The Israeli Patent Office has once again refused the registration of a three dimensional image of a product as a trademark. In this case the design involved a tehina (sesame paste) with a rather ordinary design:
The patent office rejected the notion that 3D trademarks are registrable without a clear showing that the 3D shape specifically serves a trademark function.
Citing the Supreme court, the Patent Office stated that a mark that is a visual description of a product should be kept for all those in the relevant trade and normatively should not be granted to any particular business, this in view of the character of trademarks which enable perpetual protection and the aims of the trademark system. (citing Civil Appeal 11487/03 August Storke KG v. Alpha Intuit Food Products Ltd, 19 April 2009).
In addition, the August court specifically stated that both the aesthetic and functional aspects of products are protected by other laws, such as the Patent and Design laws, and therefore these should not be protected under Trademark laws.
While applicant argued that the package of tehina does not have aesthetic features, the vice-Registrar determined that it was the intent of the applicant to distinguish its product from those of others and therefore, so long as the features are not functional they would suit the protection of designs and would therefore be considered to have aesthetic features.
In addition, while applicant argued that the product has attained secondary meaning through extensive and lengthy use, as stated by the Supreme court, even if the product has obtained secondary meaning, without clear proof that the shape of the product performs a trademark function, secondary meaning will not assist in seeking trademark protection for these aesthetic features.
In the instant case, the applicant did not provide any evidence showing that that the shape of the product performs a trademark function. In addition, the vice-Registrar determined that when discussing bottles and containers they do not serve as a wrapping and would not be considered to exceed their inherent function unless proved otherwise. In the specific case the applicant failed to prove the container serve a trademark function and the application was refused.