Energy Brands LTD. filed Israel Trademark Number 217469 on 17 December 2008.
The mark is shown below.
The mark was filed in class 32 for non-alcoholic beverages including water, flavoured water, fortified water, full water, energy drinks, improved energy drinks and isotonic energy drinks, syrups and concentrates, powders and bases for preparing beverages and fruit drinks.
On examination, the trademark division of the Israel Patent Agency issued an office action on 16 March 2010 arguing that the mark was a representation of the three dimensional container that the product was vended in and was not registerable. The applicant paid two years worth of extension fees to keep the application alive and on 18 March 2102 filed a response to the effect that the mark was changes to a two dimensional representation and submitted evidence that the mark was inherently distinctive and had been registered in some 25 jurisdictions around the world.
On 17 June 2012, the Israel Trademark Department issued an office action and rejected the claim that the mark was two dimensional, and invited the applicant to a hearing before the Commissioner.
On 12 July 2012, the applicant apparently responded without prejudice that the mark was indeed two dimensional, without in any way compromising on arguments pertaining to its three dimensional characteristics.
At a hearing, the applicant argued that three dimensional containers were registerable as trademarks, with a survey of the relevant case law. Nevertheless, the applicant argues that the mark was a two dimensional mark and should be registered as such.
Applicant argued that the bottle had acquired distinctiveness and that the shape and appearance of the bottle, including the wide cap and shape of the bottle, and the vertical and horizontal stripes created a distinctive product.
The bottle was not available in Israel, but applicant argued that there are 3,000,000 trips abroad by Israelis and the product is widely recognized abroad. Israelis surf the net and the product is shown on the net, and popular website Y-Net had listed the product as one that should be imported and distributed in Israel.
Applicant argued that product was registerable as a three dimensional or a two dimensional trademark in Israel and submitted an affidavit from Yoo Sun Park, the IP Consultant of Coca Cola, the mother company of Energy Brands Inc. Park stated that the the product was sold in some 25 countries and is fortified with vitamins. The product is registered in some 40 countries, including the US, Australia and European Union. Over the past five years, worldwide sales exceed a billion dollars. There have been over a million dollars of publicity and the product was an official product at the London 2012 Olympics. No evidence was submitted to substantiate the claims, since Coca Cola does not provide advertising costs.
In his ruling, Commissioner Assa Kling noted that the requirements for registration are identical for two and three dimensional marks, and since the images showed the various elevations of a three dimensional object he would examine it as a three dimensional mark.
As to the registerability of a three dimensional mark, Kling referred to the Absolut vodka decision, as a summary reference for the requirements of registering a three dimensional container as a trademark.
He concurred that such marks are registerable and that there should not be special hard and fast rules. He noted that such three dimensional products included functional design elements of the container and additional elements.
In this case, there is a bottle shape that he did not consider distinctive when compared to other bottles in catalogues provided by the applicant. For example, the ICE WATER seems to be sold in an identical bottle.
Kling quoted a recent UK Decision
“In reality, none of these bottles or jars has inherent distinctive character. In use, they always carry a label bearing the real trademark for the goods. We do not say it is impossible for goods to bear more than one trademark, but the reality is that none of the applicants for these marks use of trust the shape as an indication of origin They can only acquire distinctive character after years of use.”
Kling did not consider the addition of the word “vitaminwater” and the grey band around the bottle, one third up from the base as sufficient to make the distinctive the three dimensionality of the mark as a whole. Thus Kling rejected the mark as having inherent distinctiveness.
Since all the publicity and usage was abroad, Kling rejected that it had acquired distinctiveness in Israel.
The rejection was upheld.
Decision by Assa Kling, Israel Patent Office, 29 January 2014
It seems to me that Coca Cola should have provided evidence of sales and advertising to support the affidavit, but perhaps there is room to request that such evidence be considered a trade-secret and not published by the Israel Patent Office.
I think the applicants should be forced to consider their application as relating to a mark of known and declared dimensionality. Simultaneously arguing that the mark is both two dimensional and three dimensional renders the mark unclear and ill defined.
There is an inherent problem in representing three dimensional images on two dimensional paper. That said, the eyes perceive a two dimensional image of three dimensional objects. Visual marks can only really be two dimensional. If, however, top, bottom, front, back and side views are submitted in an application, one can conclude that the applicant is intending to submit the views of a three dimensional object to register a three dimensional mark. This is presumably a rebuttable supposition and I understand that the applicant, represented by Shlomo Cohen Law Offices, was tryign to rebut this assumption.
I don’t understand exactly how a mark can be two and three dimensional simultaneously. I am tempted to argue that marks considered identical to prior art or lacking distinctive characteristics actually have distinctive characteristics in fourth and fifth dimensions, but that due to the limitation of the patent office requiring submissions in a two dimensional square, these characteristics are simply difficult to depict. I don’t know how the patent office would respond to such a suggestion. As a physicist, I am used to believing five impossible things before breakfast, but most of the patent office staff are merely lawyers, who have their own set of fictions, but these are different from those used by physicists.
I urge readers to obtain and read the geometrical satire Flatlanders by Edwin Abbott 1884.