The Center for Actualizing Medical Rights LTD extensively use a radio advertisement that starts “חלית? נפצעת?” i.e. “You’ve become ill? You’ve been wounded?”. It then goes on to offer advice that is not legal advice and gives a phone number.
The Israel Bar is less than happy with this and similar organizations offering ‘non legal advice’. That as may be, On 2 January 2102, the Center filed Israel trademark no. 243620 for “You’ve become ill? You’ve been wounded?” in classes 36 and 45.
The trademark department refused to register the mark as lacking distinctiveness and as being descriptive of the services provided and thus not registerable under Section 11(10) of the trademark ordinance 1972. The Center claimed that the mark had acquired distinctiveness through use and submitted affidavits from MS Gitit Shlomi, Head of Foreign Connections and from an expert. The trademark department remained unconvinced, however. Representatives of the Center requested an oral hearing, submitted a further affidavit from Ms Shlomi and also requested that sections of their evidence remain confidential from third parties.
During the examination period, Zchuti (My Rights), a competing non-legal advice company that also advertises extensively on the radio, filed a statement to the effect that the desired mark was generic and that allowing one service provider to monopolize it would provide that party with an unfair advantage. They also submitted four examples of how they were also using the phrase. This letter was not forwarded to the applicants, but was shown to them at the hearing and they were allowed to respond in any way they desired.
Ms Jacqueline Bracha analyzed the case and concluded that there were three legal issues to address:
- the status of the third-party submission
- the request for confidentiality of applicants submissions
- whether the mark was registerable, particularly whether or not it had acquired distinctiveness.
She went on to analyze these considerations in turn.
The status of the third-party submission
Applicant considered Zchuti’s submission should be ignored as they are not a party in the trademark registration procedure and can choose to submit their objections to the mark being registered in an opposition proceedings. Furthermore, their submission was not submitted as an affidavit and should be ignored for that reason as well.
In her Ruling, Ms Bracha noted that unlike the Israel Patent Law 1967 which specifically allows third-party submissions prior to examination proceeding, the trademark ordinance is silent on the matter. To the extent that such submissions are relevant to the registration process, examiners may take the submitted material into account but should inform the applicant to give the applicant a chance to respond. Support for this position was based on Christopher Morcom, Ashley Roughton & James Graham, The Modern Law of Trade Marks 164 (1999) and Judge Zamir’s comments in 987/94 Euronet golden Lines (1992) vs. Minister of telecommunications P.D. 48(5) 412, 423. She therefore rejected the Applicant’s position in this regard. As the submission was a factual one, there was no obligation for it to be backed up by an affidavit either.
The Applicant requested that some of their evidence remain confidential as it relates to trade secrets. The confidentiality request relies on Circular 028/2014 which opens up trademark examination files to third parties.
Section 23 of the Trade Law allows the courts to maintain confidential trade secrets submitted in a legal case and to set rules for submitting trade-secrets as evidence. The courts may issue a non-publication order on trade-secrets if the maintaining of something as a trade-secret does not prevent justice from occurring. Judicial personnel such as patent examiners are included in the courts. In the case of 2376/13 Rami-Levi vs. Moshe Dahan the Supreme Court noted that trade-secret confidentiality was ad hoc by its nature.
Ms Bracha ruled that to the extent that data submitted is relied upon to show use of a mark and acquired distinctiveness, the public has a right to know the data. On the other hand, other business related data can and may be kept secret. The number of workers at the Center is not germane to the issue of registration of the mark, nor is the sum spent in advertising. It is sufficient to note that the mark has been used extensively over a period of years. As far as the ex partes registration procedure is concerned, the material could be kept confidential. However, should the mark be allowed and Zchuti or some other third party should file an opposition, the confidentiality request issue would have to be reassessed.
As to the registerability of the mark, both Ms Shlomi’s evidence and the independent expert testimony by Professor Katz show that the public identifies the slogan “You’ve become ill? You’ve been wounded?” with the Center for Actualizing Medical Rights LTD.
The mark is not descriptive. The phrase You’ve become ill? You’ve been wounded?” does not relate to compensation from national or private insurance. Zchuti’s usage of the mark does not render it generic. Ms B racha ruled that the mark may be registered as allowed and published for opposition purposes.
Israel trademark no. 243620 for “You’ve become ill? You’ve been wounded?” ex-partes hearing, Ms Bracha, 1 Dec 2014.