Slogans Can be Registered as Trademarks in Israel
by Jonathan Agmon
On December 8, 2011 the District Court of Tel Aviv handed down its decision in an appeal filed by Everyday Battery Company against the Patent Registrar. The District Court refused to allow the registration of the mark FREE YOUR SKIN for shaving products because it was laudatory. The District court did state that a slogan is registerable if it has secondary meaning and is not laudatory or descriptive.
The applications to register the mark FREE YOUR SKIN, serial nos. 204832 in class 3 for shaving products and 204499 in class 10 for razors for shaving, were refused by the Patent Authority since it was a laudatory slogan which was not designed to transfer to the public a message as opposed to a mark which is designed to associate a product to its source. Such mark the Patent Authority stated lacked secondary meaning. The Patent Authority relied on the decision in Re Application to Register Marks No. 171187 – 171183 DO WHAT FEELS GOOD, where the Patent Authority stated that a slogan will only be registrable when the slogan acquired secondary meaning as a result of use; the slogan associates in the mind of the consumer between the product and its source and has the ability to distinguish between the product at hand and other products; and the public must associate between the slogan and the source of the goods even without the mark associated with the product (where they are used together). In addition, the Patent Authority relied on its own Circular M.N No. 29 embodying the above test and stating that if the mark is used with the slogan the entire mark will be reviewed, but a disclaimer as to the slogan will be required. Thus, the refusal was based on two main principals, the first that the slogan by itself without the mark used on the product are laudatory and is therefore unregisterable in accordance with section 10(1) to the Trademark Ordinance, and that the meaning of the slogan will not, of itself, enable the public to identify the source of the goods.
The court stated at the beginning of his decision that in general slogans are registerable if they have secondary meaning and are not laudatory or descriptive. While a trademark is designed to distinguish between the products of competitors in the same field, and allow its owner to protect the good will acquired in the mark, it should not be overly, it should also protect the public interest to prevent confusion through the misuse of trademarks. However, overly restricting the registrations of trademarks from the public is undesirable since it restricts the freedom of trade and speech of the public at large. The process of registration is designed to balance out the various interests.
Since the applicant did not argue that the slogan FREE YOUR SKIN acquired secondary meaning, the court had to determine if it had inherent secondary meaning. When reviewing the slogan in question, the court stated that laudatory words cannot be subject of registration when they are general in nature or if they describe the goods or services to be registered. Laudatory words whose choice is not evident, or showing an original idea can be registered.
Following other countries, the Court stated that the standard to be applied to the registration of slogans should be the same that is applied to the registration of other marks and that no special criteria will be applied. Next the Court turned to determine if slogans are inherently lacking secondary meaning as stated in Circular MN No. 29. The Court, reviewing various cases and treaties from US and European courts, such as In re Volvo Cars of North America, 46 USPQ2d 1455 (BNA), and In Re Audi, decided that case law did not support a contention that all slogans inherently lack secondary meaning. The Court did not agree with the Patent Authority that the public will fail to associate the mark FREE YOUR SKIN with a product and that it would be possible that an Israeli consumer would use the slogan to shop for shaving products. Therefore, the court stated that there was no basis to state that the slogan is merely a marketing and image slogan lacking any secondary meaning.
The Court did agree with the Patent Authority that the slogan FREE YOUR SKIN is purely laudatory and must be denied registration based on section 10(1) to the Trademark Ordinance. While, counsel for the applicant argued that the slogan is suggestive because shaving products cannot literally free one’s skin, the Court reviewed each element of the slogan and stated that the term SKIN is descriptive, and that the term FREE describing clearing or loosening one’s own skin is also descriptive or laudatory. The Court further states that the combination of the words as a whole does not create a new meaning rather it is a laudatory slogan which, for the relevant products, is designed to tell the consumer to clean his skin from hair and leave him with a sensation of release, or that the slogan describes the results of use of the product at hand. Reviewing the appellant’s position that the slogan is suggestive, the Court stated that the consumer will not be required to use any intellectual effort to associate between the slogan and the product’s qualities or the results of its use. Since the combination of the words FREE YOUR SKIN does not create any new meaning, there is no clever suggestion or originality, the mark is not suggestive. The Court further googled the term and found it to be in use in the field. Going beyond the required to determine the issue, the Court states, that even if it has erred and the slogan is in the middle ground between suggestive and descriptive or laudatory marks, public interest requires that the right of an individual to a property right is rejected to maintain public interests such as the freedom of speech, trade and competition.
Finally, the Court rejected the applicant’s argument that the mark should e registered in view of the many like marks registered in other countries. The Court stated that marks are registered having due regard to the basic values of the legal system, such freedoms to compete and freedom of speech and trade, which may be different inIsrael than in other countries. Thus, the fact that a trademark was registered abroad will not, by itself, will not lead to the conclusion that it must be registered in Israel.