A ballsy trademark ruling

January 30, 2018

SodKGaA & Henkel AG filed a series of Israel trademark applications (Nos.  258658, 258797, 258798 and 259500 as shown alongside.258658

The marks cover Bleaching preparations and other substances for laundry use, rinsing agents for laundry and tableware, stain removing preparations; cleaning, polishing, scouring and abrasive preparations, chemical agents for cleaning metal, enameled sheet metal, wood, cork, porcelain, ceramic, glass, plastic, leather and textiles; spot remover; soaps not for personal use, perfumery, essential oils in class 3, “Disinfectants and deodorants other than for humans and animals”. In class 5, and Sponges, brushes, cleaning cloths, cleaning purposes, hand-operated cleaning appliances, devices for dispensing sanitary cleaning and fragrance products, partially with the addition of disinfectant, included in class 21.

The Israel Trademark Department refused to register the marks on the grounds that they lacked inherent distinctiveness as indication of source, since they were the shape of the products themselves. The marks were also refused under Section 8(b) of the Ordinance 1972, as not having acquired distinctiveness through use.

The Applicant claimed that the marks are registerable since they serve in practice as a trademark, have acquired distinctiveness through use, and the choice of shape is not a result of real aesthetic or practical considerations. The Applicant requested a hearing, and submitted the following evidence:

  • An opinion by Mr Oshik Roshnik, marketing consultant, who held a public survey regarding how well known the marks were. Mr Roshnik attended the hearing and the survey and his conclusions are detailed below.
  • An affidavit from Ms Danielle Rabinowitz who is the product manager for Henkel Sod ltd, which is fully owned by the Applicant. Her testimony affirmed the sales in Israel and abroad and the investment in advertising and promotional activity. Ms Rabinowitz also attended at the hearing.
  • An Affidavit of Ms Cecile Leroi the International Marketing Manager of the Applicant, who testified regarding sales.

A large quantity of marketing material was appended to the affidavits.

sod balls.jpg

From the evidence it appears that the products are sold in Israel in blister packs that have transparent fronts. The mark Sod appears clearly on the packaging, which is the brand for these and other products of the Applicant in Israel. The Sod mark is recognized as being a leading brand in Israel.

juggling four balls

The Applicant claimed that since January 2014 they have invested 15 million shekels in advertising and marketing in various telecommunication channels, including point-of-sale. As a result of this intense marketing, some 6 million units have been sold, which is 30% of the market. These statistics support the Applicant’s contention that the marks have acquired distinctiveness.

The Applicant’s legal counsel emphasized that the marks were registered in a number of countries, including the EUIPO. The Applicant is also prepared for the mark to be registered under Section 16.

Discussion

toffiffee

The tests for validity of a trademark registration for the shape of an article was given in the Supreme Court ruling 11487/03 August Storck KG vs. Alfa Inuit Food Products LTD, of 23 March 2003. These tests are summarized in Circular 033/2016 Trademarks: Emphasis on Examining trademarks from 15 December 2016 as follows:

  1. The requested shape has to serve as a trademark in practice
  2. The requested shape cannot be significantly aesthetic or practical.
  3. The shape has acquired distinctiveness through use

This topic has been widely discussed in the case-law and literature in Israel and abroad. The tests have been largely adopted due to comparative law, and so we can use foreign rulings to aid us in coming to a conclusion.

Nevertheless, the Deputy Commissioner does not consider that the applied for mark fulfils the Supreme Court’s criteria.

The Mark Does Not Serve As a Trademark in Practice

The question asked in this context is whether the public and the applicant see the shape of the mark separately from other marks that are applied to the product to indicate the source, thereby serving as trademarks. As clarified in Berkeley “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 197, from a UK decision regarding the registerability of the shape of a container:

The relevant question is not whether the container would be recognised on being seen a second time, that is to say, whether it is of memorable appearance, but whether by itself its appearance would convey trade mark significance to the average customer.”

The things are stated regarding containers, but this is also true regarding the shape of the products themselves, since these are not generally considered as being trademarks by the public, and the packaging includes the well known word mark Sod as a trademark indicating the source of the goods. It is true that sometimes a single object will have more than one trademark on it, each being independently registerable. However, in such cases it is difficult for the manufacturer to demonstrate that the public afford each element weight as a trademark: See J. Thomas McCarthey in McCarthey on Trademarks and Unfair Competition (2011), pages 7-12:

“When a label or advertisement contains a cluttered morass of claimed marks in many words, slogans and designs, no one of these things is likely to make a significant trademark impression on customers. If a given designation is a trademark, that should be immediately evident to the ordinary buyer. If it takes extended analysis and legalistic argument to attempt to prove that a designation has been used in a trademark sense, then it has not.”

kitkatThe need for the public and the manufacturer to rely on the shape of the product as an indication of the source of the product is required for it to be registerable has been discussed recently in the UK decision [2017] EWCA Civ 358 Société des Produits Nestlé SA  v. Cadbury UK Ltd. (Kit Kat). In this ruling, the court affirmed the ruling of two lower courts that the shape of the KitKat snack bar is not registerable. In that case, the issue of the burden of proof for registering a product shape was referred to the CJEU:

The judge thought that the answer to this question was not clear and depended upon what was meant by “use of the mark as a trade mark”. As he put it: does it require the applicant to show that, as a result of the use of the mark, consumers rely on the mark as a trade mark, or is it sufficient that consumers recognise the mark and associate it with the applicant’s goods?”

The UK court considered that the European Court’s position was that the public have to rely on the product shape as a source of origin, and not merely to recognize the product shape:

“Accordingly, I agree with the judge that it is legitimate for a tribunal, when assessing whether the applicant has proved that a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether such person would rely upon the sign as denoting the origin of the goods or services if it were used on its own. Further, if in any case it is shown that consumers have come to rely upon the mark as an indication of origin then this will establish that the mark has acquired distinctiveness”

Deputy Commissioner Jacqueline Bracha does not consider that the survey and publicity material in the present case proves the Applicant’s contention.

