Is it reasonable to file a trademark for the shape of a building, and can a building serve as a trademark indicating an origin?
The Azrieli group has built and runs a number of shopping centers. One of these in Kiryat Ata is ball shaped. The Azrieli group filed trademark application number 239676 for the following structure:
The application covers classes 6, 19, 35, 36, 37 and 43. In class 6 it covers buildings fabricated from metals and alloys including aluminium, and for non-metal buildings, iron and others examples of metal objects used for buildings and for the construction of buildings. In class 19 it covers non-metal buildings, building materials, glass, pipework and other materials. In class 35 it covers business management services, shopping, trade and office centers including shops, business premises, stalls, vending points, general stores, goods providers, sales and seasonal exhibition organizers, retail and wholesale. In class 36 it covers real estate assets, including sales, purchases, rental, estate agents, rental, including key access of real estate. In class 37, construction of buildings, building projects, commercial real estate, housing, industrial buildings and factories. In class 43 it covers providing food and drink, including restaurants, cafeterias, self-service restaurants, coffee shops, bars, hotels and guest houses.
After a series of Office Actions, the Examiner ruled that the mark could NOT be registered as it lacked uniqueness as required by Section 8a of the trademark ordinance 1972. The applicant requested a hearing as per his right under Regulation 26 of the 1940 regulations.
A hearing was held on 28 May 2014. The Deputy Commissioner Ms Jacqueline Bracha reviewed the evidence of use of the mark and an affidavit from David Azrieli, the architect who is Chairman of the Board of Directors of the group.
The Applicant has argued that the mark fulfills the three requirements required for outlined in the Circular 032/2015 which covers three dimensional marks. The desired mark does not serve an aesthetic purpose, it is non-functional and is used as a trademark. Additionally, by virtue of its use, the mark has acquired a distinctive character. Furthermore, since the 2007 copyright act does not prohibit something being protected by both copyright and a trademark, there is no reason not to allow the mark.
In her ruling, the Deputy Commissioner, Ms Jacqueline Bracha noted that Israel there are a number of different legal constructions for protecting Intellectual Property:
- Copyright protects creative expression for content, from copying and its aim is to promote creators to create and distribute their creative works to consumers
- Patents protect the functional aspects of devices and processes and encourage the inventor to expose the invention to the public in return for a time-limited monopolistic protection
- Designs give protection to industrial designs for a limited period
- Trademarks protect the reputation of companies for the marks that they use
Although these legal constructions are separate, independent and serve different purposes, there is no reason why, where appropriate, different aspects of a thing may be protected by different legal constructions simultaneously. That said, where a request is made to protect something with a law that is not intended to protect that something, the request has to be considered very carefully.
The Israeli legislative saw fit to protect architectural creativity with the Copyright Law 2007 which explicitly mentions ‘a building or other construction, and a model of a building or other construction’, which are considered artistic creations by the Copyright Law. See section 1 thereof.
In contrast to trademark law registration which gives exclusive rights to use a mark, Copyright Law only prevents copying. The duration of the rights are also different, since trademarks can be renewed indefinitely whereas copyright protection lapses eventually. Furthermore, copyright protection is automatic whereas trademarks require both registration and a reputation, such that if a mark is not used, it can be struck from the register.
The difference is a result of the public interest that creations that are protected by copyright law, including architectural creations, will continue to develop for the common good. Allowing a trademark for a creation provides exclusivity to the owners indefinitely. The suspicion that trademarks will be used as a bypass for other types of intellectual property and the unbalancing that results is discussed in the Appeal concerning Toffiffee (Appeal 11487/03 August Storck KG vs. Storck Service GmbH (2008) paragraph 8. Thus trademarks will ONLY be issued for three dimensional objects if it is demonstrated that they are actually used as an indication of origin. See also the Coca Cola Decision concerning IL 171183-171187 “Do what feels good”.
The ramifications of granting a trademark for a building is that the owners will have exclusive rights to all expressions of the building for ever, in contradistinction of the limited rights that copyright provide. Consequently there is a suspicion that granting such a right will prevent the natural free development of architecture.
Before considering whether or not the desired mark is registerable, it is appropriate to consider protection as a registered design as legislated in the Israel Patent and Design Ordinance 1924. This regime protects the aesthetic aspects of industrial objects and this includes buildings. Indeed, class 25-03 specifically covers houses, shelters and other buildings. See also Regulation 6. Thus, so long as a building fulfills the various requirements, see Dr Meir Noam’s Paper on Protecting Buildings as Registered Designs, Itunei Mishpat 15(2) 343 (1190).
