Israel Patent Application No. 249922 is a divisional application of 205208 that was filed on 3 January 2017, and which claims priority from USSN 60/985,668 filed on 6 November 2007. Under Section 16, the filing of the divisional application was published on 29 February 2017.
The ‘922 application relates to “DUAL-ACTING PHARMACEUTICAL COMPOSITIONS BASED ON SUPERSTRUCTURES OF ANGIOTENSIN RECEPTOR ANTAGONIST/BLOCKER (ARB) AND NEUTRAL ENDOPEPTIDASE (NEP) INHIBITOR”.
On 4 January 2017, the Applicant received a Notice Prior to Examination under Section 18 and regulation 36. Examination has not started.
Unipharm requested that the examination of the Application be accelerated under Section 19a of the Israel Patent Law. The request was supported by an Affidavit from Mr Zevulun Tomer, Unipharm’s CEO:
I affirm that if IL 249922 to Novartis AG is examined in due course, it will cause a delay in Unipharm’s development of a product that is a high priority. … Making the Examination special will prevent delays and costs and serves the public interest by making drugs more available at lower cost and by opening the market to competition.
On 2 April 2017, Novartis AG opposed the request. Their position was that the request was vague and did not fulfill the conditions of Section 19a(c). Novartis notes that Unipharm did not provide details regarding which drug they intended developing, and if their intent was to develop a generic version of ENTRESTO, Novartis noted that that product was protected by other patents, some of which were pending patent extensions, and so accelerating the examination of ‘922 would not have the allegedly desired consequences.
Novartis also noted that if an Opposition is eventually submitted against IL 205208 under Section 26 of the Israel Patent Law which published for opposition purposes on 31 January 2017, anyway under Commissioner Circulars 035/2017 and 020/2012, no extensions in the Examination of the ‘922 application would be allowed. The Commissioner noted that on 23 April 2017, the period for submitting an Opposition was still open, so there was no need for him to address this theoretical issue. In response to Novartis’s counter-statement, Unpiharm reiterated their claims.
Section 19a(c) provides the situations where a third-party can request acceleration of a pending application to another:
(c) A person other than the applicant, and who is not associated with the applicant or works on his behalf, may submit to the Commissioner a detailed request along with an affidavit supporting the facts, for an accelerated examination of an application that was published under section 16A, if one of the following occurs: (1) There is an established concern that the examination of the application of the patent according to the set order may cause the applicant of an accelerated examination application, who works in the field of the invention, a delay in the development or in the production of a product or a process claimed in the patent application under this subsection. (2) Time elapsed since the submission of the request is unreasonably long under section 15 or from the day the request entered the national stage under section 48D, and taking into consideration any significantly lengthy time since the lapsed date up to the beginning of the examination of other application of the same type. (3) Public interest; (4) Extenuating circumstances which provide justification.
As established re Israel Patent Application 221842 J. L. Glatt Lift ltd, 14 June 2016:
The possibility of accelerating examination under Section 19a is an exception to the general rule regarding examination that is given in Section 9 and regulation 34:
Applying the exception is likely to damage the principle of the first to file is to be awarded the patent and is likely to damage the general quality of patent examinations. For example, prior art that is not yet examined could be overlooked.
It is clear that accelerating examination under Section 19a is reserved for extreme cases where it is justified to deviate from the normal order. The burden of proof is on the Applicant for Accelerated Examination who is to detail his request and support it with evidence.
Unipharm’s request and Mr Tomer’s affidavit relate in general to Section 19a(c) but it appears that they intend part (1) which relates to ‘delays in developing or manufacturing a product’ that Unipharm intends to manufacture, and to part (3) that relates to the ‘public good’ that is served by greater accessibility to drugs, reduced costs and competition in the market.