In all cases, the word mark Sod clearly appears in the publicity material, and the advertisements all include the word Sod a large number of times. So it does not appear that the applicant is relying on the visual appearance of the product to indicate the origin thereof.

The extent in which the shape of the package is capable of serving as a trademark depends on the degree that they are different from that typical in the field. See for example, Israel Trademark Application No. 174402 Diageo North America, Inc. from 13 April 2011. The Applicant notes that they chose the mark to distinguish themselves from their competitors. The Applicant submitted a lot of material that shows that cleaning materials intended to be hung in the toilet bowl come in different shapes, however all of these include a hook and a perforated plastic case so that they can serve their function of hanging over the rim and allowing water to reach the cleaning material on flushing. The product in question is not sufficiently distinctive that it is recognized by the public as being a trademark. From the material submitted and from a personal search of the Internet it appears that such products come in various shapes and sizes including five flowers, three crescents three rectangles and so one. Most of the products are coloured and two colours are combined in a single product… Many are sold in transparent packages that have the manufacturer’s logo on the upper part.

The mark has not attained distinguishing character through use

There is a connection between the question of whether a mark serves as a trademark in practice and whether it has acquired distinctiveness. The Applicant has to demonstrate that through sales, etc., there is public awareness of the mark.

First and foremost, the Applicant has to show that the goods have a reputation, meaning that the public identifies the goods with the applicant or at least with a specific source, even if not identifying the applicant by name.
….
Continuous significant usage is not what is important, but rather the type of use:  if it is a use that identifies the product with the Applicant, see Appeal 18/86 Israel Venetian Glass Factory vs. Les Verries de Saint Gobain p.d. 45(3) 224, 238.

To prove a relationship between the product and supplier, the Applicant submitted Mr Roshinak’s survey. The questions were directed to respondents who admitted to being the purchasers of domestic hygiene goods for their homes. The respondents were first asked if they were familiar with the products for which the trademarks were sought (specifically the product having Israel TM Application No. 258658). It is noted that the respondents were not asked if they had purchased the product and so those who had seen the advertisements also responded positively and some 67% were familiar with the product. Mr Roshnak explained at the hearing that this is significant. In this regard, it is noted that the publicity campaign was conducted close to the survey and may well have affected the results. See Complaint 31706-01-12 Dan Design Center ltd vs. B.R.A.P. Projects ltd 19 June 2012.

survey3.JPGThose respondents  that responded positively to the first question were asked if the product was known in Israel. The Deputy Commissioner considers this is less relevant since it surveys what the respondents thought and not how well known the product was. In the next stage, the respondents were asked if they were familiar with other products of the same manufacturer and 65% were unaware of any other products or were not sure in their response.

The Deputy Commissioner considers this the most significant part of the survey. The purpose of a trademark is to link a product with other products of the same supplier. See Seligsohn Trademark Law and Similar Law 1973 page 1. If this connection does not exist, the shape of the mark does not serve as a trademark in practice.

In this instance, the majority of the public does not consider the product as associated with a particular supplier and this is clear from the fact that they did not know if the supplier sold other goods. In other words, the public surveyed were unaware of the source of the goods and did not connect the balls with other products marketed under the Sod mark. Since the Applicant acknowledges that Sod is a well known mark associated with a wide range of hygiene products, had they associated the product with Sod, they would have made a connection and mentioned other products.

The Applicant claimed that the acquired distinctiveness exists where the public associate a product with some supplier and not necessarily with a supplier by name. This is true. The principle was established in Appeal 18/86 Israel Venetian Glass Factory vs. Les Verries de Saint Gobain p.d. 45(3) 224, 238. However, in this instance, it is claimed that Sod is a ‘quality brand’ and so it is not reasonable to claim that the majority of the public do not know the brand. Furthermore, from the response to this question, it appears that the majority of the respondents do not relate the product with ANY supplier and for this reason cannot answer whether the supplier supplies additional products.

survey.jpgIn the final survey, the respondents were asked who manufactures or markets the product. This was a multiple choice question with the options Henke, Sod, some other supplier SPECIFY and do not know/not sure. This is a closed-ended leading question similar to that discussed in Opposition 112645 Mei Zach (Clear Water) Shlomo Zach vs. Teneh Industries 1991 ltd from 12 July 2007. Two of the four answers were correct. The others required the respondents to admit to not knowing or to suggest an alternative themselves. It is hardly surprising, therefore, that most respondents answered correctly. Furthermore, the respondents who answered correctly were not even required to remember the manufacturer/supplier’s name themselves….

leading questionMr Rohnak was asked about this during the hearing and responded that respondents are not ashamed to answer that they do not know, and so their choosing a correct answer is significant and indicates knowledge. Mr Roshnak did not think that wording the question differently and giving names of other manufacturers of hygiene products would have led to a different result. This response is speculative and is beyond his competence since it does not relate to making surveys and drawing results but rather to anticipating responses to questions not asked. The fact that most respondents elected “Sod” and not “Do not know” certainly raises the suspicion that the respondents answered that way as the question led them to do so, or because the way the survey was constructed led them to believe that this was the desired response.

Deputy Commissioner Bracha concludes that the survey does not prove that the public identifies the product with the source. Furthermore, it really indicates a lack of identification with any source.

By way of comparison, in the KitKat ruling, most respondents recognized KitKat as being an image of the snack without the name being suggested to them. Nevertheless, the court held that the manufacture does not rely on this recognition and the shape is not eligible for registration. In this instance, the public could not identify the source without leading questions that posed the correct response.

