Archive for category: Trademarks

Buy-Tech Telecommunications LTD. , the owners of the domain name http://www.hotels.co.il/ has filed a trademark application for the mark hotels.co.il (application number 234287) in classes 35, 42, 43 and 39. The Trademark Examiner rejected the application, based on lack of distinctiveness.

The Applicant appealed and raised his claims before the Deputy Commissioner, Ms Jaqueline Bracha. The Applicant has argued that the website is well known, acquired a reputation with both hotel owners and tourists, and also generates 70 million Shekels per year.

The Deputy Commissioner rejected the applicant’s claims based on the Federal Circuit Decision from the United States re Hotels.com L.P. 573 F.3d 1300, 91 USPQd 1532, where the Court ruled that the generic term “hotels” did not lose its generic character by placement in the domain name HOTELS.COM. She also pointed out scholars opinions from Kerly’s Law of Trademarks, who claims that a registration of a domain name doesn’t by itself create an IP or monopoly right but, rather a contract with the domain name authorities.
The Deputy Commissioner has also ruled that the mark hasn’t acquired secondary meaning and rejected the Appeal.

Application number 234287 – hotels.co.il

The slogan “GUARANTEED TO KEEP YOU DRY” in classes 24 and 25 for textile and clothing sealed for water was rejected by the Trademark Commissionar on the Basis of lack of distinctive Character. The current guidelines regarding slogans is that slogans should be treated like any other trademark and could be registered if they are actually serve as a trademark and indicates the source of the goods. On December 8 2011, the District Court of Tel Aviv has ruled in the case of Eveready Battery Company Inc V. Registrar of Patents (21488-05-11), that the examination of a slogan should be the same as any other mark, without the prior assumption that a slogan lack of distinctive character by its nature . This decision was given in an appeal of decision of the Trademark Registrar in which he denied the trademark application FREE YOUR SKIN on the basis of lack of distinctiveness.

In the Decision of FREE YOUR SKIN Court has offered a test in order to decide whether a certain slogan can be registered as a trademark in Israel. The test would be whether we can presume that a consumer who enters a shop in order to buy a certain product would ask the product from the seller using the slogan? If the answer is positive than we can assume that the slogan indeed serves as a trademark and indicates the source of the goods to the consumer and therefore should be eligible for registration.

The trademark application for the shape of the Cointreau alcohol bottle was refused by the Trademark Registrar. The application covers a brown glass bottle as shown above.

The application was rejected based on the Supreme Court ruling in the Toffifee case ( AUGUST STORCK KG v. Alfa) that for a product to be registerable as a three dimentional trademark it is required to fulfill three basic conditions:

A. It has to be exceptional different from other similar container
B. It has to actually serve the function of a trademark and be considered as such by the relevant consumers
C. It has to acquire secondary meaning due to extensive use in the market.

It was ruled that the Bottle wasn’t different from other alcohol bottles exciting in the market and that the bottle shape wasn’t sufficiently distinct. Also it was ruled that the applicant had failed to provide convincing evidence that the bottle has been used as an actual trademark.

The Israeli Deputy Trademark Registrar has ruled that the trademark application consisting of a Tigris figure considered as infringing Puma’s trademark in class 25 and therefore cannot be eligible for registration.

City Wash LTD is an Israeli company who manufactures different kinds of clothing. City Wash has filed a trademark application for a combination word-image mark consisting of a silhouette of a Tiger and the word “Tigris” which is tiger in Hebrew language.

PUMA, AG, is a well known German clothing company who manufactures sports clothing under the PUMA logo.

Puma has filed an opposition claiming that the Tiger mark was confusingly similar to their puma logo, and that it was non-distinctive and constitutes a dilution of Puma’s trademark rights.
Puma claimed that the mark was non-distinctive, confusingly similar to Puma’s marks and a dilution of the Puma’s mark.

The Deputy Registrar has accepted the opposition and rejected the application on the grounds of likely of confusion between the marks.

Point for thinking: It is interesting to know that there are other sports brads who uses the silhouette of a wild cat in a similar movement, that coexist with the PUMA trademark, such as Slazenger and Jaguar. It seems that no one have a monopoly over the silhouette of a wild cat in regard to sport clothing. In addition, we hardly think that there is any likely of confusion between the marks.