Israel trademark no. 290137 is for the word mark BEIGE was submitted on 13 May 2016 for : “Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soap; perfumery, essential oils, cosmetics, hair lotions; dentifrices”, all in class 3.
The Applicant, Chanel, submitted the mark as the national phase of International trademark number 450131A which designated Israel.
On 4 December 2017, the Application was rejected by the Israel Examiner since the mark was for the name of a colour which lacks inherent distinctiveness, and should therefore remain in the public domain. In light of this, the Examiner considered that registering the mark would contravene Sections 8(a) and 11(10) of the Trademark Ordinance 1972.
Additionally, the Examiner considered that the list of goods applied for was too wide, and that the Applicant should limit itself to the goods being sold or goods that it had bona fide intent to sell under the mark. A notification of the Office Action was sent to the International Office.
In response, on26 February 2019, the Applicant submitted that the name was random with regards to the goods being requested (think Apple for computer goods), and there was no connection between the word and the goods, and since the mark was the name of the natural colour of a cotton weave, and is used to describe a number of white Anglo Saxon Protestant fair shades, there was no connection between the mark and the goods it was intended for. At worse, the mark could be considered as hinting at these goods, since the consumer would have to think to see a connection.
In addition, it was claimed that the requested mark was already registered in several countries around the world, and should be registerable under Section 16 based on the registration in Spain.
As to the list of goods, the Director of Intellectual Property at Chanel, Ms Cécile Cailac, submitted an Affidavit testifying to the intent to use the mark for all the good listed.
The Examiner responded that based on Internet research, the term beige is the name of a colour between yellow and cream or a shade of brown, and should remain available to the public to use, furthermore, the colour is widely used in the area that the applicant wished to register it.
The Applicant requested a hearing before the Commissioner, and one was held on 17 February 2019. During the hearing, the Agent of the Applicant claimed that the mark was registerable under the Trademark Ordinance, since it was random. In addition, the Agent argued that under the Law, names of colours are registerable like any other mark. Only in cases where the colour has an inherent connection to the goods, such as brown sugar or green tea, should a colour mark be disallowed. In this instance, cosmetics come in a range of colours and the colour beige is not inherent to the goods, any more than any other colour would be. The Applicant’s representative referenced the commissioner’s decision regarding TM 128323 (AIRLACE for non-woven fabrics) as to the test of descriptiveness. The Agent for the Applicant also related to the European practice with regard to registering names of colours and noted that the mark had been registered in many countries, including those that consider the relative registerability of the marks submitted (as opposed to those countries that merely considered inherent registerability).
Furthermore, in practice, names of colours have been successfully registered in Israel, including Israel trademark numbers 97751, 95175, 155587, 296019, 127067, 103564, and others.
Since the Applicant did not bring evidence that the mark had acquired distinctiveness, the discussion was limited to the inherent registerability of the mark.
Discussion and Ruling
The relevant sections of the Ordinance to this issue are:
8.—(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”).
Marks Incapable of Registration
The following marks are not capable of registration:
(10) 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;
These sections teach that only a mark that can distinguish between the goods of one supplier and another are registerable as trademarks. Similarly, a monopoly will not be given for a mark that should remain in the public domain or available to competitors, unless it has acquired a secondary meaning through use.
The guidelines for examiners (30.3 version 17 sections 1.1..15.4) state that where the applied for mark is the name of a colour, the objection that the mark lacks inherent distinctiveness will be raised under Section 8(a) of the Ordinance.
This policy reflects the concept that a mark that is the name of a colour is generally considered by the consumers as lacking distinctiveness and so the public does not consider it as indicative of the source of the goods, but rather as a description of a property of the good. Additionally, there is an interest to leave the names of colours in the public domain, based on the assumption that the names of the colours are used in trade to describe the goods and their properties. This suspicion is exaggerated when the requested colour is relevant to the description of the goods and their properties or characteristics, so while for milk or black for charcoal would be registerable.
A similar instruction exists in the Examination guidelines of the EPO (GUIDELINES FOR EXAMINATION OF EUROPEAN UNION TRADE MARKS- part B, section 4, chapter 4, par 2.9):
“A sign consisting exclusively of the name of a colour must be objected to under Article 7(1)(c) EUTMR when the application claims any goods and services for which the colour can reasonably be perceived by the public as a description of one of its characteristics”
“When the goods for which protection is sought concern colorants such as paint, ink, dyes or cosmetics (e.g. lipsticks or make-up) the name of a colour may describe the actual colour of the goods, and signs consisting exclusively of a colour should be objected to under Article 7(1)(c) EUTMR.”
The directions of the UK Patent Office Guidance- Manual of trade marks practice, Examination guide- part B, last update 14.1.2019 states:
“Names of colours, such as ‘RED’, ‘BLUE’, ‘YELLOW’ would normally be objectionable under sections 3(1)(b) and (c) for most goods on the basis that they may be provided in that colour“.
“In respect of services and goods that are unlikely to be or incapable of being coloured (computer software, for example) such marks may be acceptable.“
That means to say, if the public are likely to see the name of a colour applied to goods as a property of the goods, an objection will result.