Unipharm claims that under their work program, if a patent issues for the ‘922 application, this will prevent them developing and then manufacturing their product. Unipharm’s affidavit details the managerial program and preferences. The Commissioner Asa Kling does not see any reason not to accept an Affidavit from a CEO who may be presumed to know the company’s plans. There is no need to cross-examine under Section 163a of the Israel Patent Law 1967, and if it should transpire that Unipharm have lied, this Affidavit could be used against them. Therefore, it seems that Unipharm have provided the appropriate support for their request as required by Section 19a(c)(1) of the Law for accelerated examination.
This is not the case with respect to ‘public interest’ under Section 19a(c)(3) of the Law. As explained in the Glat Lift case, accelerated examination under Section 10 is reserved for extraordinary cases that are important to the State of Israel in general. The Application and Affidavit do not point to such a specific condition. It does not explain how accelerated examination will result in competition that will bring about a drop in prices. As Novartis noted, it doesn’t even explain which market sector will have enhanced access. The Section 19a(c)(3) justification is rejected.
However, due to the Section 19a(c)(1) justification, examination of pending application 249922 will be expedited on payment of the relevant fee. Suspension or extensions will be permitted only in accordance with Section 19(a)(1) of the Law. No costs are awarded.
In this instance, as we are dealing with a divisional application, there is no danger of earlier filed not published art being missed due to the patent being examined out of turn. The Commissioner Circulars 035/2017 and 020/2012 explain Patent Office policy to examine divisional applications of opposed applications as fast as possible. There is a real danger that applicants for pharmaceuticals that are opposed will file continuations and divisionals to keep the patent application alive in an attempt to evergreen. So on balance, it seems that the request is reasonable and the Commissioner was right to grant it. If Novartis are acting in good faith, they should be interested in having their patent application examined as fast as possible. They have not provided a justification for delaying, such as wanting to wait for examination of a corresponding application to be concluded so that they can request allowance under Section 17c or similar.
With a justification under Section 19a(c)(1) it does not matter that the Section 19a(c)(3) request was denied. However, I don’t fully understand the Commissioner’s reasoning. If he considers that one has to be facing a drug shortage within an epidemic, that is one thing. However, I don’t think that one should have to explain how allowing generic competition lowers drug prices for the common good. This is self-evident and true for all drugs, and the underlying logic of free markets and really dates back to Adam Smith’s Wealth of Nations. Still, the Law does seem to require something extraordinary.
We note that Unipharm successfully handled this request themselves, without professional representation. This is not the first time that Unipharm have successfully fought inter-partes proceedings at the Israel Patent Office without using an attorney. Nevertheless, others are strongly advised not to follow their example.
The Israel Patent Office has published its annual report which now runs to an impressive 103 pages, albeit several of which are blank. Following the flying origami themes of previous years, the graphic illustration is a flapping bird. This is more challenging than the paper dart, but avid followers of these reports will have had more practice folding paper, and, indeed, those that print out the report will have more paper to fold.
According to the report last year there was a drop in patent filings into Israel, an increase in design filings, and an increase in trademark filings. However, due to the Madrid Protocol, there is an overall drop in routine filing and prosecution work from abroad for trademark attorneys.
There wass a general rise in the number of legal proceedings before the Israel Patent Office in all three categories, and the number of contentious issues are at their highest level since at least 2013.
Since the number of PCT patent filings exceeds the number of applications first filed in Israel, it is clear that the number of locally filed patent applications is not an accurate representation of the amount of locally generated work.
Perhaps the most interesting part of the document is the new section on patent office personnel.
Perhaps not surprisingly, 93% of Israel Patent Office staff have academic degrees. Of these, 50% have masters’ degrees and 13.5% have PhDs. 59% of staff are women and 41% are men. We attribute this to the longer holidays and easier hours of the public sector. As a government agency, there is affirmative action to recruit those under-represented. Whilst 90% of staff are Jewish, 6.9% are Muslim, 1.6% are Christian and 0.5% are Druze. In all 15 members of staff are from ethnic minorities, and a further 3 are Ethiopian and 1 employee is disabled.
