Gold is often considered as indicative of quality. Tnuva the Cooperative for Marketing Agricultural Produce in Israel applied for Israel Trademark 271714 for a Gold color, and 271715 for a stripe in the same gold color. The Color is identified as Panton 871 and was applied for all goods in class 29 for Superior Kashrut (Kosher food). The colour is shown alongside.
[MF – There is a large market for Kosher food in Israel. There is regular Kosher food supervision, but also various superior Kosher food supervision with additional stringencies. The term used for this extra-meticulous supervision is מהדרין (Mehadrin). This is translated throughout this blog post as ‘superior’. This is an indication of how the Haredi or Ultra-Orthodox see the supervision. It is not a value judgment that I am expressing an opinion on].
When the marks came up for examination, the Examiner alleged that since the Applicant was trying to monopolize a colour, it lacked distinctiveness and was not registerable under Section 8(a) of the Israel Trademark Law 1972.
Furthermore, it transpired that then pending Israel Trademark No. 270492 was for the same goods in the same class as Israel Trademark No. 271714, so under the competing marks proceeding, the Applicant submitted examples of usage of the marks. These included photographs of various packages of various products, all of which included a gold stripe on the package. The Applicant submitted that the goods were directed to a specific demographic, the Ultra-Orthodox. The gold stripe enabled this group to identify goods manufactured to superior Kosher standards.
[MF – the competing mark is for Club 100 – food articles with 100 calories or less per package]. After receiving this response, the objections remained in place. The 271714 mark is simply a rectangle of the desired color, and thus lacks distinctiveness. The 271715 mark is simply a gold stripe and also lacks inherent distinctiveness.
On 17 September 2017 the Applicant submitted an Affidavit of Mr. Harel Yehuda, the director of Demographic Subgroups at Tnuva, and many supporting documents were appended to the affidavit.
In a further Office Action of 28 December 2017, the trademark office noted that the Affidavit was lacking in that it did not include sales data, and this should be rectified. In response, the Applicant submitted further Affidavit on 18 March 2018 with sales details and information regarding advertising and marketing investment in their products, but which they requested be kept confidential.
In that response, the Applicant agreed to add the following limitations to their trademark applications: TM 271714 for the gold color (Pantone 871) is not limited to the rectangle shown, and TM 271715 is for any rectangular stripe and not just that shown.
On 25 April 2018, the marks were rejected. The Examiner justified this on the grounds that the Applicant’s main trademark for Tnuva or one of their other marks was always present together with the gold color, and so it was impossible to determine that the gold color had independently acquired distinctiveness as an indication of origin.
The Applicant requested a hearing of both Applications before the Commissioner, and presented himself on the 28 October 2018 for this purpose.
The Applicant’s Main Claims and Evidence
The main claims of the Applicant as culled from their various submissions and affidavits are presented below:
The Applicant (Tnuva) claims that it is Israel’s largest food concern and the leading food brand in Israel. It produces and sells industrial produce, particularly dairy produce, meat, poultry, fish, eggs, fruit and vegetables. The Applicant and her subsidiaries have many well known food marks. These include Sunfrost, Maadanot, Tiv Tirat Tzvi 2000 ltd, Harduf Organic Food Products – the Agricultural Cooperative ltd, and Olivia Gourmet (1996) ltd.
Tnuva’s products are supervised by two Kashrut systems. Rabbinate Kashrut and Superior Kashrut. The products that are under the Superior Kashrut are supervised by the “Superior Kashrut Committee” or by the Jerusalem Court of the Ultra-Orthodox Community. The Applicant claims that the Kashrut Supervision of the Ultra-Orthodox Community is well known by the public and particularly amongst the relevant consumers and is widely demanded due to its stringencies and high levels.
The Applicant claims that the difference between the types of Kashrut requires them to be branded differently to avoid misleading the relevant demographic and to maintain the Applicant’s reputation with the Court of the Ultra-Orthodox community. Tnuva claims that the prominent gold coloring helps the relevant consumers to find the products that they seek; those under the Kashrut supervision of the Jerusalem Court of the Ultra-Orthodox Community.
The gold stripe (TM 271715) and the gold color (TM 271714) as used on the Applicant’s products, are not limited to a specific form or a fixed graphical element, but vary from product to product, depending on the shape and packaging of that product.
The Applicant claims that over the years (for more than a decade) it has worked to establish a connection between the color gold and Kashrut supervision of the Jerusalem Court of the Ultra-Orthodox Community amongst the Ultra-Orthodox demographic. In this regard, it claims that it has invested heavily in advertising in the Ultra-Orthodox media outlets and in promoting the gold markings on its products.
