February 27, 2018

conferencesI was contacted by a trainee patent attorney who wishes to attend one of the forthcoming IP conferences in Israel but is not sure which one is better value for money.  The firm where she works are prepared to recognize her attendance as a day of work rather than a vacation, but are not prepared to pay for her participation.

ipr-logoThe 6th Annual Best Practices in Intellectual Property is hosted by the IPR and will take place on March 12th and 13th 2018.


aippi-israelThe Third International Conference on the Economics of Innovation is hosted by the AIPPI on April 30th-May 1st 2018 which may interfere with participation in International Workers’ Day, but I suspect that few IP practitioners in Israel actually march.

(The big international conferences fall over Jewish festivals this year. INTA is in Seattle, USA, but overlaps Shavuot. The AIPPI 2018 World Conference in Cancun, Mexico is over Suckot).

Although I believe that firms taking on trainees should invest in them and both the IPR and AIPPI Israel conferences include sessions that provide excellent training for the bar exams and/or professional development, clearly the cost of such conferences adds up rapidly for large firms if they send all of their staff. I can also appreciate why an IP firm may not want someone not yet qualified appear to represent them, when wandering around a conference and meeting potential clients and associates or actual clients and associates.

apprentice payNevertheless, on the salary of a trainee, particularly one with family commitments, both conferences are costly. A significant number of trainees are new immigrants that are self-not living with their parents. Those unluckily enough to be on a percentage of salary may not earn a minimum wage and I believe their ‘mentors’ should be struck off. But even those earning a reasonable fixed trainee salary may find that laying out 850 Shekels for a day of training lectures, is difficult to justify, despite the high quality lunch and coffee breaks and the possibility to pick up a couple of pieces of swag from exhibitors.

fair priceThis does not mean that either conference is objectively expensive when considering the standard of the program and the costs involved in hosting such events in expensive hotels, the quality of the refreshments and the cost of such programs abroad. However, I can certainly see why someone paying for himself or herself may not be able to justify for both events.

mingling 2Licensed In-House practitioners may well be able to get their companies to pick up the tab for them to attend both conferences, and unless swamped with urgent work, I can see many IP managers preferring to schmooze with colleagues and to attend lectures rather than sitting in their offices.  I suspect the coffee break refreshments and lunches provided also compare well to the canteen food or lunch voucher allowance of most hi-tech companies.

trainingIP boutiques are, of course, able to evaluate the relevance of the training for their different staff members, and will no-doubt consider this when deciding who to send to which conference.

As with all such conferences, some sessions will be highly relevant to one’s day to day work, but perhaps lacking in material one doesn’t already know. Similarly, some sessions will be focused on IP issues that may be completely irrelevant to one’s day to day practice.  In this regard, apart from keynote lectures, both conferences have parallel sessions, and one is advised to carefully select presentations to attend that are at least one of the adjectives selected from the group comprising: relevant, intellectually stimulating and informative.

bpip 2018The Best Practices in Intellectual Property conference hosted by Kim Lindy and the IPR is perhaps mis-named. Apart from one session on trade-secrets, the entire program is dedicated to patents and the conference is very much focused on practical aspects of patent management. The conference is particularly targeted at In-House counsel in industry and has much to interest independent patent attorneys in private practice, partners and attorneys at IP firms. However, it seems to have little of interest to those who earn their living managing trademark or copyright portfolios. Sadly in my opinion, it also does not address design law which is a rapidly changing field in Israel.

jam packedThere will be little at the “Best Practices in Intellectual Property” conference to interest academics. However, the program is jam-packed with relevant sessions for prosecuting patents and managing patent portfolios which is what very many in-house IP managers do, and also is the bread-and-butter work of most patent attorneys in private practice.

variety packThe AIPPI conference titled “The Economics of Innovation” uses the term innovation very widely and is much broader in scope than the “Best Practices in Intellectual Property” conference In that features sessions on trade-secrets, design law, trademarks, Copyright, traditional knowledge, taxation of IP and Internet & Privacy. Many of the sessions look at the issue of overlapping types of protection.

madagascan periwinkle

Madagascan Periwinkle, used to treat Hodgkin’s Disease

One of the AIPPI sessions is titled “Traditional Medicine – the influence of IP on Commercial Use and Economic Aspects”. This is not the first time the topic of traditional knowledge has been covered in Israel. Back in 2011, I helped
Dr Shlomit Yantizky Ravid of ONO Academic College organize a three-day traditional knowledge conference that brought representatives from a large number of developing countries and sympathetic US academics that was sponsored by WIPO.  Dr Irving Treitel, a patent attorney who deals with life science patents, especially pharmaceuticals (who was then working for me at JMB Factor & Co.) responded on behalf of the profession. Prof. Shuba Ghosh was the keynote speaker then, as now. Despite much advertising in the press, only some 30-40 people participated in the conference – virtually all speakers of foreign delegates. Apart from Dr Treitel and myelf, I don’t recall any other IP practitioners attending that free conference. I applaud the AIPPI bringing IP issues to the attention of local practitioners, but I doubt that this session will attract a large attendance despite the prestigious panelists.


