The registerability of an article of manufacture as a 3D trademark revisited

Israel Trademark Applications No. 174765 and 174766 relate to telescopic rifle sights, and are attempts to register the appearance of the rifle sights as a trademark. The applicant was Trijicon, represented by my alma mater, Seligsohn, Gabrieli and Co.

background

In Israel, registered designs are protectable for 14 years. Trademarks are protectable indefinitely. Consequently, there are attempts, from time to time to register the shape of an article as a trademark. In addition the being renewable indefinitely, trademarks can be filed for objects already on the market, whereas in Israel, designs require absolute local novelty, unless they are filed within six months of a design registration abroad as a convention filing.

the shape of an object is generally functional and indicative of the good not the manufacturer or supplier of the good. Interestingly, and somewhat analogous to the present application, Japan has allowed the Maglite as a trademark. The Maglite is rather well-known of course…

The applications claimed priority from earlier trademark applications filed in the US. On examination, the marks wer rejected as not being marks indicative of the source of the goods, but as images of the goods themselves; the correct way to protect them being design registrations.

The applicant argued that in accordance with Circular MN 28, three-dimensional marks could be registered if they had acquired distinctiveness and argued that these marks had achieved this requirement. Following a decision by the commissioner of Patents and Trademarks concerning an attempt to register a cardboard cosmetic box with cut-out windows as a trademark , the trademark office reiterated their refusal. However, since this ruling was appealed to the Supreme Court, the applicant requested to stay the proceeding until the Supreme Court ruling.

In May 2008, following 11487/03 Augustus Storck, where the Toffiffee praline was accepted as a trademark by the Supreme Court, the commissioner of patents issued a further Circular refusing to allow the shape of objects to be registered as trademarks.

The applicant then requested allowance under section 16 of the trademark ordinance. Essentially, since the marks had been allowed in the US, they should be allowed in Israel if even a smidgen of distinctiveness had been acquired. This request was followed with a request for a hearing. At the hearing it transpired that the marks were originally refused in the US as well, but were eventually allowed as having acquired distinctiveness.

Under section 16 there is a long list of reasons for refusal of a mark and the applicant argued that this list was exhaustive, and did not cover the present scenario. essentially, that where a mark has been allowed in the country of origin, it should be allowed locally in Israel as well.

The previous Commissioner of Patents, Dr Meir Noam, generally took the position that the availability of registered design protection precluded trademark registration and instructed the Examiners accordingly. Ruling that the marks were descriptive, the outgoing Deputy Commissioner of Trademarks Noach Shalev Shlomovits ruled that the marks could not and had not acquired distinctiveness and should remain available to the public and competitors. The application was rejected.

COMMENT

In this case, it does seem that the design in functional and not indicative of origin of goods. Thus I concur with Shlomovits’ ruling. Nevertheless, I enjoyed the splendid, if pointless rearguard action to register the appearance of the goods as a trademark, which real.



Categories: Israel Patent Office Rulings, Israel Trademark, trademarks, Uncategorized

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