In evidence of acquired distinctiveness, the Applicant submitted an affidavit of the product manager. It is not denied that the Applicant invested large sums in promoting the product to the result that they captured a significant 30% of the market. However, this does not show that the public identifies the product with the supplier without the Sod mark clearly shown.

In light of the above, having concluded that the mark does not have distinguishing characteristics, it cannot be registered under Section 16 either.

The mark is therefore refused.

Ruling by Ms Jacqueline Bracha re 4 Balls Shape Mark to KGaA & Henkel AG 258658, 258797, 258798 and 259500, 18 December 2018.


 Appeal Regarding Infanti Baby Seats Virtually identical to those of Fisher Price (Mattel)

September 19, 2017

fisher price swing seatBaby swing-seats that were made in China and are identical to Fisher Price swing seats, down to the image of a lion on the upholstery, were imported and sold in Israel under the brand Infanti. Fisher Price obtained an Anton Pillar injunction and seized 1830 seats from the Importers’ warehouse. However, the Nazareth District Court rejected all attempts to obtain compensation under copyright infringement of the lion design printed on the seat upholstery and in the instruction manual, trademark infringement for the Fisher Price logo shown in the illustrations of the instruction manual, the trade tort of Passing Off, and the catch-all Law Of Unjust Enrichment following A.Sh.I.R. The case was then referred to the High Court.

This ruling by a panel of Israel High Court judges considers whether copyright subsists for a product design or artwork printed on a product where no design was registered for the product and whether there are grounds for sanctions under the trade-law of Passing Off or under the Law of Unjust Enrichment. The legal advisor to the government filed an amicus brief clarifying the position of the government in such issues.

judge elyakim rubinstenThe main ruling was given by Vice President of the High Court, Judge Elyakim Rubinstein who first considered the basic relationship between design law and copyright. Then, he ruled whether part of something that could have been registered as a design is entitled to copyright protection, and if so, whether the lion character is copyright protected even if the swing chair could have been registered as a design. Are the respondents direct or indirect infringers of the Appellant’s copyright? Do they have the defense of being unaware? Does trademark infringement require intent? And finally is there Passing Off or Unjust Enrichment?

Essentially Judge Rubinstein and Fogelman found copyright infringement due to the lion character on the upholstery, and Judge Meltzer also found that there was passing off, due to the products being virtually identical. Judges Rubinstein and Fogelman rejected the claims of passing off since although Fisher Price clearly had a reputation, they did not necessarily have a reputation for the baby swing seat. Infanti’s copies, though virtually identical to those of Fisher Price, were packaged in different boxes and the boxes were clearly labelled Infanti. The product itself was also labeled with the Infanti brand.

The main ruling is given below, followed by additional comments by Judges Fogelman and Meltzer. Since this is an important ruling, I have translated it in full. At the end are some comments and criticisms.

Background

This is an appeal against ruling 39534-02-15 by Nazareth district Court judge, Ben Chamo which was given on 8 January 2015 and in which Fisher Price lost their claim regarding copyright infringement in a child’s swing seat.

The ruling addresses the relationship between copyright and registered design rights. Judge Rubinstein notes that in the modern consumer society, the design of consumer goods has an increasing importance, and that manufacturers invest heavily  Consequently, many goods are some combination of functionality and artistic expression which makes it difficult to classify such goods in a single IP category and raises difficult legal questions. This appeal relates to a list of such questions of which the relationship between design law and copyright is central.

The Appellant, Mattel Inc. is a US Company that owns Fisher Price which makes baby goods, etc. The Respondent, Dvaron Import-Export Co. Ltd, is a company that imports various baby products into Israel. They and their directors and share holders were sued.

infantiMattel / Fisher-Price learned through Sakal which imports their products into Israel, that the respondents have been distributing a baby swing seat manufactured in China and branded as Infanti, which is a copy of the Fisher-Price swing seat.  Read the rest of this entry »


Can a 3D perfume Bottle be Registered as a Trademark?

April 24, 2017

christiandorChristian Dior submitted Israel Trademark Application Number 264427 for a 3-dimensional perfume bottle as shown.

The Application was submitted on 16 April 2014 for perfumes, perfumery products, eau de parfum, eau de toilette, eau de cologne, extracts of perfumes; perfumed body milk, body oils and body lotions, perfumed body lotion and shower gel, perfumed bath lotions and gels, soaps, perfumed shampoo; make-up products for the face, the eyes, the lips, cosmetics products for the nails and nails care; all included in class 3.

In the first Office Action of 9 August 2015, the Examiner considered the mark as non-registerable under Section 8(a) of the 1972 Trademark Ordinance in light of Circular MN 61 which was then in force, since the mark relates to the three-dimensional package or container for the goods in question.

In that letter, it was stated that the Commissioner could consider allowing a three-dimensional mark in exceptional circumstances where the following three conditions are all fulfilled:

  1. The mark serves as a trademark in practice
  2. The mark does not have any real aesthetic or functional purpose
  3. The mark has acquired distinctiveness through use

In a response from 8 December 2015, the Applicant explained that Christian Dior was a fashion house founded in 1946 for quality goods such as haute couture, perfumes, jewelry and fashion accessories. An affidavit from Riccardo Frediani the General IP Counsel for perfumes was included as part of the response.

The Applicant listed various points that were endorsed by the Affidavit, which were claimed to provide the required distinctiveness:

  1. The perfume associated with the requested mark was a flagship product
  2. The perfume was sold under the mark continuously since 1999 and was sold in 130 countries
  3. The perfume was sold in Israel since 2000 and much effort had been expended in branding and marketing in Israel.

The Applicant explained that the bottle was inspired by the jewelry worn by Masai women, and by 19th century wedding dresses. The bottle design had not changed since it was first introduced.

