Can a Fin Shape Jewelry be Eligible for a 3D Trademark in Israel?

Ronit Kopel filed a trademark application for a three-dimensional mark for a fin shape in class 14 for “jewelry and key holders” that looks like this:

The Trademark Office has issued a refusal based on the claim that the mark merely describes the goods as a three-dimensional product and therefore lacks a distinctive character, meaning that the mark is the product itself.

In Israel, it may be possible to register the shape of a good as a trademark in special cases, where sufficient evidence is provided to demonstrate three cumulative conditions ruled by the Supreme Court in the case of August Storck KG B v Alfa Intuit Food Productions Ltd (CA-11487- 03, March 23 2008) (The Toffefe Case), as follows: 

1. The image requested to be registered, in practice, functions as a trademark, namely it indicates the source of the goods intended to be sold under the mark. 

2. The image requested to be registered, does not serve solely an aesthetic or functional purpose.

3. As a result of use, the mark has acquired a distinctive character that indicates the source of the good. 

The above requirements were described later as the “Three Requirements Test” and was also adopted by the Israeli Trademark Registrar as the official requirements for the examination of three-dimensional marks.

The applicant responded that her mark meets the Three Requirements Test, that it is well known in Israel and that it has acquired distinctive character due to intensive use in the market.

The Trademark examiner rejected the applicant’s claims, so the applicant requested an oral hearing, trying to persuade the IP Commissioner that the Examiner’s decision was wrong.

The IP Commissioner relied upon the Supreme Court’s decision in The Toffefe Case, and analyzed the case as follows:

  1. Function as a Trademark

The IP Commissioner ruled that the fin shape functions as a trademark only for the bags and packages, sold under the mark, but not for the jewelry product itself, as can be seen from the following photos:

The IP Commissioner decided that the mere sale of fin shaped jewelry does not prove that the requested mark functions as a trademark, since it doesn’t serve as an indicator of origin that differentiate from other goods been sold in the market. The following are photos of  some of the applicant’s products: 

  1. Aesthetic or Functional Purpose

The IP Commissioner ruled that the shape of a fin as a jewelry or work of art is based purely on aesthetic reasons, since the consumer buys them for their aesthetic value of a fin, that attracts the eyes, and not for any other reason. Therefore, the aesthetic character of the fin shape is so material, it prevents any trademark protection.

  1. Acquired Distinctiveness – Secondary meaning  

Following the rejection of two of the three requirements test, IP Commissioner decided that there is no need to analyze if the mark has acquired distinctive character through intensive use in the market. The IP Commissioner’s opinion was that even if such acquired distinctiveness was established, the fact that the shape is based on a pure aesthetic character prevents any trademark protection.

The Applicant then claimed that the reason for applying for a three-dimensional application is to prevent competitors from selling confusingly similar fin shaped jewelry.

The IP Commissioner rejected this claim and decided that this reason does not justify a trademark protection and in fact was a reason NOT to approve the application.

The IP Commissioner ruled that the applicant should have filed for a registered design  for a limited protection under the law and that the registration of the three-dimensional trademark as the product image and as a defensive step in order to prevent others from using the fin image or similar figures does not meet the basic purposes of trademark law.

The application was denied. 

Nothing in the above shall be considered as any legal advice or any legal opinion whatsoever. This is just an informative article. We strongly recommend consulting with a professional attorney in such matters.