Israel TM Application No. 298426 is for a stylized trademark for Swiss Global Bags as shown alongside.
The mark covers bags, handbags, women’s and men’s handbags, backpacks, , purses, cases, travel baggage, all in class 18. The application was submitted ion 18 September 2017 by Atar Marketing and Office Supplies Ltd.
The Applicant deals with the import and marketing of Office supplies. A few years back they started making luggage with the applied for mark.
On 19 September 2017 the trademark department informed the Applicant that the mark was not registerable in light of Sections 11(2), 11(6), 11(6a) and 11(9) of the Trademark Ordinance 1972.
This rejection was justified since the mark included the Swiss National Flag and so was not registerable under Section 11(2). As to sections 11(6) and 11(6a), the Examiner considered the word Swiss as being a geographical indication, however the goods were not from Switzerland, since the Applicant is Israeli. Consequently the geographic indication is misleading with regards to the true origin of the goods. Additionally, the Examiner considered the mark contrary to Section 11(9) of the ordinance in that similar goods were already protected by Registered Trademark No. 251251 as shown.
The Examiner further noted that Registered Trademark No. 251251 was owned by a non-Israeli entity.
On 12 April 2018, the Applicant responded to the Office Action and requested that the word Swiss be dropped from the mark, leaving the logo and the term global bags, arguing that the adjective global, meaning worldwide, removed the danger of the bags being identified as of Swiss origin. In light of this, the Applicant submitted that the sections 11(6) and 11(6a) objections were overcome. The amended mark is as shown alongside.
The Applicant also considered that the graphic element was not identical to the Swiss flag or to the Swiss National Symbol since the flag comprises a red rectangle with a white cross in the middle, whereas the graphic element was a plus sign in an octagonal black frame with concave corner vertices. The Applicant further noted that the reasonable person considered the sign as indicating addition, and so the Section11(2) objection should be dropped.
As to the Section 11(9) objection, the Applicant claimed that the requested mark was different in both appearance and sound to the registered mark. The registered mark was merely a graphical element, without wording or colour. In contradistinction, the applied for mark was designed and included other elements, including wording and colour, and thus the two marks were significantly different.
The Examiner issued a further Office Action on 15 April 2018, rejecting the removal of the word Swiss as being contrary to Regulation 22a(a)(3) of the trademark regulations 1944. However, being convinced that the mark did not actually include the Swiss flag but was merely reminiscent thereof, being a Greek Cross, the Examiner retracted her Section 11(2) objection. However, the Examiner upheld the other objections.
Consequently the applicant applied to state their position in a hearing before the registrar, and a hearing was held before the Deputy Commissioner on 27 January 2019. Mr. Netanel Shachar, the Marketing and Sales Director of the Applicant, whose Statement was appended to the Application for a hearing. The Statement detailed the sale of goods bearing the mark in the years 2012-2018 and pictures, labels and packages of the goods were submitted as appended.
During the hearing, the Applicant’s representative submitted results of an Internet search for crosses, the record for registered Israel trademark no. 214483 SWISSGEAR (word mark) and results of an Internet search for the word swiss in English and in various transliterations into Hebrew.
To complete the picture, the Deputy Commissioner notes that as the Office Action had gone unanswered, the application had been closed twice, and reopened at Applicant’s request.
The Applicant’s Submission
As to the geographical source of the goods, the Applicant argued that the term Swiss does not point directly to Switzerland. The Applicant claimed that since the goods were sold to retailers who knew where they were from, there was no danger to the Israel public being mislead.
The Applicant claimed that the fact that the goods originated in China was well known to the public since the labeling and packaging made this clear.
The Applicant claimed that the term “Global Bags” indicates a worldwidedness that widens the context from Switzerland.
The Applicant went on to allege that the word Swiss was intended to awaken associations of quality and not to indicate the geographic source. Furthermore, the Applicant considered that Switzerland was known as being the source of watches and chocolates, and not as a source of luggage and bags and so confusion as to the source of the goods was not likely.
In support of their claims, the Applicant referred to the ruling concerning Israel Trademark Numbers 211435, 211436, 211437 and 211439 Convatec vs. Pharma-Swiss Israel Ltd. from 3 June 2014, where the Pharma-Swiss mark was considered with respect to pharmaceuticals and medical devices and was found to be registerable.
The Applicant claims that other marks which included the word Swiss were considered registerable in Israel. These included 214483 “SWISSGEAR” and the stylized mark 244877 “SWISS LEGEND”. Other marks that included the word Swiss are 286400, 286401 and 208287-8 to MarcoPolo (stylized).
