The JNF (KKL) has attempted to register the following Israel wordmarks:
- 251088 “Community Forest”
- 251091 “יער קהילתי” (as above, but in Hebrew)
- 251119 “Click to Plant”
- 251092 “הקלק ונטע” (as above, in Hebrew)
- 251116 “ספר היערות” – lit. the Forest Book
- 256439 “The Wedding Book”
- 256443 “The Bar Mitzva Book”
- 256441 “The Bat Mitzva Book”
These books are designed for registering occasions for donating money for tree planting and land purchase, and the like.
The marks cover division and dissemination of capital, including charity funds, charitable donations, raising capital, funds and donations, charitable organizations, fund-raising organization all included in Section 36.
The Jewish National Fund predates the State of Israel. It was set up to provide funding for land purchase in Palestine and has invested heavily in tree planting and in draining and then again to reflood the Hula Swamp.
Indeed, Israel is one of the first countries to invest in reforestation and is fairly unique in having more trees now than a century ago. The JNF gives out Christmas trees to Israeli Christians and tree planting certificates that use up a fair amount of wood pulp from their tree planting operations. The organization is recognized by Israel Law since 1953 and, as Applicant defines it: the KKL is a Zionist Organization established as a means of raising capital investment for purchasing lands within the Land of Israel and preparing them for Jewish settlement. Today, the organization raises funds from Israelis and from Diaspora Jews for funding its activities in the Land of Israel.
The marks were rejected under Section 8(a) and 11(10) of the trademark ordinance.
The Applicant argued that 2511088 “Community Forest” and 251091 “יער קהילתי” are distinctive and do not reflect the nature of the services provided. The Examiner considered them descriptive but was prepared to allow them to be registered under Section 8(b) if acquired distinctiveness could be shown.
The Applicant argued that the JNF has been using the phrases “Golden Book” and “Forest Book” and “Honour Book” since the beginning of the 20th Century, and provided evidence to this effect. However, the Examiner considered that Forest Book is descriptive and generic and thus could not be registered under section 8(a) and 11(10).
Israel Trademark Application Numbers 251119 “Click to Plant” and 251092 “הקלק ונטע” are used for internet services for donating money for planting trees. The Applicant argued that the phrase was a unique and distinctive combination of words whereas the Examiner considered this descriptive and the uniqueness didn’t help in this respect. Applicant argued that the marks were not actually descriptive and that they needed a logical jump to link their meaning with the service to which they referred. Examiner noted that clicking resulted in a tree being planted and therefore considered the marks descriptive but was willing to allow them if acquired distinctiveness could be shown.
Similar arguments were raised with respect to Israel Trademark Application Numbers 256439 “The Wedding Book”, 256443 “The Bar Mitzva Book and 256441 “The Bat Mitzva Book”.
The Applicant was granted various extensions and on 11 February 2011, a hearing was held before the commissioner.
After the hearing , the Applicant requested to narrow down the range of services as follows: Division and dis charitable donations, raising capital, funds and donations, charitable organizations, fund-raising organization all included in Section 36.
As to Community Forest, the Applicant argued that graphical marks 251110 and 251128 were allowed, so the word marks should be as well. The graphical marks are shown below:
[MF, Frankly I can’t follow the argument that since these were allowed, the words Community Forest in Hebrew or English should be allowed.]
Mr Dickstein of the KKL submitted an Affidavit to the effect that the Wedding, Bar Mitzva and Bat Mitzva books include details of the celebrants but do not include details of the donations (which are recorded elsewhere) and therefore cannot be considered descriptive. Furthermore, these books are not in circulation and can only be viewed by prior arrangement.
The book marks are not for books. they were not submitted for paper products in class 16. The donor or celebrant does not receive a book.
Furthermore, all these marks are for fund-raising purposes and do not include the words fund-raising, charity, and the like, and therefore are not descriptive since there is no relationship between the mark and the service.