78% of staff are between 31 and 50. However, only 7% are under 30, whereas 9% are over 70, with 5% being 71-80, 3% being 81-90 and 1% being over 90!
Over the past decade, there is a slight drop in direct trademark filings and a rise in Madrid applications designating Israel. With 9308 trademark filings in total, 2016 was a worse year than 2015, but is fairly similar to 2013-2015, between than 2009 to 2012, but not yet back at 2007-2008 levels. However, these numbers are lower than would otherwise be, since from 2010 multi-class applications have been possible. Thus Israel is not less popular a destination, but there is less work for attorneys in the field, and 2016 certainly had fewer filings than 2015.
Of the marks filed in Israel, a steady 25% is by Israeli companies and about 75% are by foreign companies
There is a small increase in the number of Madrid international trademark applications by Israeli companies in 2016 (287) compared to last year (252).
As far as patents are concerned, there were 6425 applications filed in Israel in 2016, which is down on 2015 (6904), but better than 2013 and 2014 with 6184 and 6273 respectively. Looking at the past decade, there is certainly a drop in the number of incoming applications. Only some 804 applications of these are first filed in Israel, with 5621 coming in from abroad. Despite the number of Israel applications being the lowest in the past decade, the Official Report considers this stable, noting a drop in 8% in incoming filings.
The number of patents granted has been steadily increasing however.
The various fast track mechanisms are being used, with PPH being the most popular, followed by petitioning to make special and then green applications.
In general, the patent prosecution process is more efficient, with shorter queue times before first office action and between office actions.
There are more PCT applications filed in Israel than direct applications. This seems to indicate that despite the America Invents Act wiping out most of the advantages of first filing US provisional applications, and the reduced filing fee for private individuals, Israelis still prefer US provisionals. However, I seem to be filing PCT applications without priority claims more often and others may be doing so as well. Israelis are the most popular direct filers in Geneva.
PCT filings in Israel can elect Israel, US or Europe as the International Search Authority. Overwhelmingly, and with a steady increase each year since 2012 when it was introduced, Israelis are electing the Israel Patent Office. There has also been a steady increase in US Applicants that are electing to have their PCT applications examined in Israel.
Designs are popular means for protecting car parts, extrusions, light fittings, and jewelry. 2016 saw 1866 design applications submitted in Israel, which is the highest number over the past decade. 67% of these are by Israeli applicants, so it seems that the noise regarding proposed new legislation has had some impact.
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.
On 30 December 2017, Smash Enterprises Pty LTD submitted a request to cancel the marks or to allow their marks to be co-registered. On 2 March 2016, Talber Pop responded with their Counter-Statement of Case.
The request for cancellation followed an attempt by Smash Enterprises Pty LTD to register their Israel Trademark Application 274301. After various extensions were authorized, on 26 January 2017 the parties submitted a joint request for coexistence based on a civil court ruling under which they undertook to differentiate their services and goods.
Smash Enterprises Pty LTD’s mark was in class 21 and covered 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.
Essentially, the two parties are interested in co-registration of Israel TM 274301 to Smash Enterprises together with those registered by Talber Pop LTD. (Smash Enterprises did have a second application in class 18, but seem to have abandoned that, as to allow the same mark for similar goods in the same class is particularly difficult).
The Commissioner can allow co-registration under Section 30a for identical or similar marks for identical or similar goods if the application to do is filed in good faith or if there are extenuating circumstances that allows coexistence.
The wording of Section 30(a) is as follows:
Where it appears to the Registrar that there is honest concurrent use, or where there are other special circumstances which in his opinion justify the registration of identical or similar trade marks for the same goods or description of goods by more than one proprietor, the Registrar may permit such registration subject to such conditions and limitations, if any as he may think fit. (b) A decision of the Registrar under subsection (a) shall be subject to appeal to the Supreme Court. The appeal shall be filled within thirty days from the date of the decision of the Registrar. In the appeal, the Court shall have all the powers conferred upon the Registrar under subsection (a).