During the examination of their application, the Applicant appended many photographs of their products and of products of their daughter companies that bear the gold marking. Examples of advertisements including posters that show Tnuva products (such as milk, cottage cheese, soft white cheese, advertisements for Yoplait yoghurt, and for Emek cheese. In Yehuda’s affidavit he testified that the advertisements refer to the gold stripe, underlined with a gold stripe.
Details of the advertising budget for 2010-2017 was provided, but remains confidential.
Mr. Yehuda also testified that the Applicant uses the gold mark for products supervised by the Jerusalem Court of the Ultra-Orthodox Community on products of its daughter companies as well, and this is coordinated with the Jerusalem Court of the Ultra-Orthodox Community. Mr. Yehuda affirmed that to the best of his knowledge, only Tnuva used the gold markings as a Kashrut indication.
Mr. Yehuda affirmed that Tnuva had a market share of about 40% of the Ultra-Orthodox market which demanded supervision by the Jerusalem Court of the Ultra-Orthodox Community. Various appendices were added to his affidavit and are discussed below. I summary, the Applicant claims that over the years the gold stripe has become identified as an indication that the food comes from Tnuva with Superior Kashrut supervision.
The Applied for Marks
The difference between the applied for marks is that one is a rectangle and the other is a band. Under cross examination it transpires that the appearance of the mark depends on the goods packaged and is not necessarily a band.
The Applicants affirmed that the gold band appears differently on different goods. Sometimes it is straight and sometimes it is curved, and has a different width each time, and appears in a different form on different packages depending on the design of the product, and the other graphical elements on the same package.
Some examples of the uses are shown below:
The first issue that should be considered is the form of the requested mark. The request for the gold band has no graphical limitation that is common to all uses. Filing in this manner, if successful, allows the Applicant to obtain wide protection for the gold color for the goods in question.
In the DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 16 December 2015, section 3 states:
“Signs of which a trade mark may consist:
A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”
(Bold face is added by Commissioner Ofir and is not in original).
In the Trademark Regulations of the European Union REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 14 June 2017this requirement was explained as follows:
“(10) A sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
Kerly, in Kerly’s Law of Trade Marks and Trade Names 16th Ed (2017) that deals with the European Union Law in England, relates to the general requirements for registering trademarks that are colors not restricted to a specific shape or form. Due to their relevance, this is brought in full:
“Sir John Mummery in Nestlé  EWCA Civ 1174. (at ) set out a useful summary of the position established by the CJEU cases on art. 2 in relation to colour marks, some of which is of general application:
“(1) The conditions An application to register a trade mark must satisfy three conditions for the purposes of Article 2:
(i) there must be a sign;
(ii) it must be capable of graphical representation;
(iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
(2) Purpose The purpose of the requirements is to prevent abuse of trade mark law in order to obtain an unfair competitive advantage.
(3) Identification Identification requirements for entry of a trade mark on the public register of trade marks include clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.
(4) Multitude of forms The identification requirements are not satisfied, if the mark could take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors.
(5) Colour without a message Colours are normally a simple property of things, or a means of decorating things. They are not normally capable of being a sign. A sign conveys a message. The sign is capable of being registered as a trade mark, if the message is about the source of goods or services.
(6) Colour as a sign conveying a message Depending on the facts and circumstances of the case, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service are capable of being ‘a sign.’
(7) Graphic representation of colour As for the second condition of graphical representation, in a mark consisting of two or more colours designated in the abstract and without contours, qualities of precision and uniformity are required. The colours must be arranged by associating them in a predetermined and uniform way.
(8) Colour without form/in a multitude of forms Those requirements are not met by the mere juxtaposition of colours without shape or contours, or by reference to colours in every conceivable form, so that the consumer would not be able to recall or repeat with certainty the experience of a purchase. The scope of protection afforded by such a mark would be unknown both to the competent authorities responsible for maintaining the register and to economic competitors. Registration would confer unfair competitive advantages on the proprietor of the mark.”
Although in the Nestle ruling brought by Kerly, it is ruled that colors or color combination that are simplified, without shape or form, can serve as a mark for goods of services in specific cases. The restriction to a specific shade (Pantone) of gold also fulfils the specificity requirement, but this still does not fulfill the requirements mentioned, since the color can be used for different shapes and forms. With such a mark, the consumer cannot reconstruct or remember the purchasing experience [of goods with the mark. Commissioner Alon], and the scope of the mark will not be clear, not to the person responsible for the registration and not to competitors [of the mark owner]. An unclear mark provides unfair advantage to its owners.
