beer Sheva. Why start these events at 9 am? Surely a 10 am kick-off would be more appropriate where people are traveling in?


March 8, 2015

cornflakes

On May 31, 1895, John Harvey Kellogg of battle Creek Michigan filed US 558,393 for “flaked cereal and process of preparing same”

US558393-0.

Nearly 120 years later, US IP firm Brooks Kushman joined forces with Italian IP Firm Modiano and Partners, to host a patent breakfast in Liliot, a Tel Aviv restaurant with a social agenda.

Liliyot

The event, by invitation only, was open to boutique IP firms, and, apart from having to drive into Tel Aviv, was a congenial way to start the day, see old friends and colleagues and to learn about recent IP developments. Driving into Tel Aviv from time to time certainly makes one appreciate not living or working there.

Micaela Modliano

Micaela Modliano spoke about using the PPH to accelerate patent prosecution in Europe, and, assuming that the basis of a PPH request would be a US or Israel patent application, discussed the type of amendments that would and wouldn’t be allowed. Israel and Europe have only had a PPH arrangement since January of the year (reported on this blog before the Israel Patent Office announcement).

erin bowles

Erin Bowles of Brooks Kushman spoke about the new possibilities of challenging patent validity since the America Invents Act, particularly a sort of opposition window within 9 months of patents issuing. Erin was on her first visit to Israel and, not being familiar with Purim (which lasts longer in modern day Israel than is strictly speaking, Biblically ordained) was rather surprised to see Robo-cops, smurfs and other weird and wonderful creatures walking past the restaurant.

Robyn Lederman2   

The presentations were informative and dealt with new issues. The Modliano sisters and Robyn Lederman were charming hosts. The food was delicious and the company was excellent. It was a great opportunity to catch up with ex-mentors and ex-trainees, colleagues and competitors.

Liliot helps teenagers from deprived backgrounds to learn catering skills and it was a great choice of venue.


Over 400 Followers!

February 25, 2015

400

We are delighted to note that we now have over 400 followers who receive emails each time we make a blog post.

We have over 100 visits most days and over 2750 opening our monthly newsletters.

We thank you all for your support.

 


Clip Fresh Ruling Upheld On Appeal

February 25, 2015

clip-fresh

Back in July 2014, the Israel Patent Office allowed the Clip Fresh logo mark of Farm Chalk LTD to be registered despite an opposition from earlier registered ‘Click and Fresh’ to Millennium Marketing Intertrade (1999). The Examiner considered the likelihood of confusion to be unproven. See here for more details.

Millennium Marketing Intertrade (1999) appealed the decision and the decision regarding costs (reduced from 92,932 Shekels to 80,000 Shekels) to the Tel Aviv District Court under the Right to Appeal.

They considered that despite the different appearance of the marks, when the sound of the mark is considered, there is a likelihood of confusion.

Furthermore, “By Farm Chalk” –which appears in the mark, was never actually used, rather the mark holder used the slogan “Keep it Fresh”, so the decision to allow the registration on the grounds that the words By Farm Chalk prevented confusion should be reversed.

.The Appellant argued that the F of Fresh looks like an ampersand (&) and the mark holder simply adapted their mark and was confusingly similar in appearance. Furthermore, the costs of 80,000 Shekels were disproportionate to the work involved in the opposition.

The mark holder argued that the Appeal should have been filed within 45 days and was actually filed 4 months after it issued and so should be thrown out. Furthermore, the Click and Fresh mark only issued after disclaiming the descriptive words ‘click’ and ‘fresh’ and so cannot be considered misleading the public as to the source of the goods. The costs were not much different from costs awarded in other cases and Appeals to reduce costs should only be accepted in extreme circumstances.

The appeal was filed within 45 days of the costs ruling though not within 45 days of the main ruling. Judge Yehudit Shnitzer considered that the costs of 80,000 Shekels were indeed significant and could be grounds for deciding to file an appeal. She therefore was prepared to review the case and rule on its merits.

As to the phonetic similarity, Judge Shnitzer considered that food containers are not bought by requesting the goods by brand over the counter, but by picking up and examining the goods. She therefore considered that the difference in visual aspects of the marks outweighed the similarities in sound.

