An application for a 3D trademark

This ruling concerns a 3D trademark application for a novelty lollipop. The mark was opposed after allowance, apparently due to a former business relationship going sour. The applied-for mark does not represent the candy that was previously sold in Israel, and the candy that was sold was previously sold wrapped in clown paper. The Applicant was unable to provide evidence to support claims of massive sales and investment in marketing, and it is not sure what percentage of the candy that was imported was sold in Israel and what percentage was imported into the Palestinian Authority. 

240901Grupo Bimbo S.A.B. de C.V.  applied for Israel TM No. 240901 on 27 September 2011, the mark is for a lollipop representing a paintbrush and was filed for candy on a stick in Class 30. The mark is shown alongside.

The mark was allowed on 26 May 2014 and published for opposition purposes

.On 28 August 2014, two oppositions were submitted, one by Paletas Masa S.A. de C.V. and the other by Sweet Reality Sweet Marketing Company.

The Applicant is a Mexican company that manufactures and distributes food. In 2010 the company bought out Dulces Vero, a Mexican confectionery company.

Paletas Masa S.A. de C.V. is a Mexican confectionary company established in 1983 that manufactures and sells candy. Sweet Reality Sweet Marketing Company is an Israeli importer, marketer and wholesale distributor of candy and beverages.

The Opposer’s evidence included an Affidavit by Ibrahim Adel, the manager of Sweet Reality Sweet Marketing Company and by Mr. Yehoshua (Shuki) Rubin, their import director, and an affidavit from Frederico Bernal Reyna, authorized to speak on behalf of Paletas Masa S.A. de C.V.

The Applicant’s evidence included an Affidivat by Jose Luis Sanchez Medina, the director of a daughter company of Grupo Bimbo S.A.B. de C.V.  known as Organization Barcel, S.A. de C.V. Mr Edel also filed a further Affidavit as a response. On 11 November 2015 a hearing was held wherein the various witnesses were cross-examined.

On  March 2016, when the Applicant’s summation was due and after the Opposer had submitted their summation, the Applicant requested to submit a further piece of evidence. After reviewing the Opposer’s response and the Applicant’s response to that, Ms Shoshani Caspi, adjudicator of IP at the Israel Patent and Trademarks Office, allowed the submission. So on 14 July 2016, the additional evidence was submitted together with an Affidavit by Mr. Francis Abd Alnor, the Applicant’s importer and distributor. On 9 August 2016, the Opposers requested authorization to cross-examine Mr. Francis Abd Alnor on this additional submission. On 8 January 2017, Ms Shoshani Caspi allowed this cross-examination to take place, and a further hearing was held on 20 March 2017.

Parallel Proceedings

From the evidence and statements it transpires that Mr Adel and Mr Francis Abd Alnor used to market the Applicant’s products in Israel under a jointly established company called Reality Sweets. When the two fell out, Mr Adel continued with Reality Sweets and Mr Francis Abd Alnor set up a different company – Alnor Import and Marketing. It therefore transpires that the parties have a long-running altercation that goes beyond the current dispute. The parties have an ongoing proceeding before the Nazareth District Court (Civil Case 25234-08-13).  The Opposer submitted a District Court decision from 2 December 2014 from that proceeding, under which the proceeding was stayed until the Patent Office rules on this opposition.

The Opposer’s Claims

The Opposer claims that it has the copyright (sic) in its name for the brush sweet design. To prove this, the first opposer Paletas Masa S.A. de C.V. appended a Mexican registration certificate.

blue painted tongueSince 2012, Sweet Reality Sweet Marketing Company has marketed Paletas Masa S.A. de C.V.’s products in Israel, including a brush similar to the applied-for trademark, in the same blue colour.

The Opposer claims that the brush-like sweet is not registerable as a trademark since it is the appropriate protection is that of a design registration. The application does not fulfill the relatively strict legal requirements for three-dimensional trademarks and does not serve as a trademark in practice since it has a real aesthetic / functional purpose and has not attained a de facto differentiating character among Israeli consumers.

The Applicant’s Claims

Blue brushThe Applicant claims to be a major food manufacturer, inter alia, of confectionary. The mark was allowed by the Examiner after being examined in light of the Law, case-law and Commissioner’s circulars regarding three-dimensional marks. The Applicant claims to have successfully registered very many three dimensional marks around the world for the brush whereas the Opposer does not have a single registered three-dimensional mark. The Applicant claims to sell brush sweets in tens of countries including the US, Colombia. Switzerland, Dubai, Guatemala and Israel, and has a great reputation. The brush-like design serves as a trademark in practice and is neither aesthetic nor functional.

