Proving Wide Publicity and Sales of a Product Does Not Necessarily Prove the Distinctiveness of Its Trademark.
Posted by: Meirav Shalem in Trademarks, Israel, Decision on Mar 24, 2008
Reckitt & Colman (referred to hereinafter as "the applicants") tried to register a trademark that goes by the Hebrew name of " ערכת גילוח ללא סכין" which is translated as "A bladeless shaving kit". The applicants already own another trademark named "Bladeless Razor" registered abroad.
The Patents and Trademarks Commissioner (referred to hereinafter as "the Commissioner") rejected their request claiming the trademark is "non-distinctive".
In response, the applicants have carried out a survey and showed that many customers use their product; a wide publicity of their product under the Hebrew name of "Bladeless Shaving Kit" in Israel provingtheir vast scale of sales and publication of the product in the country.
In response, the Commissioner has claimed that proving the vast utilization and/or selling and/or publication of a product does not necessarily prove that the consumers are familiar with the name of the product and that they distinguish the applicants' product from other available products due to the product's name.
Therefore, the Commissioner has rejected the applicants' trademark application again for lacking any distinctive character.
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written by meirav, April 14, 2008
There can be an association between two same/similar trademarks of the same Applicant registered in different countries but the IL PTO is still entitled to examine the trademark according to it's own standards.
In this case the Hebrew name of the trademark was indistinctive according to IL requirements of distictiveness of a trademark, therefore the IL PTO demanded that the Applicant proves that the trademark in IL is established enough - meaning that the Israeli public distinguishes the Applicant's product from other similar products just by the product's trademark (in this case by the name of the product). Since the Applicant has failed to do so his trademark has been denied by the IL PTO.
If the foreign trademark (owned by the same applicant) is "Well Known" in Israel (and that should be established and proved by the applicant) an acceptance "highway" to register the trademark in IL can be demanded. But it isn't that easy to prove that a trademark is Well Known unless it i really is a famous one.
Hope that answers your question :-)
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It appears that the Applicants for the proposed mark and the prior mark are the same.If so isn't there any provision under the Israel laws to allow such marks as associated trade marks originating from the same applicant? Regards,Anjan Sen,Kolkata,India.