taxCertainly patent attorneys, whether in-house or in private practice, should be familiar with the different types of protection available to be able to advise or at least refer clients.  Patent Attorneys should also be aware of tax issues, at least broadly, to be able to refer their clients to accountants where appropriate to do so. There are very many large US firms registered in Delaware that conduct R&D in Israel. There are also many firms that are physically based in Israel, but decide to incorporate in the US for political reasons, and these include start-ups as well as larger firms. I have clients that have fairly small staff but are incorporated as an IP holding company that owns the patents, trademarks, copyrights and designs and a separate manufacturing company that licenses the IP assets. The tax issues are not something that a patent attorney deals with, but attorneys-in-law may practice IP and tax law, and in-house legal counsel may deal with IP and taxation.  Apart from understanding how tax issues affect their own income and how various taxes can be legally avoided and what is considered illegal evasion and criminal, I believe that IP professionals not practicing tax law should nevertheless have a general grasp of the tax issues that face their clients to be able to advise them where they should seek guidance from a tax attorney, accountant of tax-consultant.

In summary, both conferences are value for money. People only having the time or budget to attend one should consider which one to go very carefully, and it is worth working out in advance which sessions to attend.

Repeated Requests for Reconsideration Smashed

February 22, 2018

smash batmanBack in May 2017 we reported that Talber Pop LTD owns Israel trademark number 240598 “SMASH” for Notebooks, stationery, diaries, binders; gift wrapping paper, paper gift wrapping bows, paper cake decorations, paper party bags, loot bags, cello bags, paper party decorations, paper party hats, paper tables cloths, paper napkins, banner made of paper and/or cardboards; all included in class 16, and Backpacks, sidepacks, back bags, side bags, sport bags, tote bags, book bags, school bags, food bags, pencil cases sold empty, wallets, waist packs, briefcases, bike bags, toiletry cases sold empty, fanny packs, suitcases, umbrellas, umbrella covers; all included in class 18. They also own a second Israel trademark number 241238 for SMASH in class 14 covering watches, chronometers and their parts, and that Smash Enterprises Pty LTD submitted a request to cancel the Talber Pop LTD marks or to allow their marks to be co-registered.

The parties were interested in coexisting, but MS Shoshani Caspi considered it against the public interest in view of the likelihood of confusion. See here.

Ms Shoshani related to the request, but first detailed the conditions for reconsideration.  The correct way to attack a judicial ruling is by Appealing to a higher court, and not by way of reconsideration. See Appeal 5012/01 Jacobovitz vs. Lerner 11 July 2001 where the following is stated:

Parties that argue and return over again to the court cannot expect an advantage. If the party considers that there was a mistake in the ruling, they should timely file an appeal.

Nevertheless, the case-law allows reconsideration in two instances: where there has been a significant change in circumstances that justifies reconsideration, and where there was a technical error in the ruling. See Appeal 7869/17 E.R.M. Properties vs.Daniel Ohr, 23 November 2017 where Judge Minz of the Supreme Court ruled that:

The rulings of this court recognize two circumstances where a ruling can be reconsidered in a reconsideration, other than interim injunctions which are explicitly legislated in regulation 368 of the Civil Procedure Regulations. The first instance is where there has been a significant change of circumstances, and the second case is where the court made a serious and clear technical error – see Appeal 1474/11 Strauss Marketing vs. Orman, paragraph 13, 14 July 2011; 3604/02 OKO vs Shemi p.d. 56(4) 505, 508 (2002), and Tami bin Nun and Tal Habakin “Civil Appears p. 427 edition 3, 2012.

Over the years there has been a worry that parties would make improper use of the opportunity of interim procedures to request reconsideration (see for example, 8420/96 Margaliyot vs. Mishkan Bank HaPoalim for Mortgages LTD (31 July 1997). So it was established that courts can simply throw out such requests on the grounds of improper use of the court proceedings, particularly where the party requests reconsideration over and over. That written in 5168/01 Reuveni vs. Ben Harush 28 Oct 2001 is relevant here:

RepeatFiling repeat requests that are minor improvements of the original request puts an unreasonable burden on the courts. Requesting reconsideration as a routine event is burdensome, and prevents the court providing a service for all its users.

In re Jakobovitz, then registrar of the Supreme Court Boaz Okan noted that:

The creative multiplication of proceedings, notices, reconsiderations and the like, are symptomatic of loose and unravelling systems (Appeal 502/00 Airport Authority vs. Epkon. There is no place to create cross-species rulings that damage the finality of the Court’s decision and may cause the legal proceedings to drag on forever., by misusing the civil procedures and wasting legal resources.

On 30 December 2015, Smash Enterprises Pty LTD requested to cancel the Talber Pop LTD’s marks for SMASH in classes 16 and 18.

The request for cancellation followed Smash Enterprises Pty LTDs attempt to register SMASH as a trademark in class 21 that was refused under Section 11(9).

