Israel trademark application no. 246933 is for the words PERSONAL CHECK in English, and transliterated into Hebrew – פרסונל צ’ק.
The Application was submitted on 24 May 2012 and covers business information services in Class 35. The Applicants are BDA Kopas LTD. On the Application form, the Applicant noted that the mark was previously registered as Israel Trademark No. 176802 by the company trading as BDA Business Data LTD, but had lapsed in 2007 due to failure to renew the mark. The Applicants provide business data that enables managing credit risks and claims to be the leading Israel supplier of such information.They claimed continuous usage of the mark and argued that it lapsing was due to human error and is in no way an indication of lack of usage or desire for the mark.
Despite the mark having been previously registered, in August 2013 the Examiner refused the mark, considering it as lacking distinguishing features and as directly describing the services provided. The Examiner also requested a more detailed and limiting list of services. Furthermore, the Examiner considered that the words Personal Check were only ever used in conjunction with the letters BDI and were not entitled to independent registration without this acronym.
In response to this objection, the Applicant seems to have scored an own goal by arguing that the term ‘personal’ implies relating to individuals and ‘check’ implies examination, so the combination personal and check is distinctive for the service of looking into the historical credit worthiness of individuals.
The joint CEOs of BDI COFACE provided affidavits attesting to the duration and scope of usage of the mark. In a subsequent hearing, the Applicant explained that within the framework of the Credit Information Act 2002 they provide cellular phone companies and banks with information about clients and potential clients, such as details of bankrupcy, repossession orders and loan repayments.
The Applicant claimed extensive usage and advertising of the mark since 2005 and a reputation for their services that was associated with the mark. The claim was backed by articles from Israeli business newspapers from 2005 and 2006 that supported the claim that they were the first to provide such services. The Applicant claimed that the term had acquired distinction due to usage and was thus eligible for registration under section 8b of the Ordinance. However, scope of sales was not disclosed under the claim that this was a trade secret and unneccessary for registration purposes. Finally, at a hearing, the company showed current google rankings for the term and a more recent article from 2013.
Section 8 of the Trademark Ordinance requires distinctiveness for a mark to be registerable. The distinctiveness may be inherent or acquired through usage. Section 11 states that descriptive marks that relate to the services or goods provided may not be registered as they are generic and should be available to all.
The Deputy Commissioner cites Seligsohn 1973, and the usual colslaw case-law, including the Family Magazine and Eveready rulings.
The mark in question PERSONAL CHECK in class 35 is a combination of the words PERSONAL and CHECK and a google search of the term produces personal checks (cheques) and not information regarding credit-worthiness of a personal nature.
The Applicant considers that a personal medical information of detective report into an individual could be described as a personal check and such uses would be descriptive, but their services are different. Furthermore, most of their users are Israeli and wouldn’t think of the meaning of the words.
Citing Seligsohn again, the Deputy Commissioner noted that usage of a word or phrase could not render a generic term distinctive.
The Applicant admits that most Israelis know English (to some extent) but associate the word check with המחאה (cheque in English, check in Americanese).
The Deputy Commissioner considers that since the phrase in the Law is not personal check, the phrase, though descriptive, is not generic and is registerable if acquired distinctiveness can be shown.
Showing acquired distinctiveness for the phrase is difficult since in practice the mark is used with the letters BDI but this does not in and of itself mean that BDI and Personal Check cannot be independently registered.
After some humming and hawing, he bottom line is that the mark is accepted and can publish for third-party opposition.
As the mark had been successfully registered without a track record of usage and without opposition, and now the mark has an additional history of usage, refusing it would imply that the original registration was a mistake. After all, the rules were laid out
at Sinai by Seligsohn and haven’t changed since 1973.
As an English speaker, I think the term personal check is a generic term for personal check, if an ambiguous one. In others words, I can see that in context the term could mean a cheque from a cheque book or a medical examination. I would be inclined to spell cheque the English way and to refer to medical checks as check-ups or examination. I would not grant a trademark for credit check for creditworthiness reviews, but since the mark had previously been registered and only lapsed due to human error, this was probably the correct decision.