The conclusion from this is that in general one does not allow the name of a colour to be registered as a trademark since in general, a colour will be a property of the good, and the consumer does not see the name of the colour as an indication of the origin of the good, and the word should remain available to the public. In specific instances, one can deviate from this rule where it is proven that a mark has a secondary meaning, an acquired distinctiveness, that indicates origin, under section 8(b) of the law.
The claim raised by Chanel’s counsel (Dr Shlomo Cohen Law Offices) is that only where the colour is an inherent characteristic of the good, such as green tea or brown sugar, or blue cheese, is there a statutory limitation on the registerability of the colour as a trademark., unlike goods that can be sold in a range of colours, this is not accepted by the Commissioner. Should we say that since shirts do not have an inherent colour, and are sold in a range of colours, that one can register the name Blue for shirts? In the commissioner’s opinion, it is obvious that the word blue should be available for the entire public to use to describe shirts, and it is equally obvious that were a shirt to be marked blue, the public would NOT see this as an indication of origin.
An exception to this rule is to allow the name of a colour to be used for specific goods, where the colour is not a characteristic of the good., since in such instances, the public may see the name of the colour as an indication of the source of goods and not as a description of a property of the good. The Mark OPAL BLUE is used for software in class 9. Colour is not generally a characteristic of software, and the public is not going to see an importance of a colour in the software field, so the European Patent Office ruled in (R664/2016—4C), that such a mark was registerable.
From the General to the Specific
The Commissioner considers that the colour IS a characteristic of the goods for the consumer choosing makeup cosmetics and even perfume. Furthermore, he considers that the names of the colours in these fields should remain in the public domain. Certainly for goods where the colour is a major property, and it can be considered as being a direct characteristic of the good, for example makeup of a beige colour. The fact that makeup can be made in other colours does not alter this fact.
A fallback position of the Applicant is that the mark be registered on the basis of the foreign registration under Section 16(a) of the Ordinance:
Registration of Marks Registered Abroad
16.—(a) Notwithstanding the provisions of sections 8 to 11, the Registrar shall not refuse to register a trade mark registered as a trade mark in its country of origin unless—
(2) the mark lacks distinctiveness; or
(3) the mark consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, place of origin, intended purpose, time of production or value of the goods; or
(4) the mark is customary in current language or in the bona fide and established trade practices in Israel; or
(5) the mark is contrary to public order or morality;
(6) the mark is likely to deceive the public.
(b) For the purpose of a trade mark whose registration under this section is applied for, “country of origin” means the Union State in which the applicant has an effective and serious industrial or commercial establishment or, if he has no such establishment within a State as aforementioned, the Union State in which he has his domicile or, if he has no domicile within a State as aforesaid, the Union State of which he is a national.
(c) Where the Registrar accepts for registration a mark which would not have been registered but for the provisions of subsection (a), such fact shall be indicated in the publication of the application and in the Register.
Section 16(a)(2) and Section 16(a)(3) teach that one cannot register a mark that is totally lacking in distinctiveness. See the decision considering Israel TM 200350 to Mc Donald’s “I’m loving it” published on 19 August 2010, or marks consisting entirely of descriptive words, see Appeal 5890-10-12 Unilever PLC Merseyside, United Kingdom vs. Commissioner of Patents and Trademarks, 10 March 2013.
As stated, the starting position for the registration of colour marks is that the public does not see such marks as being an indication of origin and therefore they do not have acquired distinctiveness as they are generally descriptive of the goods.. In this instance, the mark consists of the single word beige which is descriptive of a property of the goods requested to be registered, and is widely used as a colour for cosmetics., therefore the Commissioner does not accept that the mark can be registered under Sections 16(a)(2) and Section 16(a)(3).
As to the Applicant’s claim that similar marks have been registered, the Commissioner considers that the mere fact that in the past similar marks have been registered, without regard to the reasons why they were considered registerable, does not justify registering a mark considered as not having the basic requirements of registerability and does not bind the Commissioner who is responsible for the integrity of the register. However he does not exclude the possibility that some marks which were registered many years ago would not be considered registerable if applied for today. (see for example, paragraph 10 of the Application to register 177705-6, 171634-2 for Ein Gedi Cosmetics ltd, 22 April 2009.
The claims of the Applicant all related to the inherent registerability of mark. The Applicant chose not to bring evidence that the mark had acquired distinctiveness thought use, but this option was available, both during the examination of the mark or during an appeal of the decision. Since this option was not taken, the mark is rejected.
Ruling by Commissioner Ofer Alon concerning registerability of IL 290317 “Beige” to Chanel, 12 March 2019.
Chanel has attempted to trademark the term beige. Presumably the mark is intended for the Caucasian population who wish to distinguish their odours from those of lesser races. However, racism is not a ground to refuse a trademark registration. A reasonable ground is lack of distinctiveness. The Applicant should have argued that the mark had acquired distinctiveness through use. Instead, he tried to argue that only colours that were inherent to the goods in question, such as brown sugar or green tea could not be registered. He also made the cardinal mistake of pointing out that the names of colours have been succcessfully registered as trademarks in the past. This type of argument is bound to get the Commissioner’s back up.