As to the similarity between the applied for mark and the registered mark, the Applicant repeated the claims made before the Examiner and added that the rights of the mark holder to use the cross symbol do not infringe the rights of others. The cross symbol has historical value and there is no single entity with rights to use the symbol. The Applicant alleges that there is no connection between registered marks and Switzerland or Greece and the mark does not have a reputation in Israel. There is thus no danger of a misleading connection between the applied for mark and the registered marks.
Discussion and Ruling
Sections 11(6) and 11(6a) are intended to protect the public from being mislead and state that:
(6) Marks likely to deceive the public, marks which contain false indications of origin and marks which encourage unfair trade competition;
(Amendment No. 1) 5760-1999 (6A) A mark containing a geographical marking in relation to goods that do not originate in the geographical area indicated, or a geographical marking that could be misleading in relation to the genuine geographical area of the origin of the goods;
Whilst Section 11(6) relates to deception in general, Section 11(6a), which was an amendment following Israel joining the TRIPS agreement, specifies the source of misleading as related to the geographic origin of goods. In this regard, the Section relates to misleading regarding the geographic source of the goods or services.
Nevertheless, not all trademarks that include the name of a place will be considered non-registerable. Sometimes the Geographic element is considered arbitrary and the public is aware of this. See 10959/05 Delta Lingerie S.A. vs. Tea Board of Cachan 7 December 2006. In this regard, Seligsohn, page 42 is pertinent:
There are places that do not serve as an indication of origin, but rather as a kind of laudatory indication, such as “Mount Everest”, Mont Blanc or the North Pole. These places do not have industry or trade and their selection as a trademark is only to indicate that the product is quality or at the summit of goods of this type, etc.
In other instances, the same geographic element could be used to cancel a mark. See, for example, Commissioner Ruling concerning trademark no. 289743 “Swiss Polo Star” and application to register Israel trademark Application 289744 POLO to Polo Universal Ltd, 6 January 2019.
The test is whether the geographical element should cancel the registerability of the mark as being misleading to the individual., see for example Israel trademark Application No. 256053 AMERICAN SLEEP, Super Night Star 2000 ltd, from 12 November 2015. This test was proposed by McCarthy in McCarthy on Trademarks and Unfair Competition, Vol. 2 §14:7 (2011) as consisting of three parts:
- Is the mark the name of the place or region from which the goods actually come? If the answer is yes, then the geographic term is probably used in a descriptive sense, and secondary meaning is required for protection. If the answer is no, then the geographic term is probably being used either in an arbitrary sense or in a misdescriptive or deceptive sense, depending upon the probable reaction of customers…
- Is the geographic term likely to denote to reasonable buyers that the goods come from the region or place named? If the answer is no, then this is evidence of an arbitrary usage…
- Is the place or region named noted for these particular goods? If buyers don’t really care whether the goods come from the place named (and in fact they do not come from the place named) then this is evidence that the mark is being used in an arbitrary sense. But if the geographic term is likely to lead buyers to think that the goods come from that place, and the place is well known for these goods such that this is an important inducement to purchase, then the mark is probably deceptive and cannot be registered or protected.”
The applied for mark includes the word Swiss and the white cross in the red background are reminiscent of the Swiss flag. The word Swiss is short for Switzerland in English [MF probably should be, originating in Switzerland or associated with Switzerland] and so the word clearly indicates Switzerland. The Morfix on-line dictionary gives the word Swiss as a noun and as an adjective (the Commissioner is entitled to conduct independent research –see Section 25 of Judge Berliner’s ruling regarding the Cooperative Association of Vintners of Rishon l’Zion vs. HaKerem Ltd. 338(4) 2006). The word Swiss thus creates a connection with Switzerland in the minds of consumers.
The Applicant admits that the goods do not originate in Switzerland, but rather in China.
It seems that there is no argument that Switzerland is regarded as a source of quality goods in various fields and is considered as having a good reputation amongst Israelis. In this regard, it is enough to note that Switzerland is consistently ranked first in the world in the Global Innovention Index. This reputation is sufficient to create a likelihood of consumers being mislead as to the source of the goods carrying the desired mark. This conclusion concurs with earlier conclusions of this forum (e.g. the Polo ruling).
It seems that the Applicant does not disagree that Switzerland has such a reputation. The Agent of the Applicant claims that Switzerland is not known as a source of quality luggage, but as a source of quality watches and chocolate, mitigating against consumer confusion. However, in the hearing held before the Commissioner, the representative of the Applicant, Mr. Shachar, was asked why they added the word Swiss, as part of the requested mark. Mr. Shachar explained that the word was chosen to create a connection with quality goods in the eyes of the consumer.
As stated, in response to the first Examination Report, the Applicant requested to amend the application to remove the words Swiss and to add the cross in the red square. The requested amendment further indicates the desire to emulate the Swiss flag and shows that the mark indicates Switzerland.
