This ruling considers whether a combination of two dictionary words can have aquired distinctiveness and serve as a trademark where neither word is itself distinctive.
Israel Trademark Application No. 263789 is for the word mark ECOSYSTEM ECONOMICS.
The application is publications that can be downloaded and electronic services in Class 9; printed Matter; printed matter; books, exercise books, magazines and journals in Class 16; business services; business management assistance; business management services; Business intermediary services; non-financial business sponsorship services; management consultancy services; business research services; strategic consultancy in Class 21; market research questionnaires; publicity services; organization of trade shows; business advising consultancy services; personnel services; executive search services; personnel management services; advertising services; marketing services; organisation of trade fairs; mergers and acquisitions, namely, introducing clients to potential partners with a view to potential mergers and acquisitions; business consolidation sendees; information and advisory services relating to all the aforesaid services; advice and consultancy relating to the industrial framework network orientation of businesses in industrial development and advice and assistance relating to the launch and. growth of new business in Class 35 and financial sponsorship services; financial business sponsorship services; advisory services relating to financial aspects of mergers and acquisitions; investment services; venture capital services; portfolio management services; corporate finance services; risk assessment and risk management services; fund services; financial partnership services; information, advisory and consultancy services relating to all the aforesaid services in Class 36, and organisation of lectures and tutorials, seminars and workshops; organisation of conference and events; publishing services and electronic publishing services; information and consultancy and advisory services relating to all the aforesaid services in Class 41.
On 21 August 2016 the Examiner informed the applicant that the mark could not be registered as it lacked distinctiveness as required under Section 8(a) of the 1972 Trademark Ordinance and described the services provided.
The Examiner considered that ECOSYSTEM ECONOMICS means the Economics of an Ecoystem and directly describes the services covered. The Examiner also considers that Ecosystem Economics is a known discipline that tries to analyze between human and natural activities.
The Applicant appealed this finding to the Commissioner. Contrary to the Examiner, the Applicant submits that the mark has natural distinctiveness under Section 8(a) of the Ordinance and is merely indicative of the services provides and not descriptive.
The Applicant claims that they do not deal with the economics of environments, i.e. the surroundings or nature, but rather provide services and to companies to help them create business models applicable to their business surroundings. Thus they are using the term Ecosystem as a metaphor for business surrounding and the word is not descriptive, but at best is suggestive.
Furthermore, the Applicant submits that neither the word Ecosystem nor the word Economics can be considered descriptive of what they do as the words are used for widely varying activities and have widely varying meanings.
(a) Section 8 of the Ordinance provides the basic requirements of a mark:
A mark is only registerable if a) it can distinguish between the services or goods provided by the owner and goods or services provided by others.
(b) The Commissioner or the Court coming to determine if a mark has distinctiveness is allowed to consider if through usage, the mark has acquired a level of distinctiveness
The requirements of Section 8(a) of the Ordinance if a third-party seeing the mark can determine the source of the goods or services. If the mark is used for different goods or services, the third party can be assured that they all originate from the same source. See Seligsohn “Trademark and Allied Laws” Page 20.
In general, trademarks can be considered as following on a spectrum from generic, through descriptive, indicative, to random and then made up – this is known as the descriptiveness spectrum. See 5792/99 Telecommunication and Jewish Religious Education (1997) Ltd “Family Magazine. Vs. SBS Advertisement, Marketing and Promotions ltd. “Good Family”, Supreme Court Rulings 534 (ii) 2001. At the imaginative end of the spectrum are marks that are naturally distinctive and at the generic end are marks that cannot be registered.
Section 10(11) of the Ordinance determines that descriptive marks or those commonly used in trade cannot be registered unless they have acquired distinctiveness through use:
A mark consisting of letters, numbers or words that are used to mark or describe the goods or types of goods, or relate directly to their type or quality, cannot be registered unless they have acquired distinctiveness as per Section 8(2) or 9.=
As marks are less creative and more descriptive or generic, it becomes more difficult to show acquired distinctiveness. (see 3559/02 Subscriber Club Toto Zahav ltd. vs. The Authority to Regulate Gambling, 26 September 2004).