Neither mark would have issued for the words, only for the stylized logo. In an appeal regarding the registration of a mark there was no room to consider whether the mark was actually used as registered, since this was a separate ground for canceling a mark after a period of time, but not within the scope of the appeal. Since the click and fresh registration only issued by disclaiming the words ‘click’ and ‘fresh’, the protection afforded by the sounds of these words is very limited.

The marks have to be considered in their entirety, with the emphasis on the visual aspects not the audible ones, and noting similarities in disclaimed words, but not giving such disclaimed words much weight.

As there are a lot of similar goods on the market, someone interested in a specific brand would be expected to take care.

It is important to prevent trademark abuse and policy dictates having to avoid trademarks providing an effective monopoly on goods having certain characteristics, rather than serving as an indication of source. Allegations of free riding, unfair competition and confusing the public were rejected in favour of free competition.

As to the costs awarded, Judge Shitzer noted that the costs were based on actual cost submissions and were calculated and not random. She accepted that there were cases with a single hearing and no witnesses from abroad where the costs awarded were much lower. She did not, however, consider the costs to be outrageous and did not see fit to interfere.

After ruling to reject the Appeal, Judge Shitzer awarded a further 30,000 Shekels costs against Millenium Marketing Intertrade (1999).

Appeal to Tel Aviv District Court 27992-08-14 Millenium Marketing Intertrade 1999 vs. Farm Chalk Investment LTD. Concerning Israel trademark opposition ruling concerning Farm Chalk’s stylized graphic mark by Asa Kling, the appeal ruling by Judge Shnitzer, February 2015    

COMMENT

This decision vindicating the Commissioner’s ruling is correct. I think that the decision also shows that Ms Yaara Shoshani-Caspi’s ruling re Humus B’Ribua is wrong.


Humus Squared!

February 22, 2015

humus b'ribua

Humus b’Ribua, (literally Humus squared, or Humus in a square) filed Israel trademark no. 250521 on 28 October 2012 for catering services.

The mark is shown above. For those not familiar with Hebrew, the mark consists of the words Humus b’Ribua, (literally Humus squared, or Humus in a square) followed by, in smaller letters, to wipe the corners, the whole written over a square background.

On 17 March 2013, a company called Humus b’Ribua LTD, (literally Humus squared, or Humus in a square) opposed the mark. Humus b’Ribua filed their counter-statement of case. Both sides filed evidence and a hearing was held before the Adjudicator, Ms Yaara Shoshani Caspi.

 

The owner of the Humus B’Ribua mark, Mr Pivnik, claimed to be familiar with the legal issues and chose to handle this without legal representation.

The mark Humus B’Ribua is intended to be a franchised chain of restaurants.

The Opposer, Guy Yakar, owns a chain of felafel outlets, Felafel b’ribua that sells Israel fast food, including falafel and humus. The chain was set up in 1995 and sells square felafel balls cubes through 10 outlets. The Felafel b’ribua logo (TM 150166) is shown below.

Felafel B'ribua

In addition, on filing the opposition, Guy Yakar and Felafel b’ribua submitted a further trademark application (TM 254346) as follows:

felafel b'ribua 2

In addition to mentioning Felafel b’ribua, the mark includes the Hebrew words for “manufactured from Humus since 1995″.

For those not familiar with these Middle Eastern fast foods, Humus is the Arabic and Hebrew word for chickpeas. Humus is served as a paste made from boiled and then mashed chickpeas. It is often flavoured with Tehini, which is a paste made from sesame seeds. Felafel are chickpea cutlets, balls (or apparently cubes) of course chickpea paste that may also include breadcrumbs, and are deep fried.

Felafel B’ribua claimed confusingly similar marks.

They claimed that they are a successful chain of fast food outlets whose main products are hummus paste and falafel, both made from hummus (chickpeas). They noted their established mark, which they asserted was in use from prior to registration in June 2001. They argued that their second mark, though filed in March 2014, was part of a branding and marketing campaign from 2011, and supported this with a write up from Idiot Achronot, invoices from a publicity agent and photos of signs and adverts. They claimed to spend hundreds of thousands of shekels a year on advertising. Felafel B’ribua further claimed that about 50% of their sales came from humus sold as humus paste (and not as falafel), however because of the confidential nature of the information, no evidence was submitted to back this claim. To support their claim of a likelihood of confusion, Felafel B’ribua produced two examples of actual customer confusion.

