Child Track LTD filed trademark application numbers 229697 and 229698 for “Child Guard” covering “Software used to monitor and record user activity data from and into non-mobile devices including personal computers and mobile devices including cellular phones and personal digital assistants (PDA); software to monitor and report all information uploaded and downloaded vie the Internet and all information entering and exiting from non-mobile and mobile devices; restricting access to and by computer networks, to and of undesired websites, media, individuals and facilities” in class 9, and for “Scientific and technological services; design and development of software; security services including monitoring and recording data from and into non-mobile personal devices including personal computers and mobile personal devices including cellular phones and personal digital assistants (PDA); reporting information uploaded and downloaded via the Internet and all information entering and exiting from non-mobile and mobile devices; restricting access to and by computer networks to and of undesired websites, media and individuals and facilities” in class 42.
NOTE – the marks are for the words Child Guard. The logo above is not the registered mark. It is included in this blog post as an illustration only.
The word marks were filed in May 2010 and the Examiner at the Israel Patent and Trademark Office refused the mark as being descriptive. The basis for the rejection was Section 8a of the Trademark Ordinance 1972, which prohibits registration of descriptive marks. The Applicant claimed that the word mark was not intended to label protective software or services, but rather to track entrance to such websites and to inform a responsible adult. This claim was supported by exemplary printouts.
The Trademark Department stated that it was willing to allow registration of the word mark based on acquired distinctiveness under Section 8b if evidence was submitted to support this contention. The Applicant submitted a response claiming that it had acquired distinctiveness, but this wasn’t submitted as an affidavit and had no evidentiary value. The trademark department noted this, and the Applicant resubmitted a signed statement by a Mr Benzi Salomon. This was not considered persuasive and the mark was refused.
The Applicant filed an Appeal, and the Deputy Commissioner agreed to rule based on the claims in the file, forgoing a hearing.
Ms Bracha ruled that a trademark has to be distinctive in order to indicate the source of goods, distinguishing one source from competing suppliers. Citing Seligsohn, she went on to note that whether or not a mark is considered distinctive depends on the goods or services and what is acceptable in that category.
The Applicant’s response regarding the nature of the service provided was that it does not guard children against entering inappropriate cites, so could not be considered descriptive. Instead, it allowed free access but informed a responsible adult as to where the child was surfing.
The Deputy Commissioner felt that the mark was not totally descriptive of monitoring and was more indicative, and as such, the name would not provide an immediate association with the service provided. She accepted that a mark that indicates the purpose of a service could be descriptive, but felt that the service and program did not itself provide protection, but only with adult intervention.
Ms Bracha noted that a mark, once issued, could be used for additional products so was wary of allowing a mark merely because current services and computer program functionality may be indicated but not described. She felt, however, that there was enough of a difference for the mark to have a degree of distinctiveness. She also noted that the requested word mark was not the only or even the natural way to describe the product and service. Furthermore, she did not consider the mark laudatory, and noted that the examiner had not raised that as an objection either.
Conducting an Internet search via Google, Ms Bracha noted that Child Guard was typically used for physical devices that provided some degree of protection to babies. There was a company called Guard Child but it was not certain that they were active in Israel. Nor was there evidence that they used the mark for similar goods or services.
Consequently, Ms Bracha ruled that the mark was inherently distinctive, thereby rendering the issue of acquired distinctiveness moot. Somewhat superfluously, Ms Bracha noted that the applicant’s evidence established that the mark had been in use since 2009 and in November 2011 they had received some television coverage. The product had been demonstrated to parents and youth. Despite the lacunae in the evidence regarding the amount of use, some use was shown. Consequently she allowed the mark to be registered.
Ex Partes Ruling re Israel Trademarks 229697 and 229698 for Child Guard, Ms Jacqueline Bracha, 6 October 2014.
I suspect that teenagers moderate their Internet activities if they know that a parent or teacher is receiving details of where they are surfing, so that actual adult intervention is not necessarily needed.
More importantly, I find this decision lacks analytical rigour. The supplementary evidence supplied is evidence of use of the term as a trademark. It is not evidence of acquired distinctiveness. Anything may be used as a trademark. Not everything can be registered.
Registering marks provides a potentially everlasting exclusivity for the mark, where third parties can be prevented from using the mark. I think it is poor policy to allow one party the exclusive right to mark his software products and services that are designed to protect children as “child guard”. I think this is the reason why descriptive marks are not allowed to be registered.
In this instance, I think the Examiner was correct and the Deputy Commissioner was wrong to reverse the ruling on Appeal.