Supreme Court Adds Sauce to Temporary Injunction

April 25, 2018

Back in February, we reported regarding a temporary injunction that Barilla obtained in the Tel Aviv District Court against Rami Levy, requiring them to remove packages of pasta that came boxed in blue boxes with cellophane windows and similar packaging to Barilla’s range of pastas.

The image above shows Rami Levy’s packaging under the Olla own-brand on the left, and the Barilla packaging on the right.

Whilst it is true that the Olla packaging does state Rami-Levy – Shivuk HaShikma (Sycamore Packaging), and the name of the pasta is written in Hebrew, it is also true that both brand-names end with the syllable and letters lla, and the fonts are italicized and slope to the right.

Rami Levy appealed the decision to the Supreme Court but Judge Solberg upheld the temporary injunction pending a full trial and ruling, and also widened it to cover pasta sauces, noting that like Barilla, Rami Levy uses glass jars with blue lids for their tomato sauces. Costs of 40,000 Shekels were awarded to Barilla for having to deal with the appeal.

Comment 

We note that Rami Levy has a further own-brand packaging for dried pasta (on the right), where Taaman (whose own packaging is blue) package their pasta for Rami Levy in cellophane bags that seem inspired by Osem’s Perfecto range (on the left) so they can simply pour out the boxes and bag in cellophane, at least until Osem sues them.

steaks

We also note that Rami Levy (on the left) recently jumped into the frying pan with minute steaks, using a packaging scheme not vastly dissimilar from Baladi’s (on the right), and that Judge Avrahami of the Petach Tikveh District Court granted a temporary injunction requiring Rami Levy to adhere a sticker that is not red, white or black to their frozen meat package of minute steaks that should be at least 11 cm by 8.5 cm, that is clearly printed and which states that the product is under Rami Levy’s own label. The sticker must not include the price or the words “Special Offer”, that could dilute the effect of differentiating between the products. The sticker is to be applied to the front of the packaging at the top, under the term “Maadaniyah” (delicatessen).

Appeal 1065/18 and 1521/18 Rami Levy vs. Barilla, 22/4/2018


A Balanced Temporary Injunction Against Rami Levy

April 19, 2018

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

steaks

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

baladi minute steak

The claims of passing off and copyright infringement were considered unlikely to prevail and thus not grounds for a temporary injunction. However, Judge Avrahami saw fit to grant a temporary injunction on the grounds of unjust enrichment. Rather than have Rami Levy’s product removed from the shelves and repackaged which could result in the meat being lost, she ruled that a sticker in a contrasting colour should be attached to the packages indicating that Maadaniya was Rami Levy’s own brand. Rami Levy was also advised to work towards introducing a more different package. The parties were invited to try to settle their differences without the court having to hear the case in its

Baladi makes meat products including minute steak which are thinly sliced steak that can be roasted in a frying pan in one minute. Baladi claims to have designed the packaging that they use for minute steaks.

Rami Levi is a public company that runs supermarkets across Israel. The company stocks known brands and also sells popular products packaged for them under their own label.

Rami Levi sells Baladi products. It also sells minute steaks under their only  own label “Rami Levi’s Sycamore Marketing Delicatessen”. Rami Levi’s own label minute steaks are packaged by TBone Veal.

In a preliminary ruling, Baladi claimed that minute steaks were not sold in supermarkets until they launched this product in November 2017 with a massive and expensive sales campaign. From the launch until 19 March 2018, the product sold well due to the marketing campaign. On 19 March 2018, suddenly, without notice, Rami Levi forbade Baladi to replenish supplies and blocked the product, and instead supplied minute steaks under their own label.

baladi logo

Baladi claims that the own-label brand is packaged in a copycat package of that of their product, and that this was a calculated, organized action of Rami Levi in bad faith, to ride on Baladi’s advertising campaign and product launch, benefiting from their investment. Baladi’s campaign has drawn customers to want to purchase their product. The customers go to the meat refrigerators and find the infringing product that is a copy of their package and are misled into believing that they are purchasing Baladi’s product.

