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.


Freshly Squeezed

April 19, 2017

שחוטThis ruling concerns a cancellation request by the originator of a mark against a registered owner who bought the mark with other assets from a company that the originator had sold his business to that had subsequently gone bankrupt.

The grounds for cancellation request were alleged lack of use.

Israel Trademark No. 220623 is for a stylized logo including the phrase “סחוט טרי” transliterated as ‘Schut Tari’ which means freshly squeezed. The mark is owned by Schut Tari 2007 ltd and was registered for nonalcoholic drinks in Class 32.

 

Background

The manager of the Applicant for Cancellation, Mr Ohad Harsonsky set up a factory in the 1990s for producing fruit juices that were marketed under the Schut Tari brand.

orange jewsApproximately in the year 2000, Harsonsky set up the Shut Tari company that continued the activities of the factory. At the beginning of 2005, Harsonsky decided to sell the company and the factory to Pri-fer Natural Marketing and Distribution (2005) ltd. [MF – Pri is Hebrew for fruit. The name is a pun on prefer] which was established by MR Erez Rifkin to make the purchase. Mr Rifkin established Prifer Natural ltd, a company active in the fruit juice industry, in the early 21st Century.

phones-blackberry-orange-phone-fruit-demotivational-posters-1295112418Blackberry on Orange sketch.

After the purchase was concluded, Pri-fer changed their name to ‘Schut Tari Mitz’ Tivi ltd. (Natural Freshly Squeezed Juice ltd), and Schut Tari changed their name to Multi-Pri ltd. The Pri-fer Group started producing freshly squeezed juices and Multi-pri stopped all activities. The Pri-fer Group did not succeed in absorbing all of Schut Tari’s activities, and Pri-fer was late paying the sale price. A business disagreement developed and the Pri-fer Group and Multi-pri agreed to mediation in March 2006. A mediated agreement was given the status of a court ruling by the Ramallah Magistrate’s Court. The mediator was Haim Sodkovitz who represents Eco Alpha, the Applicant for Cancellation.

orange juice squeezerPri-fer and Mr Rifkin were unable to meet the negotiated payment terms that were agreed to in the mediation. Consequently, on 7 March 2007, Harsonsky and Multi-Pri used legal collection means. However, since Rifkin started bankruptcy proceedings and the Pri-fer Group is being disbanded, the bailiffs were unable to collect the debt. Read the rest of this entry »


More Coffee!

March 23, 2017

EdenFollowing on the heels of the Izhimis family feud, we now report on a competing marks proceeding between Abu Shukra Import Export and Marketing Ltd and Strauss Coffee B.V.

Again, this relates to Turkish coffee. On 2 May 2013, Abu Shukra filed Israel TM application number 255526 in class 30 shown alongside.

This ruling relates to all over packaging designs being used as trademarks and to branding concepts. To my mind, it also raises issues of monopolies and market abuse, but this is beyond the competence of the adjudicator and commissioner to relate to, although I think judges might see things differently.

22263EliteOn 16 July 2014, but before Abu Shukra’s mark was examined, Strauss filed Israel TM Application No. 266680 for Coffee, roasted coffee, roasted and ground coffee and coffee substitutes, all in class 30, and also Israel TM Application No. 266683 for Turkish coffee, roasted Turkish coffee, roasted and ground Turkish coffee and Turkish coffee substitutes, all in class 30. Strauss Coffee’s marks are shown alongside.

[At this stage we note that Strauss Coffee owns the Elite brand among many others. Strauss employees 14,000 people in 20 countries. The empire was built on their Turkish coffee brand, but they also now own Sabra, the leading hummus brand in the US, are partners with Yotvata dairies and Yad Mordechai Honey – MF]. Read the rest of this entry »


ECJ rules that the shape of a Rubik Cube is not a valid trademark

November 11, 2016

cube

Everyone agrees that three dimensionsal trademarks are possible. A classic example might be Rolls Royce’s mascot.  Where a mark has functionality, it becomes more difficult. Unique packaging, such as the shape of a truly unique bottle, is trademarkable.

Rubik’s Cube, which was invented in 1974 by Hungarian architecture professor Erno Rubik, has enduring popularity and has sold more than 400 million cubes worldwide. Seven Towns registered the Rubik’s Cube as a three-dimensional EU trademark with the EUIPO in 1999. Simba Toys challenged the registration, but in 2014 the European Union General Court decided the three-dimensional trademark was valid, and ordered Simba to pay costs.

The European Court of Justice has now ruled the registration invalid.

And what about Israel? Been there… Done that.


Chabad and Lubavitch – who owns the name?

June 9, 2016
chabad

Group photo of Chabad Emissaries

Israel trademark applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English) were submitted by two non-profit organizations: (1) The Chabad Hassidic Association in Our Holy Land, and (2) The young Chabad Association (Zeirei Chabad). The marks are for the words without graphic elements.The Commissioner refused to allow the marks as he considered the terms as referring to a lifestyle that anyone can adopt and that names of religious movements cannot be monopolized.

