Regalo; is a Spanish word distinctive in Israel?

regaloThe word mark REGALO was submitted as a trademark in Israel for jewelry, gem-stones and watches in class 14 and for pens and writing implements in class 16.

The word regalo means gift in Spanish, and the Examiner considered it descriptive and non-distinctive for the goods in question.

The Applicant responded that the word regalo has no meaning in Hebrew, it is not associated generically with the goods and according to the Central Bureau of Statistics only 7% of the Israeli population speak Spanish. Thus for the majority of the population, the mark is arbitrary and at best merely hints at the products. The Examiner refused to accept the statistics provided and considered that a much larger percentage of the population understand a few words of Spanish and so the mark is generic and needs to remain available to all.

The Applicant appealed this decision to the Commissioner.

RULING

Seligsohn (Trademark Law and Related Legislation, 1973) writes the following regarding foreign languages:

The accepted name of an item has to remain free for public use. This is true, not only for Hebrew names but also for names in other languages that are known to at least a significant proportion of the population. Thus words like oil and bread in English cannot be registered. In the UK, Boko, meaning beer in Norwegian could not be registered (See Davis vs. Stribolt 6 RPC  2007). (It can be argued that Norwegian is known amongst British traders doing business with Scandinavian countries). In Israel, the Italian word Grissini is considered descriptive (141/65 p.d.i. 19 II (131).

In 141/65 Meir Beigel vs. Shlomo A. Angel ltd (Grissini) it was stated that:

And it does not matter that the word grisinni is taken from Italian which is not widely spoken in Israel:  Davis v. Stribolt and Co. 59 L.T. 854 ,(3)  ruled that the fact of  few speakers is insufficient to deprive the word of its meaning in trade, and does not convert a generic word in another language into a creative word that was coined by the applicant that someone can possess.

The ruling regarding grissini should be understood in light of Kerly “The Law of Trade-marks, Trade-name, and Merchandise Marks” 1910, page 146:

“The name of the goods is not a good trade-mark apart from the Acts (b), and it cannot, of course, be registered under them (c). So that the introducers of a kind of beer, which was common in Sweden and Norway, were not allowed to retain on the register the names by which it was ordinarily known in those countries, and under which it had been sold in England (d).”For the sake of caution limiting my proposition to the European languages,” Chitty, J., said, “I am of opinion that, in reference to an Article produced in a foreign country and imported into England where it was previously unknown and without a name, the word used in that foreign country as the common term to describe or denote the article is not a fancy word within the meaning of the Act”. And it is clear that a word which, though not English, carries a well understood descriptive meaning (e), such as Sanitas (f) or Britannia (g), is not a “fancy word”. This rule does not, however, extend to exclude words taken from a barbarous language.” 

Regalo.pngThus where a word is the name of the good itself in a foreign language, it cannot be registered as a trademark for that good in Israel, even if the language is not widely spoken in Israel, so long as the language is not virtually obsolete.

However, when referring to adjectives and adverbs and not to the name of the good itself, such as with laudatory words, the issue is the extent of knowledge of the word amongst the relevant target consumer for the article. See the decision regarding marks 184606  and 184607 “American Apparel, Inc (California Corporation, paragraphs 15-17.

In Appeal 5792/99 Communication and Religious Jewish Education Family (1997) ltd, Family Magazine vs. S. B. S. Publicity, Marketing and Promotions ltd, Good Family Magazine, 23 May 2005, it was explained that there is a description spectrum for trademarks that go from generic words that one cannot register, to made up words which are inherently registerable. In the middle are words that are descriptive which cannot be registered, through indicative words to arbitrarily chosen words which can generally be registered. In this instance, one has to determine whether the word regalo is to be considered descriptive or hinting. This is not always an easy determination, as Seligsohn wrote on page 40:

In practice, it is often difficult to differentiate between different kinds of mark, but the main test is: does the public, on viewing the mark or hearing it verbalized, immediately see a connection between the mark and the nature of the good, its quality and properties, or does the public have to think or to have the connection explained to it?

regalo 2The Commissioner considers that in Spain the word Regalo may be considered as descriptive for goods usually given as presents. However in Israel, apart from those that are native Spanish speakers, even if they are familiar with the word Regalo they will not see an immediate connection to the type of goods and will have to think to see a connection. To the extent that the Israeli consumer does not know the word, and the Commissioner considers this to be true of Spanish words to the vast majority of Israelis, it is not a generic word and at best is indicative.

In conclusion, the Commissioner considers that Israeli consumers seeing the word Regalo in connection with the requested goods, will consider that the mark is used as an indication of the origin of the goods, so Israel Trademark Application No 305564 is registerable.

Ruling by Ofir Alon re Israel Trademark Application No. 305564 “REGALO” , 13 December 2018.

 



Categories: Israel IP, Israel Patent Office Rulings, Israel Trademark, Uncategorized, מחלקת סימני מסחר, סימן מסחר, סימני מסחר, סמני מסחר, קניין רוחני, קנין רוחני

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