Baladi considers that the case is particularly serious since Rami Levi is a retailer that can block their product whilst offering the competing own-label product. This is particularly problematic since Rami Levi’s product launch was just before Pesach and close to Independence Day which is the start of the Israel barbecue season when sales go up significantly.

In light of the above, on 22 March 2018, Baladi sued for passing off, unfair trade practices, copyright infringement in the product package and unjust enrichment. They filed their case in the Tel Aviv and Jaffa District Court. Baladi requested a permanent injunction, compensation and production of sales data. For the purpose of assessing the court fees, Baladi assess the damages at 2,750,000 Shekels.

Baladi also requested a temporary injunction on Rami Levi to prevent them using the product sold under their private label or at least to prevent them selling the product in the packaging used at the time of filing, and to cease from blocking Baladi’s products, and to enable their products to be sold on an equal basis with other frozen meat products. The Request was supported by an affidavit from Ms Irene Feldman, the VCFO of Baladi, and was filed as an ex-partes action for immediate attention since any delay will cause irreparable damage.

El gaucho minute steak

In response, Yossi Sabato, the VCEO of Rami Levy submitted an Affidavit claiming that Baladi was acting in extreme bad faith by not telling the court that they were conducting a parallel action against El Gaucho which is a label of TBone Veal in the Central District Court as 4347-01-18. In that instance, they made similar accusations which were rejected. This action, in a different court, against a different label, was a type of forum shopping that was indicative of bad faith and should be sufficient for the case to be thrown out. This was simply an attempt to corner the market and to prevent competition. The Ex-partes actions in both the El Gaucho case and in the present instance are cynical exploitations of the legal system designed to get free publicity, and the plaintiff was suing for extreme damages without having first contacted the supermarket chain, which is itself inequitable behavior for which the case should be thrown out.

monopoly

With regards to the complaint itself, Rami Levy claims that Baladi is trying to obtain a monopoly on minute steaks, which is a term known in Israel and abroad and which they did not coin. Baladi also tried to obtain a trademark for this generic term. Minute steaks have been advertised in Israel in the past and are available in restaurants and from butchers, and even from supermarkets. Baladi has not been in the market long enough for minute steaks to be identified with them to the extent that they deserve a monopoly on the term (acquired distinctiveness), and a reputation that is protectable, and even Baladi does not claim to have rights to minute steaks but only to the sound of the name.

Rami Levy

Rami Levy claims that their product package is completely different from Baladi’s, including writing and visual elements, and there is no likelihood of confusion. Baladi advertises their product with their trade-name Baladi clearly written thereon and, in the absence of this term, there is no likelihood of confusion. Rami Levy’s private label HaMaadaniya (literally the delicatessen) is well-known to Rami Levy’s customers as a low price brand, and there is no likelihood of confusion.

“Rami Levy” is written clearly on the front and back of the packaging, and is a super brand that does not need to ride on the reputation of Baladi or anyone else. The difference in price also prevents confusion, and all Rami Levy’s own branded products are clearly sold as such in their stores, and there are loads of examples of private labels being sold alongside branded goods and the public are not misled in any way that they are purchasing something other than the own label.

boycott

As to the issue of marketing Baladi’s products in Rami Levy’s stores, Rami Levy contends that they are under no obligation by general law (in rem) or by contract (in personam) with Baladi, to purchase any of Baladi’s products, including their meat products. Baladi’s goods are available in other chains. At present, Rami Levy stores DO stock Baladi’s minute steaks but, in view of the high price that Baladi dictates for their product, Rami Levy is under no obligation to replenish stocks of something much more

In answer to Rami Levy’s response, Baladi reiterated that their issue is NOT the name ‘minute steak’, but the packaging and the product blocking. On 26 March 2018. a long hearing was held. There were many attempts to bring the parties into an understanding, and the affidavits were reviewed and the parties summarized their arguments. After the hearing the parties still refused to come to an understanding, and so there is no alternative but to reach a verdict in this instance.