Background

Chabad is an acronym for “Chochma Bina Daat” meaning “wisdom, understanding and knowledge” which are the top three spheres of the Kabbalistic tree of life. It is the name adopted by Lubavitch, a cult Hassidic sect  that does wonderful work promoting Judaism to Jews of all levels of religiosity, and maintains Habad Houses – Outreach Centers offering religious services and hospitality around the world, which this non-Hassidic writer frequently visits for Shabbat hospitality when travelling. Chabad is Orthodox, Zionist and nationalistic. It differs from other Hassidic groups in that it is not insular, and sees a respondbility for and has a love for all Jews. However, their atitude is moe missionary than pluralistic. It has often said that “The movement does not recognize political or religious distinctions within Judaism. It has refused to cooperate formally with any identifiable organization or institution. It recognizes only two types of Jew, the fully observant and devout Lubavitcher Jew and the potentially devout and observant Lubavitcher Jew.”

messiah poster.jpg

The last ‘Rebbe’ (spiritual leader) saw signs of the Messianic Era approaching with the return to Zion, Jewish statehood and various other developments of the latter half of the 20th Century. Some of his followers considered him the obvious candidate Messiah, and, having suffered a stroke that affecting his speaking, wherther or not he was so inclined, the Rebbe was ineffective at persuading them otherwise. Rabbi Menachem Mendel Shneerson passed away in 1994, and some followers had problems coming to terms with this and got caught up in a Messianic fevor reminiscent of the Shabtai Zvi incident. Chabad is currently without a supreme leader, but most followers have come to terms with the Rebbe’s lack of immortality.

I am aware that there are Israel IP practitioners and Examiners who affiliate with the movement. If you consider that anything I write here is inaccurate, offensive, or you  simply disagree, you are cordially invited to comment.

The trademarks

In Israel trademark applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English) were submitted by two non-profit organizations:
(1) The Chabad Hassidic Association in Our Holy Land, and (2)
The Young Chabad Association (Zeirei Chabad).
The marks are for the words without graphic elements.

The Applications cover a wide range of goods and services including Section 16 for pamphlets, advertising and guidance manuals; section 25 for clothing, shoes and head coverings; section 26 for embroidery and embroidered articles; Section 28 for toys and games; Section 29 for meat, fist, poultry, milk and milk products, section 30 for flour and grain based products; section 31 for fresh fruit and vegetables and live flowers; section 35 for advertisements, business management, services to business and office services; section 43 for finance and philanthropy; section 41 for education services and propaganda explanatory literature relating to religion and tradition; section 43 for Science and technology, research and design related to these services including design and development for computer software and hardware;section 43 for food, beverage and temporary accommodation, and section 45 for providing help and support for the needy.

As to the Chabad mark, the Israel trademark examiners found the mark non-registerable as they considered it contrary to Section 8(a) of the Trademark Ordinance 1972, considering the marks lacking distinctive character for the goods and services provided as they describe a movement or way of life that anyone can adopt. The Examiner noted that the acronym Chabad related to a Religious-Hassidic-Philosophical lifestyle originating in the 18th Century and that the name embraces many organizations, institutions and communities, and allowing one such organization to monopolize the name will prevent others from using it. This will confiscate something already in the public domain and thus is not allowable.

The Examiners also considered the marks to be non-registerable under section 11(5) of the Ordinance, as giving one organization a monopoly of the name would prevent others using it, and the name was for a way of life or religious movement and its registration as a trademark was contrary to public interest.  Similarly Lubavitch, as a synonym for Chabad, could not be registered, and it was also non-registerable under Section 11(11) of the Ordinance being a place-name in Russia.

The Applicants requested a hearing and, after various postponements, this was held on 20 May 2014, and, in addition to their legal representative, Adv Amnon HaLevi Gat, the organizations were represented by Rabbi Ariel Lemberg. The Applicants  main argument was that they acted under the direction of the 7th Lubavitcher Rebbe from 1951 to 1994, and if the mark is not registerable, it will damage the public as other organizations may call themselves Chabad. The Commissioner considered that many of the arguments raised were not relevant to trademark registration. At the end of hearing, the Applicants were given permission to address specific issues raised under Sections 8(a) 11(5) and 11(11).

three crates

Eventually, after further delays, on 28 January 2015, A Statement from Rabbi Lemberg was submitted together with three crates of appendices. The appendices included copies of hand-written instructions from the Lubavitcher Rebbe in which he requests or commands the Applicants to manage the movement in Israel; research on Chabad leadership in Israel, files of supporting letters from Chabad Emissaries in Israel, most of which followed a template, and various papers about Chabad institutions and associations and their activities, books, photo-albums, pamphlets and flags, packages of Shabbat candles, bags (for prayer shawls?) and other paraphernalia.

chchabad leadership

The Commissioner claims that the evidence was carefully and deeply considered. One document titled “Who did the Rebbe Authorize to lead Chabad in Israel?  – Fundamental Research and a Thorough Analysis of the Rebbe’s Writings and Archives on the Issue”. The document was authored by Menachem Bronfman. It was not clear where, if at all, the paper was published and, according to the ruling, it appears to have been prepared for the purpose of this Application .  This document included the literature submitted by Rabbi Lemberg. That as may be, the document cannot be considered as evidence as its provenance was not clarified, despite Applicants being given an opportunity to provide additional information. That as  may be, if any weight is given to the document, it clearly shows that there are other Chabad organizations beyond the two that applied for the marks. The Applicants consider that the other organizations are internal divisions and that they alone have the authority to represent the extended Chabad organizational structure to the outside world.  The Commissioner is skeptical that a divisional between internal and external organizations is relevant where trademarks are in rem. That as maybe, the Commissioner did not consider that the Applicants had shown that an up-to-date-list of official Chabad organizations had provided up-to-date authority to the two Applicants to represent them.

