The Israeli Registrar of Trade Marks recently issued several Circulars, addressing the policy of the Israel Trade Marks Office ("the ITMO") with respect to the examination of different types of trademark applications. Below is a brief summary of the contents of each such Circular:

1. Slogans—the Registrar's Circular provides that the eligibility of a slogan to be registered as trademark will depend upon the following criteria being met:

(a) that the slogan has acquired distinctive character as a consequence of use. As a general principle, a slogan is regarded as lacking any distinctive character and/or as relating directly to the nature of the relevant goods or services. Thus, in order for a slogan to be registrable, it will need to have acquired distinctive character through use; and -

(b) that the slogan, in and of itself, associates, in the eyes of the public, between the goods or services with respect to which the registration is sought and the origin of the relevant goods or services; and -

(c) in cases where the trademark for which registration is sought consists of both a trademark of distinctive character as well as a slogan, registrability of the mark will be contingent upon a disclaimer being given with respect to such slogan; save that such disclaimer will not be required if the conditions referred to in paragraphs (a) and (b) above are met.

2. 3D Marks—the Registrar's Circular provides, with respect to 3D Marks, as follows:

(a) The accepted manner in which three-dimensional designs of goods (or their packaging) may be protected, is by filing an application to register a design.

(b) As a general rule, a mark constituting a three-dimensional image of the actual goods (e.g., an image of a medical pill or a laundry lozenge) contradicts the interpretation given to the term "trademark" as defined in the Israel Trade Marks Ordinance, in that registration may be sought for, and obtained, in respect of a given mark, only if the mark is intended to be used by a person in relation to goods manufactured or dealt with by such person (i.e., protection does not extend to the actual goods bearing such mark).

(c) Thus, in order not to nullify the distinction between trade marks and designs, the registration of three-dimensional figures as trade marks will only be possible in special and exceptional circumstances and where it is proven that the following two cumulative conditions are met:

  • the three-dimensional figure for which registration is being sought is used to mark the relevant goods as well as identify their origin; and

  • the mark has acquired distinctive character through use, to an extent capable of convincing the Registrar that the circumstances are indeed special and exceptional.

(d) In the event that the mark is deemed registrable, registration will be conditional upon the inclusion (in the registration certificate) of a notice clarifying that the mark is three-dimensional.

3. Trademarks comprised of letters or numerals - the Registrar's Circular provides, inter alia, as follows:

(a) The decision whether a trademark comprised only of letters, numerals or their combination is distinctive will be made in consideration of the goods or services with respect to which the registration is sought.

(b) a mark comprised of a single letter or numeral without any design will be considered as lacking distinctive character.

(c) a combination of two numerals will usually be considered as lacking distinctive character, as such combination is common to the trade.

(d) In general, a mark comprised of a combination of two letters or more, or a combination of three numerals or more, or a combination of letters and numbers, will be considered acceptable for registration, even if it does not include a design, subject to other provisions of the law. A disclaimer will not be required with respect to each letter or numeral, but that will not grant the applicant with an exclusive right with respect to the single letters or numerals comprising the mark.

(e) The decision whether to demand a disclaimer with respect to trademark comprised of letters, numerals or their combination alongside a word/s, will be made in consideration of the goods or services with respect to which the registration is sought and the resemblance between the mark and identifications common to the trade.

4. Trademarks filed in class 5 for pharmaceutical and medicinal preparations - the Registrar's Circular provides, inter alia, as follows:

(a) The ITMO will continue to demand that the specifications of trademark applications filed in class 5 for pharmaceutical and medicinal preparations be restricted to preparations for which the mark is actually intended.

(b) As a general rule, definitions such as "pharmaceutical preparations" which do not include a specific indication of a preparation, are too wide.

(c) However, if the Registrar is convinced, through the submission of appropriate evidence, that, at the developmental stage of the preparation, it may not yet be possible to portray its indications, as required, the mark will be accepted to cover the wide specification, accordingly. In such case, the registration will be subject to the applicant providing the Registrar with an undertaking to restrict the specification to specific preparations for which the mark is actually intended, within five years from the filing date. This condition will be recorded in both the registration certificate and in the Registry, until the specification of goods is actually restricted.

(d) The ITMO’s policy to register "house marks" for pharmaceutical and medical companies with respect to a wide range of preparations, without including specific indications, will continue only to the extent that the ITMO is convinced that the applicant indeed engages in the manufacture and/or marketing of a wide range of such preparations and that the requested "house mark" appears on those preparations alongside the mark on which the specific preparation is reflected.

Contributor:

Avi Ordo, Adv.
S. Horowitz & Co.
Tel-Aviv, Israel

For further information on this topic or other related topics, please contact Avi Ordo at S. Horowitz & Co.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.