The Additional Evidence

In their summations, the Opposers claimed that in the first hearing, the Applicant had shown the brush on a stick marketed today, which is totally different to the one referred to in the statement of claims and evidence. More specifically, the Opposer claims that the brush has developed and evolved over the years and so questions such as whether it has acquired distinctiveness are no longer relevant.

clown lollipopThe Applicant claims to have consistently marketed the same lollipop from 2007 to date. The only difference has been in the wrapping. In the past, the sweet was wrapped in a clown paper and nowadays that is no longer the case. The additional evidence includes a sweet as currently sold.

After considering the various exhibits submitted in this matter, whether photos or actual examples, Ms Shoshani Caspi considered that all the products may be considered together as being one and the same.  The lollipop itself has not changed, only its wrapping. During the first hearing, Ms Caspi considered that there may be nuances between the different submissions but on closer inspection, did not consider these significant. Some other differences were manufacturing flaws, but the only change was that of the wrapping paper.

The Ruling

A discussion of the registerability of three dimensional marks.

Section 1 of the Trademark Ordinance makes clear that marks may be three dimensional:

A mark – letters, numbers, word, images and other symbols or their combinations, in two or three dimensions…

toffiffeeThe case-law, has, however, set strict criteria for registering three dimensional trademarks. These are anchored in the Civil Ruling 11487/03 Augustus Storck vs. Alpha Intuit Foodstuffs Ltd. 23 March 2008 (Toffiffee ruling), which was  endorsed by the Supreme Court in 4234/08 Augustus Storck vs. Alpha Intuit Foodstuffs Ltd. 5 October 2009. See also Appeal 3776/06 Ein Gedi Cosmetics vs. Commissioner of Patents and Trademarks 12 May 2008.

These rulings express the court’s suspicion that allowing three dimensional-trademarks would enable the monopolization of the shape of an article of manufacture itself and prevent similar shaped goods from being registered. In practice, one vendor would receive a monopoly which would prevent competition. See Judge Gronis in the Toffiffee ruling:

Registering a three-dimensional trademark for the shape of the article gives the owners a non-limited monopoly on the shape which prevents competitors from using it. This prevents the competitors from taking advantage of the inherent aesthetic and functional aspects of the shape and prevents them competing efficiently with the owner of the registered mark.

The Supreme Court considered this problem in the Toffiiffee decision. Consequently registration of a three-dimensional mark is only allowed in cases where it is proved that the three-dimensional shape does not have real functionality or aesthetic beauty and that it does serve to differentiate the thus marked goods from those of other suppliers.

Following the ruling mentioned above, the Israel Patent and Trademark Office updated their guidelines for registering three-dimensional trademarks in Circular 033/2016 on 15 December 2016.

When examining the pending mark, the trademark examiners relied on Circular MN 61 regarding three-dimensional marks. MN 61 is now section 5.2 of 032/2015 “Applications for Three-Dimensional Marks” from 30 October 2014 which set guidelines for registering three dimensional marks that consisted of the shape of an article or its packaging. This is now replaced by Circular 033/2016 but substantively the considerations have remained the same.

Circular 033/2016 provides the criteria that the Supreme Court relied on in Toffiffee, and these state that as a rule, the correct way to protect the shape of an article or its packaging is by design registration. When wishing to register a three-dimensional mark the Applicant has to support the request with evidence of the following:

  • the shape serves as a trademark in practice
  • the shape does not have significant aesthetic or functional characteristics
  • by usage, the mark has acquired distinctiveness

It must be noted that the Applicant cannot put weight on the fact that the mark was allowed. Firstly, the opposition process or the fact that no opposition is filed, is an inherent part of the examination process. Secondly, the Opposition shines a spotlight on the Applicant’s evidence, some of which was filed during the pre-allowance period. Thus it is necessary and appropriate to reconsider the registerability of the mark, particularly since the Comissioner serves as the eyes and ears of the public and is charged with the integrity of the register.

To determine the registerability of the mark, the Adjudicator then turned to the considerations outlined in re Toffiffee and detailed in the Circulars.