Smash Enterprises Pty LTDs  application no 274301 is for Containers for household or kitchen use; household or kitchen utensils; containers for beverages; containers for food; heat insulated containers for beverages; heat retaining containers for food and drink; insulated containers; lunch boxes; isothermic bags; bottles including water bottles (containers); beverage coolers (containers); drinking containers; portable coolers; ice containers; ice packs; plastic containers (household utensils); lids for household or kitchen containers; tableware, including plates, dishes, drinking glasses, bowls, cups, saucers, mugs and jugs, all being of plastic materials; cooking utensils for use with domestic barbecues; storage boxes, baskets and containers for household use; household rubbish containers (bins); glassware for domestic use; ceramic tableware; baking trays; storage jars; cooler bags; thermally insulated bags for food and drink. In class 21.

Talber Pop LTD’s mark 24059 is for Watches of all kinds; chronometers and part thereof and accessories; all included in class 14, for Notebooks, stationery, diaries, binders; gift wrapping paper, paper gift wrapping bows, paper cake decorations, paper party bags, loot bags, cello bags, paper party decorations, paper party hats, paper tables cloths, paper napkins, banner made of paper and/or cardboards; all included in class 16, and for Backpacks, sidepacks, back bags, side bags, sport bags, tote bags, book bags, school bags, food bags, pencil cases sold empty, wallets, waist packs, briefcases, bike bags, toiletry cases sold empty, fanny packs, suitcases, umbrellas, umbrella covers; all included in class 18.

coexistOn 26 January 2017, the parties jointly requested coexistence following a mediation proceeding connected to a civil complaint filed by Smash Enterprises Pty LTD against Talber Pop LTD (Civil Complaint 65168-12-16). The request for coexistence under Section 30 was submitted with a copy of the agreement between the parties.

On 26 April 2017, Ms Shoshani Caspi explained in detail why she considered coexistence to be inappropriate as follows:

Thus the Arbitrator Ms Shoshani Caspi finds herself considering two identical marks for the word SMASH for two different entities that cover inter alia the same goods which creates a strong risk of confusion.

As part of their joint submission. the parties should have provided a detailed explanation why TM 274301 in class 21 should be registerable together with TM 240598 in class 18. This wasn’t done, and the parties have provided no explanation as to how to avoid confusion. The request for coexistence is refused. The parties have until 1 June 2017 to inform whether they wish to conduct a cancellation proceeding.

On 16 October 2017 a first request for reconsideration of the decision of 26 April  was received.  In that framework, the party who had requested cancellation noted that they were abandoning the 274302 and 274158 marks for SMASH in classes 18 and 16, despite the fact that the coexistence agreement didn’t relate to those marks. Additionally, the mark owner noted that they were prepared to strike the term ‘food boxes’ from the list of goods of Israel TM 240598.

On the same day, the Adjudicator Ms Shoshani Caspi again rejected the coexistence agreement stating:

There is before me a request for reconsideration of coexistence of the marks based on the agreement reached by the parties, following my rejecting this possibility in my ruling of 24 April 2017. The parties chose to ignore the significant obstacles that prevent coexistence that were stated in paragraphs 18, 21 and 24 of my previous decision. So the petition is rejected.

On 22 October 2017, the parties again requested reconsideration for a second time, restating their positions and claiming that their agreement does not leave room for confusion between the marks. On 25 October 2017, a detained ruling was issued that again rejected the coexistence stating:

I have not found that an error occurred in my ruling of 26 April 2016 (or indeed of that of 16 October 2017). The parties return and make exactly the same claims a third time. Consequently I do not find that there has been a change in circumstances from those under which the original decision and the appeals were given that justifies further reconsideration. Although unnecessary to do so, I note, again, that we are talking about an attempt to register exactly the same mark for goods having a similar commercial nature, without the appropriate and fitting difference between them. Consequently, the petition[ for coexistence]  is rejected a third time.

nagOn 11 January 2018, the parties submitted a third request for reconsideration of the 25 October 2017 ruling, raising the same arguments. Additionally this time the mark owner requested to remove the term “cases (files) of..”

The Deputy Commissioner does NOT consider this amendment as being a “Significant change in circumstances or a technical error that warrants reconsideration of the ruling of 26 April 2017.

The third request for reconsideration is rejected. The Adjudicator is not happy with attempts to negotiate with the court of the Israel Patent and Trademark Office by unsupported requests for reconsideration. She considers these requests adds to the workload of the patent office staff and requires detailed responses and is inappropriate. She considers it would be appropriate to rule costs against the parties to be paid into the public fund but will refrain from doing so this time.

Ms Shoshani Caspi’s problem is that sports bags and school bags may be in different categories from food storage bags and flasks but the requested mark is for words and school bags and sports bags do sometimes have pockets for food, so she considers that different suppliers cannot use the same word mark for these goods, despite registering in different classes (19 and 21). Indeed, in absence of evidence to the contrary, the goods can be considered as complimentary  goods in the same broad category that are often used together, such that the reasonably consumer will assume a common source. See the HRA Laboratoire Pharma vs. Fr Shapira Eyal ltd ruling of 28 December 2017:

With respect to complimentary goods, one has to consider if there is a tight relationship between them, that one is required or significant to the other, or that the consumer is likely to consider that the provision of the goods is the responsibility of the same supplier.