Relevant Considerations Regarding Temporary Injunctions

Principles-Governing-Issuance-of-Temporary-Injunction

It is known that the party requesting a temporary injunction has to convince the Court, on the basis of apparently convincing evidence, that there is grounds for the complaint and the Court then has to balance the ease of implementing the different actions, i.e. the damage to the complainant if a temporary restriction order is not issued, vs. the damage to defendant if a temporary restriction order is issued but if it later transpires should not have been. The Court has to ascertain whether the temporary injunction was requested in good faith, and if the injunction is just and fitting in the circumstances and does not unduly damage the defendant – See Regulation 363 of the Civil Procedures Regulation 1984.

interests

The main considerations for requesting a temporary injunction are the likelihood of prevailing and the balance of interests of the two parties, but where the Court considers that the likelihood of prevailing is greater, they will be less concerned about the balance of interests, and the opposite is also true.

When deciding on a temporary injunction, the court also has Read the rest of this entry »


Passed Off Pasta?

February 8, 2018

barilla pasta

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

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

Rami Levy

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

 

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

Rami Levy pasta

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

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

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

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

COMMENT

taaman 1taaman 2

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

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

 

 

 


A ballsy trademark ruling

January 30, 2018

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

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

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

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

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

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

sod balls.jpg

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

juggling four balls

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

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

Discussion

toffiffee

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

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

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

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

The Mark Does Not Serve As a Trademark in Practice

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

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

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

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

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

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

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

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

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

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

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

The mark has not attained distinguishing character through use

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

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

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

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

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

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

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

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

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

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

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

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

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

The mark is therefore refused.

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


Black Box Trade Dress

December 12, 2017

2525230

Sea of Spa Laboratories have submitted Israel trademark application number 285230 for a three-dimensional stylized trademark as shown alongside, for Mineral bath salts and mud masques (not for medical purposes), body butter, body peeling aromatherapy cream, body cream, Aloe Vera cream, Cosmetic creams and lotions, moisturizing cream for the face and baldpate, shampoo, soap, liquid toilet soap, shower gel, toothpaste, deodorant, perfumes, after shave balm (not for medical purposes), all being produced from or enriched with minerals from the Dead Sea; cosmetic soaps; cream soaps; liquid soaps; perfumed soaps; soaps for body care; soaps for personal use; essential oils; Cosmetic creams for skin care; Hair care creams; Hair care preparations; Hair care lotions; Lotions for face and body care; Nail care preparations; Body and beauty care cosmetics; Cosmetic creams; Cosmetic preparations; Cosmetics; Body oils; Hair coloring preparations; Hair styling preparations; Hair shampoos and conditioners; Baby oils; Shampoos for babies; Bath and shower gels and salts not for medical purposes; Bath oils; Bath soaps; Bath foam; Massage oils; Cosmetic massage creams; Sun screen preparations; Sunscreen creams; Sun-tanning oils and lotions; Sun block preparations; Tanning and after-sun milks, gels and oils; Beauty gels; Beauty creams; Body creams; Face creams for cosmetic use; Beauty lotions; Body lotions; Skin lotions; Make-up; Cosmetics and make-up; Make-up for the face and body; Make-up removing preparations all in class 3 and for on line advertising on a computer network; online retail store services for the sales of cosmetics, body care products, soaps, perfumery, essential oils, hair lotions, toothpaste and deodorants; direct mail advertising; Organizing and conducting trade fairs, events and exhibitions for commercial or advertising purposes; dissemination of advertising and promotional materials; distribution of products for advertising purposes; product merchandising; commercial business management; business management of wholesale and retail outlets; retail or wholesale services for cosmetics, toiletries, dentifrices, soaps and detergents in class 35.

From clarifications with the Applicant, it appears that the mark is meant to be a black box, with silver edging to the panels. The Applicant clarified that the requested protection is for boxes of different shapes and sizes, but which are all black with silver trim along the vertices.

The request for registration was submitted on 25 May 2016 with a request for expedited examination based on alleged unauthorized usage by third parties.

circular

The trademark department refused the Application. In a first Office Action on 29 August 2016, the Examiner considered that the mark was not registerable as a trademark, being a three-dimensional package or container, lacking the required distinctiveness under Section 8a to be registered as a trademark. The Examiner considered the mark as contravening Circular 032-2015 “Trademarks: Requests for Three Dimensional Marks”, from 18 March 2015. The Examiner also considered that the correct way to protect such marks is as registered designs.

black pearl

On 12 January 2017, the Applicant responded with the argument that the mark had acquired distinctiveness due to wide usage. This contention was supported with an Affidavit from MR Avitar Glam, the CEO of the company who claimed that the Black Pearl series of products were packaged in such boxes from 2013 onwards, and that the Applicant had spent tens of thousands of Shekels in rebranding. Supporting evidence was appended to the Affidavit.

