A Mr Yehuda Malki filed two trademark applications, 220542 and 220581 for Old Jaffa, for Preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively.
On allowance, the Council for Creating Plants and for their Marketing – Citrus Division opposed the marks.
Israel trademark no. 237678 which covers soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 issued without opposition, but the the Council for Creating Plants and for their Marketing – Citrus Division field for cancellation of the mark.
On 12 September 2012, the Commissioner Asa Kling ordered the cases to be heard together and on 31 October 2012, the three cases were heard.
The Applicant, unrepresented, informed the Commissioner that he did not intend cross-examining the Opposer, and so the Opposer was exempted from appearing.
The Opposer considered that using the term Jaffa for anything not including citrus fruits was false labeling as the term was understood in the trademark ordinance and registration of the mark was therefore against the public good.
The Applicant rejected this interpretation and considered that considerations regarding false labeling were beyond what should be considered when registering trademarks. The public good should allow him to go about his business.
Section 11(5) of the Trademark Ordinance 1972 states that trademarks that are immoral or against the public good cannot be registered.
Section 2a of the Ordinance states that Jaffa is an appellation of origin under the law of Appellations of Origin 1965, and suing the word Jaffa, Jaffas or Joppa in Hebrew or English, or marks including the word or sounding like the word was not allowed under Section 2. Section 2b states that addition of words such as kind, type, copy, goods originating or the like did not stop using these terms form being forbidden.
According to the Commissioner, the concept of “public good” is a general principle that the courts can apply wherever they consider it appropriate, and this changes from time to time and from place to place. However, as far as the term Jaffa is concerned, it is an appellation of origin that has specific legislation designed to advance Israel’s citrus industry.
In the legislation relating to the appellation of origin it is noted that the special law was drafted as the term Jaffa was being used for citrus fruit not originating in Israel and for other goods that are not citrus fruit and are not necessarily from Israel.
Consequently, the Commissioner accepted that the appellation of origin was designed to promote Israel’s citrus industry worldwide. Marks such as Old Jaffa were, indeed, against the public interest.
The Applicant considered that the term ‘Old’ was different from type or kind, and effectively removed the term Old Jaffa from the special law protecting Jaffa.
The Commissioner considered that arguably a law from the Sixties may be no longer relevant and noted that back in 2005, the previous Commissioner considered whether or not to extend the appellation of origin protection for Jaffa, but noted that the protection was extended and is in force.
Furthermore, since the word JAFFA is protected as a trademark (Israel trademark 20481) the requested mark should not be considered distinct within classes 29 and 30, and shouldn’t be allowed to be registered.
Despite the fact that fresh fruit and dried goods are often sold in different places, this is not always the case. The term old is not enough to allow registration, since Old Jaffa refers to Jaffa (in other words, it’s not like the difference between York and New York).
Were the applicants’ goods related to the Old City of Jaffa, possibly consumers would associate the location separately from citrus fruits but currently that is not the case. Consequently, trademarks 220541, 220542 are refused and 237678 is canceled. The parties are invited to request costs.
Decision re Opposition to 220542 and 220581, and cancellation of 237678 re Old Jaffa; Malki vs. the Council for Creating Plants and for their Marketing – Citrus Division by Asa Kling, 4 January 2015.
Currently, to provide Jaffa oranges all year round, the term is used for marketing oranges originating in South Africa and not just in Israel.
Still, the District Court over-ruled the previous Commissioner and allowed the mark to be registered. See here.
Still, I think that the fact that the term is no longer an indication of the origins of the citrus fruit does provide justification to interpret the rule narrowly, and, in my opinion, the term Old Jaffa does conjure up the coastal town and not Jaffa Oranges. Certainly, 40 years ago, the restaurant in London called Old Jaffa was trying to invoke the place and not the fruit. Nevertheless, following a court ruling, the issue may be beyond a Commissioner to cancel the law or to interpret it narrowly. If Yehuda Malki decides to appeal this ruling to the courts, it will be interesting to see what happens.