Section 7 prevents double protection by both copyright and design law and rules that buildings for industrial manufacture cannot be protected by copyright. However, as the Applicant notes, there is no similar law prohibiting something being both copyright and trademark protected and if something does serve as an indication of origin and has distinctiveness it may be registered as a trademark. This is discussed in more detail regarding the opposition to Israel trademark 233272 (GB Clothing LLC vs. Abraham Berman.
It is not disputed that in principle one can register three dimensional marks. Indeed, Section 1 of the Trademark Ordinance specifies both two and three dimensional marks. However, it is necessary that the mark serves or is intended to serve, to persons as an indication of origin or of trade.
Even if it is used in trade, a mark must have a distinctive nature (Section 8) to distinguish between one source of goods and a competing source. The distinctive nature may be inherent or acquired (See 5792/99 Communication and Jewish religious Families (1997) LTD “Family” magazine, vs. SBS Publicity, Marketing and Sales “Good Family” Magazine (23 May 2001).
The Ordinance does not differentiate between word, graphic and three dimensional marks in that all are examined in the same way and are required to be distinctive. However, the shape of a good cannot be inherently distinctive as a source of origin. See Toffiffee (Appeal 11487/03 August Storck KG vs. Storck Service GmbH (2008) paragraph 8. Thus wherever a trademark application is submitted for the shape of an object, the applicant has to prove acquired distinctiveness as a trademark.
As ‘acquired distinctiveness’ relates to the specific goods or services to be protected, for the purpose of this decision it makes sense to differentiate between classes 35, 36, 37 and 43 for services offered by the applicant, and classes 6 and 19 for buildings.
To allow a three dimensional mark to be registered for the good itself or for packaging, the applicant must fulfill three requirements:
- The shape must serve as a trademark
- The shape cannot be truly aesthetic or functional
- By virtue of use, the shape has acquired distinctiveness as a trademark See Toffiffee and Circular 032/2105.
Is it conceivable that a building design can serve as a trademark? The applicant considers that it can. It notes that two buildings, one in Acre and one in Kiryat Ata have the requested design and the design is used by the applicant as a trademark. This is a strange case where a building is built more than once and there is an intention to build further similar buildings in other shopping areas. To strengthen their application, the Applicants referred to the US trademark register which included six buildings, three were in the principle register and three in the supplementary register which includes marks without unique characteristics that were not opposed. The marks were registered in accordance with Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).
The Deputy Commisioner noted that one cannot simply copy a foreign decision into Israel Law since the requirements are different. See Appeal 5267/09 H. Lundbeck vs. Unipharm
Furthermore, the US court itself stated that:
“The three dimensional configuration of a building is able to be registered only if it is used in such a way that it is or could be perceived as a mark” (United States Patent and Trademark Office, Trademark Manual of Examining Procedure §1301.02(c)).
“Subject matter presented for registration as a service mark may be unregistrable because it does not fact function as a service mark. For example the three-dimensional configuration of a building is registrable only if it is used in such a way that it is or could be readily perceived as a mark identifying the source of the services.” (In re A.D. 1619 Company (TTAB, 2003).
Evidence that the building is featured on flyers and billboards and that employees were given models is irrelevant. So are Internet clips from 2011. The important thing is whether customers and not employees of suppliers consider the mark as a trademark:
“In this regard, it is the perception of the ordinary customer which determines whether the asserted mark functions as service mark, not the applicant’s intent, hope or expectation that it do so.” (Standard Oil Co., 275 F.2d 945, 125 USPQ 227).
It should be appreciated that not all uses of a mark make it a trademark and create a distinctiveness as a mark. Only a continuous wide usage is sufficient to make something a trademark. See Appeal 18/86 Venezia Glass Factory ISrael vs. Mes Verreis de Saint Gobain.
In this regard, the ruling of the US Supreme Court in The Rock and Roll Hall of Fame and Museum Inc. v. Gentile Productions, 134 F.3d 749 is pertinent:
“Even if we accept that consumers recognized the various drawings and pictured of the museum’s building design as being drawings and pictures of the Museum, the Museum’s argument would still fall short. Such recognition is not the equivalent of the recognition that these various drawings or photographs indicate a single source of the goods on which they appear. Consistent and repetitive use of a designation as an indicator of source is the hallmark of a trademark.”
Once it is not established that the mark is even used as a trademark, a fortiori it is not established that the trademark has acquired distinctiveness. So what if 74% of people who live near one of the two shopping centers recognize the building and 58% know it is an Azrieli Center? There is a sign at the entrance (with a regular graphic logo and name) that states that it is an Azrieli Center. In other words, the customer recognition is wholly independent of the three dimensional shape of the building allegedly serving as a trademark.