Rabbi Lemberg denied that the words Chabad and Lubavitch were in the public domain and argued that the terms where the property of the Applicants who had caused them to penetrate the public awareness through their activities during the past 80 and 70 years respectively.  He submitted that the requests should be considered attempts to anchor the rights of the Applicants in the Law, and not as attempts to take over names in the public domain.

Rabbi Lemberg considered that the last Rebbe, Grand Rabbi Menachem Mendel Schneerson, had commanded the two Applicants to manage everything with the Chabad seal on it, and that the seal means trademark. In this regard, he cited an open Responsa letter from the  Rebbe from 13 Kislev 5712  (1951 CE) where it is stated that:

“…there should be one representative of all the institutions, and this should be the Chabad Association which should represent all Chabad institutions in the Holy Land to the outside world, as and when required.”

The Commissioner notes that even if great weight should be placed on this instruction, the organization mentioned is called “Chabad Association”. The Applicants testify that they are the Chabad Association, but since there are other Chabad institutions, the Applicants should have provided evidence that they were the Chabad Association and have failed to do so.

Rabbi Lemberg claimed that there is consensus among all Chabad organizations that the commands and orders of the Rebbe are binding on all groupies members and extrapolates that the Applicants are the authorized parties to register the mark in their name. The young Chabad Association is the executive arm of the Chabad Hassidic Association in Our Holy Land (also not mentioned in the Rebbe’s letter) and  Chabad’s internal Rabbinic Courts have thus determined things (also not supported by any evidence submitted).

As to the authorization of the Rebbe during his lifetime as testified in a book published by  the Chabad Hassidic Association in Our Holy Land, the Commissioner failed to see the relevance of that or other books being published by the organization as proof of the Rebbe’s wishes or rights to the requested marks.

Applicants claimed that their activities as laid out in their charters as non-profitable organizations were authorized by the Rebbe. However, the charters were not submitted in their entirety.

tug of war

Rabbi Lemberg’s affidavit stated that the  Chabad Hassidic Association in Our Holy Land was authorized to : “Represent Chabadniks not other represented, mediate between institutions, externally audit Chabad institutions, to be aware of developments in Israel, to be responsible for Public Relations, to guard Chabad’s status as a non-political organization, to make contact with public figures and rabbis, to look after the form and opening of Chabad synagogues to the public, to provide funds and to strengthen Judaism, and to obtain manuscripts of the various Rebbes.

The second applicant,  the young Chabad Association is the representative arm of the Chabad Hassidic Association in Our Holy Land. The organization is responsible for outreach work in Israel, teaching the Jewish Heritage to children, youth and adults, disseminating Chabad Hassidic teachings, aid and help to the needy and lonely and providing rescue services.

According to the Commissioner, review of the lists and the exciting material submitted provides evidence of important and blessed activities by the two Associations. However, he does not see how one can prevent someone who believes in the lifestyle of Chabad; who puts the values of Wisdom, Understanding and Knowledge before him; but who does not follow the Applicants, from engaging in the activities listed and calling himself a Chabadnik.

As to Section 11(11), Rabbi Lemberg submitted that although Lubavitch is a place in Russia, the term has come to represent the Hassidic sect and is of no relevance to those identifying with Chabad Hassidim. For most of his life, the Rebbe lived in Brooklyn, New York, USA and earlier Rebbes also were not domiciled in the town of Lubavitch. That said, Rabbi Lemberg claimed that the association of the term Lubavitch with the organization was the result of 70 to 80 years activity by the Applicants.

In light of the above, the Commissioner was not convinced that the term Chabad was exclusively identified with the Applicants, nor was this claimed. The Applicants do not dispute that the terms Chabad and Lubavitch are  identified with a religious movement and faith-based lifestyle. Nevertheless, the Applicants consider themselves entitled to a monopoly over these terms when applied to a wide range of disparate commercial services and traded goods.

Since the marks are not necessarily uniquely identified with the Applicants, they do not fulfill the basic requirements of registration, which is inherent or acquired distinctiveness of the source of goods, as stated in Section 8 of the Trademark Ordinance:

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.

The marks Chabad and Lubavitch are not identified by the public  as originating with the Applicants, but are rather identified with a particular teaching and lifestyle. It is, however, also necessary to consider if these marks have acquired distinctiveness with the Applicants and this is also not the case. Here the Commissioner cited the Toto Zahav and ORT decisions. (The ORT case is about two philanthropic organizations each calling themselves ORT, based on their history, and is particularly relevant -MF).

The Applicant’s claim is really one of having the right to franchise the name to other service providers. This could be considered under Section 14, but in light of the other issues discussed is unlikely to be considered registerable under this either.

The Applicants claim is that their unique mandate as far as Habad activities in Israel are concerned, were bestowed by the Rebbe as the head of the movement. The problem is that Applicants themselves accept that from its founding in the 18th Century by Rabbi Schneur Zlaman of Liady, Chabad had six Rebbes prior to Rabbi Menachem Mendel Schneerson.

