Israel: Revocation of the Only Israeli Appellation of Origin, for "JAFFA"

I. Summary

In a decision handed down by the Israeli Registrar of Trade Marks, dated January 9, 2005, it was held that the Israel Appellation of Origin for "JAFFA" (including "Jaffas" and also "Yafo", "Jaffa" and "Jaffas" in Hebrew) ("the JAFFA AO") will not be renewed. Thus, subject to an appeal, the registration of the JAFFA AO will be revoked.

Israel is a member of the "Lisbon Agreement for the Protection of Appellations of Origin and their International Registration" which came into effect on October 31, 1958. Pursuant to the Lisbon Agreement and in order to implement its provisions into the pertinent Israeli legislation, the Israel Appellations of Origin and Geographical Indications Law, 1965 ("AOGI Law") was enacted. The AOGI Law has since been amended to include, inter alia, geographical indications and other amendments so as to comply with the TRIPS Agreement.

Briefly, an appellation of origin refers to the geographical name of a country, region or locality contained in the name of a product and intended to convey that such product originates in such country, region or locality and that its quality or properties are mainly due to that geographical area, including its nature and people.

The JAFFA AO, which is known and recognised by the consumer public, both in Israel and worldwide, as relating to Israeli citrus fruit products is currently the only Israeli appellation of origin registered with WIPO. Registration of the JAFFA AO has been in effect in Israel since December 7, 1966. The proprietor of the JAFFA AO is the Israel Citrus Marketing Board ("the CMB").

Under the AOGI Law, an Israeli appellation of origin is protected for an initial term of ten years from the date of filing the application therefor and may be extended for additional periods of ten years each, without limitation, if the Registrar finds it is still being used as an appellation of origin. In the case at hand, following an application by the CMB to renew the JAFFA AO for an additional period of ten years, the Israeli Trade Marks Office initiated the procedure provided under the Israeli law to re-examine whether the JAFFA AO is still being used as an appellation of origin. The undersigned (Adv. Tal Band), was involved in the examination procedure and supported the position of the Israeli Trade Marks Office that the JAFFA AO should not be renewed.

The decision of the Registrar refusing the renewal of the JAFFA AO (which, as aforesaid, will lead to its revocation) was based primarily on the fact that the CMB has granted licences to foreign companies to grow citrus fruits in South Africa and to thereafter market such produce to England, under the JAFFA AO. In fact, over the past years hundreds of thousands of boxes of citrus fruits grown in South Africa—yet marked, with the CMB authorisation, under the JAFFA AO—were exported to England. Based on the said fact (which was not in dispute), the Registrar held that the JAFFA AO does not comply with the provisions of the AOGI Law. The conclusion arrived at was based largely on the following grounds:

In addition, the use of the JAFFA AO by the CMB was expanded to include other types of products other than citrus fruits, such as yogurt products (which, as alleged by the CMB, contain Israeli citrus fruit ingredients). This fact further reinforced the Registrar’s position according to which use of the JAFFA AO by the CMB frustrates the purposes of both the Lisbon Agreement and the AOGI Law with respect to the required connection between an appellation of origin and the characteristics of the product bearing such appellation of origin.

The Registrar also referred in his decision to the Lisbon Agreement in general. In this respect, the Registrar mentioned that, to date, only twenty-two countries have joined the Lisbon Agreement and that most of those countries are not amongst the leading countries engaging in international trade. The Registrar indicated that the Lisbon Agreement has not only failed to achieve its principal objectives in comparison with other intellectual property treaties and agreements but also has not had any substantial impact on the international protection of intellectual property rights.

It was also mentioned in the decision that the desire to protect the JAFFA AO was the main incentive for Israel becoming party to the Lisbon Agreement and to enact the AOGI Law at the relevant time. Accordingly, it may be assumed that the Registrar’s decision (if not reversed by the Board of Appeal) may cause Israel to re-assess its position with respect to the Lisbon Agreement, since Israel will no longer benefit therefrom.

The CMB, which has also registered the name "JAFFA" as a trademark, in Israel as well as in other countries throughout the world, may continue to use the name "JAFFA" and protect the use being made thereof as a trademark (rather than as an appellation of origin).

Contributor:

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

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