Update: Israeli Supreme Court Upholds Record-Breaking Trademark Infringement Award

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A ground breaking Trademark Infringement Award in Israel. In a significant development for intellectual property rights in Israel, the Supreme Court has denied the appeal filed by Rami Levi Shikma Marketing 2006 Ltd. and Yafiz Fashion Ltd. 

In this decision, the Supreme Court is affirming one of the largest trademark infringement awards ever granted in the country (following the withdrwal of the appeal by the defandnats).

Brief Recap: The District Court’s Landmark Ruling

As previously reported, the Tel Aviv District Court delivered a trailblazing Trademark Infringement Award in April 2023, ordering Rami Levi and Yafiz Fashion to pay over 3 million₪ (including 2,413,836₪ plus interest and expenses) to Lifestyle Equities C.V. and Lifestyle Licensing B.V., the owners of the Beverly Hills Polo Club (BHPC) brand, for unauthorized sales of branded products.

The plaintiffs were representing by Yossi Sivan Law Firm.

This judgment was notable for several reasons:

  • Record Compensation: The Trademark Infringement Award is among the highest ever seen in Israel for a trademark infringement case, calculated based on the defendants’ actual gross profit instead of estimated damages or reasonable royalties.

  • Third-Party Liability: For the first time, a commercial distributor was held responsible even when it did not directly manufacture the infringing goods, establishing that retailers cannot shield themselves from liability by relying solely on their suppliers.

  • Enforcement of Licensing Restrictions: The court enforced restrictions limiting distribution to specific retail channels, confirming that licensees and third parties must respect such restrictions when notified.

Supreme Court Denies Appeal: Major Milestone for Brand Owners

Following the District Court’s decision, Rami Levi and Yafiz filed an appeal to the Israeli Supreme Court. The Supreme Court has now rejected their appeal, cementing the lower court’s judgment and its legal precedents.

This outcome is a phenomenal achievement for brand owners in Israel. The Supreme Court’s decision unequivocally reinforces trademark protections and demonstrates the judiciary’s willingness to uphold substantial remedies, including disgorgement of unlawful profits, in favor of rights holders.

It sends a clear message: brand owners can successfully pursue meaningful enforcement, and commercial distributors must take intellectual property compliance seriously.

This decision stands as a milestone for the protection of international brands in Israel’s market and sets an important precedent for future trademark enforcement actions.

Dislcaimer: Please be aware that the information provided in this article is intended for general informational purposes only and should not be considered legal advice. For specific legal matters, it is recommended to consult with a licensed attorney.

How to Compare Trademarks with Brandiligence™

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Comparing trademarks is a critical step in protecting your brand and ensuring successful trademark registration. Traditionally, this process is time-consuming and complex, requiring detailed analysis of both the marks and their associated goods or services. In this article, we’ll walk you through the phases of trademark comparison and show you how BranDiligence’s AI-powered platform transforms and streamlines the process for anyone needing to compare trademarks efficiently and accurately.

Understanding Trademark Comparison

When you compare trademarks, you are looking for similarities that could cause confusion among consumers or lead to legal disputes. The comparison process typically involves:

Visual, Phonetic, and Conceptual Analysis

  • Visual Comparison: Examining the appearance, spelling, and structure of the marks1.

  • Phonetic Comparison: Assessing how the marks sound when spoken1.

  • Conceptual Comparison: Considering the meaning or impression the marks convey.

Comparing Goods and Services

A key phase in comparing trademarks is analyzing the lists of goods and services. This means checking if the products or services covered by each mark are similar or related, which is crucial for assessing the likelihood of confusion.

All-Pairs Comparison

The most labor-intensive part is the “all-pairs” comparison:

  • Every good in the prior mark must be compared to every good in the applicant’s mark.

  • For two lists of 20 goods each, that’s 400 individual comparisons!

  • This step is essential to ensure no potential conflict is overlooked.

Why Traditional Comparison is Challenging

  • Manual Process: Reviewing each possible pair of goods is tedious and error-prone.

  • Time-Consuming: Complex cases can take hours or even days to complete.