The parties have still not provided any evidence that undermines the Adjudicator’s conclusions regarding a commercial link between the goods, and have only made unsupported statements to the effect that the food packaging supplied by the requester for cancellation is not sold in the same stores as the bags of the mark owner.

Thus, as determined more than once in this proceeding, the certain similarity between the goods listed in issued mark no. 240598 in section 18 and those in application 274301 in class 21, and the identical nature of the two marks (both word marks for SMASH), leaves a high likelihood of similarity which may result in consumer confusion.

As to the obligation undertaken in the coexistence agreement by the mark owners not to use a stylize graphic rendering of SMASH, this was discussed in the 26 April 2017 ruling, and can simply be recited: “it is difficult to ignore the situation where the patent and trademark registrar allows the parties to make use of the word in any style they see fit, merely because of a narrow contractual agreement between the parties, and the trademark register does not faithfully match the trade situation.”

The parties repetitively made shallow claims that the District Court endorsed the coexistence agreement and gave it the status of a court ruling. Examination of the agreement, sections 3 and 4 thereof, indicate that the mark owner obliged himself not to object to the registration of the word “SMASH” by the requester for cancellation in classes 16 and 18, and the requester for cancellation obligated himself to cancel the requests for cancellation.  It is assumed that the learned legal representatives (Eitan Mehulal for Smash Enterprises and Eyal Plum for Talber Pop) did not intend to accidentally claim that this can be interpreted as the court endorsing the right for the Smash Enterprises mark to be registered, since it is known that the Commissioner of Patents and Trademarks has the sole authority to register marks under Section 17(a) of the Ordinance. Thus one has to assume that the court endorsement of the coexistent agreement only obliges the parties themselves.

As we are dealing with the authority of the Israel Patent and Trademark Office, it should be noted that Section 30a allows and does not obligate the commissioner to allow coexistence of identical or confusingly similar marks. Furthermore, in the court ruling 48837-03-14 Biosensors Europe SA  vs the Patent Office 22 February 2015 it was stated that “the burden of proof that there is no confusing similarity is on the companies interested in parallel usage, to show that they have been using the mark in parallel for many years and it has not caused the public to be confused”. For more discussion, see here and here. As stated above, in this instance the parties have not met this burden.

not a rubber stampThus it is ruled that the parties legal representatives (Eitan Mehulal for Smash Enterprises and Eyal Plum for Talber Pop) failed to submit appropriate evidence to support their request for coexistence under Section 30a of the Ordinance, and merely supported their request with the in personam coexistence agreement. The Commissioner of Patents and Trademarks is NOT a rubber-stamp that endorses agreements between warring parties and though allowed to, is not obliged to consider them. The main obligation of the Commissioner is to maintain the integrity of the trademark register and this includes ensuring that there is no likelihood of misleading the public. This forum has established many times that a request for coexistence by the parties does not exert much influence on deciding whether or not to allow such coexistence under section 30a, and is at best an indication that coexistence may be possible that has to be considered with all the considerations, see Supreme Court ruling 1611/07 Micha Danziger cs. Shmuel Mor, 23 August 2012. 

On 3 January 2018, the Adjudicator gave the parties 14 days to submit their evidence, i.e., until 17 January 2018, or the cancellation proceeding would be closed.  The parties have failed to provide such evidence and have also failed to request an extension. The Adjudicator has not ignored the request from the parties to provide guidance for how to restrict the lists of goods to allow coexistence, but she is not clear why this is necessary in light of all the decisions referenced, and does not intend to provide such guidance.

Conclusion – since the Requester for Cancellation has not provided evidence to support his case as asked to, and since no request for extensions of time were submitted, the cancellation proceedings against Israel Trademarks 240598 and 241238 are closed. The Requester for Cancellation is not prevented from filing a new trademark cancellation request if it will be conducted in accordance with the timeframe.

Israel Trademarks 240598 and 241238 “SMASH”, Decision to reject Cancellation Request by Ms Yaara Shoshani Caspi,  18 January 2018.   



Passed Off Pasta?

February 8, 2018

barilla pasta

Barilla is an Italian pasta brand that is on sale in Israel.

Oddly enough, pasta is made of durum wheat (Triticum durum or Triticum turgidum subsp. durum), which is a tetraploid species of wheat which is hard to mill due to the starchy endosperm. Dough made from its flour is weak or “soft”. This makes durum favorable for couscous (semolina) and pasta, and less practical for flour. It is actually grown in Israel and exported to Italy!

Rami Levy

Rami Levy (Shivuk HaShikma) is an Israel chain of supermarkets that, as well as selling commercial brands, negotiates with manufacturers and packages its own-brand labels which are usually cheaper.


Recently, Rami Levy started stocking its own-label dried pasta.