On 2 March 2017, the Trademark Department wrote that the response of the Applicant was insufficient to conclude that the silver trimmed black boxes without the addition of additional elements on the package were sufficient to be considered as having the acquired distinctiveness required for registration as a trademark.

The Applicant responded by requesting a hearing.

Applicant’s Claims

The Applicant considers that the registration of the requested mark will provide appropriate protection against competitors using similar packaging to theirs. The Applicant considers that the registration will not adversely affect competition in the market place since there are very many different ways of stylizing packages.

The Applicant considers that when considering three-dimensional marks for packaging the Examiner should differentiate between the basic shape and the requested mark. The Applicant considers that Circular 032-2015 fails to make this distinction and is thus deficient.

With this, the Applicant considers that the applied for mark still fulfils the basic conditions outlined in Circular 032-2015, since it is uniquely identified with the Applicant due to continuous usage since 2013, with investment in advertising and promotion of the mark. The Applicant denies that the packaging has a real functional or aesthetic purpose, but rather serves to make the product stand out on the shelf, and is thus a registerable mark.

Discussion

toffiffee

Three-dimensional marks that are the shape of the package are registerable if the owner can prove acquired distinctiveness through use. See 11487/03 August Storck et AL.. vs. Alpha Intuit Foodstuffs ltd et al. (23 March 2008) “Toffiffee”. In that matter, the Supreme Court pointed out a difference that can occur between allowing trademark registration of the shape of a product itself, and allowing a three-dimensional registration for its packaging. However, the Supreme Court left open the question of registration of packaging as a trademark on the basis of inherent distinctiveness:

It appears that the risk of preventing competition by allowing registration is bigger, when registering the shape of the product, than when registering the shape of the good itself.  (See re Phoenician Glass, paragraph 17). Consequently, I have decided to leave open the question of registration of three-dimensional marks consisting of the package on the basis of inherent distinctiveness.

Circular 033/2016 –Trademarks: Emphases when Examining Trademarks, from 15 December 2016, is the third reincarnation of Circular MN 61 which relates to the registerability of three-dimensional trademarks. The Circular applies the tests developed in Toffiffee, and does not relate to the difference between the shape of the product, and the shape of the package. Since this distinction was left open in the Toffiffee case, a Commissioner’s circular is not the right place to determine this. To complete the picture, when the Application was examined, the Circular in effect was 032/2015 – Trademarks, and so that was the Circular that the Examiner referred to in the Office Action. That said, all three circulars state that when considering the registerability of three-dimensional trademark applications:

One can consider the registerability of three-dimensional marks in cases where it is proven by evidence that the following three conditions are fulfilled:

  1. The requested shape serves as a trademark
  2. The requested shape does not serve a real aesthetic or functional purpose
  3. Through usage, the shape has acquired distinctiveness

The wording of the Circular is problematic. It relates to shapes or forms, and not to colour schemes on packages.

Before discussing whether the mark fulfills the requirements of the case-law and the Circular, there is a preliminary question to be addressed, in whether the colour scheme can be considered a mark since the proportions of the box, and thus of the surface panels varies. A similar issue was dealt with by then Commissioner Dr Noam with regards to Israel Trademark Application Numbers 182676, 182677 and 182679 to MANN+HUMBEL GMBH from 19 August 2008. There a mark was requested from a green and gold box with a white line separating the green and gold, in all shapes, i.e. without providing a ratio between the colours. There the Commissioner ruled:

From that written, it seems that we are referring to a mark that is so fluid that it is doubtful whether it is a mark at all. From consideration of Mr Ivor’s Affidavit, together with screen prints from the website of the Applicant, it seems that we are dealing with a concept, with a design idea that combines green, gold and a dividing white line that is expressed in different ways in the website, the packaging and the company’s catalogues.