It is noted that the requirement for a graphical representation in the Nestle decision was canceled in the amended legislation of the EU from 2017, however the principle that the scope of protection should be clear and focused has not changed, as is apparent from the T-101/15 and T-102/15 Red Bull v EUIPO (30.11.2017), paragraphs 116-119:
“116 Furthermore, if EUIPO were to agree to protect a combination of two or more colours allowing, as a matter of fact, numerous different combinations, that approach would amount to affording protection that would be disproportionate in the light of the aim pursued by trade mark law, which is to safeguard the function of indicating the origin of goods in commercial practice in the interest of consumers.
117 Fourth, the intervening association asserts that the breach of the principle of proportionality is all the more flagrant as the new Regulation 2015/2424 has dropped the requirement for a graphic representation, by introducing Article 4(b) in Regulation No 207/2009 (now Article 4(b) of Regulation 2017/1001), which now requires only that the sign be capable of being represented ‘in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’.
118 In that regard, although Article 4(b) of Regulation No 207/2009, as amended by Regulation 2015/2424, is not applicable in the present case, suffice it to note that that argument is based on an erroneous interpretation of that provision. The new wording of Article 4 of Regulation No 207/2009, which is intended to reinforce legal certainty, is more restrictive than the previous wording, in so far as it expressly incorporates into the body of that provision the objectives identified in the judgments of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748), and of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384), and is thus perfectly consistent with that case-law and also with its application by the Board of Appeal in the contested decisions.
119 Furthermore, contrary to what is claimed by the applicant, but in common with the intervener, it must be observed that it is neither impossible nor disproportionate to require that an application for registration relating to a trade mark consisting of a combination of colours per se be represented graphically or accompanied by a description containing the systematic spatial arrangement of the colours in such a way as to enable the subject matter of the protection afforded by that mark to be grasped clearly and precisely.”
According to that stated in the ruling, granting protection to a large number of colour combinations is contrary to the purpose of trademark law which is intended to provide an indication of the origin of goods, and it is appropriate to require wide and systematic use of a mark that allows the scope of the protection to be clearly delineated for it to be registerable. Although that ruling relates to a combination of colours and not to a single colour, the sentiments are appropriate to a single colour as well. To complete the picture, it is noted that the Red Bull ruling was appealed to the Court of Justice of the European Union (CJEU) which has not heard the case yet.
More recently, the CJEU ruled on the sections of the European Directive regarding colour claims, in an infringement case that the Christian Louboutin Fashion House brought on a mark registered in Benelux (Belgium, Holland and Luxembourg).
The Court analyzed the registerability of the mark which consists of a red sole on women’s shoes from the Quality Fashion House. One of the issues discussed was whether the mark, which appeared in the submission as being the sole of a show with a stiletto heel, was limited to soles of that shape. The CJEU ruled that the mark could be registered, since it was limited to the specific shape of the sole appearing in the figure. C-163/16 Christian Louboutin v. Van Haren Schoenen BV (12.6.2018).
Thus in re Louboutin, the mark was registered, but only for a particular shaped sole in the distinctive red colour, and the mark appears the same way on the same part of the shoe in all uses, in contradistinction to the case before us.
In section 1 of the Trademark Ordinance, the words mark and trademark are defined as follows:
‘mark’ – letters, numbers, words, images or other symbols or combinations thereof, in two or three dimensions.
‘Trademark’ – a mark that serves, or is intended to serve, a person regarding goods he manufactures or trades in.
In the Ordinance, there is no requirement similar to that of the directive, but one can say that the requirement that a mark should be clear and unequivocal is inherent in the definition of the term ‘mark’. This is how Seligsohn explains the term in his book Trademarks and Related Laws 1973 Page 7.
On the other hand, it seems that other indications that can be smelled, such as perfume, are not (protectable) marks. These marks are not considered trademarks as they cannot be clearly and unambiguously defined.
(Here Commission Alon notes that he does not opine on whether or not a smell can be registered in Israel, since it is not the issue in question).
Similarly, Regulation 115 of the Trademark Regulations 1940 states:
A request to register a trademark must include the mark whose registration is required, and if the mark is three-dimensional, a drawing or picture of the mark, showing how it appears from all sides will be appended to the application, and the form will state that the applied for mark is a three dimensional one; where the mark is a sound, the notes of the sound mark and digital file should be appended, allowing the mark to be listened to by the trademark office.
A mark that is not detected by the senses in a fixed manner cannot be considered a mark. Three dimensional marks were considered in 182676, 182677, 182679, 182680 MANN+HUMBEL GMBH from 19 August 2008, where the following marks were applied for:
There Commissioner Noam wrote the following:
In this instance, we are discussing marks that are box shaped and include the combination of two colours (yellow and green) with a white line dividing the two colours, where the applied for mark is for the combination “in any form”. From a first glance it is clear than this is a very wide mark that includes a lot of alternatives (practically unlimited). For example, the relative surface areas of the yellow and green sections are not defined. The shape of the block, and its diagonals are not defined. Basically, any box, of any proportion that is painted in green and yellow are covered by the definition. The colours can be across the width of the box or along its length. In an extreme example, the width of the green part cold be one micron and the rest of the box could be yellow, or the opposite. Furthermore, the white dividing line could be straight or wavy in any manner.