The Requested Mark and its Serving as a Trademark in Practice

With regards to this criterion and in light of the Toffiffee ruling, it is necessary to consider whether the applied-for mark actually serves as a trademark, i.e. to differentiate the applied for goods from other goods on the market which is the main purpose of trademarks, which indicate the source of goods – the manufacturer or supplier, and, as such, protects the public. See Seligsohn “Law of Trademarks and Similar Rights” 1972, re Ein Gedi paragraph 8 and Appeal 2559/02 Moadon Toto Zahav vs. The Council for Regulating Sport Gambling, p.d. 49(1) 873, 888

It will be noted that the fact that a product is sold cannot be provided as evidence that it serves as a trademark. As mentioned in re Toffiffee, in principle the public does not see the shape of a product as an indication of its origin, but consider it chosen for functional or aesthetic reasons. See paragraph 28 of the ruling:

In view of the functional and aesthetic purposes serves by the shape of a product, the public does not generally see the shape of a product as an indication of its source. This is true even in cases where the shape is unique and different from that of competing goods.

In this regard, the Adjudicator was convinced that the applied-for mark does not serve as a trademark in practice. Apart from minimal evidence of sales, no evidence was submitted that showed that the applicant was using the appearance of the brush sweet itself as a trademark.

Furthermore, the Adjudicator accepted the Opposers’ claim that over the years, the product sold was different to the one for which a trademark was applied for. When comparing the brush sweets sold in Israel with the image in the Application, it transpires that they are similar but not identical. For example, the upper surface of the brush is straight in the applied for mark, but is wavy in the sweets that were sold. The bristle guard in the application is bigger than the extending bristles but is the same size in the sweets as sold.

The marks registered in Mexico and Europe were actually very similar to the product sold in Israel, but different to the applied for mark in Israel.

Thus the applied for mark is not identical to the product sold in Israel but does feature some similar elements. However, even if it was identical, that would not help as the evidence submitted related to a two dimensional image and that was also insufficient.

Firstly, the evidence submitted by the Applicant for use of the brush sweet package does not serve as evidence of usage of the pending application. This is because the brush appearing on both the original and current packaging is significantly different from the pending application. Also, the evidence provides use of images of brush sweets and not of usage of the brush sweet serving as a trademark. The evidence brought was also minor.

The alleged publicity by the Israel distributor can be summarized as a handful of pictures on a single Internet site, an advert in a phone directory and an Arab language flyer. The advertising from the distribution vehicle does not help since it shows a clown holding a relatively realistic paintbrush with a brown handle, white connector and blue bristles. This is nothing like the applied for mark. It is also overshadowed by other images of a clown and the words Alnor Importing and Marketing.

Similarly, the relatively small amount of marketing material submitted, including the boxes for the brush sweets themselves, includes other goods distributed and marketed in Israel, including “Brochita”, “Pinta Azul” (blue brush – but not in Hebrew), and Dulces Vero (the name of the manufacturer. Thus one cannot conclude with any certainty that the picture of the brush sweet serves as a trademark, that is the image that distinguishes the good in question from other products on the market.

In Appendix J of Mr. Medina’s affidavit, a new packaging is shown that does not include the clown. Rather there is a window through which the brush sweets are visible. The package also includes a picture of the brush sweet itself. A similar packaging encloses the sweets themselves, where the back of the package is transparent. The Adjudicator is not prepared to accept this as strengthening the application since Dulces Vero  and Pinta Azul (the name of the manufacturer and the sweet) both still appeal in a relatively large font. This also makes it impossible to establish the claim that the semi-transparent package that shows the sweet itself is the reason why the product is purchased.

Thus the Adjudicator concludes that the applie-for shape mark does not serve to differentiate the product from others on the market and does not serve as a trademark.

Even were the applied for mark to serve as a trademark one would have to establish that a case has been made for applied distinctiveness. Although not necessary to do so, the Adjudicator now considers this.

Has the Applied for Mark Acquired Distinctiveness Through Use?

A Three-Dimensional mark cannot have inherent distinctiveness (Toffiffee, section 29). Thus, and similar to other cases where a mark cannot have inherent distinctiveness, to register the mark, the Applicant must show that the mark has acquired distinctiveness through marketing and publicity efforts, under Section 8(b) of the Ordinance which states that:

The Commissioner or the Court, when coming to determine if something used as a mark has acquired distinctiveness is able to consider to what extent usage of the mark has resulted in acquired distinctiveness.

The acquired distinctiveness may be learned from different facts, such as the extent and longevity of usage of the mark and efforts exerted to make establish the mark in the public awareness. See Appeal 3559/02 Moadon Toto Zahav vs. The Council for Regulating Sport Gambling, p.d. 49(1) 873.  In addition to considering the period of usage of a mark, it is also necessary to consider the type of usage – specifically if through usage the public will associate the mark with its owners. See Appeal 18/86 Venecia Glass Company Israel vs.  Les Verries de Saint Gobain p.d. 45(3) 224, 238 (1991).