In addition, the Applicant claims that the fragrance associated with the mark was Dior’s most popular fragrance in Israel and was the fifth most popular fragrance in Israel. These claims were supported by various write-ups and market analysis. Together with the response submitted in December 2015, the Applicant requested that part of the evidence submitted remain confidential as it relates to specific sales and financial data. This confidentiality was granted in a December 2015 interim ruling.

The response of 30 December 2015 was considered sufficient to establish acquired distinctiveness as required by Section 8(b), but the Examiner held that since the applied for mark have previously been registered as a design, it could not be registered as a trademark. The design in question is 3293, registered by Christian Dior in class 9(01) under the titled Perfume bottle on 30 April 2000, which termination on 26 March 2014.

The Examiner considered that the fact that the mark had been registered as a design implied that it was an aesthetic creation and as such could not be registered as a three-dimensional mark in view of paragraph 5.2 of Circular 032/2015 “Trademarks – Requests for Registering Three Dimensional Marks” which regulates the registration of three-dimensional toffiffeemarks that are the objects themselves or their packaging. The Circular states that where the evidence indicates that a product or packaging design serves as a trademark and is neither very aesthetic or very functional; and, through usage has acquired distinctiveness it may be registered (these requirements are inherited from the earlier Circular MN 61), but updated in light of the Supreme Court’s Toffiffee ruling 11487/03 August Storck.

The Applicant requested to appeal the Examiner’s decision and a hearing was held on 28 June 2016.

The Registerability of the Desired Mark

The Commissioner Asa Kling considered that the weight of evidence submitted does indeed show that the bottle mark has acquired distinctiveness. This is evidenced by the sales data, the amount of advertising and exposure of the mark in Israel and abroad, and Frediani’s affidavit is persuasive. The question that remains is whether the mark has a real aesthetic or functional purpose that prevents it from being registered, and if this is not the case, then it is necessary to consider if the shape serves as a trademark in practice.

Circular 032/2015 states that three-dimensional representations of goods or their packaging are not registerable as trademarks if they are inherently distinctive. In such cases they are properly protected as registered designs. It then goes on to give the three conditions detailed above.

In this regard, it is noted that Circular 032/2015 that the Examiner relied upon and which has subsequently been cancelled, was subsequently merged into 033/2015 “Emphases for Examining Trademark Registrations”, which entered into force on 15 December 2016, and since Section 5.2 is included in the new regulation, the cancellation of 032/2015 does not render this discussion moot.

The registerability of three-dimensional marks has been much discussed in the case-law. The basic ruling is the 2008 decision 11487/03 August Storck vbs. Alpha Intuit Food Products ltd. published on 23 March 2008 (the Toffiffee case).

Following this ruling, the Patent Office updated its policy regarding the registerability of three-dimensional marks, resulting in the various Circulars and in a number of rulings.

croccrocFor example, the 212302 and 212303 Crocs Inc decision of January 2013, the 228232 and 228233 Seven Towns SA decision cube-in-handof November 2012, the 184325 Coca Cola ruling of September 2012 and the 238633 Absolut decision of September 2013.

The problem with deciding whether three-dimensional trademarks are registerable is particularly apparent when considering liqueur or perfume bottles. liqueurs, spirits and perfume do not have a shape and the shape in question is that of the container.

The Applicant claims that the act of registration of the bottle as a design does not prevent it being or becoming a trademark. The Applicant relates to the Toffiffee ruling and understands the Supreme Court as stating that when a product is launched, the three-dimensional shape of the product or package cannot serve as an indication of the manufacturer. At the registration stage, the only protection available is that of a design registration. However, the design may subsequently acquire distinctiveness through use that is identified with the supplier and can therefore subsequently be registered as a trademark.

The Applicant considers that the Supreme Court differentiated between products and packages and that it is not necessarily true that one can draw comparisons between the two categories.

The Applicant claims that there is no bar to the same product being protected both as a design and as a trademark. In the present instance, there is an overlap between the two types of protection. The ‘real aestheticness’ that the Commissioner’s circular considers as preventing registration is different from the aesthetic requirement that is necessary for design registration under the patent and design ordinance; otherwise something registered as a design could never be a trademark.

However, Section 5.2 of the Circular does, nevertheless, refer to something ‘serving a real aesthetic or functional purpose’.  The applicant considers that the effort expended in promoting the product that is identified with the bottle has borne fruit, and despite there being no word mark attached to the bottle, the mark is well-known.

Frediani notes that section 1 of the Trademark Ordinance clearly states that three-dimensional marks may be registered:

“Mark” means letters, numerals, words, devices or other signs, or combinations thereof, whether two-dimensional or three-dimensional

And defines a trademark as follows:

“Trade-mark” means a marked used, or intended to be used, by a person in relation to goods he manufactures or deals in;

When considering the registerability of a mark, one should bear in mind the purpose of registration which is to be a means of protecting the manufacturer and seller and of preventing unfair competition, and also to protect the public. See 3559/02 Toto vs. Sports Gambling Authority p.d.. 49 (1) 873, and 3776/06 Ein Gedi Cosmetics vs. Commissioner of Patents May 2008, and also Seligsohn.

Section 2 of the Patents and Design Ordinance states:

“design” means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to, and are judged solely by, the eye, but does not include any mode or principle of construction or anything which is in substance a mere mechanical device.

The registration of a design requires that it is new or original, and not previously published. The purpose of the design is to give an identity or form to a product, it is that which gives it its uniqueness. As the Supreme Court ruled in 7125/98 Mipromal Industries Jerusalem vs. Klil Industries p.d. 57(3) 702:

The protection given to the unique shape of an article is that which the eye is able to comprehend… the form needs to attract the eye of the relevant consumer in a manner that influences the specific choice.