From that stated, it is apparent that the definition is so fluid that it is unclear if it is a mark at all.
From examination of the appendices to Mr. Ivor’s declaration, together with printouts from the internet website of the Applicant, it transpires that we are dealing with a concept, a design idea to combine the colours green and yellow with a white dividing line between them, which are expressed in different ways in the website, the packaging and the catalogues of the company.
A basic general rule in all branches of IP states that Intellectual Property does not protect ideas per se but only specific expressions of the idea that are fixed. See Dr Presanti in her book Copyright Laws, Carmel Legal Books 2000, page 31, and also Appeal 15/81 Goldberg vs. Bennett et al. p.d. 36(2) 813 on page 820.
Similarly in this instance, we are relating to a mark that is not limited to a contour or other limitation of a specific area on the packaging it is used to mark, and the place marked is not limited, nor is the size of the mark. The design of the mark changes depending on the design of the package on which it is appears. Sometimes the god appears as a border around another mark, such as the brand-name of the applicant and is thus subsumed by it.
Although the way a mark is used is not considered when determining the registerability of a mark, the examples provided by the Applicant exemplify the problematic nature of the mark. In each example supplied, the mark appears in a different place on the package, in a different thickness, as a different geometry and so on. A mark that is not limited to a specific repeating form, cannot be considered by the public as indicating origin, and creates a lack of clarity regarding the protection given to the applicant and what is allowed or forbidden for the public to do.
Thus the commissioner is skeptical whether the marks in question that lack definitions are considered marks in the sense of section 1 of the Ordinance.
The purpose of the applied for marks
The unique nature of trademarks is defined in section 8(a) of the Ordinance:
8(a) A mark is not registerable unless it can be used to determine between the products of the mark holder an those of others (hereunder – a definite characteristic).
On page 20 Seligsohn explains:
A mark has to be such that the community of customers (or receivers of services) I able to identify it and to distinguish from other marks on other goods. This basic characteristic relates to the mark itself, and is not determined by other considerations. If the mark lacks this characteristic, it will not be allowed to be registered merely because its owners always use it together with their name or address and in this manner allow it to be distinguished from the goods of others. The ability to be distinguished has to be inherent and not given in some external way, by something not part of the mark.
It is understood that the mark should be evaluated for whether it is used in trade for the goods for which it is to be registered, and also whether it is a mark that should stay in the public domain and used by others for trade, in which case it cannot be registered (Seligsohn page 21).
Registering Colours as Trademarks
In general, a colour is not considered by consumers as indicative of the origin of a good (see Kerly (2-060) brought above. Furthermore, uses of colours should remain in the public domain, and as a general rule, one should not give a single manufacturer a monopoly on a colour as a trademark, thereby preventing other manufacturers from using the mark. These principles are reflected in the guidance rules for trademark examiners – see 30.3 Examining the National Phase of an International Trademark Registration 17th Edition (31 January 2018):
15.1.10 A mark that is simply a colour – one should not allow a trademark owner to have exclusive use of a specific colour, since colours should remain available to everyone to use. Providing exclusivity for a specific colour will prevents others from using the colour in trade. Consequently, a Section 8(a) rejection should ensue.
The words of Judge Y Amit from when he was a District Court Judge in Haifa are appropriate here. See 9497/05 MK Bashara vs. The Forum of National Extra-Parliamentary Nationalist Movements (14 July 2005) which dealt with a request for a temporary injunction against using the colour orange for socio-political activities. In section 7 of the ruling, Judge Amit stated that:
The colour orange, in and of itself, is neutral. In analogy to intellectual property, the colour orange can be considered generic, and it cannot itself be protected “as the law will not allow an individual to monopolize a word from the language for his business (see Appeal 5292/99 above). Similarly, the court will not allow a party to confiscate a colour from the public for the benefit of his party. In addition, the range of colours (not mere shades) is limited by its nature, so it is difficult to believe that a business entity and even more so, a political entity, can obtain ownership of a colour.
Similarly, in the Guidelines for Examination of European Union Trade Marks, EUIPO, Part B, Section 4, Chapter 3. Page 33 §14.1, 01/10/2017, based on the CJEU ruling:
“…As has been confirmed by the Court of Justice, consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not used as a means of identification in current commercial practice (judgment of 06/05/2003, C-104/01, Libertel, EU:C:2003:244). A colour is not normally inherently capable of distinguishing the goods of a particular undertaking (para. 65). Therefore, single colours are not distinctive for any goods and services except under exceptional circumstances”.