Whereas the KKL does plant community forests, the money raised using Israel Trademark Application Numbers 2511088 “Community Forest” and 251091 “יער קהילתי” may be used for other purposes. [MF – this seems to me to be misleading and against the public order, but highly reminiscent of the great Ephraim Kishon, Menachem Golan, Chaim Topol film Sallah Shabbati].
Israel Trademark Application Numbers 251119 “Click to Plant” and 251092 “הקלק ונטע” are not truly descriptive since the clicking only virtually plants the tree which happens later.
The KKL sees marks as necessary to register so that they can prosecute third parties pretending to be the Jewish National Fund.
As stated on page 1 of Seligsohn “Coyright Laws and Other Similar Legistation 1973”, the purpose of trademarks is twofold. They serve to protect the mark owner from incursion by competitors, but also serve to enable the customers to correctly identify the source of goods and services. From this it follows, that the main purpose of trademarks is to avoid misleading. To achieve this, Section 8 requires that trademarks are distinctive; whether inherently so as per part (a) or having acquired distinction, as per part (b).
(a) A mark is not registerable as a trademark unless it can distinguish between the goods and services of the trademark owner and those of others (henceforth, having a distinctive nature).
(b) The registrar or Court when determining if a trademark indeed has a distinctive nature may determine if through usage the mark has acquired distinctiveness for the goods for which it is applied or registered.
The distinctive nature referred to in Section 8(a) of the Trademark Ordinance is such that a consumer seeing the mark can tell the source of the goods, and if used for different goods, can know that all come from a common source (see Seligsohn, page 20).
Marks may be generic, descriptive, indicative, arbitrary or made up words. There is a continuum between the categories, known as the descriptive spectrum. Generic marks cannot be registered. (see Civil Appeal 5792/99 “Telecommunication and Religious-Jewish Family Education (1997) LTD – Magazine “Family” vs. SBC Advertising, Marketing and Sales LTD – “Good Family Magazine”. 2001, (11) 534. As per Section 11(10) of the Trademark Ordinance, where a mark is descriptive of a product or service that it marks, it is protectable only if it has acquired distinctiveness as per Section 8(b).
Consequently, first one tests whether a mark is generic or descriptive, and if descriptive, whether it has acquired distinctiveness, with the mark being examined in relationship to the relevant goods (Appeal 21488-05-11 Eveready Battery Company Inc. vs. Commissioner of Patents and Trademarks, section 27, 8 Dec 2011).
A name used for goods or services should remain available to the public, even if it is not a Hebrew word, See Seligsohn, page 35. See also the Israel trademark ruling concerning the 232102 and 23103 for “SkiDeal” from 20 Jan 2013.
In light of the above background, Israel Trademark Application, the following marks 256439 “The Wedding Book”, 256443 “The Bar Mitzva Book and 256441 “The Bat Mitzva Book” which do not relate to real books, but at best to a register of donations, is not descriptive, but could be considered as indicative. The fact that the marks are in English is irrelevant.
The Commissioner considers that one meeting such marks would assume that they are for a souvenir book or a photo-album. The specfic usage for soliciting donations does not take the phrases out of the public domain, and therefore there is no reason not to allow the marks to be registered for the specific usage requested.
As to 251116 “The Forest Book”, this is not a physical book that describes Israeli forests or Israeli trees. The Applicant claims that it is simply a means of soliciting donations and there is no connection between the Forest Book and the usage if the mark. The Forest Book does not list which tree was planted, when and financed by which donation, it is simply a register that states, for example, “that three trees were planted in the name of Marshall George from Virginia on such and such a date.” The Commissioner was satisfied that the mark is not descriptive and can therefore be registered.
