On 12 April 2017, Dr Kong Footcare Ltd (a Singapore Company) submitted Israel trademark application no. 293436 which is a stylized mark for Dr Kong with a footprint. The mark is shown alongside.
The mark covers clothing, footwear, head-coverings, soles for shoes and insoles, all in class 25.
During the examination, the trademark examiners considered that the letters DR are an abbreviation for the word doctor and that the consumers might consider the goods sold under the name Dr Kong as being manufactured under supervision of a medical doctor (MD). This would mean that the mark is misleading and contravenes Section 11(6) of the Trademark Ordinance 1972.
The applicant was requested to provide appropriate documentation to the effect that people who were licensed physicians were behind the company, or to otherwise explain the background to the use of the term doctor in the trademark.
The applicant considered that the Examiner’s objection was unreasonable and requested a hearing before the commissioner.
On 14 January 2019, the agent for the applicant appeared before the Commissioner and argued:
Section 14.4.1 of the Guidelines for Examiners states:
Where a trademark includes the term Dr for some product or service relating to medicine or education, to avoid misleading the public (under Section 11(6) of the Ordinance), the Examiner will request documentary evidence for the qualification or will ask for its background.
The Section of the Law specifically relates to the medical or educational goods, and the agent for the applicant considers that this creates a negative presumption regarding other goods and services. The product in question is not a medical or educational good or service, and so raising objections to the word “Dr” as confusing the public is unwarranted. The applicant submits that the Guidelines to the Examiner are a kind of regulation that the Examiners are bound to follow except in extreme cases that require explanation and justification.
The trademark is a complex mark that includes many elements including words and symbols and even if one or other of these is not registerable in and of itself, the mark as a whole may still be registerable, and the totality of elements makes it less likely that the public would be mislead.
The letters DR are a marketing element, and the community considers that this element of the mark does not guarantee a specific high quality or any level of academic prowess, and there is no likelihood of confusion. The fact that the mark has successfully been registered elsewhere in many countries, including some that have strict standards, itself proves that the public are not in danger of being misled. In this regard, it is stressed that the mark has been successfully registered before the EUIPO, in Canada, China, Japan, Australia, Singapore, New Zealand and elsewhere.
Discussion and Ruling
Guidelines for Examiners Section 14.4.1
The Commissioner does not accept the claim that Section 14.4.1 provides a negative arrangement under which goods that are neither medical nor educational can use the term Dr without the Examiner being able to object. Section 14.4.1 relates to goods that “touch” on education or medicine.
The word “touch” should not be interpreted narrowly, but in light of the rationale behind the guidelines and behind Section 11(6) of the Ordinance, which is to prevent misleading the public. The relevant issue is whether the public will assume that the products come from a medical source.
In this instance, the list of goods includes insoles, and the public may consider that the goods are related to orthopedic medicine. In this regard the agent for the applicant notes that medical insoles are classified in class 10 whereas the present application is in class 25. The Commissioner does not see this as significant since the customers purchasing a product under the brand are unaware of the minutiae of trademark classification.
To complete the picture, the Commissioner notes that on 14 April 2019 the guidelines for examiners were amended to clearly state:
Where a trademark includes the term Dr for some product or service relating to medicine or education or any field where the consumer might expect the goods or services to be therapeutic or medicinal, to avoid misleading the public (under Section 11(6) of the Ordinance), the Examiner will request documentary evidence for the qualification or will ask for its background.
This amendment goes hand in hand with the rationale of avoiding confusion as mentioned hereinabove.
The claim regarding a complex mark that includes several elements, only one of which being non-registerable
The Commissioner rejects the claim that a mark can be rejected even if only one of its elements is non-registerable. As mentioned above, the question in this instance is whether the public seeing the word Dr will be misled into believing that the goods have a medical source, or are connected to an MD. To the extent that there is such as suspicion, other elements of the mark cannot rectify the risk, unless they cancel the danger of misleading. In this instance the other elements do not lessen the risk of the public being misled.
The claim that the public does not see the word DR as indicating the source of the goods and so there is no likelihood of confusion
The final, and perhaps central, claim is that the objection is unreasonable since the letters Dr do not create a public expectation that goods with the mark are medicinal in any way.
The Commissioner finds this assumption is contradicted by the Internet site of the applicant themselves which show that the applicant wants to give their goods a whiff of medicinal effect. For example, on the website, the link about us (http://www.dr-kong.com.hk/en/about-dr-kong) includes the following:
“Dr Kong Healthy Shoes Shop was established in 1999. We were the first to promote our innovative “Check & Fit” foot examination and insole fitting service and provide free profession foot examination to people of all ages. According to our customer’s feet condition, we recommend the most suitable and economical foot care products. Dr Kong is a corporation with a sense of mission. Our staff is committed to our “EPS mission” everyday. Our “EPS mission” comprises of 3 areas – Education, Product and Sales. In the area of education, Dr Kong is dedicated in educating the public about the importance of foot and spine health. Though various channels, Dr Kong publicizes the information on foot and spine health. In the aspect of product, Dr Kong is dedicated in developing functional foot and spine health products. For example, the “BB walker 123” concept which provides bare foot concept, easily bendable concept and 3-D foot care concept to meet the foot care needs of children at different stages of their step learning. In addition, there is “Children Walker ABC” which is developed for children’s golden period of their foot development. First we help children to perform foot examination and measure their index of rear foot inclination. Then according to their foot condition, we match their feet with A, B or C shoe insoles which have different foot arch support and rear angle. Together with healthy shoes’ firm counter to stabilize heel bone, we help to make the best preparation for their feet’s healthy development. Recently, we have developed “multi- circumference” healthy shoes from 2E to 4E (narrow last to wide last).”
“Since the shoe heads have different circumferences, they are suitable for fat and thin feet. Therefore, more customers can find healthy shoes suitable for their foot shapes. In the area of sales, Dr Kong provides caring service through professional foot examination service and detail product functionality explanation. Dr Kong provides healthy shoes and foot care products for babies, children, adult and the elderly so that everyone can wear comfortably and healthily. We rely on your support to make Dr Kong as customer’s confident and health-concerned top choice. In the future, we will continue to expand our business with a humble heart and work hard in proclaiming foot and spine health!”
These quotes are just a sample of the information on the website wherein the applicant associates itself with health. This association makes clear that the customers do place a premium on such goods as insoles having medical supervision.
In conclusion, Commissioner Ofir Alon states that the applicant has related to various other marks that include the term DR, and which are registered. As stated many times in the case-law, this claim is not acceptable. Each case is weighted on its merits and with a special set of circumstances, and if, for example, in Israel TM 151581 Canadian Athletic cs. Maple Clothing Marketing ltd, paragraph 5 from 17 November 2003, that does not mean that such cases will be revisited. See for example, the ruling concerning 232102 and 232103 “SkiDeal” to Ski Deal ltd, from 30 January 2013.
Israel Trademark Application Number 293436 is rejected.
I grew up in the UK, where peas and sweet-corn came under the Green Giant brand and fish-fingers and the like were marketed as caught by Captain Birdseye. One wonders if trademark applicants needed to provide photos and affidavits from the vertically challenged photosynthesizing humanoid, and whether the old sea-dog was required to produce his qualifications to master a commercial seafaring vessel. I am inclined to go with the applicant on this. I use the term doctor myself, and am not a medical practitioner.
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