  • Risk of Missed Conflicts: Human fatigue or oversight can lead to missed overlaps, resulting in costly legal issues or office actions.

How BranDiligence Transforms Trademark Comparison

BranDiligence is an AI-powered platform designed to make comparing trademarks faster, more accurate, and far less stressful9. Here’s how it changes the game:

Instant All-Pairs Analysis

  • AI Technology: BranDiligence automatically compares every good in both lists against each other, performing thousands of combinations in seconds—not hours.

  • Comprehensive Coverage: No risk of missing hidden overlaps, even in long or complex lists.

  • Visual Reports: Instantly see which goods are highly similar, which are low similarity, and which are dissimilar, allowing you to focus only on what matters.

Enhanced Output and Insights

  • Similarity Scoring: The platform provides clear similarity scores for each comparison, making risk assessment straightforward.

  • Client-Ready Reports: Generate detailed, professional reports for office actions, oppositions, or client communications with a single click.

  • Actionable Recommendations: BranDiligence highlights only the relevant overlaps, so you can quickly amend goods or prepare a focused legal response.

Massive Time and Cost Savings

  • Hours Saved: What used to take hours now takes seconds, freeing you to focus on strategy and client service.

  • Reduced Errors: AI ensures no combinations are missed, reducing risk and improving outcomes.

  • Scalable: Whether you’re comparing two goods or two hundred, BranDiligence delivers instant, reliable results.

Why Use BranDiligence to Compare Trademarks?

  • Speed: Instantly compare trademarks and goods/services, no matter how long the lists.

  • Accuracy: AI-driven analysis eliminates human error and oversight.

  • Efficiency: Focus on the overlaps that matter, not on endless manual pairings.

  • Professionalism: Deliver comprehensive, clear, and actionable reports to clients or examiners.

Conclusion

Comparing trademarks is a vital but often daunting process. With BranDiligence, you can compare trademarks and their goods/services with unmatched speed and precision. The platform’s AI-driven approach ensures you never miss a critical overlap, saves you hours of manual work, and dramatically improves the quality of your analysis.

Ready to revolutionize how you compare trademarks? Try BranDiligence today and experience the future of trademark analysis.

Key Benefits and Disadvantages of Using the Madrid System to File Trademarks

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The Madrid System for trademark registration offers a streamlined and cost-effective solution for businesses seeking international protection for their trademarks. By allowing applicants to file a single international application through the World Intellectual Property Organization (WIPO), the Madrid System simplifies the process of securing trademark rights in multiple countries. This centralized approach not only reduces filing and administrative costs but also eliminates the need for local representatives in each jurisdiction, making it an attractive option for companies looking to expand their brand presence globally. In this article, we will explore the key cost benefits of using the Madrid System and how it can provide significant savings for trademark owners.

Benefits of Madrid System

There are several benefits of using the Madrid System for trademark registration:

 

  1. Cost-effective filing: The Madrid System allows you to file a single international trademark application, rather than multiple national or regional applications, which can result in significant cost savings.

 

  1. Single set of fees: You only need to pay one set of fees in one currency to apply for protection in multiple territories simultaneously.

 

  1. No need for local representatives: The centralized system eliminates the need to hire local representatives in each country, further reducing costs.

 

  1. Centralized management: The system allows for centralized management of your international trademark portfolio through WIPO, which can lead to cost savings in terms of administration and maintenance.

 

  1. Simplified renewals and modifications: Changes such as renewals, modifications, or ownership transfers can be handled through a single procedural step with WIPO, eliminating the need to coordinate with each national office separately.

 

  1. Reduced translation costs: There’s no need to pay for translations in each country, as applications can be filed in one of three languages (English, French, or Spanish)

 

  1. Expansion savings: The system allows for quick and easy expansion of protection into new markets, potentially saving costs associated with individual national filings when entering new territories.

 

It’s important to note that while the Madrid System offers significant cost benefits, the total fees can still be impacted by factors such as the number of countries designated, the classes of goods and services covered, and whether the trademark includes color elements. Additionally, the cost-effectiveness may vary depending on the specific needs and circumstances of the trademark owner.