However, “Click to Plant”, “הקלק ונטע” and “Community Forest” do directly describe the services that are advertised and which the Applicant provides, which is a mouse or keyboard click that enables a donation towards tree planting. Whether the mark is in Hebrew or English, it links the trivial Internet clicking with planting, and indicates that one should click in order to plant. The Applicants accept that the marks are for soliciting funds for tree planting, even if some is used for related, supporting activity. This can be contrasted with the 232527 “Click Switch Refresh” decision in the Phillip Morris vs. British American Tobacco (Brands) LTD ruling from 25 Aug 2013 where the clicking was for an electrical cigarette and the clicking was thus an atypical action, which is different from the current case where a mouse or keyboard click is intended. Thus the “Click to Plant” and “הקלק ונטע” are descriptive and lack the distinctive character required for registration under Section 8(a).
“Community Forest” is also problematic in that donations solicited may, inter alia by used for the purpose of planting forests for use by the community in addition to to other causes to which it may be diverted. [MF – I sense a facetious tone here]. This pushes the “Community Forest and “יער קהילתי” marks towards the descriptive end of the spectrum and there appears to be a clear connection between the marks and the services for which they are used.
Having ruled that “Click to Plant”, “הקלק ונטע”, “Community Forest” and “יער קהילתי” are descriptive, the next question is whether the marks can be considered as having acquired distinctiveness, in which case they could be registerable under Section 8(b). In this regard, the Commissioner referred to Judge Berliner’s ruling in Appeal 2673/04 Coffee to Go Marketing (1997) LTD vs. Israel Shaqued (15 April 2007) on page 11:
Interim Summary: Coffee to Go is a completely descriptive term and it is forbidden for registration under section 11(10) of the Ordinance. Even if one argues that originally there was something new and fresh about this combination [ MF the phrase, not the coffee], over time it has become a term that describes the service and goods and one comes to the same conclusion….
…consequently, the only way for such a mark to survive as a trademark is if it can serve to distinguish the source of the service of goods as per Section 8(b) or 9.
As one moves along the descriptive spectrum towards the descriptive and generic end, the Applicant has a more difficult job showing acquired distinctiveness. See 3559/02 Toto Zahav LTd vs. The Council for Organizing Sport Related Gambling, 59(1) 873, paragraph 9. However, as per Section 11(10), a descriptive or laudatory mark may acquire distinctiveness (Bagatz 144/85 Klil vs. Commissioner of Patents and Trademarks PD 42(1) 309, 315.
There are various legal tests for determining if a mark has acquired distinctiveness, which look at the period during which the mark is used, how it is publicized and whether the mark is identified with the provider by the public – See Appeal 18/86 The Israel Venetian Glass Factory LTD vs. Les verries des Saint Gobain PD 45(3) 224, 238 (1991).
As to the period of use, an affidavit provided by Applicant shows that the Jewish National Fund was established in 1901, but this tells one nothing regarding when the requested marks were first used for fund-raising purposes.
the Applicant trued to show that the “Click to Plant”, “הקלק ונטע”, “Community Forest” and “יער קהילתי” marks are identified with the Jewish National Fund by means of a Google search. However, as ruled in the GHI case, one has to be very wary of Google Searches and conclusions drawn. The Commissioner does not consider that the results as generated can teach anything regarding Internet usage, and considered the results as ambiguous [MF – not clear why the Commissioner didn’t do his own search or have an Examiner do one].
The Commissioner was not convinced that “Click to Plant”, “הקלק ונטע”, “Community Forest” and “יער קהילתי” had acquired distinctiveness as required by Sections 8(b) and 10(11).
In conclusion, the “Click to Plant”, “הקלק ונטע”, “Community Forest” and “יער קהילתי”are refused but 256439 “The Wedding Book”, 256443 “The Bar Mitzva Book and 256441 “The Bat Mitzva Book” are allowed for charity funds, charitable donations, raising capital, funds and donations, charitable organizations, fund-raising organization all included in Section 36.
Ruling by Commissioner Assa Kling, 17 February 2016.
Ruling by Commissioner Assa Kling, 17 February 2016.