Such exceptional circumstances require the applicant to demonstrate that the mark is unusual or striking in relation to these specific goods or services. These cases will be very rare, for example in the case of the colour black for milk…
The public interest is, according to the Court, an obstacle to the monopolisation of a single colour irrespective of whether the relevant field of interest belongs to a very specific market segment (judgment of 13/09/2010, T-97/08, Colour (shade of orange) II, EU:T:2010:396, § 44- 47).
As can be seen, the guidelines of the European Union only allow a colour to be registered in very rare cases, and these are where the colour choice is counter-intuitive for the goods in question.
Also the Guidelines of the USPTO establish that in general, a colour is considered as lacking inherent distinctiveness. See Trademark Manual of Examining Procedure- TMEP §1202.05
“Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000). See TMEP §1202.05(a) and cases cited therein”.
Thus a trademark than is merely a colour is considered as lacking distinctiveness and cannot be registered as a trademark under section 8(a) of the Ordinance.
Colours where there is a public interest in their remaining in the public domain
The hesitation to provide a monopoly for colours is increased when considering a colour that is used in trade to indicate a particular quality. See for example, 1242/08 Dexon ltd vs. Agis Trade Agencies (1989 ltd. 3 June 2012, paragraph 23:
The spectrum of colours is not unlimited, and this restrains one from providing a monopoly for a specific colour to a particular manufacturer. How much more so is this the case where there is a lnk between the good or service and the colour. Where the colour is pink or purple for a product intended for women…”
Similarly, the Guidelines for the European Union has a similar clause:
“Where the single colour is found to be commonly used in the relevant sector(s) and/or to serve a decorative or functional purpose, the colour must be refused”.
In this instance, we are dealing with the colour gold, which is widely used in trade to indicate high quality, preciousness, and the like, or to mark specific goods. Where the colour in question is gold, the commissioner considers that the typical consumer will see this as an element indicating quality, and not one indicating the origin of the goods. The fact that gold has a special meaning and indicates preciousness and high quality emplasises the need for it to remain availaible for use by the public. This principle is similar to that which prevents lautatory words being monopolized as trademarks, since these also relate to the quality of the goods, and generally should be left available to the public.
The court ruling in 10603/09 Strauss ltd vs. Noga Icecream ltd (2 July 2009) is pertinent to this matter. In that case, the courts refused to give Straus Icecream a temporary injunction against Noga Icecream ltd, to prevent it selling its icecream in eliptical gold tubs. Judge Binyamini related to the monopolization of the colour by granting a trademark to one company, and to monopolizing the gold colour in particular:
Strauss cannot have a monopoly for gold packaging. Generally, intellectual property monoplies will not be provided by trademarks or other means, for single colours, since colours are in the public domain and should not be owned.
This rule is particularly relevant in this case where we are considering shades of gold, and where other manufacturers, such as Nestle, use gold colours for their icecream containers.
From the General to the Specific
The present issue is the use of a colour for decorating many products, including food, due to the perceived link between the colour and quality or differentiation. This is clear from the examples given below, selected from the food industry (some of which were explicitly discussed), where a gold stripe is part of the trade dress, and gold decorations or the word gold is used to indicate luxury and uniqueness, either in the food itself or in a series of foodstuffs (the discretion of the commissioner to do independent research is given in paragraph 25 of the Appeal 941/05 Agudat HaCormim (Vintners) Cooperative of Rishon l’Zion and Zichron Yaakov vs. HaCormim (the Vineyard) Company, p.d, 61(3) 350 (2006).
The following products bear a gold stripe but do not have Superior Kashrut supervision. The gold stripe is probably used to indicates quality.
Throughout the hearing the Applicant stressed that the purpose of the gold stripe was twofold: it indicates the origin of the goods and that the food sold under the mark has superior Kashrut supervision. As stated above, the gold colour is considered as indicative of quality. In general it is used to indicate premium goods, or to draw the eye of the consumer and to indicate quality, and its usage by Tnuva is to indicate a premium Kashrut supervision, as opposed to regular Kashrut.
The commissioner adds that the applicant claims that one should differentiate between the word זהב or gold, and usage of the colour gold. According to the applicant, the colour is applied to basic foodstuffs, and one cannot argue that the gold stripe is an indication of quality. The commissioner was not convinced that there is a difference between the use of the word gold or using the colour gold for Kosher food as a trademark in this manner, since the use of the colour is to indicate a uniqueness of the product, and allowing it to be used exclusively by one company will prevent competitors’ form using the mark, even for other purposes. The Israel High Court came to a similar conclusion in 4322/09 format Trade and Services (1994) ltd vs. A. Sh. Snir ltd. 3 April 2009 paragraph 4:
“and so, one should add that it is doubtful to what extent the word common to the two marks, GOLD, can support significant protection under IP laws. When used for goods that are not made from the precious metal, the word gold or זהב generally indicates high quality. In such cases, the word is descriptive and so provides minimal protection.