 

key disadvantages of using the Madrid System

The key disadvantages of using the Madrid System for trademark registration are:

 

  1. Risk of central attack: If the basic registration in the home country is successfully challenged or cancelled within the first 5 years, it can lead to the cancellation of all international registrations based on it. This is known as “central attack” and is a significant risk.

 

  1. Limited flexibility: The Madrid System requires using the same mark and goods/services description across all designated countries. This can be problematic if different versions of the mark or tailored descriptions are needed for specific markets.

 

  1. Potential loss of investment: If a trademark is rejected in multiple countries, the entire investment in the international registration could be lost. With national filings, only the fees for the specific country where rejection occurs would be lost.

 

  1. Upfront costs: The Madrid System requires payment of all fees (filing, publication, registration) upfront for all designated countries. In contrast, national filings often allow for staggered fee payments at different stages of the process.

 

  1. Dependency on basic registration: For the first 5 years, the international registration depends on the basic application or registration in the home country. Any changes or cancellations to the basic registration can affect the international registration.

 

  1. Potential for transformation costs: If an international registration is cancelled due to central attack, transforming it into national applications can result in increased representation fees and filing fees.

 

  1. Limited customization: The system may not be suitable for companies needing different versions of their mark or varying goods/services descriptions in different countries.

 

  1. Possible enforcement issues: Some countries (like OAPI members, Eswatini, Ghana, Liberia, Namibia, Sierra Leone, Zambia, and Zimbabwe) may not have enacted domestic legislation to explicitly provide protection for marks designated under the Madrid System, potentially affecting enforceability.

 

  1. Less control over local processes: Using the Madrid System means relying on WIPO and national trademark offices for various procedures, which may result in less direct control over the registration process in each country.

These disadvantages highlight that while the Madrid System offers many benefits, it may not be the best choice for all situations, and companies should carefully consider their specific needs and circumstances when deciding between the Madrid System and national filings.

 

When Can the Trademark Office Refuse or Limit a Coexistence Agreement ?

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When it comes to trademark applications, the road to registration can be riddled with hurdles. For example, the Trademark Office may issue a refusal due to a likelihood of confusion with a registered trademark. 

Suppose the applicant and the owner of the cited mark agree to a coexistence agreement. Does the Trademark Office have to accept the coexistence agreement and cancel the refusal?

This very question was at the heart of a recent landmark case in Israel. The outcome might just surprise you!

The Initial Setback

An application was filed for the trademark CVISKAL under class 3, designated for laundry products. However, it hit a snag when the Trademark Office refused the application due to its similarity to an already registered mark, CVISCAL, also in class 3. This refusal was grounded in concerns over potential market confusion between the two marks.

A Path to Coexistence

In response, the applicant and the owner of the registered mark CVISCAL reached a coexistence agreement, which was subsequently submitted to the Trademark Office. This agreement was intended to resolve the issue and allow both trademarks to coexist peacefully in the market.

However, the Trademark Registrar decided to impose a limitation on the agreement, stipulating that CVISKAL’s laundry products could only be sold to institutions.

The applicant found this restriction unacceptable and filed an appeal to the District Court, arguing that the agreement should have been accepted without additional limitations.

The Appeal

The applicant contended that the Trademark Registrar should have respected the coexistence agreement as it was, without imposing further restrictions.

On the other hand, the Trademark Registrar maintained that he possessed the discretion to reject or limit coexistence agreements to prevent market confusion, in line with his responsibility for the trademark registration system in Israel.

The District Court’s Decision

The District Court ultimately sided with the applicant, accepting the appeal. The Court agreed with the Trademark Registrar that both marks are confusingly similar, and that the Registrar has the authority to limit the list of goods in registration to avoid confusion.

However, it ruled that the Trademark Registrar should have considered the specific circumstances surrounding the coexistence agreement.

The Judge distinguished between two types of refusals:

  1. Relative Refusal Based on Registration: This occurs when a trademark application is refused due to its similarity to an already registered mark. In such cases, a coexistence agreement between the applicant and the owner of the cited mark is typically aimed at overcoming the refusal.
  2. Parallel Applications: This occurs when similar or identical trademarks are applied for, but neither has been accepted yet. Both applicants might receive refusals and enter into a coexistence agreement to resolve the issue.