Rami Levy pasta

As you can see, Rami Levy’s pasta, like Barilla, uses a blue box, albeit a slightly different shade, and has the type of pasta contained viewable through a cellophane window. The type of pasta (penne, spaghetti, cannelloni, etc.) is written in white, although on Barilla’s product, the name is in English letters and on Rami Levy’s own brand, it is in Hebrew. Rami Levy Shivuk Hashikma is written across the top and on the side of the box. The name of the brand, written in yellow, seems to be a face with a hat on and wide mouth, but is actually a stylized O followed by lla in italics giving Olla. However, Barilla also ends with an lla.

Barilla sued Rami Levy in the Tel Aviv District Court for a million shekels (about $300,000 US, 250,000 Euros) and obtained an injunction ordering Rami Levy to take their own-brand pasta and sauces off the shelves. Rami Levy filed a counter-suit and the cases are pending.

Rami Levy claims that Barilla waited for over 14 months since Rami Levy introduced their own-label and so the case should be thrown out. He claims that his competition is fair and Barilla should respond by advertising, discounts and special offers. He dismisses allegations of passing off, and argues that there is an overwhelming weight of precedent from the District and Supreme Court that indicates that the similarity is not excessive and that the case is baseless. The name Rami Levy, the Italian series is clearly written in white on blue in large letters.

Barilla has a trademark on their brand name and not on the design of the package or on the blue colour. Rami Levy accuses Barilla of ignoring their own branding and trying to monopolize the blue colour. However the case-law does not support claims of passing off where packages are similar but the trade name is clearly written and there is no likelihood of confusion in such cases. The courts do not recognize rights in a packaging colour. Rami Levy further claims that with over half a billion shekels in sales of “the private brand” in 2017, his sales outstrip those of Barilla. His prices are much lower and this also distinguishes them, and there are a number of accumulative differences.


taaman 1taaman 2

We note that Taaman (pun on taam which means both taste and reason) is an Israeli importer and distributer of staples such as flour, pasta, chocolate, etc. that also has a red logo with white text in an oval. Their name, in Hebrew, is written in a backwards leaning italic font, however as Hebrew is written from right to left, the sloping is the same as that of Barilla. Their pasta is packaged in blue cellophane with a window showing the content. Thus Barilla’s packaging is perhaps less unique than they claim, although Taaman uses cellophane bags and not boxes.

In a recent decision the Deputy Commissioner refused to register a black box with silver trim as a trademark. Back in 2014, Judge Ginat refused to recognize a trade-dress in blue energy drink cans. Judge Binyamini threw out a claim that one ice-cream manufacturer was entitled to a monopoly on gold ice-cream tubs. Then again, Abu Shukra were unable to register their application for a trademark for a coffee package that is similar to Elite’s Turkish coffee.




Palestinian Autonomy Adopts Nice Classification

January 30, 2018

70px-Coat_of_arms_of_Palestine_(alternative).svg.pngRAMALLAH – The Ministry of National Economy of the Palestinian Autonomy has adopted the 10th Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification).

From 1 January 2018 applicants may submit trademark applications for registration designating items from this edition.


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.



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.

Trademarks in Mandatory Palestine

January 17, 2018

Michael BirnhackProfessor Michael Birnhack of Tel Aviv University is lecturing to the Israel Patent Office on 24 January 2018 at 10:00 to 11:15 am on “Trademarks during the British Mandate”.

Professor Michael Birnhack is Associate Dean for Research, and a Professor of Law. He is the Director of the S. Horowitz Institute for Intellectual Property in memory of Dr. Amnon Goldenberg, and the Director of the Parasol Foundation International LL.M. He researches, teaches and writes about intellectual property, privacy law, information law, and law and technology.

Everybody is welcome but one has to register by email to Tamar Koby at tamark@justice.gov.il.

Transcendental Meditation

January 11, 2018

meditationThe Maharishi Vedic University Ltd. submitted Israel TM Application No. 249554 for מדיטציה טרנסנדנטלית which is Transcendental Meditation transliterated into Hebrew. The mark was submitted on 21 September 2012 and covers:

Education services relating to health; conducting of courses relating to business management; production of video tapes for corporate use in management educational training; providing training courses on business management; provision of instruction courses in general management; conducting workshops and seminars in personal awareness educational services, namely, providing motivational and educational speakers in the field of self and personal improvement; personal development courses; personal development training; provision of training courses in personal development; meditation training; teaching of meditation practices; all included in class 41.

The mark is a simple word mark without stylistic or graphic elements.



Transcendental Meditation is a technique for avoiding distracting thoughts and promoting a state of relaxed awareness. The Maharishi Mahesh Yogi (1918–2008) derived Transcendental Meditation from the ancient Vedic tradition of India. He brought the technique to the U.S. in the 1960s. The technique is a specific form of silent mantra meditation that is often referred to as TM. Since TM also stands for trademark I considered relating to TMTM for the Transcendental Meditation Trade Mark, TMTMA for the Transcendental Meditation Trade Mark Application, but have decided not to use the abbreviation altogether.