During the hearing, the Applicant argued that the registration of the gold mark was not intended to prevent others from using the gold mark for goods having regular Kashrut supervision (see protocol page 23 lines 15-16):
It is true that the applicant is interested in registering the gold stripe for Superior Kashrut supervision. However, there are likely other goods whose packaging or marks include gold decoration as an indication of quality, premium or a range of special goods, and these may also be of superior Kashrut supervision, and providing a monopoly to the Applicant will prevent these businesses from marking their goods with a gold stripe. In this regard it is noted that the range of goods for which the gold stripe is requested is particularly wide and includes the entire class 29 that includes meat, fish, poultry, game, meat extracts, preserved fruit and vegetables, dried and cooked fruits and vegetables, jams (jellies for out American friends), soups, compotes, eggs, milk, cheese, butter, yoghurt and other dairy products, oils and fats for food. In other words, the requested monopoly is very wide.
Due to all that written above, it is unlikely that the gold stripe is registerable as a trademark. Firstly, due to the lack of certainty in regards to its shape, how it is used and the scope of the protection it provides, and secondly, due to its ubiquitous nature for marking products as superior or higher quality rather than ordinary, when used by the same manufacturer for marking certain products. Due to this, it seems that it should not be awarded as a trademark for any food product.
Furthermore, the Commissioner considers that the registration of the mark and its being awarded to the applicant could be considered as misleading to the consumers regarding that which the applicant wants to indicate – which is a superior Kashrut supervision. Since, if the gold colour is restricted to use by the applicant for indicating superior Kashrut, any other food product including gold on its label (particularly due to the amorphous nature of the registration) will be considered as having superior Kashrut, even if this is not the case. This could mislead the Ultra-Orthodox demographic which the mark is directed to.
It is noted that the Applicant’s agreement to denote the mark with a specific pantone number (Pantone 871) is insufficient in this instance, to dispel the doubts cast above. Even limiting the protection to the specific shade or to confusingly similar shades, will monopolize a colour that should remain in the public domain.
Acquired Distinctiveness of a Gold Stripe
In this instance, where we are considering a mark that does not have any spatial limitations, the commissioner considers that it is doubtful that proof of secondary meaning should allow the registration of a gold band at the cost of this being deprived from the public domain.
However, there is still a possibility of allowing a colour mark to be registered if it can be proven that the mark has acquired a secondary meaning and the public associate it with the origin of the mark. From policy considerations mentioned above, the burden of proof required to show that there is a secondary meaning is a high one, and it is difficult to be sure that it can be raised, but if it is raised, whether it would be appropriate to remove the gold colour from the public domain and to register it to the applicant. See, for example, BGT”Z 1444/85 Klil Non-Ferrous Metals ltd vs. Commissioner of Patents, Designs and Trademarks, p.d. 42(1) 309, 315, (1988):
Even if it has acquired a secondary meaning and this is proven, this will not help the mark be registered, since it lacks distinctiveness and would should not give a monopoly to someone that successfully conquers a colour through use and thereby deprive the public from it. The reason being that a mark that prevents differentiation should remain in the public domain.
Although unnecessary, the commissioner now considers whether the gold mark has acquired distinctiveness.
The tests used to prove acquired distinctiveness of a particular mark is the longevity of usage of the mark, the amount of publicity it has garnered, and the investment made by the mark owners to create a connection between the product carrying the mark and the manufacturer. There is an emphasis on the longevity of the usage, and if, following this usage, the consumers will connect the goods with the relevant markings to the trademark owner. (see 3559/02 ToTo Zahav Subscriber’s Club vs. the Council for Regulating Sport Gambling (26 September 2004) paragraph 9 and Appeal 18/86 Venicia Israel Glass Factory Ltd. vs. Les Verries de Saint Gobain, p.d. 45(3) 224 (1991).
The Supreme Court discussed the amount of support required in re Klil, pages 327-328.
The publication alone , although important and relevant, is not definitive with regard to secondary meaning., the question here is not whether use was made and whether effort was expended in promoting the mark to the public, but rather whether the effort had the desired results…. Essentially there is only one way to determine this, which is by the individual testimonies of consumers, traders, advertising personnel, consumers, etc. Either way, a long usage is required, that lasts for a prolonged period for a mark to acquire the characteristic of indicating source. (see Seligsohn page 24 and BGT”Z 305/63.