RebbeThere is no doubt that Rabbi Menachem Mendel Schneerson expanded the movement by an order of magnitude, but Chabad became a worldwide international movement prior to his reign and Chabad activity in the Holyland precedes 1951. With a 230 year history, not all of Chabad’s reputation can be ascribed to the Applicants.

During the hearing, the Applicants were referred to Haifa District Court Ruling No. 5969/04 Young Chabad Organization vs. The Tent of Menachem Lubavitch (in name of and under Presidency of the Lubavitcher Rebbe, the Holy Messianic King. That court found that:

There is no doubt that both parties are non-profit organizations of Chabad Hassidim. Te parties agree that there are many other non-profits established by Chabad. There are different non-profits since there are different shades of thought and intent among Chabad Hassidim.

Both the parties claim that the Rebbe of Lubavitch – who both sides follow – determined whilst he was alive and well, that they were the exclusive organization that would represent the Chabad Movement. The parties disagree but I cannot determine who takes precedence within the framework of this ruling. What I will say is that while the Applicant in this instance has shown that they were authorized by the Rebbe, they are not actively guided by the Rebbe and do not include the entire movement. COnsequently as far as this ruling is concerned, we are not dealing with arguments between branches of an inclusive organization with institutions that all members follow, but with different non=profits.. The significance of the distinction is that it undermines claims of sole representation of one body or another, such as a Rabbinic Court, and blurs its significance.

 In that ruling the Court refused to grant the plaintiff (who is one of Applicants in this instance) an injunction against the defendant using the names that are the basis of the present application.

From this ruling it is apparent that the Applicants DO NOT have sole discretion over the interests of the Chabad Movement in its widest sense and consequently do not sole rights over the terms Chabad or Lubavitch. for the range of goods and services requested. Despite the wealth of evidence submitted the Commissioner sees no reason to come to a different conclusion. The court ruling was from 2004 and the crates of evidence submitted in this instance do not provide a more up-to-date picture that indicates that the ranks have closed around the Applicants.

The Applicants further submitted that they enjoyed a unique status with the registrar of non-profit organizations and has the right to decide who could and could not use the terms Chabad and Lubavitch in their names. However, the Commissioner found that back in September 2011, the Registrar of non-profits stated “There appears to be a division in the Chabad Hassidic sect and the Applicant no longer represents all the variant streams within the sect”. 

The Applicant submitted lots of evidence to support their claims to the marks. However, much of the evidence is not dated although seems to be recent. It does seem that generally the term Chabad is used in conjunction with the full name of one or other Applicant, and sometimes with a graphic logo and the slogan “Wholeheartedly to All”. The Commissioner took this as evidence that the Applicants themselves felt the need to differentiate themselves from other Chabad entities, emphasizing that they didn’t or at least no longer had exclusivity to the terms.

The crates of evidence included contracts with emissaries who were enjoined to only use the term Chabad or Chabad House for certain activities and other activities were to be marketed under the Zeirei Chabad name. A letter from September 2005 stated that a certain Rabbi was responsible for Chabad activities on behalf of Zeirei Chabad in a certain community, and included a disclaimer that the organization (applicant 2) was not responsible for any communications or business transactions made in the name of Chabad. The Commissioner took this as evidence that the second Applicant differentiated itself from Chabad per se. and referred to itself by its full name. This undermines the Applicants claiming exclusivity to the term Chabad.

The Commissioner considered that even if the terms Chabad and Lubavitch could fairly be registered, it was not clear that the Applicants owned the marks. However, he was not convinced that the marks were registerable at all, and considered that the words alone were in the public domain and could be used by all.

In this regard, the Commissioner cited the Baal Hatanya Seligsohn  1973, page 22:

Marks that should stay available for trade are in a totally different category. Here one is not concerned with marks actually used in trade, but with marks that common sense or conscience obliges should remain non-monoplized and available to all.

 The Applicants allege that the marks are necessary to prevent third parties passing themselves off as Chabad without consent or supervision. Whilst it is true that the purpose of trademark registration is to prevent misleading the public (see 10959/05 Delta Lingerie, vs. Tea Board), in light of above, it is not clear that the concept of misleading is appropriate in this instance.

That as may be, misleading the public is only one consideration. Another is freedom of occupation and freedom of speech. As the Supreme Court stated in 941/05 Wine Makers of Rishon L’Zion and Zichron Yaakov Cooperative vs. the Vineyard Company LTD p.d. 61(3) 350:

The Ordinance (new version) is intended to protect registered trade names as possessions where a person or entity has acquired the reputation through usage. in addition to the mark holders rights, the ordinance protects the public in two ways: the first is that the public should not be mislead by non-approved usage of the mark, and the second is that the public should not be put out by over registration of terms used in trade that should remain in the public sphere.

The balancing of these conflicting rights requires careful consideration. In sections 8, 9, 11 and 12 of the Ordinance, the legislators defined marks that the upset the balance between the different interests and details marks that cannot be registered. the main section is Section 11 which lists 14 exceptions to what may be registered.

One of the exceptions is 11(5) that states: marks that damage or are likely to damage the public interest.