If so, when exposed to a trademark, the consumer’s right is to know the source of goods, whilst respecting the mark owner’s rights to prevent unfair competition. A design right is based on the lines of form of a good and a design that draws the eye of the consumer.

In Toffiffee the Supreme Court stated that the three-dimensional shape of a product may be registered if the owners can prove that it has acquired distinctiveness through use. However, this is with the proviso that it does not have real aesthetic or functional value:

In contrast, the considerations for registering a three-dimensional mark based on the shape of a product is on the basis of acquired distinctiveness. When referring to a good as having a shape that has acquired distinctiveness, we means a shape that causes the consumer to identify the product with a specific source. If it is proven that a good has acquired distinctiveness, it is not important that rarely will the shape be inherently distinct…this means that in those cases where it is proven beyond doubt that the shape serves to distinguish the product – the shape may be registered.

In the Toffiffee case, the court related to the differences between trademarks and other types of intellectual property, including designs, which can coexist in the same product:

It is stressed that where the shape of a good serves as an identifier and differentiator, it serves the function of a trademark. It therefore deserves the protection accorded by trademark laws. It is possible that the same shape is protectable by other types of intellectual property such as designs, or has indeed been protected in this manner. However, since the purpose of trademarks is different from that of other types of intellectual property, the fact that this the shape has already been protected does not prevent it from being protected as a trademark. Furthermore, we are aware that generally the functionality of a mark prevents its registration as a trademark even on the basis of inherent distinctiveness but rather under acquired distinctiveness. We have raised the question of whether this difference between passing off and trademark laws is desirable. That’s as may be, as far as three-dimensional marks consisting of the shape of a product are concerned, there is no choice but to conclude that where the mark is functional (or aesthetic), it prevents it being registered, even if it may be proven that it has acquired distinctiveness. Unless we say this, one may provide an everlasting monopoly for a functional (or aesthetic) shape. This could be very damaging for the market in question. 

From here it is clear that a three-dimensional registered trademark can coexist with a design registration for the shape of a product, so long as this does not provide a monopoly to an aesthetic shape that would create an obstruction to marketing in the relevant market. (this accords well with the background in the Toffiffee case.

Based on this, and in light of the guidelines adopted by the Patent and Trademark Office, the shape of a product having a functional or aesthetic nature may not be registered as a trademark where its form serves a major functional or aesthetic purpose, and under these considerations the mark was refused.

The rationale behind this is to prevent the widening of trademark protection beyond its classical purpose and preventing competition. Since a consumer choses a product for its shape, and this is protected with a trademark, he is doing so out of aesthetic considerations based on what attracts the eye and not as an indication of origin. This is clarified by the Absolut vodka case where the design is neither particularly functional nor aesthetic, but is inherently distinctive and is identified with a particularly spirit, and this is the case with spirits and perfumes in general. It appears therefore, that bottles and jars may acquire distinctiveness and be considered as trademarks by the public, however only after years of use.

Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 199 explains that marks of this nature acquire distinctiveness after years of use.

The European Court of Appeal came to this conclusion in Case T 178/11 Voss of Norway ASA v. OHIM,(28.5.2013) “Absolut”:

“…Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any verbal or graphic element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a verbal or figurative mark (see Freixenet v OHIM, paragraph 38 above, paragraph 46 and the case-law cited).”

More specifically, as a liquid product must be in a container in a bottle in order to be marketed, the average consumer will perceive the bottle above all simply as a form of container. A three-dimensional trade mark consisting of such a bottle is not distinctive unless it permits the average consumer of a product of that kind, who is reasonably well-informed and reasonably observant and circumspect, to distinguish the product in question from that of other undertakings without any detailed examination or comparison and without being required to pay particular attention (Case C‑218/01 Henkel [2004] ECR I‑1725, paragraph 53, and Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle) [2004] ECR II‑1391, paragraph 24, upheld on appeal in Case C‑286/04 P Eurocermex v OHIM [2005] ECR I‑5797).”

Since we are not considering something that it aesthetic per se, but rather what is primarily a shape that serves the commercial purpose of linking a good with its supplier, the aesthetic aspect is secondary and less significant.

From here, if the Applicant manages to provide that the commercial considerations for choosing the product are dominant and that the shape of the product or the packaging actually serve as a trademark far beyond the aesthetic aspects, it may be registered.

As a general rule, as stated in the Toffiffee ruling, in some cases a product may benefit as both a trademark and as a design. As explained by Derclaye and Leistner- Intellectual Property Overlaps- A European Perspective (2011), p. 61:

Since a design is the appearance of a product and can be in two or three dimensions, there can be overlap with two and three dimensions trademarks; for instance, packaging, get-up and graphic symbol, which the Design Directive cites as examples of possible products in which design right can subsist, as well as logos, can also be signs that can be registered as trademarks.

Thus, design right can be acquired first, and then trademark applied for later when the public has been educated to recognize the packaging as a trademark, ie consumers only see it as indicating the origin of the goods as coming from a single company”.

This case relates to a trademark application for a perfume bottle that has a wide base, a narrow neck and a round stopper. The neck is coiled, and, as the Applicant noted, it was inspired by the Masai women’s jewelry.  There is no name or other element that says Christian Dior. The bottle has aesthetic elements that have some weight but the shape has acquired distinctiveness which should be given more weight.

The J’Adore perfume bottle has been widely advertised in various media in Israel and abroad and has been in constant use since 1999. The consumer does not purchase the perfume because of liking the shape of the bottle so much as because he identifies the bottle with the contents which is the product.

As a distinctive shape, the bottle was registered as a design, but over time, it has acquired distinctiveness as a container for the specific fragrance and thus serves as a trademark. The commissioner does not think that allowing the mark to be registered prevents competition in the field.