The Applicant for coexistence has to prove that he is acting in good faith. Furthermore, he has to establish that despite the marks being identical or apparently similar to those registered, there is no practical risk that the consumer will confuse between the marks. In this regard, in the 87779/04 Yotvata vs. Tnuva ruling it is stated that:
In rulings [based on Section 30a of the Ordinance] the emphasis will be on the equitable behavior of the parties adopting the mark and on the need to protect the public from similar marks that might create misleading or unfair competition (Friedman p. 431).
See also 48827-03-14 Biosensors Europe SA vs. Commissioner of Patents from 22 February 2015:
The burden of proof that there is no likelihood of confusion falls on the two companies interested in the co-registration, and they have to prove that for many years they used the marks in Israel without the public being confused.
In this regard, the main thread running through the Ordinance is that identical or confusingly similar marks should not be registered if they will mislead the public. Thus in 10959/05 Delta Lingerie S.A.O.F vs Cachan Tea Board, India :7.12.06 :
Confusion and the risk of misleading is the living breath of the Ordinance. This is the main danger that we have to deal with. The various options of Section 11 that list marks that may not be registered reflect different types of confusion, and way to prevent them.
Where marks are more confusingly similar, the level of evidence that is required to show that there is no danger in their both being registered by Commissioner discretion under Section 30a is higher. See for example, the ruling concerning Israel TMs 24886 and 233056 Orbinka Investments LTD vs Now Securites Ohr Yehuda 1989 ltd., 24 July 2015 and 252115, 244719 Gaudi Trade SPA vs. Guess, Inc., 27 July 2016.
Alternatively, the Commissioner has to consider whether there are other special considerations that allow identical or similar marks for identical or similar goods.
In this instance the parties have reached a coexistence agreement following arbitration before Adv. Gai-Ron, and the Arbitrator of IP prefers constructive discussion and compromise rather than judicial ruling that are all or nothing. Nevertheless, the mere fact that the parties are interested in co-existing is insufficient to allow it where the is a likelihood of confusion. The Commissioner has the sole authority and responsibility to ensure that the Israel public are not confused by such marks, and such agreements are no more than an indication that must be weighed up with other considerations before allowing co-existence. See 1611/07 Micha Danziger vs. Shmuel Mor, 23 August 2012:
The desire of the parties that grow and market Gypsophila is one thing. The registration of confusingly similar marks is something else. Furthermore, and this is the important point – we are not relating to the parties’ consent, but to the balances in the law. The prohibition to register the requested mark is based on the need to protect consumers that were not party to the agreement between appellant and defender, (although such agreements may be indicative as part of a general analysis).
Thus it cannot be disputed that the Commissioner is not obliged to follow agreements between the parties. Nevertheless, in appropriate circumstances and where such agreements are valid, the Commissioner may allow co-existence based on such agreements – see 10105-05-16 Campalock ltd vs Commissioner of Patents, Trademarks and Designs 4/12/16.
In this instance, the parties submitted a two paragraph laconic request for co-existence stating that they had reached an agreement. However it is not enough to negotiate an agreement that serves the interests of the parties. A request to allow two pending applications to coexist or for a new application to be registered alongside an existing one must be justified by a detailed explanation showing why the public will not be confused.
There is no way to relate to whether the sides behaved equitably since the case should be closed before a hearing is conducted. The parties did not even address this issue in their request. The marks are identical for the word SMASH and there is certainly a similarity between schoolbags in class 18 and food bags and drink containers in Class 21 since these goods could be sold in the same retail outlets and there is therefore a room for confusion between goods in classes 18 and 21.
The Examiner reached a similar conclusion when she objected to the 2743011 mark under Section 11(9), and mere consent of the owner of a mark cited against a pending mark is insufficient to overcome a Section 11(9) objection.
