DataCard Corporation filed Israel Trademark Application Number 246242 for a very wide range of goods. The mark is simply the word DATACARD.
The Examiners at the Israel Trademark Office refused the mark as lacking distinctive character. The final rejection stated “We inform you that the mark is generic and is the name for the type of good, and must remain available to all and cannot be monopolized“.
The patent office considers the mark so descriptive that it is unable to aquire distinctiveness through use.
The Applicant appealed this decision to the Commissioner of Patent and Trademarks but forgo the hearing, as the arguments were already of record.
Specifically, the Applicant claims that the term datacard is not generic for
datacards the list of goods claimed and even if it were, it has acquired distinctiveness.Datacard Corporation LTD submitted affidavits from the VCEO and from the IP consultant of Datacard.
Citing Seligsohn (pages 20-21), the Deputy Commissioner considered that it is necessary to consider the goods for which the mark was requested. These are:
- Electro and photographic toners in class 2
- Apparatus for automatically inserting plastic cards or other objects non-card form factors into customer transmittal forms; peripheral apparatus, namely, a machine used for insertion of paper or cards onto a carrier or into an envelope for use in conjunction with said automatic inserters; printing equipment and parts thereof, namely, platens, ribbon cores and intake spools, plates and rollers, apparatus for milling, embedding, punching plastic cards in class 7
- Apparatus for magnetically and/or electronically encoding, indenting and embossing plastic cards, passports, credentials, tokens and other programmable objects and parts thereof; peripheral apparatus for use in connection with machines for magnetically or electronically encoding, indenting and embossing plastic cards; namely, magnetic strip verifiers, microprocessor controllers, controllers for multiple function embossing, encoding and printing systems; prerecorded applications computer programs for plastic card personalization systems; keyboard units and parts thereof; central mini-computers; data communications adapters; printing equipment for printing on plastic cards or passports, namely, thermalprinters and thermal transfer ribbons, or inkjet printers therefor; radio frequency identification tags and radio frequency identification readers for printing suppliesmanagement; apparatus for counting plastic cards; software for managing data and identity capture processes and for the businessprocesses of acquisition, issuance and post-issuance of digital identities, credentials, cards, tokens, and programmable devices; providing software that enables cusromers to customize their debit, credit, information, or identification cards; printer parts in the nature of topping foils; display units, namely electronic LCD display unit with multi- networking TCP/IP capabilities, and parts thereof; laser equipment used for engraving and marking plastic cards, plastic sheets, or chip cards and parts thereof, for use in connection with machines for laser marking; belt- type printers, and machines for laser arking (arcing???) in class 9
- Adhesive backed labels, printing paper, thermal dye and sublimation transfer ribbons for use with thermal printers; topping foils used for the legibility and/or decoration of embossed characters or images; top coats, thin film overlays and laminates to add protection and security to plastic cards; indent ribbons for indenting plastic cards; retransfer ribbons and retransfer film for use with thermal printers in class 16
- On and off-site repair and maintenance for embossers encoders, printing systems, forms handling equipment; contract maintenance services for the aforesaid equipment in class 37
- Embossing, indenting, printing and magnetic or electronic encoding and plastic debit, credit, information and identification cards and sheets for others in class 40
- Design of plastic debit, credit, information and identification cards or sheets for others, digitization of graphics and images; development of solution architecture in the fields of data and program management, instant issuance, software development of personalization scripts, hardware and software customization, software and hardware installation and support. Design of plastic debit, credit, information and identification cards or sheets for others, digitization of graphics and images; development of solution architecture in the fields of data and program management, instant issuance, software development of personalization scripts, hardware and software customization, software and hardware installation and support in class 42.
According to the VCEO, the term DATACARD is used to protect a wide range of products relating to personal information, including identity cards, machines for producing identity cards and technical support. The term DATACARD, whether one word or two is not a term that is known and used for data security. Showing support from the Israel Law and government websites, the term used in Israel for such cards is Smart Card or Electronic Certificate. A relevant decision (Appeal 5792/99 Religious Jewish Family Telecommunication and Education (1997) LTD vs. SBS Publicity, Marketing and Sales Promotion LTD PD 55(3) 933 (2001) refers to ‘the article or thing that the property or service relates to’. Furthermore, the mark is not in use by people in the field. A Google search did not find the mark in use by competitors, although the term Data Card is used to refer to quality.
Consequently, the Deputy Commissioner considers the mark as indicative but not descriptive and is therefore allowable under Section 8a. It has inherent descriptiveness, is not laudatory and there is no bar to it being registered. Even if the Section 8a allowance is not clear, it has certainly acquired distinctiveness in the period 2009 to 2013 by virtue of its wide usage. (true the local distributor usually uses a minorly graphic version Datacard where the last five letters are underlined, but this does not detract from recognition through usage that the distinctive nature of the word Datacard has acquired.
The mark is registerable.
Decision by Deputy Commissioner Jacqueline Bracha regarding Registerability of Israel Trademark 246242 for “DataCard”.
It is tempting to challenge this decision in an opposition. Whatever the reputation of Datacard for personal identity cards, the terms datacard and data card are used by others for a wide range of other goods within the list of goods claimed that have nothing to do with personal identity cards, which is not mentioned in the listing.
In other words, someone referring to a datacard that slots into the back of a computer as being a datacard can henceforth be sued in Israel for infringing the mark.
Datacard Corporation does some effective search engine optimization and their websites do indeed dominate the first page on Google. That’s not the issue. There are dictionary definitions for datacards as well.