The application is returned to the Examiner for registration, with the proviso that it is clearly labeled as being a three-dimensional mark.

Ruling re Israel Trademark Number 274427, J’Adore 3D Perfume Bottle, Asa Kling 26 February 2017. 

COMMENT

I have a friend and neighbor who is genealogically half Masai and half Jewish. To me, David is tall and black. However, I am told that in Kenya where he was born, he was considered short and Jewish looking. He explained to me that the coiled gold extended necks of Masai women was a method of controlling them. If they misbehaved, their husbands could remove the jewelry and their neck bones would be unable to support their heads. The husbands could then take new and more obedient wives. I find this jewelry sinister and would not personally want to use it as inspiration for a perfume bottle. That said, I don’t see a problem in providing long-term protection for distinctive bottle shapes as trademarks, so long as functional shapes are not monopolized in this manner. The ruling is a correct one.

I don’t think that a judge would accept arguments that the Dior registration should prevent Tia Maria being sold in a long stripy necked bottle. This case is not analogous to Disney taking characters that are copyright protected and converting into trademarks to keep them from entering the public domain. It does raise interesting questions regarding the iconic Croc beach sandal that was registered as a trademark. Croc should be able to continue using their clog design as a trademark for branding purposes, but should  not be able to act against other manufacturers of substantially identical beach clogs. I think that the less said about the Seven Towns cube decision, the better.


Getting a Handle on Israel Design Registration

March 26, 2017

Furnipart

Although there is a proposed Law in the works, in Israel, design registration follows the somewhat archaic Patent and Design Ordinance 1924 inherited from the British Mandate. Formally, only local novelty is required! In a Circular, Previous Commissioner Dr Meir Noam creatively interpreted the Law such that Internet publication in official Patent Office websites that are acceptable in Israel would be considered as published in Israel. As discussed in this blog, that Circular is arguably ultra-vires in that such a determination arguably requires at least Ministry of Justice regulations if not a change in the Law. The present ruling by Outgoing Commissioner Kling relates to this Circular.

This ruling concerns seven design registrations – 55598 to 55604 – all of which were titled ‘Handle’ and were filed on 20 May 2014 in class 08-06 for handles and hinges by Furnipart.

On 22 March 2015, the Applicant received an Office Action that alleged that the design were lacking in the novelty and originality required by Section 30(1) of the Patent and Design Ordinance 1924 since the designs were identical to those registered in the name of the Applicant in Europe which were registered and published prior to submission of the Applications in Israel.

In addition to the 55602 registration that was submitted to the EPO on 18 October 2013 and which published on 15 November 2014, all the applications were submitted on 21 February 2014 and published on 26 March 2014.

The Applicant failed to respond to the Office Actions in the period specified in Regulation 28 of the Design Regulations, and on 23 June 2015, a reminder was sent warning the Applicant that failure to respond within 30 days with a request for a retroactive extension would lead to the applications being considered abandoned.

On 10 August 2015, the Applicant sent a response in which he claimed that the designs were, indeed registered in Europe, but apart from the publication on the EPO website, there was no publication in Israel. The Applicant claimed that the Israel Application was filed within the six month time frame of the European filings which is within the grace period from the first filing (Denmark) given in Section 52a(1) of the Ordinance.  Consequently, the European filing date should be considered the effective filing date in Israel.

On 13 August 2005, the Applicant was sent a notice that stated that further examination required payment of the extension fee, and which referenced Circular M.N. 69 from 25 December 2008 and to Section 53(2) of the Ordinance, noting that the Applications did not, claim priority.

On 9 September 2015, the Applicant was sent a second Office Action clarifying that under Circular M.N. 69, an Internet publication is considered as a publication that is published in Israel and so the Applications are contrary to Section 30(1) of the Ordinance. Similarly, it was noted that priority was not requested within two months of submission as required by Section 52(2) and so the effective filing date was the actual filing date in Israel.

On 15 December 2015 in light of the rejection of 9 September, the Applicant requested a hearing and this was geld on 18 April 2016.

Prior to the hearing, the Applicant submitted his main pleadings on 11 April 2016., during which he reiterated the above claims. He also alleged that Circular M.N. 69 differentiates between official and commercial publications and the European Patent Office publication was not meant to be published in Israel, even if it is accessible on line from Israel since the Israel design is not in force. Based on this ‘logic’, the Applicant claims that he is within the requirements of Section 52(a)1 of the Ordinance since there is a six month’s grace period.

 The Ruling

Section 30(1) of the Ordinance states:

The registrar may, on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not previously published in Israel register the design under this Part.

So registration is contingent on no prior publication in Israel.

In Section 6 of Circular M.N. 69 from 24 December 2008, the previous Commissioner ruled that :

One can cite designs that have published on the Internet before the filing date in Israel, since there is evidence of their publication date.

To cite something against novelty of a design, section 7 of M.N. 69 relates explicitly to publications in patent offices abroad.

Use of Internet publications shall be done with the required care and only where the Examiner considers that he can rely on it indeed having published prior to the Israel filing date. For example, publication in databases in the official European patent office website OHIM, the USPTO and WIPO, etc. which publish the publication date of each design.

As far as relying on Internet publication, Examiners have been warned to cite these with due care – see the 51593 and 51594 Tequila Cuervo ruling from 9 June 2013, particularly paragraphs 44 and 45, and the ruling concerning various designs to Naot Shoes (1994) ltd published on 1 June 2016 

The same required care regarding the publication date, content and likelihood of Israel based surfers seeing the publication was considered in paragraph 10 of the 45452 Sejec Vanja ruling published on 28 February 2012: 

The language of Section 30(1) of the Ordinance states ‘… not having published earlier in Israel. This does not require that anyone has actually seen the publication…such was always the interpretation, even prior to the Internet age. The question is whether the publication was accessible. See for example the Appeal 430/67 Sharnoa ltd. et al. vs. Tnuva et al. (1968):

“The law regarding prior publication in a book of this type is based on the book being found in a place accessible to the public, such as a public library is considered sufficient publication, since one can assume that in this manner, the design reaches the public knowledge”.