Coexistence in Parallel Applications

In cases of parallel applications, the court acknowledged that the Trademark Registrar has the full authority to reject a coexistence agreement, as both parties are primarily motivated by their interest in getting their marks registered. This shared interest might lead them to overlook public interests and the potential for market confusion.

According to Israeli law, if two or more trademark applications are filed for similar or identical marks intended for related goods or services, and none of these applications has been accepted yet, the Trademark Office initiates interference proceedings under Section 29 of the Trademarks Ordinance.

These proceedings determine which application will prevail and proceed to registration, unless coexistence is possible. During interference proceedings, applicants must consider the possibility of reaching a coexistence agreement to resolve the conflict.

Coexistence in Relative Refusals

However, in the case of relative refusals based on registration, the court took a different stance. When the owner of a registered mark agrees to coexist with the applicant, both parties have a vested interest in preventing market confusion and differentiating their products.

Therefore, the public interest is effectively safeguarded by the parties themselves. Over-intervention by the Trademark Office, such as limiting the list of goods beyond the agreed terms, could harm the parties’ interests and unfairly benefit third parties.

The Court’s Final Ruling

Eventually, the court decided to accept the coexistence agreement without the limitations imposed by the Trademark Office. This decision highlighted the importance of considering the specific circumstances and interests of the parties involved in a coexistence agreement.

Strategic Implications for Trademark Applicants

This decision is crucial for trademark practitioners, highlighting that applicants need to understand the nature of the refusal they face:

For refusals based on another application, coexistence agreements could be rejected, leading to litigation and interference proceedings where both parties must prove their right to the mark.

For refusals based on similarity to a registered mark, coexistence agreements are likely to be accepted without additional limitations.

This ruling underscore the importance of strategic planning in trademark registration and the handling of coexistence agreements.

**Disclaimer:** This article is for informational purposes only and does not constitute legal advice. For specific legal guidance, please consult a licensed trademark attorney

How to Overcome A Trademark Refusal Issued by the Israeli Trademark Office

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Overcoming a trademark refusal in Israel, as in any jurisdiction, requires a strategic approach that involves understanding the reasons for the refusal, gathering relevant evidence, and potentially engaging legal assistance. Here’s a general guide on how to handle a trademark refusal issued by the Israeli Trademark Office:

1. Review the Trademark Refusal :

Carefully review the official refusal notice you received from the Israeli Patent Office (IPO). Understand the specific grounds on which your trademark application was refused. Common reasons include similarity to existing marks, lack of distinctiveness, and descriptive nature of the mark.

2. Consult an Attorney :

If you haven’t already, consider seeking legal advice from a trademark attorney with expertise in Israeli trademark law. A qualified attorney can help you understand the grounds for refusal, assess the strength of your case, and provide guidance on the best course of action.

3. Analyze the Grounds for Refusal :

Work with your attorney to analyze the grounds for refusal and determine whether they are valid. If the refusal is based on prior conflicting trademarks, assess whether the similarities are significant enough to cause confusion among consumers.

4. Evidence and Arguments :

Develop a strong case by gathering evidence that supports the distinctiveness, non-confusing nature, or other key aspects of your trademark. This might include evidence of prior use, market recognition, consumer surveys, and other relevant materials. Your attorney can help you present compelling arguments based on this evidence.

5. Negotiation and Response :

Your attorney will prepare a well-structured response to the Israeli Trademark Office’s  refusal notice. This response should address each ground of refusal with relevant arguments and evidence. Sometimes, engaging in negotiation with the IPO’s examiners can lead to a resolution without needing to go through a formal appeal process.

6. Appeal Process :

If the refusal is not resolved through negotiation, you might need to consider filing an appeal with the Trademark Registrar or the relevant court. The appeal process involves presenting your case to a higher authority, and your attorney will guide you through the necessary steps and documentation.

7. Modification or Amendment :

Depending on the reasons for refusal, you might have the option to amend your trademark application to address the issues raised. Your attorney can advise you on the feasibility of making changes to your application.