A basic known principle throughout the branches of intellectual property law is that intellectual property does not protect ideas, but rather embodiments of those ideas.

So the then Commissioner ruled that the registration of insufficiently defined marks is inappropriate.

The applications as filed, if they issue, will totally remove from the public domain the use of two colours on any box. This is an unreasonably wide monopolization that creates legal uncertainty.

The Deputy Commissioner Ms Jacqueline Bracha opined that in this instance, we have a “design concept”, which is too broad to be a trademark. In this regard, it is worth considering the definition of a mark in James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkeley Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011) p. 17.

black pearl 4However, even if we consider the mark as sufficiently defined, one has to assess acquired distinctiveness on the basis of whether the public recognize the mark. From the evidence it appears that the Applicants do not brand themselves only with the applied for mark, but always together with the term “Black Pearl” and a picture of a pearl. These always appear clearly on the packaging. The public do not merely recognize the applied for mark as being a trademark, but the Applicant itself does not consider it to be a trademark. From Appendix 7 which lists the sales, it is clear that the series is referred to as “Black Pearl”.

black peral 3

In the website of the Applicant, (appendix 1 to the Affidavit), the series is referred to as the Black Pearl Line, and in the US website is www.blackpearlusa.com most of the products are shown without packaging at all, which shows that the requested mark is not being used as a mark [and therefore cannot have acquired distinctiveness –MF].

The Applicant did not submit any evidence as to how the consumer considers the requested mark, but does note that sometimes the package on the shelf is viewed from the back. The Deputy Commissioner does not consider the fact that a consumer could return a box to the shelf such that the front is obscured as sufficient justification to consider the mark as being identified as trademark by the consumers. (see paragraph 13 of Appeal 59175-12-12 Stokke AS vs. Commissioner of Patents and Trademarks, 26 November 2013.

In light of the above, the Deputy Commissioner does not consider that the Application serves as a trademark.

Although not necessary, the Deputy Commissioner continued to consider the other conditions for registerability outlined in the Circular.

The Applicant submitted data regarding the branding, which included the design of the packaging and information regarding sales. The Deputy Commissioner noted that it is not enough to show sales but one has to show a link between sales and the mark to show that the requested mark to shows that the requested mark generates sales and the burden of proof is significant. See 18/86 Israel Glass Factory Phoenicia ltd. vs. Les Verries de Saint Gobain, p.d. 45(3) 224, 238 and Appeal 2776/06 Ein Gedi Cosmetics vs. Commissioner of Patents and Trademarks, 12 May 2008.

Where a product has several trademarks alongside each other, it becomes even more difficult to show that one or other of them has individually acquired distinctiveness. See Deputy Commissioner’s ruling regarding the Trademark Application Nos. 216872, 216873 and 216874 Proctor & Gamble (2012):

We are considering marks serving as backgrounds for words such as “Herbal Essences” and the flower image around the neck of the bottle. (see Appendix D of Ms Rosnell’s affidavit). Furthermore, the applied for marks do not include all the background elements, since it was filed in grey.

See also the comparative law for packaging serving as backgrounds for other marks, in 180843 Baltika vs. S&G Intertrade ltd (2012):

The mark before me is merely a generic background for a beer bottle. There is no problem per se with registering a label as a trademark, if it fulfills the conditions of the Ordinance, and in comparison with the US Law, and Jerome Gilson “Trademark Protection and Practice”, p. 2-162 (2002):

“It should be noted, however, that packaging design which is primarily background for a word trademark must make a separate commercial impression in order to be eligible for separate protection.”

With regard to registering bottles as trademarks, it is sometimes worth considering whether the applied for mark has a form that is typical for the field – see Adjudicator of IP in re Israel TM Application 174402 Diageo North America, Inc. from 13 April 2011, and the Cointreau bottle ruling from 2 April 2013. It seems that the more unusual a bottle is, the more easily it can be considered as having acquired distinctiveness, and so can be registered as a trademark.

From an Internet search it transpires that there are other companies using a black box with a frame (Commissioner’s discretion to search independently is discussed in the Rishon L’Zion Winery vs. the Vineyard ltd. (4) 338, 2006. See for example:

Aroma

These packages are just a couple of examples of the many black packages that appear on the Internet, which are decorated with gold or silver, and are used for packaging cosmetics. Although they are NOT identical to the Applicant’s packages, they do indicate that the applied for mark does not stand out from other cosmetic packages on the market.