Humus b’ribua denied the similarity. Mr Pivnik claimed to have set up his chain of humus outlets in 2011, where humus is vended in an original shape that he’s conceived. His product is humus on a square plate and he’s never intended selling square falafel or to pass himself off as Felafel b’ribua.

He further claimed to have spent a lot of time and money in developing his recipe and marketing the brand. Finally, he noted changes made to the logo to differentiate toastnik b’ribua, now issued as TM 252402.

The Ruling

The Opposition is based on Sections 11(6), 11(9) and 11(13) of the Trademark Ordinance.

Claims of dilution unfair competition and of the mark being a well known mark were dropped, so the ruling depends on the whether the marks are confusingly similar or not.

Section 11(9) states that identical marks for similar goods or for goods in similar classes, and for confusingly similar marks are not registerable.

The logic behind Section 11(9) is to protect the registered mark owner from losing customers due to confusion, and to prevent customer confusion.

The likelihood of confusion is determined by the triple test, where the first strand (sight and sound of the mark) is given more weight than the distribution channels, clientele and other considerations.

The word B’ribua is identical. Whether or not the words felafel and humus, and the additional phrases concerning wiping, etc. are sufficient to distinguish between the marks requires the other tests, i..e consideration of the distribution channels, clientele and other considerations.

Ms Shoshani Caspi accepts that the two foods are considered related local Middle Eastern fast food and that felafel contain humus. In addition, she was convinced that the requested mark would lead customers to consider that the two chains had a common owner with a common culinary consideration, since one sold square felafel and the other sold square plates of humus.

The customer pool for the two chains is substantially identical.

The terms humus and felafel are generic and descriptive and cannot therefore be used to differentiate between the two chains. The superscript 2 simply implies ‘squared’.

Ms Shoshani-Caspi considered that the average consumer with an imperfect memory would be likely to be confused. The catch phrase about wiping the corners, or made from humus would not serve as branding and are swallowed up in the overall design, as are differences in font.

The Felafel B’Ribua chain is well established and well publicized. Mr Pivrik apparently acknowledged that the opposer had thought up square felafel balls. Were the brand to be square falafel, it would be considered descriptive. Squared does not imply larger portions and is no laudatory.

In her ruling, Ms Shoshani Caspi ruled that the marks were indeed confusingly similar and so refused to allow the Humus b’ribua mark to be registered. She further awarded costs and 5000 Shekels in legal fees to Humus B’ribua.

 Re Israel TM 250521 “Humus b’ribua” to Pivnik, Opposition by Guy Yakar (owner of Felafel b’ribua) ruling by Ms Shoshani-Caspi, 6 January,  2015

COMMENT

squares that look round

squares that look round

I suspect that I am not the correct consumer to decide whether there is a likelihood of confusion as I am unlikely to be tempted by either chain, and see both foodstuffs as generic. Nevertheless, I think that marks should be considered in their totality, not analyzed as their parts. The word humus does not sound like felafel. Despite their common ingredients, the two words connote different products. I therefore don’t think that there is any likelihood of confusion.

If one chain called itself Felafel Meruba (Square Felafel) and a competitor chose the name  Felafel B’Ribua, there would be a case to answer for. The terms sound similar.  However, felafel does not sound like humus and these words are dominant in the company names.

Despite the Israel Supreme Court decision re Apropos (General Mill’s Bugles), I disagree that because Felafel Meruba (Square Felafel) is descriptive and thus can’t be trademarked since Felafel cubes are non-standard shaped.

There is a chain of bagel outlets called Holy Bagel. This is a play on words reflecting the fact that the chain is centered on Jerusalem and that bagels have a hole. I think that Hole Bagels, Whole Bagel and Holey Bagel are confusingly similar. Holy Felafel, Holy Pizza are not.

 

 

 

 


Wishing Our Asian Clients a Happy New Year

February 17, 2015

billy goats gruff

 

We wish our Asian associates and clients a Happy New Year of the Goat, and hope that patent trolls get what’s coming to them!


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