Israel - trademarks - Supreme Court Faces Novel Trademark Issues

In a recent decision, the Israeli supreme court faced some novel issues converning the trademark practice.

The supreme court faced an appeal by Pascol advanced technologies inc., on the trademark adjudicator´s decision to allow the trademark Gatewave for registeration, despite appealant registered trademark "Gateway 2000".

As a part of the decision, the supreme court faced the following novel and important issues:

A. Should new trademarks registered by the trademark owner (appealant) during the opposition proceeding be granted any weight in the decision?

The court ruled that even new trademarks cannot be ignored if they were registered in good faith.

B. The extent of the protection of a generic/descriptive trademark after registeration

The supreme court ruled that even after registeration, a descriptive or generic mark will be granted less protection, and even a mark with minor changes may lead to the conclusion that there is no infringment.

C. When checking whether there is a risk for misleading consumers, Should the court rely only on the registered description of goods and services, or should the actual use of the trademark be taken into account.

The court ruled that while the starting point is the trademark registry, the actual use of the trademark should not be ignored, and the registeration should be considered as giving some "space" to the trademark owner to extend his use.

Zeev Fisher, Adv. 23/6/2007

Trademarks: Israeli trademark office rules that "Once Weekly" is a descriptive term and isn´t eligble to be registered as a trademark

In a recent decision, the Israeli Trademark Office ruled that the term "Once Weekly" cannot be registered as a trademark which relates to a drug, as it is descriptive.

The proceeding was an appeal on the trademark examiner´s decision that "Once Weekly" is a descriptive term, and therefore, did not allow it to be registered as a trademark.

The applicant claimed that the term is implying, at most, and not descriptive, as it concerns the dosage of the drug and not the drug itself. The applicant further claimed that the drug has aquired distinguishing value among its customers.

The adjudicator ruled that:

"I find the examiner´s rulling correct and lawful. The terms ´Once Weekly´ in English or in Hebrew are with such a broad extent of descriptive value, that even if distinguishing value is proved, they are not eligible to be registered as trademarks, since it would not be appropriate to deprive the general public or other practitioners the right to use these terms".

The adjudicator also ruled that nevertheless distinguishing value was not proved.

Zeev Fisher, Adv. 21/6/2007