In an Office Action dated 9 February 2015, the trademark examiner ruled that the mark could not be registered as, with respect to the services covered, it lacked a distinguishing character as required by Section 8(a) of the Trademark Ordinance 1972.  The Examiner also considers that the requested mark is not registerable since it is descriptive and directly relates to the type or quality of the services provided which are transcendental meditation exercises and the training of transcendental meditation counselors contrary to Section 10(11).

maharishi book

In the Office Action, the Examiner noted that the organization teaching the Transcendental Meditation is called the International Meditation Association, and that hundreds of schools around the world use the technique. Consequently, one cannot allow the Applicant to monopolize the words making up the mark and thereby prevent other service providers from passing on and teaching the Maharishi’s teachings.

In response to these objections, on 30 December 2015 the Applicant responded by submitting an Affidavit of Adv. Macraman Oleh Oyser who is the general manager of the Maharishi Vedic University Ltd., a teacher of Transcendental Meditation and the head of the Legal Department of the Global Transcendental Meditation Organization, and the worldwide IP manager of the Applicant.

In their response, the Applicant claimed that the mark was not descriptive of the services provided and maximally may be considered as hinting at the services. Similarly, they claimed that the phrase Transcendental Meditation was a combination of words that is identified with the Applicant and only with them, since the combination was coined by the Maharishi who established the Maharishi Vedic University Ltd.

The Applicant further asserted that the Global Transcendental Meditation Organization and all its branches was established by the followers of the Maharishi which the Applicant is associated with and is part of the same organizational structure as the Applicant. To support this assertion, the Applicant referred to exhibition 2 of Adv. Oyser’s Affidavit, where the definition of Transcendental Meditation taken from the Oxford Dictionary Online was reproduced.

In addition, the Applicant claimed that the mark was in use in Israel since 1973 and had acquired distinction by virtue of extensive usage, advertising and marketing in Israel and abroad. The Applicant considers that the mark has become a well known mark that is identified with them alone. Similarly, in the years 2009 to 2014 since the application was filed, the Applicant has earned $874,000 from its activities in Israel. These assertions were supported by Adv. Oyser’s Affidavit.

The Applicant failed to convince the Examiner that the mark was registerable and the Trademark Office rejected the mark on 28 January 2016.

yogic fliers

On 2 May 2016, a hearing was held before the then Commissioner of Patents and Trademarks Asa Kling at the Applicant’s request. During the Hearing, the Applicant’s representative argued that the mark was unique and was a compound mark consisting of the combination of two opposites: meditation which is inward looking, and transcendental which is outward looking into the distance. During the hearing, the Applicant also claimed that the registration was requested to avoid misleading the relevant public interested in studying Transcendental Meditation, noting that the Applicant was one of the bodies authorized to train Transcendental Meditation counselors and this would enable quality control which is an underlying justification of the trademark system.

In that hearing, the Commissioner requested that the transfer of rights from the Maharishi himself to the Applicant be fully documented and substantiated by the 14 August 2016.

On 14 August 2016 the Applicant submitted supplementary evidence including an affidavit of Neal Peterson who was the manager of the Maharishi Vedic University Ltd. the following is the transfer of rights as detailed in the Affidavit.

Maharishi started to teach meditation in 1954 in Southern India, and on 1 January 1958 he established the Spiritual Regeneration Movement SRM in one of India’s capitals. In time, the Maharishi opened 1000s of SRM centers across India where he taught Transcendental Meditation.

meditation profitAfter conducting travels to disseminate his teachings across Asia, in 1959 the Maharashi taught in New York and London and set up the International Meditation Society whilst in London. As he visited more countries, the Maharashi established more local organizations to spread the teachings and to collect tuition fees.

As stated, the first organizations were established under the names SRM or IMS and subsequently these names were less widely used and the movement became better known as GTMO or the Maharishi Movement.

In the early Sixties, Maharishi opened a program for training teachers of the Meditation method under the name Transcendental Meditation. The program is offered by organizations licensed by the GTMO leadership.

To ensure the exclusive connection between the name Transcendental Meditation and the Maharishi Movement and to ensure quality, prior to being accepted to the Transcendental Meditation Counselor Course, the students are required to sign a number of papers in the presence of the Applicant. These include Non-Disclosure and Non-Compete Agreements.

To explain how the rights were transferred from the GTMO to the Applicant, the Deputy Commissioner Ms Jacqueline Bracha referred to the ruling concerning Israel Trademark Applications 29619 and 253899 to the Maharishi Vedic University Ltd. published on 30 October 2017. In that ruling the mark MAHARISHI in English and Hebrew was considered. There, in an ex partes decision, Ms Bracha ruled that the marks could be registered after the Applicant proved that they were the only party using the name MAHARISHI as a trademark to indicate their services.


Section 8 of the Ordinance states that the basic condition for trademarks to be registerable is that they have a distinguishing nature, as follows:

Marks Eligible for Registration

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”).

(b) In determining whether a trade mark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.

Section 11(10) of the Ordinance describes one of the categories of marks that is not considered as having a distinguishing nature.

(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;

The evidence appended to the Application indicates that the term Meditation relates to an ancient tradition that is in element of many religions.

“Meditation has been practiced since antiquity as a component of numerous religious traditions.”

In paragraph 13 of Adv. Oyser relates to Transcendental Meditation as Mantra Meditation that indicates holy sounds or the names of God. In Hinduism and Buddhism the practitioner of Mantra Meditation attempts to unify himself with the God.

