Unilever PLC has applied for an Israel trademark for the phrase ACTIVE SPORT for Soaps; perfumery, essential oils, cosmetics; colognes, eau de toilette, perfume body sprays; oils, creams and lotions for the skin; talcum powder; preparations for the bath and shower; hair lotions; dentifrices; non-medicated mouthwashes; deodorants; anti-perspirants for personal use; non-medicated toilet preparations; all included in class 3.
The Application was submitted on 7 November 2017, and, on examination, the Examiner considered it lacked distinctiveness for the goods in question, and was a phrase used in trade and so its registration was contrary to Sections 8(a) and 10(11) of the Trademark Ordinance 1972. The Examiner brought evidence for the allegations by showing various examples of where the phrase ACTIVE SPORT was used.
The Applicant was required to bring proof of their usage of the mark and they did so in February 2019. These examples were not considered persuasive and the Examiner stood by her decision to reject the mark. The Applicant requested permission for a Hearing with the Commissioner, and this was held on 24 October 2019.
In the Hearing, the Applicant claimed that the mark hinted at the goods. It noted that other manufacturers used the phrase in different sizes and fonts, whereas Unilever used a font constantly across a set of hoods. The Applicant stressed that the public considered the phrase as a common trademark for a set of related goods.
The Deputy Commissioner of Patents and Trademarks has rejected these arguments.
According to the Deputy Commissioner the phrase directly describes the properties of the cosmetics on whose packaging it appears. The meaning of Active Sports is for the product to be used whilst participating in physical sport.
The mark is descriptive and, contrary to the Applicant, is not indicative. Referring to page 39 of Seligsohn “Trademark and Related Laws, 1973:
Marks that describe the unique properties of a product are not registerable since anyone producing competing goods with those properties should be able to mark the properties.
Similarly, marks that express the purpose of the goods or the results they achieve, are considered descriptive.
From the various examples brought throughout the Examination, many manufacturers use this phrase for cosmetics, either directly as ACTIVE SPORTS or reversed as SPORTS ACTIVE. These words indicate to the consumer that the products are to be used after sporting activity (e.g. soaps, shampoo) during sporting activity (e.g. sun-screen) or before sporting activity (e.g. deodorant). The usage is always together with the maker’s mark and indicates the purpose but not the source of the goods.
The Applicant uses the mark in a similar manner to the usage by competitors.
From that stated it transpires that the phrase cannot serve as an indication of origin and therefore it cannot acquire distinctiveness from long usage. Notably, in this instance, the Applicant has not even claimed long usage, but rather wide usage on a range of goods.
The mark was applied for without stylizing and so arguments regarding font and size of letters being different from those used by competitors are irrelevant. The letters do not appear in a manner that sticks out. Sometimes they appear in small letters together with the trademark “SUAVE” and other elements being more pronounced.
In light of the above, the request is rejected.
Ruling re ACTIVE SPORT by Ms Jacqueline Bracha, 27 October 2019.