The agreement does list the steps that the parties have undertaken to take, but this is insufficient. Firstly, the mark owner of the registered marks undertakes not to use a logo similar to that of the Applicant for cancellation, but the logo is not appended. An agreement not to use the same graphic is too narrow since the degree of similarity that is allowed is not related to. The registration would cause the register to be different from that happening in business.
Under the agreement, the side requesting cancellation would have the sole right to use the mark for boxes and containers for storing food and drink and the mark owner would be prohibited from so-doing. However, the mark owner’s registration 240598 (group 18) includes “food bags”. Food bags are essentially food storage bags. There is thus an overlap which creates confusion.
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.
Consequently, 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.
Smash ruling, Ms Shoshani Caspi, 26 April 2017.
The ruling is solid and both parties were represented. The parties are interested in compromising. The Patent and Trademark Office have to consider the public interest and to prevent confusion, but nevertheless one wonders why the arbitrator did not simply request that the parties relate to a list of issues that their agreement does not address, rather than to refuse the request.
The first renewal of IL 206744 to Bet El Zichron Yaakov Industries LTD was due within three months of it issuing. As it issued on 1 May 2016, the renewal was due on 1August 2016 (see Section 56 of the Israel Patent Law 1967), and six months later, on 2 February 2017, it was published as having lapsed (as per Section 57 of the Law).
On 9 March 2017, the Applicant requested reinstatement, but did not submit an Affidavit. At Deputy Commissioner Bracha’s request, the CEO of the company submitted an Affidavit claiming not to have received the Patent Certificate.
After reviewing the Israel Patent Office records, it transpired that due to a problem in the patent office, the Certifcate was indeed not sent out. The Deputy Commissioner considered this was sufficient reason for the renewal fee not being paid.
Since the request for reinstatement included the missing payment, the Deputy Commissioner ruled that the reinstatement should publish for Opposition purposes.
Christian 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:
- The mark serves as a trademark in practice
- The mark does not have any real aesthetic or functional purpose
- 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:
- The perfume associated with the requested mark was a flagship product
- The perfume was sold under the mark continuously since 1999 and was sold in 130 countries
- 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 marks 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.
For example, the 212302 and 212303 Crocs Inc decision of January 2013, the 228232 and 228233 Seven Towns SA decision of 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  ECR I‑1725, paragraph 53, and Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle)  ECR II‑1391, paragraph 24, upheld on appeal in Case C‑286/04 P Eurocermex v OHIM  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.
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.
This ruling considers whether a combination of two dictionary words can have aquired distinctiveness and serve as a trademark where neither word is itself distinctive.
Israel Trademark Application No. 263789 is for the word mark ECOSYSTEM ECONOMICS.
The application is publications that can be downloaded and electronic services in Class 9; printed Matter; printed matter; books, exercise books, magazines and journals in Class 16; business services; business management assistance; business management services; Business intermediary services; non-financial business sponsorship services; management consultancy services; business research services; strategic consultancy in Class 21; market research questionnaires; publicity services; organization of trade shows; business advising consultancy services; personnel services; executive search services; personnel management services; advertising services; marketing services; organisation of trade fairs; mergers and acquisitions, namely, introducing clients to potential partners with a view to potential mergers and acquisitions; business consolidation sendees; information and advisory services relating to all the aforesaid services; advice and consultancy relating to the industrial framework network orientation of businesses in industrial development and advice and assistance relating to the launch and. growth of new business in Class 35 and financial sponsorship services; financial business sponsorship services; advisory services relating to financial aspects of mergers and acquisitions; investment services; venture capital services; portfolio management services; corporate finance services; risk assessment and risk management services; fund services; financial partnership services; information, advisory and consultancy services relating to all the aforesaid services in Class 36, and organisation of lectures and tutorials, seminars and workshops; organisation of conference and events; publishing services and electronic publishing services; information and consultancy and advisory services relating to all the aforesaid services in Class 41. Read the rest of this entry »