From that said, it transpires that the geographic elements of the applied for mark are neither arbitrary, nor is there an expectation that the public will see them as such. Even though the rags mention that the goods are manufactured in China, this is because of legal labeling requirements, and does not remove the suspicion of consumers being mislead about a Swiss connection. Furthermore, one cannot required the consumers to check the hems of the garment that he purchases to prevent being mislead. Particularly when the garment is not expensive. See the Request to Register Application No. 268322 “USA PRO” USA Pro IP ltd., 24 June 2018. Furthermore, it is sufficient that there is a probability of the public being mislead regarding the source of the goods for the mark to be canceled, and there is no requirement of certainly being misled. (see for example Israel TM Application No 235163 “Spirit of Jerusalem” to Ein Gedi Cosmetics Ltd. 30 May 2013.
The Applicant requested to rely on the decisions regarding Pharma-Swiss to support his claim that the mark was registerable. In that instance, it was claimed that the mark including Pharma-Swiss was misleading regarding the geographic origin of the goods. The Commissioner rejected this claim due to a strong connection between the goods and Switzerland:
No one denies that the Applicant is connected to Switzerland. As transpires from Mr. Golan’s affidavit, the company was established in Switzerland and is registered there, its offices are in Switzerland. The fact that the company is no longer owned by Swiss does not destroy the Swiss Connection.
How much more so in this instance, it is sufficient that the association and the management of the company and its accounting, the seat of its management and marketing are centered in Switzerland.
Since there is no similar connection between the Applicant, the goods and the geographic indication claimed in the mark, it appears that the cited ruling does not help the present Applicant. Furthermore, the cost of the goods sold under the mark is not high and one would not expect the public to consider them deeply. This is different from Pharma-Swiss which is marketed to doctors and one would assume that they make a more careful consideration before using the products.
Finally the Applicant claims that there are registered marks that include a geographic indication, despite them not originating near the geographic location, and thus the Commissioner refusing the present mark is simply discrimination. Such claims are summarily rejected. Each mark is considered on its merits and sometimes the Examiner will conclude that the geographical place name is arbitrary, or that the goods are indeed linked to the place. Furthermore, the trademark register is not fee from mistakes, and this is no reason for making further errors.
This claim has been considered many times and so there is no need to expand upon it. See for example, Israel Trademark Application Number 151581 “Canada Athletic”, Maple Designs Marketing and Clothing Ltd., 17 November 2003.
In light of the above, the Deputy Commissioner rules that the requested mark is not registerable since it includes a misleading geographic indication and this is sufficient grounds for it to be rejected.
Section 11(9) of the Ordinance
Although superfluous to do so, the Deputy Commissioner then considered the second grounds for refusing the mark, which is the confusing similarity between the mark and the registered trademark No. 251251 as shown:
To rule on the issue of confusingly similar marks, the “triple test” is used. This comprises the Appearance and Sound of the mark, the consumers and distribution channels, and other relevant considerations. See Appeal 261/64 Pro-Pro Biscuits Ltd et al. Cs. Formein & Sons ltd, p.d. 18 (30 275 (1964), Appeal 210/65 Bank Igud Israel ltd, vs. Bank Agudat Israel ltd. p.d. 19(2) 673 (1965), Appeal 5792/99 Communication and Religious Jewish Education Family (1997) Ltd. Vs. S.B.S. Publicity, Marketing and Sales Promotions Ltd. p.d. 55(3) 438, 2001. To these tests, the common sense test may be added, which considers the message behind the allegedly similar marks. See Appeal 441/04 Unilever Plc vs. Eli Segev, 23 August 2006.
There are visual and phonetic differences between the marks. The registered mark includes a cross without colour or text in a large heavy rectangular frame with missing corners (a Greek Cross). In contradistinction, the applied for mark includes the words “Swiss global Bags”, where the word Swiss is emphasized and there is a cross within a frame with corners missing, the cross is smaller and is close to the word Swiss and above the words Global Bags. The words and the cross are white on a black background, whereas the registered mark does not include any words whatsoever.
The registered mark is for goods that are similar to those for which registration is applied for, and one can expect that the consumer base will be similar. As to distribution channels, The Applicant distributes his goods via retailers, however the Deputy Commissioner does not know how goods bearing the registered mark are distributed.
The Applicant claims that the registered mark owner is not active in Israel, but this claim was not supported with any evidence and it is unlikely that this helps anyway, so long as the mark is in the register.
The main similarity between the marks is the cross which gives a similar message to the consumer. The other marks are descriptive and laudatory with regards to the goods (Swiss Global baggage) so consumers could be mislead or at least assume a connection between the marks.
The Applied for mark is rejected.
Ruling re Israel Trademark Application Number 298526 by Jacqueline Bracha, 13 May 2019
See also the Swiss Military ruling.