The scholar Kerly (paragraph 10-1038) states that that needed to show secondary meaning:
“It is necessary to combine evidence of the scale of use provided by financial information with evidence that the use has been so as to distinguish – on the product, in relation to the service, in advertising or promotion. Sometimes the way in which the mark is presented to the public indicates whether the owner really trusts the mark to function as a trade mark.”
To show whether or not the mark has a distinguishing nature, the Applicant has to prove that the relevant consumer who sees the foodstuff with the gold stripe, knows to identify it with the Applicant. The way to do so passes not just through wide usage, but also proving that it is used as a trademark that indicates the origin of the goods, and that its usage leads to a state of affairs in which the public understand the mark as indicative of the source of the goods.
The evidence brought by the Applicant to prove the distinctiveness of the mark were the extent of sales carrying the mark which stand at hundreds of millions of Shekels a year, examples of advertising material and pictures of various products bearing the mark.
Usage of the gold band by the Applicant.
The Applicant appended photos of the its foods and those of its daughter companies that carried the gold mark. Similarly, various advertisements such as posters of Tnuva dairy products including Yoplait, cottage cheese, yellow and white cheeses. In only a few of the posters was the place and date of display provided. Various articles from the Ultra-Orthodox Internet websites were submitted. From the Affidavit by Mr. Yehuda and its appendices, the goods of the Applicant and the Kashrut supervision was indicated by the seal of the Rabbinical Council of the Ultra Orthodox Community as well as by the gold stripe.
With regard to the publicity material, the commissioner notes that most of the examples related to Tnuva dairy products and the type of Kashrut supervision was also stated by the word Mehadrin appearing on the product., together with the Ultra Orthodox Seal of Approval appearing on the advertisement. In only a few examples did the poster state in small letters that products under the Ultra-Orthodox supervision were marked with a gold stripe.
Additional photographs and other evidence including a screen-capture of the Tnuva website explaining its Kashrut supervision and mentioning that superior Kashrut was indicated by the gold stripe were appended to Mr. Yehuda’s affidavit, as were the agreement between Tnuva and Sunfrost to use the gold stripe from 2016, which uses an elliptical stripe, and images of goods supplied by Tnuva, daughter companies Sunfrost and Maadanot, that had the Kashrut supervision of the Ultra-Orthodox and included a gold stripe. However the commissioner notes that the vast majority of the advertisements did not emphasize the gold stripe or link it to the Kashrut supervision.
As demonstrated with the photographs of the products above, the gold stripe always appears on the packaging together with the word Tnuva together with the name of a specific brand or of a daughter company. So the gold band is an additional mark that appears together with other marks on the product packaging. There was no single indication of the gold band being used as a stand-alone trademark that indicates the origin of the good. In this regard, Kerly 10-136:
“There has been a tendency for applicants seeking to demonstrate distinctiveness acquired through use, to rely on financial evidence of turnover and advertising expenditure. This type of financial evidence is a necessary part of any attempt to prove acquired distinctiveness, but it cannot do the job by itself. As Jacob J. has said:
“Mere evidence of use of a highly descriptive or laudatory word will not suffice, without more, to prove that it is distinctive of one particular trader – is taken by the public as a badge of origin. This is all the more so when the use has been accompanied by what is undoubtedly a distinctive and well-recognized trade mark“.
The Applicant claims that the fact that the gold stripe serves the purpose of indicating the source of the good is shown by its usage on products of daughter companies as well. However, since most of the public do not recognize the connection between Tnuva and the daughter companies, the mark creates an association between the goods of the manufacturer and the Kashrut supervision.
The Commissioner considers that the evidence proves the opposite of that claimed. Since the public does NOT connect the range of goods with the gold stripe to a single origin, it does not see the gold stripe as anything more than a graphical element on the packaging (such as appears on many other packages that are not connected to the supplier. This conclusion also arises from that said in Mr. Yehuda’s affidavit:
The substantive difference between a good having a specific Kashrut supervision and goods having other Kashrut levels creates a need to brand the items in a different manner to prevent misleading the consumer and to guard the high reputation of Tnuva’s products having Ultra-Orthodox Kashrut supervision.
From this paragraph it can be seen that the gold stripe is used to brand a range of goods having a specific property (in this instance, a specific Kashrut supervision) and is not a trademark. See BGT”Z 296/86 PHILIP MORRIS INC vs. MOORGATE TOBACCO CO. LTD, p.d. 41(1) 485 (1987). In the same manner, other manufacturers can use the gold stripe on a range of good having a specific quality, to distinguish it from the regular goods of the same manufacturer.