Similarly, in the same section of definitions, the Applicant explains that the source of Transcendental Meditation is the Guru Dev and that according to Maharishi this is a development of Vedic writings and old books that are adapted for the modern world.

Furthermore, as part of their evidence submitted for registering 29619 and 253899 for the mark MAHARISHI in English and Hebrew, the Applicant submitted an Affidavit by Alexander Oded Kotai who is the Israel Director of the International Meditation Association Israel, of the Maharashi International School and of the Israel Institute of the Science of Creative Intelligence. In the framework of his Affidavit, he also explains what Transcendental Meditation is, and in paragraph 21 states that:

Thus Transcendental Meditation is the name chosen by Maharishi to indicate and mark the meditation technique that he learned from Guru Dev and developed in India in the fifties. Maharishi developed the technique and adapted it for the modern world, and attributed it to his spiritual mentor, Guru Dev. Maharishi explained that the technique is a revelation of the principles found in Vedic writings, which is a collection of religious texts considered the oldest in Hinduism. According to Maharishi the Vedic writings have been misunderstood in the past hundreds of years. Maharishi teaches that Vede is knowledge of the science of awareness and, according to this science, there is an awareness of the formation of the material of the universe.


From this it appears that the basis of Transcendental Meditation is found in the Buddhist religion and Transcendental Meditation is the Maharishi’s interpretation of Vedic literature. Nevertheless, the requested mark does not appear in the ancient Vedic literature. We are dealing with a phrase that the Maharishi coined for the technique he developed.  Adv. Oyser states this explicitly. Neal Peterson states that when he started out in Southern India in 1954, Maharishi called this Transcendental Deep Meditation and shortened this to Transcendental Meditation as the years went by.

This raises the question of whether this is enough for the Applicant to be granted a trademark or whether it should be left open to the public for reasons of public interest.

Section 11(5) of the Trademark Ordinance excludes from registration:

(5) a mark which is or may be injurious to public policy or morality;

In this regard, see paragraph 46 of the Ruling concerning Israel Trademark Applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English) from 2 May 2016:

The purpose of the Ordinance is not to limit freedom of speech or freedom of religion – Section 11(5) of the Ordinance does not allow registration of marks that adversely affect the public order.

The conclusion that Maharishi (who transferred his rights to the Applicant as described above), coined the term Transcendental Meditation which is the applied-for mark, but this does not give the Applicant the right to register the mark. In this regard one may compare copyright with trademark law as per Neil Wilkof and Shamnad Basheer in their book “Overlapping Intellectual Property Rights”  2012) page 148, which relates to R Griggs Group Ltd and others v. Ross Evans and others ECDR 15,para 20 [2004]:

“…copyright is intended to protect creative skill and labour whereas the function of trademarks is to distinguish the goods or services of one provider from those of another. Trade mark law he said ‘has nothing to do with protecting any creative skill and labour in coming up with a trade mark‘, rather it is meant to prevent potential confusion among members of public.”

The Applicant claims that the purpose of the trademark registration is to protect the public from unregulated teaching of the technique since the technique relates to the mental health of the patient and there is thus a danger that it being applied by someone not qualified will damage the patient’s wellbeing. This is clear from the protocol of the discussion.


It is noted however, that the list of services for which the trademark is applied for does NOT include mental health, presumably since treatment of mental issues requires an appropriate education and license from the Israel Ministry of Health. It is noted that the services defined as ‘educational services relating to health’ are related to the psychology profession and is regulated by the Law for Psychologists 1977 which defines Psychology as

Working in Psychology is a profession related to diagnosing and quantifying issues and problems of mental health education and behavior of people and the treatment, rehabilitation, consultancy and training related to these issues and problems is generally to be performed by psychologists.

Since it is unreasonable to register the mark, Ms Bracha did not see fit to rule on whether this service should be allowed. It is brought merely to discredit the claim that the mark should be registerable since it relates to mental health and is in the public interest that its counselors are licensed by Maharishi Vedic University Ltd.

Transcendental Meditation is a process that anyone can learn and teach and this does not require the agreement of the inventor or creator of the technique. Consequently, the technique must remain available for anyone to learn and teach. It is not fitting to prevent the public from expounding a meditation technique. Even if there is a contractual arrangement that prevents a person from spreading the technique he has learned, it is not clear that the limitation would be enforced by the relevant legal authorities.

In this regard, the words of then Deputy Commissioner Noach Shalev Shmulovich in paragraphs 29and 30, of the Trademark Ruling concerning Israel Application No. 178707 Ori King vs. Adi Shanan I.P.E.C.

I am not certain that one can protect a method of treatment, even temporarily when those that developed it are teaching and disseminating it, since there is no trade secret here. One cannot register a patent for a method of treatment. Although there may be copyright on educational materials, this does not extend to the technique itself or and the right to provide treatments or to teach others. That as may be, one cannot register a trademark to provide protection for a method of treatment by virtue of the registration.

