Care

who cares

On 29 July 2014, Care Medical Services LTD filed Israel Trademark Number 267055 for “Care”. The application covers “Clinics providing cosmetic services, laser hair removal, plastic surgeries, laser eye refractive surgeries, cardiology services; aesthetic and cosmetic laser surgery and treatment; laser medicine and-or medical laser care and/or cosmetic and aesthetic laser medicine and other medical services; all included in class 44.”

The Israel Trademark Department rejected the mark as lacking the distinctiveness required by Section 8a of the Trademark Ordinance 1972. The Trademark Department considered that mark relates to the type or quality of the services provided, contrary to Section 11(10) of the Ordinance.

care

Care Medical Services LTD  already has two marks in the same class. TM No. 183941 and 182943 for a stylized mark in colour and in black and white respectively. These include the word Care but have graphical elements as well.  These marks were obtained by the disclaimer for the word Care, not as part of the graphical mark.

Prior to the new application being filed, Care Medical Services LTD  filed suit against Health & Beauty (2013) LTD requesting an injunction against them using the slogan “CARE אסתטיק” (the Hebrew word is the word Aesthetic transliterated into Hebrew characters). The grounds for the legal complaint was use of the word Care. The case was rejected due to the disclaimer of rights to the word Care. This triggered the new filing.

In response to the refusal, the applicant claimed that since filing and using the graphical mark, they have acquired distinctiveness to the word Care for clinics of this type. This claim was supported with customer surveys. Furthermore, the applicant does not claim rights to the word Care beyond the Cliincs for cosmetic and medical services.

The Examiner was not convinced and upheld her refusal. As of right, the Applicant requested a hearing before the commissioner.

At the hearing, an affidavit from the CE was presented with details of the branches of the organization, publicity expenses, copies of advertisements and a newspaper investigation from Calcalist.

The Commissioner Asa Kling ruled as follows:

Section 8(a) defines distinctive character as something that enables the public to identify the source of goods. Trademarks can be generic, descriptive, indicative, random or imaginably creative. Generic marks cannot be registered. However, descriptive marks can be registered if they have acquired distinctiveness through use. Citing the Ever Ready case, the Commissioner noted that is important is whether for the specific goods and services, the mark is considered well-known.

Section 11(10) states that laudatory or descriptive marks are difficult to register as they should be available to all. This is true for non-Hebrew words.

The word care means טיפול (treatment) and therefore cannot be monopolized but, citing the Absolut Vodka decision, could be registered in certain instances, depending on the various circumstances and considerations.

The Applicant acknowledges that the mark is not random or imaginary. The issue is whether the mark is descriptive or indicative The commissioner considers the mark descriptive as it directly describes and does not hint. As such the question is whether it has acquired distinctiveness.

As a mark is closer to the descriptive end of the made up word to descriptive spectrum it is more difficult to show that the acquired distinctiveness rights of the applicant outweigh the public interest and for a mark to be registerable.

The mark in question was in use from 1989 for radiology and  cardiological imaging. In 1997 the company widened its activities to laser eye surgery and cosmetic treatments. This is a long time but that does not necessarily mean that the term is associated with the clinics.

Thje applicant claims to have invested 30 milllion shekels in advertising, however the advertising is for Care Medical Service LTD and for Care Vision, not for Care alone. The mark is generally used as part of the graphic logo. When used without the word, it is part of Care Medical Service or Care Aesthetics and Laser. The word Care is not used alone. Thus the commissioner does not consider the word Care has acquired the distinctiveness claimed.

The survey provider was not available for cross-examination and the methodology was not sufficiently clear to deserve substantial  weight as evidence. Where the term care was recognized by the public, it was as part of Care Laser. Some 26.2% of the public in a random telephone survey recognized the company Care and the vast majority knew they provided cosmetic, laser, medical or eye treatments or plastic surgery. 3.9% thought they sold or rented cars and 1.5% thought they provided insurance services.

Since the survey provider was not available for examination it was not possible to determine how the survey was carried out, but the results reported were not persuasive.

Citing British Sugar vs. James Robertson & Sons LTD [1996] RPC 281:

“Mere evidence of use of a highly descriptive or laudatory word will not suffice, without more, to prove that it is distinctive of one particular trade – is taken by the public as a badge of origin. This is all the more so when the use has been accompanied by what is undoubtedly a distinctive and well-recognized trade mark.

“It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader.(pp. 302)

“… In the case of common or apt descriptive or laudatory words compelling evidence is needed to establish this … it must be shown in a case of this sort that the mark has really become accepted by a substantial majority of persons as a trade mark – is or is almost a household word.(pp. 306).

Citing Kerly’s Law of Trade Marks and Trade Names, 15th ed., (2011), pp. 231, it seems that Lord Jacobs ruled that one requires 60% recognition for a descriptive mark to have acquired descriptiveness.

The commissioner refrained from establishing that this level of recognition is required, but nevertheless did not consider the term Care was sufficiently well known as a trademark for clinics, and the decision that the mark could not be registered was upheld.

COMMENT

I disagree. The term Care does not translate as טיפולים. The word טיפולים means treatment. The word Care as a noun means דְּאָגָה, תְּשׂוּמַת לֵב; זְהִירוּת, פִּקּוּחַ and as a verb means היה אִכְפַּת לו, דָּאַג; חִבֵּב; רָצָה.

The clinics don’t sell care. They claim to provide health and beauty treatments whilst taking care of the patient, and helping the patient take care of him or herself. The word is not descriptive. It is arguably a hint or indication, but not really. It is laudatory however. By deciding that the term Care is descriptive, the commissioner is setting a higher bar for acquired distinctiveness than necessary.

I have no idea how the survey was carried out, but I think that 26.2% recognition is pretty good and should be sufficient to show acquired distinctiveness if the survey is conducted fairly. It may not be enough for a company to be considered well-known and to extend protection beyond clinics, but does indicate a reputation way beyond those who use the services provided.

 

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