Waterfall Security Solutions LTD filed an Israel Trademark Application No. 229934 “ONE WAY TO CONNECT” in class 9 for computer hardware for protecting electronic media. The mark was filed on 12 May 2010 and claimed priority from a US application (no. 77/876008 filed on 19 November 2009.
Since the services and hardware offered under the mark are for one way connections, the Examiner refused the mark on grounds of it being generic and lacking distinguishing features. The evidence submitted by the applicant was rejected since the term always appeared together with the applicant’s name – Waterfall.
The Applicant then entered into a long exchange with the Examiner and argued that at best the services provided were described by the slogan, but not the hardware marked by the slogan, and also filed an affidavit of the CEO of the applicant. When the US mark issued, the Applicant requested allowance under Section 16 of the Ordinance, which allows marks to be allowed based on the foreign precedent.
The Examiner was not to be persuaded, and she requested that the file be transferred to the Commissioner to be ruled on based on the arguments in the file. It is noted that some of the ping pong between Examiner and applicant related to the mark being a slogan, but after Appeal 2144-05-11 Eveready Battery vs. Commissioner of Patents, this issue became moot and the registerability of the mark or otherwise is independent of whether it is a slogan.
It transpires that the name of the company, Waterfall, hints at one way flow. The term ‘one way to connect’ is always used with the company name, Waterfall, and is always written in smaller letters.
The Commissioner ruled that the slogan lacks identifying features and is wholly generic. Consequently, it is not registerable in Israel, even on the basis of a foreign registration.