Furthermore, the claim made before me that the application does not deal with the trademark protecting the method, but only its teaching and dissemination, lacks substance. Where the technique is available to the public its teaching should be available to the public, unless the law provides some limitation, however, the way to provide a monopoly on the technique is not via the trademark register, since registration cannot be used to protect the technique.


In a similar manner, it appears that if the Hebrew University had tried to register a trademark for “Relativity”, it would be rejected. [MF – The Hebrew University holds the Einstein Archives and owns the name Einstein as a trademark which they license as a source of income.] One also cannot register Transcendental Idealism as a trademark for an institute teaching Kantean Philosophy. Teaching that doctrine also requires some sort of agreement since one cannot say that everyone is capable of understanding this and teaching others.

The question that arises is whether a coined phrase for a philosophical or religious teaching, such as the application in question which combines transcendental and meditation, that arguably can obtain copyright protection, should be protected under trade laws.

anne frank

The beginning of an answer to this question is found in decisions that relate to names of creations. In a decision given by the court of appeal of the OHIM as it was known, and is now known as the EUIPO, relating to a trademark for “Le Journal d’Anne Frank”, inter alia, for books and newspapers, theatre productions, video tapes and fims on electronic media. See Re 2401/2014-4  Anne Frank Fonds (31.08.2015).

The Court of Appeals considered that the mark does not lack a distinguishing nature with regards to the goods and that the public can use the mark to differentiate between goods and services originating with the mark holder and those originating elsewhere. Furthermore, the European tribunal considered that the wide publicity of the mark as the name of the book was insufficient to prevent it being registered.

As noted in the decision regarding the Opposition to Israel Trademark Application No. 247693 for DEMART PRO ARTE B.V and Fundacio Gala-Salvador Dali vs. V.S. Marketing (Israel 2005) ltd. (31 May 2016) it appears that the European ruling does not sit well with the US Law, nor with the Israel Law regarding registering the names of creative works as trademarks. Seligsohn related to this in his magnum opus Trademark Laws and Related Legislation, Shocken 1973, page 7:

“Regarding Goods”… a trademark cannot exist where a symbol relates substantively or technically with trade. The title of a book cannot be a trademark where there is a link between the title and the content of the book such that the title indicates its content and character.

In a similar matter, the US Supreme Court refused to accept a tort of Passing Off or misleading regarding the origins of a product where a television series was based on a book whose copyright had terminated after ruling that passing off under the Lanham Act was not intended to protect original creations and this was different from copyright. See re Dastar v. Twentieth Century Fox Film 539 US at 37 (2003).

Basheer and Wilcoff relate to this on page 155 of their book:

“…in its decision, the Supreme Court went further, holding that the US trademark laws ‘were not designed to protect originality and creativity and that to hold otherwise would be akin to finding that§43(a) [of the Lanham Act] created a species of perpetual patent and copyright, which congress may not do‘”.

Similar to the US Law, in Israel the protection granted by Copyright Law is given for a limited period, whereas trademarks may be renewed indefinitely. Consequently, prior to allowing a trademark to be registered, one has to balance between the rights of the author and the public good. See page 144 of Basheer and Wilcoff:

“Copyright subsists for a finite period, after which the work falls into the public domain where it can be used by anyone without attribution of authorship, whereas trademark rights can endure for as long as the indicia are used and associated with the owner’s offerings- potentially hundreds of years or more.”

As stated in her decision of 30 October 2017 regarding the registration of the name Maharashi in Israel, Ms Bracha noted that the Maharishi Foundation Limited had splintered from the Applicant’s organization and had given up on registering “Maharishi” in Hebrew or English but still taught the Transcendental Meditation discipline in various territories around the world. She did not think that it was correct to limit the teaching to one organization or another by trademark registration.

Furthermore, one cannot ignore the fact that a registration for Transcendental Meditation Programs exists in Israel TM No. 47738 that was submitted on 17 April 1979 by the Applicant. Without relating to whether this mark should have been registered back then, it is noted that the evidence submitted by the Applicant indicates that the International Association for Transcendental Meditation Israel, which is the local representative in Israel, markets and publicizes their services under a stylized mark that includes the registered trademark “Transcendental Meditation Programs”. It seems therefore that the mark cannot be registered in Israel without appropriate regulation.

Israel Trademark Application No. 249554 is thus refused.

Ruling by Ms Bracha re Israel Trademark Application Number 249554 for “Transcendental Meditation”, 20 December 2017.


The former Chief Rabbi of the United Synagogue and Peer of the Realm Dr Jonathan Sacks has a joke that appears in Not in Heaven:

Beatles and Maharishi

When I was a student at university in the late 1960s – the era of student protests, psychedelic drugs, and the Beatles meditating with the Maharishi Mahesh Yogi – a story went the rounds. An American Jewish woman in her sixties travelled to north India to see a celebrated guru. There were huge crowds waiting to see the holy man, but she pushed through, saying that she needed to see him urgently. Eventually, after weaving through the swaying throng, she entered the tent and stood in the presence of the master himself. What she said that day has entered the realm of legend. She said, “Marvin, listen to your mother. Enough already. Come home.”