Since the UK has joined Europe, the term ‘public interest’ in UK trademark law has been interpreted as meaning ‘accepted principles of morality” and “public policy” and is applied to marks that may upset a sector of society on basis of race, gender, faith, and general issues of modesty and bad taste. See Kerly’s Law of Trade Marks and Trade Names, 15th edition, 2011, page 248. This explanation was adopted in the decision concerning Israel trademark no. 146483 “Lenoplast” from 2005. [I can’t follow the relevance of this section – MF].

Now the Commissioner draws an analogy to Christian Science. Note he does not actually compare Chabad to the Church of Christian Science, but rather compares the present Application with a trademark cases ruled by the Supreme Court of the State of New Jersey, concerning a movement established in the 19th Century, whose central institution requested to register the name.

Mary_Baker_Eddy

As we have pointed out, the religion of Christian Science was founded at least thirteen, and possibly twenty-three, years before establishment of the Mother Church, the organization now centered in Boston. Although the Boston organization has now co-existed with the Christian Science religion for close to a century, an understanding of this case requires recognition of two significant, related facts: first, the religion and the organization are conceptually separate; and second, the religion pre-existed the organization.

If in the late nineteenth century, in the early, formative stages of both the religion and the Mother Church, the founders of the Plainfield Church had chosen to practice the religion of Christian Science by following the religious teachings of Mary Baker Eddy, but had decided that their church should not become a member of the Mother Church organization, it is certain that there could have been no restraint on their use of the name “Christian Science Church.” In fact, not even Mrs. Eddy, founder of the religion and of the Mother Church, would have been empowered by law to prevent defendants’ use of the name “Christian Science Church,” provided that name were truthful (in the sense that it accurately referred to the religion practiced by defendants).” (Christian Science Bd. of Directors of First Church of Christ, Scientists v. Evans, 520 A.2d 1347, 1352-1354 (N.J. 1987).

In another instance, the Appeal board of the USPTO considered the term Seventh Day Aventist:

 “…because the Seventh-day Adventist religion pre-existed the formation of the Seventh-day Adventist Church (as the General Conference is often informally referred to), it is clear that these proceedings involve a designation which was inherently generic rather than one which initially was a valid mark” (Stocker v. Gen. Conference Corp. of Seventh-Day Adventists, 39 U.S.P.Q.2d 1385, 1996 WL 427638, at 30 (T.T.A.B. Apr. 25, 1994))

The Applicants do not claim that third parties using the terms Chabad and Lubavitch do not act in accordance with the belief system of the movement. The claim is rather that such third parties are not necessarily connected with them and Applicants do not have control over the actions of such third parties.The Commissioner does not consider that this type of deception is that which the Trademark Ordinance is designed to prevent. The opposite is true. The ordinance does not prevent free speech and does not prevent religious freedom. These are covered by section (5)11 of the Ordinance which rules that such marks are against the public interest.

Religious streams are not tradable entities. Laws for commercial campaigns are not applicable for religious movements. With reference to the wide range of goods and services for which registration of the marks was applied for, it should be noted that a religious movement is not a commercial enterprise and its purpose is not to provide consumer goods.

The commissioner was not swayed by arguments that defective mezuzot (ritual Amulets for affixing to door posts, containing ninlical verses (Deuteronomy 6:4-9 and 11:13-21) which discuss the obligation, could be sold under the Chabad brand, or that non-authorized speakers could appear at army bases, and did not feel that a trademark registration could prevent someone claiming allegiance to one sect or another.

In light of the wide dispersion of the Lubavitcher Rebbe’s teachings and the widespread usage of the term Chabad and Lubavitch by the public, the words are generic and should remain in the public domain. There is nothing submitted that justifies removing the names from the public and making them controllable brand names.

In light of the above, the Commissioner does not think that additional material or a further hearing will help Applicants. He rules that the applied for marks are not registerable and the Applications are denied.

Asa Kling, 22 May 2016

COMMENT

A non-profit organization acting in a commercial world should be entitled to use trademarks to protect its branding. Chabad’s activities are largely supported by public donations. The public should know that money donated to someone collecting on behalf of Chabad is collecting for the organization and that there is some central control on what the money is being used for.

Chabad does indeed provide education services, philanthropy and humanitarian services, including looking after Jewish youth (now older) from the Chernobyl region in an institute in Kfar Chabad who suffered radiation effects after the nuclear disaster. I have three Chabad cousins (that I get along well with so long as we don’t discuss theology or Ritual practice). One of them will only eat meat from animals that were ritually slaughtered by members of Chabad. There are various laws governing fruit and vegetables such as ritual tithes (now symbolic), restrictions on fruit from trees and vines during the first four years and in some instances, the clock is restarted where trees are transplanted. Chabad emissaries are noticeable due to their unique garb. Children’s clothing and toys may include images of kosher animals like ducks and cows, but some members are strict about not allowing their kids to wear or play with images or toys of teddy bears, kittens and other non-Kosher animals. I can’t see anything on the list of goods and services that goes beyond what the movement might be interested in selling under Chabad supervision or authorization.

The Commissioner has ruled that Chabad is a religious movement, and, as such, its purpose is not commercial vending. This does not reflect reality. Judaism in general, at least orthopractic varieties, which are mainstream in Israel, is a way of life and governs every day activities. Chabad certainly does not see itself as a religion in a theological sense, but rather as an all-encompassing way of life. There is, therefore, a fundamental difference between a church and a Hassidic sect, and the Christian Science ruling in the US is of limited relevance when discussing Chabad.

