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.
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.
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.
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.
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:
- The requested shape serves as a trademark
- The requested shape does not serve a real aesthetic or functional purpose
- 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.
However, 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”.
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:
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.
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.
Then 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-cream, coffee and energy drink rulings.