8. Monitor Deadlines :

Keep track of deadlines for responding to the IPO or other relevant authorities. Missing deadlines could jeopardize your ability to overcome the refusal.

9. Consider Local Practices :

Israeli trademark law and practices may differ from those in other jurisdictions. It’s important to understand and adhere to the specific procedures and requirements of the Israeli trademark system.

Remember that trademark law can be complex, and each case is unique. Engaging a knowledgeable attorney who specializes in trademark law can greatly increase your chances of successfully overcoming a trademark refusal in Israel.

For responding a Trademark Office Refusal contact us.

Trademark Opposition in Israel: A Comprehensive Guide

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Understanding Trademark Opposition in Israel

In Israel, a trademark opposition is a legal proceeding initiated by a third party who challenges the registration of a trademark.

The opposition can be filed with the Israeli Trademark Office within three months of the publication of the trademark application in the Official Gazette.

Grounds for Opposition

The opposition can be based on several grounds, including:

  • Likelihood of confusion with an existing trademark
  • Lack of distinctiveness or descriptiveness
  • Deceptiveness or misleading nature of the trademark
  • Conflict with public order or morality

The trademark owner has the opportunity to respond to the opposition, and the parties can provide evidence and arguments to support their positions.

The decision is made by a trademark Registrar after considering all the evidence and arguments presented by both parties.

How to File a Trademark Opposition in Israel ?

Filing Procedures and Deadlines:

The opposition must be filed within three months from the date of publication of the trademark application in the official Trademark Gazette. The opposition can be filed electronically through the Israel Patent Office’s online filing system or by submitting a paper form.

Responding to Opposition

After the applicant receives the opposition, they may choose to file a counter-statement within two months, in which they respond to the grounds of opposition.

Evidence and Hearings: After the counter-statement is filed, the parties may submit evidence and attend a hearing.

Decision: The Israel Patent Office will then issue a decision, which can be appealed to the Israeli courts.

If the opposition is successful, the trademark application will be rejected, and the trademark owner will not be able to register their trademark. If the opposition is unsuccessful, the trademark registration will proceed, and the trademark owner will have exclusive rights to use the trademark in Israel.

It is recommended to consult with a trademark attorney who is familiar with the legal requirements and procedures for opposing a trademark in Israel.

Difference Between National Registration and International Registration of Trademarks

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National registration and international registration are two ways to protect trademarks around the world, and both have advantages and disadvantages.

Advantages of National Registration:

  1. Cost: National registration is typically less expensive than international registration, as it only involves the fees associated with filing and prosecuting the trademark application in a single country.
  2. Simplified Process: National registration processes are often simpler and quicker than international registration processes. This is because they are designed to be familiar to local applicants, and the national trademark office is more likely to have a better understanding of local laws and customs.
  3. Better Protection: National registration provides better protection in the country where the trademark is registered. National registrations are subject to local laws, which may be more favorable to trademark owners, and trademark owners may have more resources available to enforce their rights.

Disadvantages of National Registration:

  1. Limited Protection: National registration only protects trademarks in the country where they are registered. This means that a trademark owner would need to file separate applications in each country where they wish to have protection.
  2. Language and Cultural Barriers: National registration can be challenging in countries where the language and culture are unfamiliar to the trademark owner. This may make it difficult to navigate the registration process or to enforce trademark rights in that country.

Advantages of International Registration:

  1. Protection in Multiple Countries: International registration provides protection in multiple countries with a single application. This is particularly useful for businesses that operate or plan to operate in multiple countries.
  2. Simplified Process: The international registration process is designed to be simpler and quicker than filing separate applications in each country. The international application is filed with the World Intellectual Property Organization (WIPO), which acts as a central registry.
  3. Cost-Effective: International registration can be cost-effective for businesses that wish to protect their trademark in multiple countries. The fees for international registration are typically lower than the fees for filing separate applications in each country.

Disadvantages of International Registration:

  1. Limited Scope of Protection: International registration only covers countries that are signatories to the Madrid Protocol. This means that there may be countries where protection cannot be obtained through an international registration.
  2. More Complex Process: The international registration process can be more complex than national registration, as it involves complying with the requirements of multiple countries and working with different national trademark offices.
  3. Dependence on Home Registration: International registration is dependent on the home registration, meaning that if the home registration is cancelled or invalidated, the international registration may also be affected.