Whether or not the evidence submtted proves it or not, Chabad is less fragmented and more unified behind mainstream leaderships than it was in 1994. Those with strong Messianic beliefs seem to have toned their comments down. Actively viewing the Rebbe as Messiah and seeing his death as a temporary state prior to imminent resurrection is more difficult as time goes by and noone under the age of 25 remembers the Rebbe’s passing.  The real problem that mainstream Chabad faces, is the Messianic offshoots that are reminiscent of early Christianity or at least of Shabtai Zvi. A careful reading of the Seder haggadah seems to show Rabban Gamliel and others making statements as to what is and is not the Passover Sacrifice and teaching away both from Christian interpretation of the Last Supper, and from Rabbi Akiva’s support of the Bar Kochva Messianic rebellion against the Romans that proved futile. Certainly no longer a mass movement of improtance, there are still  small communities of Christians, Moslems and Jews in Turkey that consider shabtai Zvi to be the Messiah.

grumpy

It is difficult for me, as an outsider, to gage the extent that different types of Chabad followers, that I’d conveniently classify as Classic Chabad, Messianic Chabad and Chabad Lite each consider the previous Rebbe as actually being dead in the conventional sense, or alternatively as being in some positive limbo state as various legends, is Merlin, Jesus and Elijah.  I don’t know to what extent self-identifying Chabadniks consider the last Rebbe as the Messiah, or take note of the Maimonides discussion of Bar Kochba in the Laws of Kings, where he points out that since he died without rebuilding the Temple, it was clear that he wasn’t in fact the Messiah.

Rabbi Yosef Aharonov, the former head of Zeirei Chabad (one of the Applicants) is currently in an Israeli jail for pocketing 3.5 million shekels donated to Chabad. This may go a long way to explain the days in producing evidence, and also illustrates that the possibility of Chabad representatives engaging in activities that are beyond what the organizations rightfully consider acceptable is not beyond the realm of possibility and there does therefore seem to be justification for central control over who can use the term Chabad for fundraising and other purposes.

I assume that the Commissioner did not actually compare Chabad to the Church of New Science in any meaningful Theological or even socialogical way, but rather noted similarities regarding trademark disputes in a fragmented religious group.

These issues do not only affect Chabad of course.

In this spirit of comparative IP in religion, without drawing wider parrallels, I note that the Catholic Church has issued unique copyrights for the Papal figure. They want to control what is seen as official doctrine. Chabad no longer has a living Pope Rebbe who can issue guidance with Supreme authority, although this doesn’t seem to be preventing guidance from the Rebbe from being published as if he was alive – which may be the point for registration of the marks.

There was a power struggle in the Bobov dynasty which led to one faction submitting a range of marks to the USPTO. See here. it was argued the USPTO is not the correct court to decide who is the Rebbe and who is the pretender. Other Hassidic sects have split and fragmented. Vishnitz is a good example. There are different Vishnitz Rebbes in different towns. They all seem to be part of the same Hager clan but don’t have a Supreme Rebbe. I predict that at some stage, there will be a breakaway Satmar sect that will realize that in the light of subsequent history. Rabbi Yoel Teitelbaum was wrong. Already 25 years ago, I met a Satmar Chassid who was studying in Har Ezion, a Religious Zionist Hesder Yeshiva.

The commissioner is correct that once upon a time, many years ago, there was a Chabad organization led by previous Rebbes. However, this is not relevant. It does not affect current branding. There may have once been restaurants run by tartan wearing, bagpipe playing McDonald clansmen but that does not mean that now such a McDonald, opening a restaurant, should not have to face IP issues with the golden arched hamburger flippers.

Allowing the marks would not create a limitation on public usage of the name. It will merely provide some centralized control of what can legitimately be considered provided by Chabad and what cannot. It will mean that only someone selected by a committee can open a Chabad House and not anyone who likes the beards. I see this as a good thing. When in Orlando for INTA, I had a discussion with the Chabad Kashrut supervisor who had a problem with a restaurant in Orlando receiving Kashrut supervision from a Chicago Rabbinic court. I wondered if the issue was loss of protection money supervision revenue or a real problem with supervision. (The supevisors tales of rennet and pigs milk in non-supervised milk in America in the Sixties I take with a pinch of salt. I heard similar things from fundamentalist teachers in high school in the UK, and I assume that Rabbi Feinstein would have become aware of such issues and revised his ruling). In Israel, in addition to private Kashrut licenses, there is a state kashrut supervision and every restaurant calling itself Kosher has to have a certificate from the local, state authorized Rabbinic Council. I do not see a problem with Chabad as a movement wanting centralized control. Personally, I think they should appoint a Rebbe, but that is up to them.

Nowadays, no new Chabad emissary is being appointed by the Rebbe who has been inactive since 1991. There are new Chabad Houses being opened around the world, and I’ve visited them in different cities, including Cambridge, England, Rio de Janeiro, Shanzhen, Honk Kong, Shanghai, San Diego and Orlando. They each serve a slightly different purpose and different crowd. None of the Rabbis seemed as scholarly as Rav Shteinzaltz or the Late Rav Zevin. One was embarrassingly ignorant but  may, nevertheless, be providing Jewish services and serving a valuable purpose. Should anyone be able to open a Chabad House? If a dynamic and charismatic Chabad Rabbi writes books about Kosher Sex and becomes the spiritual leader of the late Michael Jackson, shouldn’t  the organization have the power to decide that he can not consider himself Chabad?