The Adjudicator did not consider the evidence submitted as sufficient to establish any sort of acquired distinctiveness amongst the Israel public. As detailed above, the weight of evidence was minimal and it does not support a contention of a significant advertising budget.

Mr. Medina claims that Applicant invested significant resources on market penetration and product development. Also, he claims to have invested in advertising and marketing, including television advertisements and on social media. The marketing in Israel included vehicles with the logo and carrying catalogues, a local website, and on Facebook. However, no evidence was provided to back these assertions.

The Adjudicator felt that Mr. Medina was unable to provide evidence of marketing in Israel by either the Applicant or the local distributor. Surprisingly, no market research was submitted.

It appears that the main publications relied on by the Applicants are not publications used in Israel, but in other countries where the product is sold. These publications, like the catalogues, show the brush together with other products from the same supplier.

Furthermore, the Applicant could not show significant sales in Israel. Worldwide sales details were appended, but these did not relate specifically to Israel. Three export certificates to Israel, all from 2007, were submitted. The prosecution file did include some sales information, but it was incomplete.

The Applicant claims to have sold 13,000,000 brush sweets in the period 2007-2012 via the local distributor (Alnor, now 3C). This is insufficient. Firstly, no data was submitted that covers for the last five years and this is suspect. A spreadsheet showing sales in thousands of sweets to different countries was submitted but it does not relate to Israel alone. One cannot extract actual sales to Israel. Furthermore, the data was not supported by an affidavit from someone in the know.  There were no sales receipts from Israel. In this regard, Mr. Adel alleged that there were no sales at all in the six months previous to his affidavit, and the Adjudicator found him to be knowledgeable.

The Applicant chose not to provide adequate evidence of sales. It seems that the sweets were sold in both the Palestinian Authority and in Israel, but the Applicant did not provide a breakdown so sales in Israel cannot be estimated.

The Applicant claims that the sweet was sold mostly to the Arab sector due to the sweet lacking a Kosher certification. That as may be, no evidence was submitted that the sweet had acquired distinctiveness within the Arab sector.

Consequently, the Adjudicator considered that there was insufficient evidence to conclude that the sweet had acquired distinctiveness in Israel. Furthermore, since the actual product sold was different from that shown in the Application, the evidence that there was, is probably useless anyway.

The Adjudicator ruled that the Applicant had failed to establish actual usage of the mark. Even if the mark was used, there was no evidence that it had acquired distinctiveness as required by Section 8(b) of the Ordinance. Strictly speaking therefore, a discussion of the Aesthetic – Functional Nature is superfluous but the Adjudicator nevertheless chose to address this as well.

The Aesthetic – Functional Nature

Since the applied for mark is a three dimensional one, it can only be registered if it has no significant aesthetic or functional character, which would otherwise invalidate its registration.

The aesthetic nature is considered with respect to re Toffiffee:

When we refer to aesthetic character, we mean a shape that serves no functional purpose, and is preferred over alternatives for aesthetic reasons.

blue tongued skinkThe Oppposer claims that the applied for mark has an aesthetic and functional purpose, and argues that there is a logic in marketing a paintbrush shaped sweet since it colours the tongue. The aesthetic –functional characteristic is that it attracts the consumer to the item. The Applicant claims that the choice of the paintbrush shape is not to draw attention to the sweet’s tongue colouring character and to emphasize this, the Applicant provided examples of tongue colouring sweets having other shapes.

The Adjudicator did not accept that the shape was functional – aesthetic due to tongue colouring.  The issue is whether the selected shape results in its purchase, see the 212302-212303 Crocs Inc ruling from 15 January 2013.

In this instance, there is difficulty concluding that the shape is random since it was presumably chosen to attract the consumer. However, it is true that there are a wide range of lollipops that colour the tongue and so there are functional alternatives. However it still remains difficult concluding that there is no aesthetic appeal. Perhaps it is unnecessary to do so, but the Adjudiator considers the selected shape as having significant aesthetic appeal, although not functional appeal.

The Opposition was accepted and the 240901 mark was refused. The Application file is closed. Using her powers under Section 69 of the Ordinance, the Adjudicator awards costs of 14,000 Shekels + VAT to be split between the two Opposers, who have 21 days to pay this.

Ruling by Ms. Shoshani Caspi re Opposition to Israel TM Appplication No. 240901 for 3D paintbrush shaped lollipop, 18 July 2017.

 

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