“Scarless” Refused Trademark Registration

Medicure Technologies LTD applied for ISrael Tademark No. 248551 for the work ‘Scarless’ in class 5, for a gel that prevents tissue scarring.

The Israel Trademark Department refused to register the mark, ruling that it is descriptive and cannot be registered due to Section 8a of the Trademark Ordinance since the mark is lacking in characteristics required for the term to be used for branding purposes.

The Applicant argued that the product they were selling was a gel and the word Scarless does not imply a gel. Someone hearing the name Scarless, would, at best, consider it as hinting at the product, and noted that there were marks such as “Follow Up Postage” and New Look, which are far more descriptive. The Applicant requested judicial review of the Examiner’s decision, based on the submissions in the file forgoing the right to a hearing.

The Deputy Commissioner, Ms Jacqueline Bracha noted that since the Applicant had not raised the issue of acquired distinctiveness, this was an issue that she need not address. She further noted that the mark scarless was a word mark.

As to marks that hint, Ms Bracha gave the example of magazines with titles such as Family, as being such marks. Quoting Seligsohn 1972 (The Israel Trademark Bible), she noted that a makr that indicates the purpose of a product or the results of use of the product are considered descriptive.

Citing Kerly’s Law of Tradmarkas and Tradenames:

“The situations specifically covered by [arts 3(1)(c)/7(1)(c)] are those in which the sign is capable of designating a “characteristic” of the goods or services referred to in the application….

The provision extends to any characteristic whatsoever of goods or services, irrespective of how significant the characteristic may be commercially.”

Whilst acknowledging that the desired mark does not include the word gel, she considered this irrelevant in asserting that the mark is descriptive.

She went on to examine the ‘New Look’ mark cited by the applicant, and also the slogan ‘Free Your Skin’ and came to the conclusion that the mark “Scarless” was indeed descriptive and, upheld the Examiner’s decision not to allow it to be registered.

COMMENT

The Deputy Commissioner is correct. Whilst the product sold is a gel with alleged scar preventing properties, the customer purchases a way of preventing scarring and couldn’t care two hoots if he product is a gel, a roll-on preparation or an aerosol spray. The term scarless is descriptive of the main property of the product and it would be wrong to allow one manufacturer a monopoly on this descriptive term.

Furthermore, a quick Internet search shows that there a plethora of products and plastic surgeries that use the term scarless.

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