Autobiographical Footnote

Me? I do not have the temperament to be a Hassid. I benefitted from studying in a Talmudic college with two spiritual heads who were culturally very different, with different personalities and character traits. It taught me that noone has a monopoly on the truth and that Judaism is multifaceted. Whilst studying there, I used to travel to a nearby town to hear a third Rabbi who I still try to listen to before Pesach and Yom Kippur, and collect and read his books. I also enjoy the teachings of the previous UK Chief Rabbi and collect and read his books with great enjoyment. I never had one spiritual leader but seem to be at the liberal, intellectual end of the Orthodox spectrum. I admire Chabad’s outreach work immensely but find their philosophy less than unattractive. I don’t have the temperament to be a Hassid.


Competing Trademark Applications for Epilaser

May 16, 2016

Epilaser

Epilady 2000 LLC filed Israel Trademark Application No. 258887 for “Epilaser” covering Domestic hand-operated cosmetic apparatus, namely, electronic aesthetic hair removal and skin treatment devices using multiple light sources such as lasers and LED’s based devices. The Application was submitted on 1 September 2013.

Epilady’s application was examined on 21 January 2015, but prior to allowance, on 4 February 2015, Mr Yitzhak Dwek filed Israel Trademark Application No. 272079 also for “Epilaser” covering Apparatus and instruments for hair removal by laser; all included in class 8 and Cosmetic services; hair removal services; beauty care for human beings; all included in class 44. Mr Dwek requested expedited examination and for some reason the Israel Patent Office failed to notice the competing mark.

The second mark was accepted for expedited examination and the Trademark Department informed Epilady that a competing marks procedure was initiated.

The parties failed to come to an arrangement and submitted their evidence for a Patent Office ruling. Both parties argued that their case should take precedence. Epilady submitted an Affidavit by Mr Yehuda Levi, the head of Epilady’s legal department, and Mr Dwek submitted an Affidavit as well.

Mr Levi submitted that Epilady had 30 years reputation for epilatory services and used the mark Epilady and derived marks.He further denied ever having come across Mr Dwek’s marks. Epilady further claimed to have spent hundreds of thousands of Shekels marketing Epilaser in Israel and abroad, over the period from 31 October 2014 to 3 February 2015. The Epilaser mark had been submitted for registration by Epilady in the US, EU and Japan.

Mr Dwek claimed usage since 2006 via his company Air Bus [MF – no explanation is given as to why Mr Dwek is using the name of a well-known European airplane manufacturer]. During that period, Mr Dwek claimed to have ordered 200 home use hair removal units from South Korean manufacturers. These units were sold in Israel under the Epilaser name. Mr Dwek further affirmed that from 2008, the mark was more widely used and that the TV sales chnanel had committed to purchasing 100 units under the Epilaser brand from him.

In cross-examination, Mr Levi further added that Epilaser is a natural development of their very well known main mark [MF – I think he means that the name Epilaser is a variation of Epilady, not that using lasers to remove hair is natural]. Epilady claimed to have used a foreign law firm to do an availability check for Epilaser prior to submitting their trademark application. Furthermore, the Epilaser mark was registered by a sister company, S&Y in Hong Kong.

The parties summarized their cases in writing. Epilady submitted additiional evidence of sales and orders in their summary, but Mr Dwek opposed this being added in the summation stage, and the Deputy Commissioner agreed that this evidence could not be considered.

Discussion

section 29a states:

If different persons independently submit identical or confusingly similar trademark applications for the same goods or for goods in the same category, and the second application is filed before the first application is allowed, the Commissioner may allow the parties to negotiate an arrangement and endorse this agreement, or may, if the parties fail to reach an agreement or if the agreement is unnacceptable, decide which mark takes precedence, giving his reasons for so-doing.

There considerations are given in the case-law and include which application was first submitted, the amount of usage and considerations of equitable behaviour. See 2498/97 Robby Boss vs. Hugo Boss PD 52(5) 665, 2498/97 Bacardi vs Registrar of Trademarks PD 25(2) 87, 91, and 8778/04 Yotvata vs. Tenuva 30 April 2007.

Since these marks are identical and cover identical goods, they cannot be registered in parrallel and so that option, given in Section 30 can’t be implemented. Furthermore, the parties did not request this.

Filing Date

Epilady’s request was the first to be filed. |However, this is a relatively minor cosnideration.

Equitable Behaviour

Mr Dwek provided a coherent and convincing explanation for why Epilady selected the Epilaser mark and filed applications in various jurisdictions. The Deputy Commissioner is in no doubt that Epilady is not trying to free-ride on Mr Dwek’s reputation in the mark. Back when Epilady filed their application, there is no indication that Mr Dwek was using the mark Epilaser and there is no doubt that Epilady is a very well known mark.

In 2006, Mr Dwek ordered 200 Epila Hair Removers which he sold under the Homepilaser brand. That was the name mentioned in advertisements from September 2008 and the communications with the TV sales channel also related to HOME PILASER.