In conclusion, both national registration and international registration have advantages and disadvantages, and the decision of which system to use depends on the needs and circumstances of the trademark owner. National registration may be more appropriate for businesses that operate in a single country, while international registration may be more appropriate for businesses that operate in multiple countries. Ultimately, it is essential to work with experienced trademark attorneys to determine the best strategy for protecting trademarks around the world.

MEET US AT THE INTA 2023 SINGAPORE

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Dear Clients and Colleagues,

We are thrilled to announce that we will be attending the INTA 2023 Annual Convention in Singapore from May 16th until May 20th.

The event is the premier gathering of trademark professionals from all around the world and is an incredible opportunity for us to connect with colleagues, clients, and partners, and to stay up to date with the latest trends and developments in our field.

We are excited to share our knowledge and experience with other industry leaders, and to learn from the best in the business. We look forward to catching up with old acquaintances, meeting new friends, and building relationships that will continue to thrive for years to come.

In addition to the convention, Singapore is a fascinating and dynamic city with a lot to offer. We suggest taking some time to explore the following attractions:

  1. Gardens by the Bay – This stunning 101-hectare garden features more than a million plants from around the world, including towering SuperTrees and a world-famous Flower Dome.
  2. Marina Bay Sands – The iconic three-tower hotel features an observation deck with breathtaking views of the city skyline, as well as a casino, a shopping mall, and a range of restaurants.
  3. Sentosa Island – This tropical island resort is home to a wide range of attractions, including Universal Studios Singapore, a water park, beaches, golf courses, and more.
  4. Chinatown – A vibrant cultural district filled with colorful shops, street vendors, temples, and traditional architecture.
  5. Merlion Park – A must-visit for first-time visitors to Singapore, this iconic statue features the head of a lion and the body of a fish, and is a symbol of the city’s history as a fishing village.

We can’t wait to see you at the INTA 2023 Annual Convention and to explore all that Singapore has to offer. If you have any questions about the convention or the city, please don’t hesitate to contact us.

Best regards,

Yossi Sivan Law Firm 

The Importance of a Word Mark Registration in Israel  

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Filing a trademark application for a word mark can be a powerful tool for businesses and organizations looking to protect their brand and intellectual property.

This article describes the Importance of a Word Mark Registration in Israel.   

A word mark is a type of trademark that consists of words, phrases, or slogans, rather than a design or symbol.

In contrast, a design mark is a type of trademark that consists of a design, symbol, or logo.

There are several reasons why businesses and organizations may choose to file a trademark application for a word mark rather than a design mark.

One major reason is that a word mark can be a more effective and efficient way to protect a brand.

A word mark allows businesses and organizations to protect their brand name and any associated slogans or phrases, which can be a key part of their brand identity.

This can help to prevent competitors from using similar brand names or slogans that could confuse consumers or dilute the strength of the original brand.

A perfect example can be learned from the recent case of the Israeli Trademark Office.

An applicant (shoe store) has filed a trademark application for the following designed mark in class 25:

 

The Trademark Examiner has refused the trademark application based on a similarity to a trademark registration for the word mark BUTTERFLY in class 25 owned by Tamasu Butterfly Europa GmbH:

 

BUTTERFLY

The applicant argued against the Examiner’s decision and requested a hearing before the Trademark Registrar.

The Trademark Registrar has reviewed the matter and rendered the following decision:

The test for the existence of a confusingly similarity is called the “triple test” and it includes the following tests:

  1. The visual and sound test
  2. The type of goods and marketing channels test
  3. The specific circumstances test

Regarding the visual and sound test, it has been determined more than once that the marks must be examined as a whole, but with emphasis on the dominant features of the marks.

According to the Registrar, the dominant element in both marks is the word BUTTERFLY, and the addition of the words SUPREME QUALITY will not prevent confusion since the words are transparent to the end consumer.