Other evidence submitted by the Applicant includes a copy of the advertisement of a sausage product sold by Zoglowek having Ultra-Orthodox Kashrut supervision, where the competing company uses a gold band on its packaging, and an Internet write-up from 2013 that summarized a compromise reached between the Applicant and Zoglowek after a law-suit was filed against them using the gold stripe. The Applicant submitted these appendices as evidence of the competitor attempting to use the gold stripe as a trademark, thereby infringing their rights. This was used to indicate the difference between a marking used as a trademark and one used for decoration.
In summary of all that mentioned above, it appears that the Applicant’s use of the trademark in its various appearances, with no commonality beyond the colour, and always with a regular trademark indicating the origin, does not prove that the public sees the gold band as an indication of origin rather than as a decorative element on the packaging.
The letters submitted by the Applicant
Additional evidence submitted by the Applicant to show that the mark had acquired distinctiveness included letters from 2013 (referred to as questionnaires), from wholesales to the Ultra-Orthodox community, that stated that products with the supervision of the Jerusalem Court of the Ultra-Orthodox were in high demand and were widely sold to those demanding superior Kashrut supervision. It was further written that the consumers recognize the Applicant’s products having Ultra-Orthodox supervision, that carry the seal of the Court of the Ultra-Orthodox community and have the gold band. It is also noted that to the best of their knowledge [of those writing the letter] no other company uses a gold stripe to distinguish between different levels of Kashrut supervision. After the discussion, the Applicant submitted additional documents and these included letters from 2018 from Ultra-Orthodox that related to the gold stripe as being an extra indication to the Ultra-Orthodox that the product of the manufacturer and of its daughter companies have superior Kashrut supervision.
Letters, mostly standardizes, sometimes without the signature of the tradesman but with his name on the top of the page, sometimes with the stamp of the business and sometimes without, mostly with the date 27 June 2013 or 28 June 2013, and some undated. As the Applicant noted at the hearing, these are not affidavits that were prepared in accordance with the law and their submitters were not present at the hearing. Therefore their weight as evidence is insignificant.
However, even if these letters were given more weight than the questionnaires previously submitted, the commissioner does not think that they are sufficient to prove the issue in question which is whether the public see the gold stripe as an indication of origin. As stressed previously, the burden of proof in this instance is very high. Sporadic letters from a number of shopkeepers that testify how they believe their customers consider the mark is not sufficient evidence as to how the relevant public see the mark.
Also submitted was a letter from the Kashrut Committee of the Court of the Ultra-Orthodox Communities of Jerusalem testifying that the Applicant is the only one using the gold stripe as an indication of their supervision. This letter also stated that the mark serves the consumer base interested in this supervision as a means of identifying these products.
The Commissioner notes that the same letter also states that the Guide to Kosher Products of the Kashrut Committee of the Court of the Ultra-Orthodox Communities of Jerusalem states that “Products from Tnuva that are supervised by the Kashrut Committee of the Court of the Ultra-Orthodox Communities of Jerusalem are only those that carry the seal of the Court and the gold stripe. Furthermore, the letter states that the Kashrut Committee of the Court of the Ultra-Orthodox Communities of Jerusalem is unaware of any other manufacturer that uses a gold stripe to indicate products under their supervision, and were there such manufacturers, the Court would know about it, since such a marking requires their permission, and that due to the pressures the Kashrut Committee of the Court of the Ultra-Orthodox Communities of Jerusalem authorized the gold stripe to help differentiate and distribute supervised products. The Affidavit of Mr. Yehuda states that the letter is intended to manufacturers, but it does not specify which manufacturers or to whom it was actually sent.
As to whether the consumer considers the gold stripe as being a trademark, the Applicants submit that the Ultra-Orthodox consumer when coming to purchase products having superior Kashrut, identifies them by the gold stripe. During the discussion he added that they did not obtain surveys that testify to the distinctive nature of the mark since there is a difficulty in doing Internet surveys of the Ultra-Orthodox population. However, the commissioner does not understand why such surveys were not conducted in an acceptable manner for this community, since they could shed light on how the marks are viewed.
In summary, the commissioner does not think that the evidence brought, which includes advertising campaigns, letters from others active in this market, examples carrying the gold stripe, is sufficient to establish that the gold stripe has acquired a secondary meaning as an indication of origin of the goods bearing the mark.
In conclusion, Israel trademark application numbers 271714 and 271715 are rejected for the reasons stated hereinabove: the mark does not serve as a trademark and the gold colour should remain in the public domain. The mark lacks inherent distinctiveness and the Applicant has failed to show acquired distictiveness.
Re Israel Trademark Number 271714 and 271715 for gold and gold stripe to Tnuva, Ofir Alon, 25 March 2019.
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