The Deputy Commissioner did not see fit to consider the question of whether the packages serve a functional or real aesthetic purpose, but it seems that they were designed as part of a branding exercise designed to give a quality image, together with the black pearl. However, this is beyond that required.

Since it is not clear that the application is a mark, and in light of the conclusions that it is not clearly a trademark that has acquired distinctiveness through use, the application for registration is rejected.

Ruling re Black Pearl Package Trademark by Deputy Commissioner Ms. Jacqueline Bracha, 1 October 2017.

COMMENTS

It is difficult to argue that a cuboid or brick shaped box is anything but a functional package. It is also difficult to argue that the black and silver choice of colouring is not designed to be aesthetic. However, I am not sure that the Circular is properly worded, and this case seems to me to be more a question of a flat trademark applied to a box, rather than a three-dimensional mark.

The issue here is NOT one of three-dimensional marks, but is rather one of trade-dress. A single colour trade-dress is probably not sufficiently distinctive. In most places, Cadbury’s distinctive purple was not considered sufficiently distinctive to be registered itself. ‘Laline’ makes beauty products and has simple white packaging, which is a brilliant attempt to market themselves as pure, but can plain white boxes be considered distinctive? Here, there are two colours, and one is a frame. In other words, it is a little like the National Geographic yellow frame on their magazines. However, there is a second colour; the basic black as well.

 

national geographicThen again, National Geographic has a very long history, massive circulation, and back copies seem to lurk indefinitely in waiting rooms at doctors and dentists. I suspect many kids first saw photos of naked human bodies in National Geographic magazines that seem to be more favoured by school libraries than men’s magazines.

Also, the dimensions of the National Geographic magazine is standard, and the company is using the yellow frame as a trademark on videos, their TV channel, and various merchandise.

So in this case, there is really a two-dimensional mark of a silver frame on around a black rectangle. Since the dimensions change, it is really a trade dress and is not constant enough to be registered as a mark. Even if not registerable as a trademark, it may still be enforceable under the tort of passing off and unjust enrichment. Since accelerated examination was requested for the mark on the basis of a competitor using it, one wonders if it really is exclusively associated with the Applicant. As the Deputy Commissioner has shown, the colour scheme is not unique to the Applicant.

If one examines the website, there are boxes that are all black with a silver label, and gold boxes with the writing Black Pearl on them. There are also black squeeze tubes with silver writing. In other words, the trade-dress is not used consistently. There are other cosmetics using silver on black, particularly but not exclusively designed for usage by women of colour (or whatever the current politically correct term is).

Although relating to a ruling concerning colour schemes which is essentially a trade dress related decision, the Deputy Commissioner has essentially examined the mark in light of the Circular governing three-dimensional marks. To my mind this is the wrong approach. A better starting point would be to consider the ice-creamcoffee and energy drink rulings.


District Court Upholds Trademark Ruling Re Scratch on Aluminium Profiles

November 16, 2016

The District Court has upheld Ms Bracha’s Decision not to allow registration of Israel trademark application 240319 filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co.) or NAPCO is such a mark following opposition proceeding by  Extal LTD.

240139

The mark, concerned is shown here. It was applied for aluminium profiles in class 6. A report of the Opposition ruling of the Israel Patent Office may be found here.

 


Ketchup Wars

August 20, 2015

Heinz has removed the Hebrew transliteration of Ketchup from bottles of their iconic sauce. The reason? Israel has a standard for Ketchup that Heinz doesn’t come up to. Specifically, Israeli Ketchup contains a higher percentage of tomato extracts than Heinz’ tomato flavored condiment.

I read about this development in Yesterday’s Idiot Acharonot (Israel’s largest circulation fish & chips wrapper newspaper) whilst enjoying a leisurely breakfast on holiday in the Galilee.  The topic is a hot sweet & sour issue among fellow Anglo-American Immigrants who I am in contact with on Facebook.