In light of the above, one cannot accept the Applicant’s allegation that the previous publications are not novelty destroying, since reason that Patent Office Internet accessible databases are considered publications is the ease with which one can verify the publication date. This is certainly the case where the applicant does not deny the trustworthiness of the site and of the listed publication date, only whether Israelis would have access to inspect there.

Priority Date

The Applicant claims that despite the earlier publications that are novelty destroying for the applied for designs, the effective filing date in Israel should be considered as being the actual filing date in Europe.

Section 52(a) states:

If a design owner submits a request to register a design that has previously been filed by himself or by  his predecessors in title, a request to file in one or more friendly states (henceforth priority), he may request that as far as sections 30(a) and 36 are concerned, that the earliest priority date will be considered the filing date in Israel if all the following conditions are met:
(1) The Israel Application is submitted within six months of the earliest priority; and
(2) A priority request is submitted within two months of filing.

Firstly, it is stressed that contrary to the Applicant’s claims, Section 52 that the priority date is determined with reference to Sections 30(1) and 36, i.e. with respect to novelty and earlier publication. This does not mean that where a priority claim is made, that the Israel application automatically is awarded the priority date.

In this instance, the previous applications were filed on 21 February 2014 and then in Israel on 20 May 2014, i.e. within the six months grace period for which I priority request can be made. However, filing within six months of the prior application is insufficient since the second clause requires that the Applicant makes a priority claim within two months of the Israel filing date.

On 21 October 2014, this two month period for requesting priority in Israel passed, the period for which the application can rely on the filing date of earlier applications with respect to Sections 30(1) and 36 passed without Applicant requesting priority.

The Commissioner does not agree with the Applicant that the mere filing of an Application in the period provided for in clause 1 is sufficient since Section 52 requires both conditions to be fulfilled: filing within six months and making a timely request for recognition of the priority date. These conditions are complimentary – section 52(a) states explicitly that it applies if all the following conditions are met. One condition being fulfilled does not waive the other. So there is consensus that merely filing within six months does not result in priority being recognized.

Since the full requirements were only met a year after the two month deadline, the Applicant is not entitled to the priority date.

In the hearing, the Applicant’s representative noted that section 54 gives the Commissioner the discretionary powers to extend deadlines in the regulations even retroactively. The Commissioner considers that this regulation does not give him the power to extend deadlines in the Ordinance itself, including extending the priority claim.

The Application is rejected and the designs will not register.

Ruling concerning Design Numbers 55598 to 55604 “Handles” by Asa Kling, 21 February 2017.

COMMENT

four candles  The classic 1976 Fork Handles sketch may be found here.


Alternative Dispute Resolution Copyright in an Ark Curtain

January 9, 2017

parochet cloth.JPG

Haggit Weingarten is a talented graphic designer. She designed a parochet (curtain for ornamenting the Ark of the Synagogue) where she and her family pray in Petach Tikveh. After finalizing the design with the Synagogue, Ms Weingarten approached a company that did computerized embroidery that specializes in similar ritual items and paid them to fabricate a parochet with her design which is a stylized arrangement of a well known phrase found in Isiah 52:8. The curtain is more modern that the dark velvet or satin curtains that include Stars of David, lions, the Menorah or Ten Commandments that are ultra conservative, but it is not overly modern. The resultant curtain is shown alongside having in her Synagogue. The embroidery company were very complimentary of her design.

parochet-laviSome months later, a member of her community spent a weekend in a Kibbutz Hotel and was surprised to see a curtain with the identical design hanging in the Synagogue of the hotel. Ms Weingarten was rather annoyed about this, and after a little bit of research discovered that the embroidery company was offering the curtain in their catalogue of designs and on their website. Now furious, she got her attorney-in-law husband to write a cease and desist letter requiring that the design be removed from the catalogue and from the website and that the company pay 5000 Shekels compensation.

The company argued that graphic designers made nowhere near that amount for designing embroidery and made a counter-offer of a velvet bag for the husband to store his ritual prayer shawl in.

Dr Ben Spungin who is a patent attorney at IP Factor, prays in the same Syngagogue. The Weingartens contacted him and we decided to help. I was near the Kibbutz one day that summer and took a photograph of the curtain, which by that stage was a three piece suite set including  a cover for the Bima – the central table used for reading from the Torah, and a smaller cloth for the lectern.

The problem was that court proceedings could take 2-3 years and the total award would be unlikely to cover the legal costs which was why the embroidery company could take such a cavalier attitude to their infringement.

We prepared a Statement of Case and noted that under copyright law, the graphic artist was entitled to (up to) 100,000 Shekels compensation for copyright infringement, and a further 100,000 Shekels for infringement of her moral rights to be identified as the artist. In case the embroiderers would argue that this was a design for manufacture and not a work of art, we noted that under the A.Sh.I.R. ruling, the artist was entitled to up to 100,000 Shekels compensation under the Law of Unjust Enrichment.

We sent a copy of the Statement of Case to the embroiderers. Their lawyer got the embroidery company to take the curtain off their website and out of their catalogue, and  then contacted us to negotiate a settlement.