The US decision Rock and Roll Hall of Fame and Museum Inc. v. Gentile Productions, 134 F.3d 749 states that:
“That is to say that, when we view the photograph in Gentile’s poster, we do not readily recognize the design of the Museum’s building as an indicator of source or sponsorship. What we see, rather, is a photograph of an accessible well-known, public landmark. Stated somewhat differently, in Gentile’s poster, the Museum’s building strikes us not as a separate and distinct mark on the good, but, rather, as the goods itself.”
The Applicant attempted to obtain a trademark for a museum it designed and had built in Ohio. When the above ruling issued, the mark was pending in the USPTO and the Gentile sold photos of the museum that he’d taken, and which allegedly infringed the trademark. The Court riuled that the building didn’t actually serve as a trademark and so the changes of the plaintiff prevailing was low. The court stated:
“A picture or a drawing of the Museum is not fanciful in the same way that a word like Exxon is when it is coined as a service mark. Such a word is distinctive as a mark because it readily appears to a consumer to have no other purpose. In contrast, a picture of the Museum on a product might be more readily perceived as ornamentation than as an identifier of source.”
Thus even were the mark to be used as a trademark on their goods and services, because it does not appear to be a trademark to customers they don’t recognize it as a trademark and this is generally the case with buildings.
The survey conducted by the Applicant is supposed to indicate that the mark has acquired distinctiveness but all it really does it show that visitors to the building are aware of which building they’ve visited. The survey also interviewed people in the North who lived close to Kiryat Ata and Acre who would be familiar with the buildings. Such a survey does not show anything about recognition by the Israeli population as a whole. Similarly, since the survey has a lead in question about shopping centers, it biases the results. See Tversky, Amos; Kahneman, Daniel (1973). “Availability: A heuristic for judging frequency and probability”. Cognitive Psychology 5 (2): 207–232.
Furthermore, the survey shows the spherical building as part of a shopping center and not as the applied for trademark. essentially, the survey shows that people recognize their local shopping center. This is probably true of their homes schools and corner shops and does not indicate that the building has acquired distinctiveness as a trademark.
The argument that the spherical building with a square entrance is unique is also not strictly true in that the Clore Center for Science at the Weizmann Institute in Rehovot has a similar shape.
The Applicant has tried to differentiate between the desired shape and the building but as the Application covers buildings, allowing the mark would prevent others from constructing similar shaped buildings and this is precisely what copyright achieves anyway. As far as its use as a service mark is concerned, the question is whether the mark is used as a service mark or as packaging? The Deputy Commissioner considers that the Applicant has not shown that the mark serves as a service mark and is understood as such by the public.
In a ruling concerning Application 8622367 SHK/2476/S64.13 Roger Zogolovitch T/A Dolidspace (18.4.2011)), the Office For Harmonization in the Internal Market (OHIM) considered a trademark application consisting of the interior of a building with four floors. There they ruled as follows:
“It should be borne in mind that a three-dimensional mark is not necessarily perceived by the relevant public in the same way as a word or figurative mark, despite the assessment criteria being the same. It can be more difficult to establish inherent distinctiveness in relation to a three-dimensional mark. […] Nevertheless, the Office would like to point out that it is a matter of commercial experience that consumers do not generally perceive the shape of a product as indicating a particular source of manufacture. In their perception, the shape of a product primarily responds to functional or aesthetic requirements (or both) but is rarely seen as pointing out, by itself, to a particular business source.”
As discussed above in great detail, the Applicant has failed to show that the building design is considered by customers as a trademark that indicates the various services allegedly provided by the Applicant. The request is therefore rejected.
The previous commissioner, Dr Meir Noam, tended to view the different IP laws as mutually exclusive. I think that the Deputy Commissioner’s approach is more correct.
Porn-brokers’ three balls and barbers’ candy stick signs are three dimensional marks that indicate a service. I don’t think that the desired mark serves this purpose.
However, I have no doubt that some building shapes may serve as a trademark. A good example would be the Pizza Hut on the square in the coastal town of Netanya. This round building has a design, particularly of the roof that states Pizza Hut. It also emphasizes the problem with issuing a trademark on the building design. The Pizza Hut in Netanya has moved to a smaller shop in a terrace of shops, whilst the building is now a Moroccan style restaurant called Marrakesh. The problem with the forms of buildings serving as a trademark is that a building may stand for tens or hundreds of years and the ownership may change several times.
So is a traditional London phone box a trademark? What about a policeman’s phone box, or Tardis?