To those of us who grew up in the UK or the US, Ketchup meant Heinz. Heinz launched its first Tomato Ketchup in 1876, Heinz was at the forefront of exploring natural preservation, and in 1906 was first to launch a Ketchup free from artificial preservatives. To prevent it growing a beard without fungicides, it includes enormous amounts of sugar and vinegar.

 

14-global-ketchup.w529.h352.2x

There never were 57 varieties of ketchup or indeed of anything else. Nevertheless, worldwide, Heinz is the #1 ketchup.

In the 17th century, the Chinese mixed a concoction of pickled fish and spices and called it (in the Amoy dialect) kôe-chiap or kê-chiap (鮭汁. By the early 18th century, the table sauce had made it to what is now Malaysia and Singapore, where it was discovered by English explorers. The Indonesian-Malay word for the sauce was kecap (pronounced “kay-chap”). That word evolved into the English word “ketchup”, and English settlers took ketchup with them to the American colonies.

In the United Kingdom, preparations of ketchup were historically and originally prepared with mushroom as a primary ingredient, rather than tomato. Ketchup recipes begin to appear in British and then American cookbooks in the 18th century. 

So the term Ketchup doesn’t imply containing tomatoes at all. It really simply means a savoury sauce. Nevertheless, to most of the world, the term relates to the thick dark red sauce that Heinz manufactures and distributes.

In Israel, a variety of condiments are sold as tomato ketchup. The most widely distributed and probably the best of them is Osem’s ketchup, which also comes in a distinctive container that is perhaps as well recognized in Israel as Heinz’ is elsewhere. I prefer Heinz’ Ketchup as it the taste I grew up on. My Israeli kids prefer Osem’s.

To put the argument into some kind of perspective, I’d like to use the analogy of mustard. I am sure that for British ex-patriots like me, mustard is a very strong condiment prepared from a powder. Coleman’s mustard has a long and distinguished history.

Jeremiah Colman founded Colman’s of Norwich in 1814. To create a tangy flavour, he blended brown mustard (Brassica juncea) with white mustard (Sinapis alba). From 1855 the firm introduced its distinctive yellow packaging and bull’s head logo, and in 1866 was granted Royal Warrant as manufacturers of mustard to Queen Victoria. The royal household still uses Colman’s today.

colmans mustard

Now the French make an entirely different condiment called Dijon mustard, that is rather milder. Americans have a sort of yellow ketchup that they call mustard, but which has no similarity to English mustard. One could envisage the UK banning American mustard from being sold as ‘mustard’ without a qualifier, such as ‘American style’ mustard. Similarly, one could imagine Americans requiring Colman’s Mustard to be sold with a government health warning that it should be consumed in small quantities only, and that it is rather different than what Americans are used to.

Israeli bottles of Heinz Ketchup will still have the word Ketchup on their labels in English, just not in Hebrew. Presumably English and American immigrants will see that the sauce is what they are looking for, and Israelis will appreciate that the condiment is something different. It is not a bad compromise. However, as the term ketchup doesn’t actually imply tomatoes and the average consumer is aware that condiments from different companies taste slightly different, and since both Heinz and Osem’s ketchup bottles feature the name of the manufacturer clearly and each comes in a distinctive bottle, I am not convinced that this is really necessary.

namesred mug

There are, of course, Israeli precedents for this type of thing. Nestle’s Nescafe Original was marketed in Israel as Red Mug. They couldn’t call it Nescafe as the term was generic. The Hebrew word Nes means miracle, and, where Elite’s Cafe Namess (soluble coffee) was known as Nescafe (miracle coffee), there was no way for Nestle to obtain a trademark for Nescafe.

Pips Cola

Prior to the Oslo accords, Pepsi Cola was not available in Israel, as Pepsi decided to kowtow to the Arab boycott. A Galilean Arab sold a locally produced cola as Pips Cola. When Pepsi entered the Israel market they tried to get an injunction against the Arab manufacturer. The Israel courts correctly noted that they had abandoned the local market. They ended up having to buy him out.

For British readers of my generation, I refer to classic Goodies Episode “The Bunfight at the OK Tearooms“, where ketchup as a metaphor for movie blood and gore was taken to its logical conclusion.