In December 2014, Mr Levi wrote to the Ostra company about usage by Mr Dwek of the Epilaser name., and it transpires that in 2014, Mr Dwek was still using the Homepilaser mark for epilatory equipment. It was only after the communication with the Ostra company that Mr Dwek sought to register the Epilaser mark which was not then in use.

During this period of the end of 2014 and the beginning of 2015, Epilady was already using the Epilaser mark and had ordered a Facebook page, hoardings and a TV advertising campaign.

 

Thus it transpires that Mr Dwek filed his application knowing that Epilady was using the mark and had done so for 18 months or more. Apart from Mr Levi’s letter there is no evidence that Mr Dwek was using theEpilady mark.

In the circumstances, it appears that Mr Dwek’s application was not made in good faith.

Usage of the mark

Mr Dwek indeed sold 300 laser epilation units, but did so under the name Homepilaser. it is not clear whether the units ordered for the TV Sales channel included these. In the absence of contrary evidence it appears that the units advertised in 2014 are included in this number. In respect to all of these sales, the name Homepilaser and not Epilaser was used.

Epilady used the mark from 2013 and started advertising it heavily in 2014, spending over 1.5 million shekels in so-doing.

In his summary, Mr Dwek alleged that the advertisements themselves were not submitted, whereas as he himself was not cross-examined, his evidence was not challenged. As to the lack of cross-examination, Ms Bracha refers to paragraph 94 of the 4584/10 Israel vs. Regev Shovar ruling from 4 Dec 2012 and states that her conclusions were based on the evidence submitted:

As a general rule, there is an established ruling that failure to cross-examine works against the party that gives up this right. However, this does not mean that the evidence not challenged is accepted at face value and even if a party decides not to cross-examine the witness, the court is not obliged to accept the witness’s testimony if there is good reason not to do so. (see Kedmi on Evidence part 4 1953, (2009). For example, if the party not cross-examining brings additional evidence, the judge does not have to accept the testimony merely because it was not challenged.    Thus failure to cross-examine works against the party that does not use this right, but does not result  in the testimony being automatically accepted.

Thus Ms Bracha sees no reason to accept Mr Dwek’s evidence merely because it was not challenged by Mr Levi. Furthermore, since Mr Levi’s statement regarding advertising costs was backed by tax invoices, it may be accepted as being true.

Conclusion

In weighing the evidence, it appears that Epilady’s case is the stronger one in all three tests. Consequently it is allowed to register and Mr Dwek’s is refused. Since Epilady was only represented by inside counsel and did not incur additional legal expenses, they are not entitled to costs. See 166631 Unipharm vs. Neurocrine Biosciences LTD. 

COMMENT

Dwek means priest, and like his attorneys, Cohen-Zedek from Pearl Cohen, the name implies belonging to the priestly caste. This does not imply honesty or integrity, but we note that in Temple times, the priests did epilate.

Epilady is a market leader for epilatory devices and has been for decades. They are not entitled to monopolise the prefix epil since it is descriptive, but I am not sure that in Israel, many people using epilatory systems at home (as opposed to professional beauty salons) are aware of the word epilatory. That as mat be, the mark was not given due to Epilady having a similar mark, but this fact was merely used to collaborate their claim for choosing the mark in good faith. In this case, Dwek did not have a case and one wonders why he fought the opposition?

 

 

 


McKosher

May 16, 2016

McKosher

According to the World Intellectual Property Review (A UK based IP bimonthly I used to write an Israel report for) an Australian who hoped to open a “Scottish Jewish” restaurant called McKosher has lost his fight to trademark the name following a battle with fast food chain McDonald’s.

The application was filed by Mark Glaser, who lives in Maclean in New South Wales, in 2013. It was for class 29, covering various types of food. But in a decision handed down on May 3, the Australian Trade Marks Office said there would likely be a textual confusion between the ‘McKosher’ mark and McDonald’s, which owns several trademarks starting with the ‘Mc’ prefix.

Glaser told the office hearing he was of Scottish Jewish descent and that he hoped to open a Scottish Jewish restaurant called McKosher. Despite his additional claims that businesses in Maclean had often used the prefix ‘Mac’ and ‘Mc’, including McMarkets and MacConsultants, the office rejected his application.

In its opposition McDonald’s said it owned several trademarks for ‘Mc’-based products and that it was in negotiations with rabbi leaders in Jerusalem over the issue of the name of the chain in the city. One suggestion was to re-name specialised branches that sell kosher food as “McKosher”, the restaurant said. McDonald’s also pointed to its previous use of the prefix ‘Mc’ including ‘McFeast’, ‘McChicken’ and ‘McFish’.

 

COMMENT

Maclean

One wonders why McDonalds hasn’t moved to have Maclean renamed?

One of the well-respected Rabbis offering Kosher food supervision in Israel is Rabbi Macfoud. I’ve always found the idea of McFood as a certification of Kosher food a little amusing.

McFood

When Mac Donalds opened up in Israel, there was a lot of opposition from the ultra-Orthodox. It occurred to me that they could easily have closed down the Tel Aviv Bus station’s non-Kosher outlet by simply patronizing the store, ordering a soft drink and sitting there waiting for their connections. Such a non-aggressive move would clog up the tables and make it impossible for them to serve anyone else.