In decisions handed down ten days apart (19 and 29 of August 2010) the Israeli Trademark Office accepted McDonald’s trademark application for I’M LOVIN’ IT and rejected Philip Moris’s applications for Enjoyed in +70 Countries and Best Enjoyed Slowly.
The first decision was handed on 19th of August 2010 to McDonalds. Initially, the mark I’M LOVIN’ IT was refused registration for being a slogan designed to promote McDonald’s products and therefore did not serve as a trademark. While a slogan may be registered as a trademark in Israel, the Trademark Office provides three tests that such a slogan must pass: the first, that the slogan is used as a trademark with the intent to create identity between the mark and the business of the applicant; the second whether the public perceives the slogan as marking the product or its source; and the third, whether the slogan/mark meets the requirements of section 11 of the Trademark Ordinance. The first and second tests relate to inherent and secondary meaning, and the third relates to registration bars.
While McDonalds filed evidence showing extensive use, the Trademark Office held the mark I’M LOVIN’ IT is a laudatory slogan, not subject for the protection of the Israeli Trademark Law. Marketing material filed by McDonalds showed that the principles of the campaign in which the slogan I’M LOVIN’ IT was launched was to try and associate between the slogan and McDonalds, but this association, the Trademark Office held, was not by creating a mark identifying McDonalds rather sending a message according to which the customer loves McDonalds, its services and products. McDonalds even filed a survey and showed that a large part of the public associates the slogan I’M LOVIN’ IT with McDonalds, but the Trademark Office noted that the survey failed to ask “what does the mark I’M LOVIN’ IT means to them?” The Trademark Office held that associating a mark with a particular business does not necessarily shows acquired secondary meaning. The Trademark Office therefore determines that the slogan I’M LOVIN’ IT may not be registered in Israel because it is a slogan having a marketing character, comprised of general laudatory words, and failed to acquire secondary meaning or distinctive character.
McDonald also requested the registration of the slogan I’M LOVIN’ IT under section 16 to the Trademark Ordinance, which deals with registration of foreign trademarks registered in the country of origin. Section 16 provides six limitations on registration, none of which deals with slogans. The relevant limitation states that the Trademark Office will not register a mark under section 16 if such mark does not have a certain character making it distinctive. The Trademark Office interpreted this limitation as stating that the mark must have “substantial positive character of lack of distinctive nature to prevent its registration.”
When reviewing the mark I’M LOVIN’ IT the Trademark Office says that it does include some elements which makes the slogan distinct from an ordinary marketing slogan, namely its grammatical form which would not be ordinarily descriptive, and the indirect address of the applicant as opposed to an instruction TO LOVE IT. Together with the evidence filed by McDonalds the Trademark Office held it is possible that some distinctive character does exist in the mark I’M LOVIN’ IT. While it may not be sufficient under Israeli law it was found to be sufficient under section 16 allowing the registration of foreign trademarks in Israel.
The second decision was handed on 29th of August 2010, ten days after the McDonalds decision was handed down. In contrast to the McDonalds decision which is some 9 pages in length the Philip Moris is 3 pages long. Philip Moris filed two applications, one for the mark “ENJOYED IN +70 COUNTRIES” and the second “BEST ENJOYED SLOWLY” with a design. Similarly to the McDonalds case both marks were refused registration for being laudatory slogans and while the applicant was given the opportunity to register the marks with a disclaimer, the applicant argued that the marks were not laudatory slogans and should therefore be registered without disclaimers. Repeating a similar analysis to the McDonald’s case the Trademark Office held both slogans laudatory slogans which cannot be registered.
Similarly to the McDonalds case the applicant moved the Trademark Office to register the two slogans under section 16. In contrast to the McDonalds case the Trademark Office held the two slogans “ENJOYED IN +70 COUNTRIES” and “BEST ENJOYED SLOWLY” with a design could not acquire secondary meaning since they were inherently descriptive. The difference between the two cases seems to rest in the amount of evidence filed with the Trademark Office showing secondary meaning because all three slogans seem to include elements which makes these slogans distinct from an ordinary marketing slogan, namely their grammatical form which would not be ordinarily descriptive, and the indirect address of the applicants to consumers as opposed to direct instruction. Philip Moris’ slogans include such features as “+70” and the word “SLOWLY” which are not necessarily used in laudatory instructive slogans.
While the record does not state what evidence was filed in the Philip Moris case, it can only be presumed that the applicant in this case did not file a survey or other substantial evidence to show that secondary meaning was acquired, and if such evidence was filed it was not discussed in the decision. As the case may be, the requirement to file substantial evidence of secondary meaning and a consumer survey may be crucial in some cases.
The same outcome can also be extracted from another recent decision in the Motion for Registration of Trademark 192808 (Belden Technologies Inc.) where the Trademark Office refused a motion under section 16 of the Trademark Ordinance for the registration of the slogan “SENDING ALL THE RIGHT SIGNALS” in class 9, where no secondary meaning was proved or even argued to exist.