3DVision LTD submitted Israel trademark application no. 273325 for “3DVISION” on 25 March 2015. The mark covers Services of design, construction, building and designing websites; design and development services, namely, development services of technological solutions, software development services, web hosting services and content management services, visual communication design, graphic design services; graphic and architectural simulations design services using computer software; computer services, namely, design services and development services of three-dimensional movies, pictures, motion pictures with sound, audio and visual aids; Creative services, namely, design and development of computer software and consulting services related thereto; design of animated websites; design services of websites for marketing and advertising purposes; design services of graphic illustration services for others; design services of customized multimedia products for educational, marketing, training, demonstrational, presentation, architectural, engineering and development purposes; design services of multimedia products in the form of applications of computer graphics and website hosting services for the exchange of graphics, images, text, computer simulations, architectural simulations, marketing and promotional videos between the parties, all in class 42 .
The trademark department considered the mark as indicating three-dimensional perception and lacking distinctiveness for the relevant goods and services. Since other service providers used the term as well, they refused it under Section 8(a) of the Israel Trademark Ordinance 1972, and also considered it as contravening section 11(10) as being descriptive. Although the mark was filed in a specific font, the Examiner considered the san serif font as not having the minimal styling to render the mark registerable.
Furthermore, the mark was considered confusingly similar to Israel trademark number 191734 for D-Vision in class 34, but that mark lapsed on 30 January 2017 due to non-payment of the renewal fee.
On 28 December 2015 the Applicant argued that the mark had acquired distinctiveness through usage and was associated exclusively with the Applicant and thus was registerable under Section 8b of the Ordinance. The Applicant argued that the mark has been in use for 13 years and the public was exposed to it in various media including via the Internet. The Applicant also noted that since 2003 they had been using the identical Internet domain (not stylized) and had similar pages and channels in various social media including Facebook and YouTube for over five years. This exposure, continued usage and marketing investment had resulted in the mark being well-known for virtual reality and animation in the real estate business [MF – Virtual Reality Reality?]. An affidavit by the CEO was submitted to support these claims.
The Applicant requested a hearing and this was held on 24 April 2017. THE CEO, Mr Gili Cohen described the services provided and argued that the services were identified with the company name 3D Vision and were not considered by the consumers as relating to three-dimensional vision.
Section 8 of the Trademark Ordinance 1972 states the basic conditions for registerability as follows:
- (a) No mark is eligible for registration as a trade mark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).
(b) In determining whether a trade mark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.
Distinctive character exists where the mark enables the consumer to identify the source of the goods or services and to differentiate from similar goods and services available from competing suppliers. If the mark is used for different goods or services, the consumer will know that they are all available from the same source. See Seligsohn Trademark and Related Laws 1973, page 20.
Traditionally, marks are considered as being on a spectrum from imaginary marks via arbitrary, through indicative, descriptive to generic marks. (see Appeal 5792/99 Telecommunication and Jewish Religious Education Family (1997) LTD Magazine “Family” vs. SBS Advertising, Marketing and Sales Promotions LTD magazine “Good Family”, p.d. 55(3) 933 (2001), page 943.
Generic and descriptive marks are inherently non-distinctive. Generic marks cannot be registered as they cannot acquire distinctiveness. This is also largely true for descriptive marks that even after long-term usage should not be monopolized. See the 2673/04 Coffee to Go Marketing (1997) LTD bs. Israel Shaked, 15 April 2007, and the Supreme Court ruling 296/86 Phillip Morris Inc. vs.. Tobacco Co. LTD p.d. 41(1) 485, 491-492 where the following is stated:
There are trade marks that the acquisition of distinctiveness will not help. There are marks that are so descriptive that it would be inappropriate to prevent the public to use such marks. See Supreme Court ruling 144/85 Klil Non-Ferous Metals LTD. vs. Commissioner of Patents and Trademarks 42(1) 309, page 315..”and even if they have acquired secondary meaning, even if proven, this will not help registration, since they lack substantive distinctiveness, and so should not be the basis of a monopoly that steals the right to use the term from the public. The reason is that non-distinctive marks should remain in the public domain.