In this regard the requested mark is not in use in Israel and so it cannot have acquired local distinctiveness. Thus the following analysis relates to inherent distinctiveness.
The degree of descriptiveness of a mark is tested with reference to the goods or services for which the mark is used and is not considered in vacuum 2148805-11 Everyready Battery Company Inc. vs. Commissioner of Patents and Trademarks 8 December 2011:
‘The question of whether the descriptiveness or a laudatory nature of a mark prevents it being registered cannot be considered in a vacuum. The reason for this is that a mark that is considered descriptive for some goods could be considered random or as merely indicative for other goods. Furthermore, the fact that a descriptive or laudatory term may have additional non-descriptive or non-laudatory meanings does not make it merely indicative, and this is true for other goods or services.
As Judge Cheshin ruled in the Family magazine case:
It is superfluous to point out that whether a word is descriptive or not depends on context. For example, the term Aviation is not descriptive for a store selling household furnishings, and the term College could be used for a green-grocers, or the term Leisure News could be a legitimate name for a Job Agency.
It was also ruled that a mark should be considered in its entirety and not analyzed into its elements, since it is considered in its entirety by the consumer. See 5454/02 Taam Teva (1988) Tivoli vs. Ambrosia Superhub.
However, to consider the nature of the combination of words, it is necessary to understand the meaning of the term Ecosystem which the Doctionary.com website explains as follows:
“A system, or a group of interconnected elements, formed by the interaction of a community of organisms with their environment.
Any system or network of interconnecting and interacting parts, as in a business: The success of Apple’s ecosystem depends on hardware/software integration.”
(The Deputy Commissioner justifies conducting independent research on this with reference to Judge Berliner’s comments in Appeal 941/05 The Winemakers’ Cooperative of Rishon l’Zion and Zichron Yaakov. Vs. The Vineyard Company LTD. p.d. 61(3) 350 (2006).
The term economics needs no explanation.
The pair of words that makes up the mark are both English language dictionary words and are generally considered descriptive and cannot ever provide total protection (to prevent third parties using the same word), but whether or not they can be registered depends on the circumstances. See 9191/03 V&S Vin & Spirit Saktiebloag vs. Absolut Shoes ltd. 19 July 2004. Also, the name generally used to describe a good or service should remain in the public domain, even if the term is not Hebrew, See the 232102 and 232103 Ski Deal ruling of 30 January 2013.
Even if each word is descriptive or generic, one has to consider whether the combination is sufficiently distinctive to be registered. In this regard, it has already been ruled that combining two generic/descriptive words to make a mark only makes that mark registerable if it provides some added value-Seligsohn page 38:
A mark does not lose its dictionary meaning over time and a combination has to show something sufficiently imaginary that the descriptive aspect is repressed.
See also the 202424 Maximumasp LLC vs, Sky Net Group “MAXIMUMASP” ruling of 30 June 2010.
The element that Justice Zilberg refers to as an “invention” and that which the European Court considers as a combination “that is unique from a linguistic perspective” is no different from the second element, i.e. it has to have achieved a second meaning that is different from the original. This means to say that the inventiveness is the originality that makes two known and descriptive words into a phrase that may be indicative or even descriptive, but nevertheless having something that results in it first indicating origin and only afterwards being considered as descriptive such that the origin indication takes precedence. Not all combinations, even if one or two letters are thrown out, have this degree of inventiveness.
In this instance, the website of the applicant indicates that they promote collaboration between companies and bodies having different business activities to create a business environment that has mutually supporting and symbiotic benefit.
It appears that the requested mark does not clearly describe the applicant’s activity and the connections between Economics and Ecosystem are not obvious. It is only after contemplation and research that the term Ecosystem is understood as referring to the business ecosystem meaning the connection between a company and other companies for promoting the company. The word Economics is not a natural qualifier for ecosystem and is not naturally and immediately understood. It is stressed that the ecosystem is NOT a well-known branch of economics.
The Examiner misunderstood the mark as meaning Ecological Economics, but this is not the case. The Applicant does not engage in Ecological Economics and Ecology Economics is not a well-known phrase.
It seems that the combination does have the required creativeness.
IL 263789 may be registered.