Robert Ravivo filed Israel Trademark Application No. 248161 or “The Israel Center for Imaging Hair Follicles” for various hair treatments in Class 44.
The trademark examiner rejected the application as being descriptive, generic and wholly lacking distinguishing features. To show acquired distinctiveness, applicant filed a survey and a couple of expert affidavits, however the trademark department remained unconvinced.
At a hearing before the Deputy Registrar of Patents and Trademarks, counsel for applicant argued that the survey showed inherent and acquired distinctiveness and also noted that the mark had been the subject of a large marketing campaign in 2012 and 2013, including featuring on a television show with high ratings. Counsel for applicant noted that the term Israel Center relates to a specific place and other similar marks such as the IsraelCenter for Operating on the Spinal Column had been registered in 2012. Finally, counsel noted that the mark would protect the public from confusion from similar service providers.
In her ruling, Deputy RegistrarJaqueline Bracha argued that there was nothing clever about the name and that it was purely descriptive of the services provided, whether considered in its entirety or as a collection of elements. Furthermore, the Applicant acknowledged that there were other centers in Israel providing similar follicle imaging services. Based on this, the Deputy Registrar rejected inherent distinctiveness.
Having concluded a lack of inherent distinctiveness, the Deputy Registrar argued that it was necessary to show substantial proof of acquired distinctiveness to allow registration on grounds of acquired distinctiveness.
Applicant showed advertising expenses, letters of recommendation of clients and that Google hits for the name only showed his company. Also submitted were details of a TV campaign that also related to another brand, HairCity. The survey was taken by 268 respondents in areas with Israel Centers for Imaging Hair Follicles. Of these, some 76 respondents suffered from balding symptoms. Three questions were relevant:
- Which of the following institutes have you heard about?
- Have you heard about the IsraelCenter for Imaging Hair Follicles?
- To the best of your knowledge, which of the following companies are related to the Israel Centers for Imaging Hair Follicles?
Some 43 out of 76 respondents had heard of the Israel Center for Imaging Hair Follicles, whereas 46 related the Israel Center for Imaging Hair Follicles to Hair City. In other words, more respondents drew a relationship to another firm known to provide anti balding treatment, than admitted knowing about the company.
The Deputy Commissioner theorized that the following question: What is the Israel Center for Imaging Hair Follicles? Would have had a high correct response since the name is descriptive.
The Deputy Commissioner noted that the survey was conducted close to the massive investment in publicity and did not indicate a general awareness. He also noted that the questionnaire was geographically rigged and was unclear as to competing service providers in the same area.
Since the applicant also used term hair city, the trademark department suggested combining the mark and was prepared to register a mark for Israel Center for Imaging Hair Follicles – Hair City. However, the Applicant was not prepared to accept this compromise.
The commissioner accepted the argument of the trademark department that the Israel Center for Operating on the Spinal Column, which had been registered, had shown more acquired distinctiveness
Citing former President of the Supreme Court Dorit Beinish, the Deputy Commissioner argued that to show acquired distinctiveness, there must be a clear association between the service provider and the mark, not only of the type of service.
The Deputy Commissioner accepted trademark department’s argument that the evidence submitted was not substantive enough to be conclusive.
Since the applicant argued that others were using the name as justification for registering, Ms Bracha turned this around and argued that the mark did not have sufficient association with a particular service provider in the eye of the public to warrant registration, and rejected the mark.