Now whilst the law provides grounds to sue for up to 200,000 Shekels, followers of this blog will note that court rulings vary widely from 2000 Shekels to maybe 50,000 Shekels for copyright infringement of this nature. Ms Weingarten did not include her name as the designer on the original curtain for her Synagogue. Nor would she be expected to. Arguably however, this puts a zero value on her moral rights to be recognized as the artist. More significantly, the original Cease & Desist letter from her husband valued the infringement at 5000 Shekels. Still, the curtain had now gone forth and multiplied into a family of three embroidered cloths. With both lawyers phoning their clients and a little haggling, a settlement was agreed that was more than the Weingartens had originally asked for and even after paying us a small commission, was still more than they would have received.  Justice was served in that the embroiderers ended up paying more than they would have otherwise, not including their own legal expenses. The issue was settled in less than three months.

It should be appreciated that mediation and arbitration are faster alternatives to court proceedings. As this was not a court ruling in the public domain I am not naming the infringing company, but in court rulings, the parties are identified. To avoid adverse publicity it is often in the parties’ interest to avoid going to court.


Israeli Designer Successfully Sues Fashion Chain for Copying Dress

December 26, 2016

necklines

Israel fashion designer Gadi Elemelech sued Renuar, a chain of selling women’s clothing for selling clothing that was confusingly similar to his haute couture dress. The dress in question appeared in Elemelech’s 2013 collection, and in Renuar’s 2014 range. The legal grounds for the action were the Israel Trade Related Torts Act 1999.

A unique design feature that was copied is in the neck shown above. The one on the right is Elimelech’s and that on the left is Renuar’s.

Elimelech sent a Cease and Desist but Renaur denied the allegations.

Section 1a of the Israel Trade Related Torts Act 1999 states:

No business should create the impression that a product they sell or a service they provide was provided by a third party of in connection with a third party.

Citing Judge David Cheshin in 8981/04 Avi Malka Avazi Restaurant vs. Avazi Hatikveh Neighbourhood (1997) from 2006 to the effect that the creation of a new tort simply reclassified the old one and was not substantially different. Professor Miguel Deutch concurred in his book Trade Related Torts and Trade Secrets 2002 came ot a similar conclusion, referring back to an academic paper by Judge Gidon Gilat to the effect that passing off does not only relate to fraudulent use of trademarks.

Renuar argued that there was no likelihood of confusion among Elimilelech’s clientele who know whether they are purchasing from designer or from the high street chain.

Elimelech argued that his dresses were ripped off  copied and sold in the chain and that this made them less desirable and limited his sales and profits.

Judge Gidon Gilat of the Tel Aviv District Court ruled that the sale was actionable under the Trade Related Torts act as ‘passing off’ since the designer dress was well known and associated with the designer, and the fashion chain’s dress was confusingly similar to the designer dress, which they were aware of.   The court awarded damages of 55,000 Shekels and a further 35,000 Shekels legal costs.

Civil Tort 5366-12-14 Elimelech vs. Renuar Ruling by Gidon Ginat, 22 December 2016

 


Online Design Filing in Israel

December 22, 2016

ilpo

The Israel Patent Office held a seminar today to introduce their new online design submission interface. Over the past five years the Israel Patent Office has gradually introduced online trademark, PCT and patent filing and prosecution and has published guidelines for examiners, which help applicants and their representatives.

The Design Department is the last department to become fully computerized, and, if all goes well, the interface will become ‘live’ on 29 December 2016.

alferd_teeThere were some 50 participants at the seminar. These included veteran Patent Attorney and Rabbi, Alfred Thee, known generally as Mr T, who, though rather less muscular and black than the character from the A Team, is, nevertheless, a very sprightly and highly experienced 85 year-old practitioner that I had the benefit of training and qualifying under. Mr T told me that he was finally leaving his long-term employment at Seligsohn & Gabrieli at the end of the year, but would carry on working as a self-employed consultant. I anticipate retiring before he does!

In addition to various friends, colleagues and competitors, I noted the presence of Zvi Teff who qualified under my tutelage, and who has recently opened his own firm. We wish him luck with this endeavour.

aippiThe seminar ran from 11:00 AM to 1:00 PM. Those that could be bothered rushed over to Tel Aviv for a General Meeting of the AIPPI that started at 2:30 PM. Holding the two events on the same day seemed to be both rather silly and also discriminatory against those practitioners that file design applications.  Had the AIPPI held their event at the Israel Patent Office at 2:30, many more people would have attended both events. There are only a few hundred IP practitioners in Israel, including lawyers, examiners and patent attorneys, that could join the Israel Branch of the AIPPI. Doing a General Meeting on the same day as an IP seminar at the Patent Office is like holding a general meeting during INTA. It is plain stupid.

Commissioner Kling opened the event and spoke about the pending Israel Design Law which is due to replace the hopelessly outdated Design Ordinance from 1922 that is currently in force. Amongst other ramifications of the pending legislation, it will pave the way for Israel to join the Hague International trademark registration system.

After the Commissioner finished, the Head of the Design Department, Alice Mahlis-Abramovich took the podium. However, the actual instruction on the new interface was given by someone from a software instruction agency who bore a slight resemblance to Israeli singer Roni Dalumi. Having someone who was used to explaining how to use software explaining how to use the software was a strategy with mixed results. Since she didn’t practice design law, she could relate to what the software did, but not how to do various things that practitioners might want it to do. Also, she referred to something submitted as being a design, whereas practitioners would call these design applications, and only refer to the examined and registered product as a ‘design.’

Those now familiar with filing and prosecuting patent applications via the online interface will experience little difficulty using design interface. The seminar wasn’t very exciting, but some of the questions were rather interesting. Apparently one of my colleagues submits patent applications, listing a-company-in-the-process-of-being-set-up as the applicant to avoid a tax incident occurring. That as may be, a not yet formed company is not a real person or a legal person (entity). If the company is not formed or if the name changes, who can assign rights to the application? How can one obtain a date without an applicant that actually exists?