Furthermore, the word mark BUTTERFLY was determined to be strong enough in the fashion industry to protect against different types of designs and that the design features of the requested mark, such as the green color and BUTTERFLY drawing, may not prevent confusion.

Finally, the Trademark Registrar has decided to reject the requested application based on likelihood of confusion to the BUTTERFLY registration.

This is an excellent example of why word mark registration is crucial for brand owners, as it guarantees better brand protection.

A note: It may be counterproductive for an applicant who already uses a trademark to request a hearing before the Trademark Registrar to clear the way for registration, since a judicial decision showing a likelihood of confusion may be used to support a claim of infringement by the owner of the cited mark.

The risk of a potential infringement claim can sometimes be higher than the risk of not having a registration.

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Disclaimer: Nothing in the above shall be considered as legal opinion whatsoever. 

Can Basketball Stripes Pattern Be Registered as 3D Trademarks ?

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Israel, October 26, 2022.

Is it possible to register stripes pattern on basketball as 3D trademarks ? A recent decision of the Israeli Trademark Commissioner addressed this question.

KABUSHIKI KAISHA MOLTEN has filed a trademark application for stripes pattern on basketball in class 28 for basketballs and toys:

The trademark office refused the application for lack of distinctive character. 

According to the applicant, the requested pattern has acquired distinctive character through extensive market use, and is therefore eligible for registration.

The Applicant requested a hearing. 

The Trademark Commisioner, Dr. Ravia Israeli, was requested to decide whether stripes pattern on basketball eligible for registration as a 3D trademark.

The trademark commissioner ruled that the requested mark is a position mark, part of a product’s shape and design, therefore it bears a higher burden of proof.

The Trademark Commissioner has decided to follow the EU regulations regarding  position marks: 

“The factors to be taken into account when examining shape marks are also relevant for position marks. In particular, the examiner must consider whether the relevant consumer will be able to identify a sign that is different from the normal appearance of the products themselves. A further relevant consideration in dealing with position marks is whether the positioning of the mark upon the goods is likely to be understood as having a trade mark context.”

In other words, the consumer’s perception must be examined in relation to the design of the products in the relevant field, and whether the consumer will recognize the source of the goods when he notices the design that constitutes the requested mark.

The Applicant’s Stripe Pattern Lacks an Inherent Distinguishing Character

The trademark Commissioner has decided that the design of the applicant’s basketball is not unusual, unique or surprising in relation to designs in the field.

The design of the requested mark based on the pattern of the applicant’s stripes or the location of this design on the basketball does not constitute an independent element capable of directing the reasonable consumer in the field to the applicant. Therefore, it was decided that the mark lacks an inherent distinguishing character.

 Has the applicant’s stripe pattern acquired a distinctive character ?

As a general rule, when coming to decide on the question of the acquisition of a distinctive character, one must examine the period of use of the mark, the degree of publicity it received and the effort invested by the owner of the mark in establishing a relationship between the product and the manufacturer.

Volume of sales is not enough to necessarily create the required connection between the mark and the origin of the goods.

The applicant has submitted sufficient evidence to prove a substantial market share, but applicant has failed to demonstrate that the totality of the evidence shows that the pattern of stripes on the applicant’s balls has acquired a distinctive character and is identified with the applicant as the source of the goods.

“I did not find that the presentation of the image of the basketballs, which bear the applicant’s striped pattern, in the various publications, turns the design in question into a trademark of a distinctive nature eligible for registration.

On the products presented in the publications, the applicant’s name “Molten” appears next to its stripe pattern. Therefore, it cannot be determined that the stripe pattern without the accompanying name “Molten” next to it acquired a distinctive character …”


Therefore, the application for the stripes pattern as a three-dimensional mark ( 3D Trademark) (as a shape of a product) was denied.

At the same time, the requested mark in its two-dimensional form (the circle mark) is eligible for registration and will be recorded in the register with the addition of a disclaimer stating that this registration does not grant the applicant an exclusive right to the three-dimensional image of the ball and the pattern of stripes imprinted on it.

The meaning is that the stripes may be protected as a standalone trademark but not as a shape or design of a product.

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Disclaimer: Nothing in the above shall be considered as legal opinion whatsoever.