Section 11(10) also limits the registerability of descriptive marks or those comprised from words used in the trade that have acquired descriptiveness through use:
A mark consisting of numerals, letters or words which are in common use in trade to distinguish or describe goods or classes of goods or which bear direct reference to their character or quality, unless the mark has a distinctive character within the meaning of section 8(b) or 9;
In this instance we are dealing with a mark comprising letters and a number whose combination has no meaning in simple English, but can be understood as the combination of two words 3D (meaning three-dimension) and VISION (meaning sight or prophetic insight). The services for which registration of the marks is sought are design, imaging and computer graphics for architecture such that the customer is shown a three-dimensional representation. As the CEO of the Applicant, Mr Gili Cohen, explained in the hearing, the Applicant’s intention was to hint at the creation of a vision (in the prophetic or at least forward-looking meaning) by 3D.
In this instance, even if the term describes an aspect of the service provided, the Deputy Commissioner is of the opinion that the combination is not so descriptive that it cannot acquire distinctiveness. Furthermore, the mark can be interpreted as both ‘seeing in three dimensions’ and as a ‘three dimensional vision’, and this duality creates an ambiguity that distances the marks from the services provided.
To the extent that a mark is closer to the generic-descriptive end of the spectrum and further from the random or imaginary end, the applicant has to provide greater proof of acquired distinctiveness. (see Appeal 3559/02 Toto Gold Subscriber’s Club LTD. vs. The Authority for Regulating Sport Related Gambling 26 September 2004 paragraph 9.
The Deputy Commissioner Ms Bracha considers that the Applicant has shown that the mark has acquired distinctiveness. In addition to the continuous usage, the Applicant has shown investment in promoting the company in various media. The Applicant submitted letters from customers that even though were word for word identical, indicated that the customers were familiar with the mark. The Applicant also appended Internet-based activities under the mark since 20003, in appendices 2,3,4, and 5 and accountancy statements showing a significant level of services provided under the mark.
Consequently, the 273325 mark is allowable and may be registered twelve months from when the 191734 mark was cancelled.
I am unhappy considering 3DVISION as being able to acquire distinctiveness. In other words, I agree with the Examiner and not with the Deputy Commissioner.
The Applicant may indeed by using the word vision in the meaning of Isaiah’s Vision, but it also means sight. A conventional computer screen is two-dimensional and can only show a two dimensional representation. By using shadows and vanishing points, the illusion of depth is created. Thus giving the customer the feeling of touring an apartment is actually a 3D vision. In other words, the phrase is descriptive, even though the term vision is alleged to be ambiguous.
There are many words that are ambiguous. Ultimately if one dictionary definition is generic for the goods or services provided, it should be considered generic, even if the same word has other uses. Thus one would not allow the word orange to be a brand of citrus fruit, even if the citrus fruit in question is green. A mobile phone company calling itself orange is another matter.
It is a little like awarding a trademark for VIRTUAL REALITY for the same services. Sure there is a pun and it is clever, but the term can be read as virtual reality as used in games and other applications, or as reality (real estate) that is virtual. Either way, the term is generic.
I am less than impressed with Applicant submitted letters from customers that are word for word identical. To me, this indicates that Applicant’s lawyer dictated them.
Nevertheless, I also note that although one might argue that WORD is generic and EXCEL is laudatory, both are identified with Microsoft via massive usage. It is possible that for virtual reality reality services 3DVISION is indeed a well-known service provider and others are not using the term 3D vision, etc. Allowing the mark to publish for opposition purposes does give competitors a chance to submit proof of competing usage or that the mark is generic. Furthermore, even if granted, a trademark of this nature is always subject to cancellation proceedings, so if it is asserted against competitors using the term 3D vision in a generic manner, the mark may be cancelled.
Out of curiosity I googled 3DVISION. Guess what? 3D Vision LTD. is not the only company on the Internet using the term.