In Motion For Registration of Trademark Serial No. 169606 filed by Spirits International Intellectual Property B.V. handed down on April 19th, 2009, the Israeli Trademark Office rejected an application to register a vodka bottle as a trademark. The application, filed in class 33, relates to Kremlyovskaya vodka marketed in a unique bottle having triangles shapes on the bottle and a logo of the Kremlin in addition to vertical lines crossing the bottle.
The Trademark Office determines that three-dimensional marks are essentially registerable, however, the Trademark Office can refuse the registration of such a mark if it lack distinctiveness because it is descriptive in nature. The Trademark Office holds that generally the three dimensional image of a product is that product’s best description and therefore inherently descriptive. The Trademark Office can also refuse the registration of such a mark because it is common to the trade and should be open to all those in the relevant trade.
Citing the Israeli Supreme Court decision in Motion for Civil Appeal 11487/03 August Storck KG v. Alpha Intuit Food Products Ltd. The Trademark Office reiterates the position that the registration of a product’s image can only be made when the product’s image obtained distinctive character. Such protection can only be afforded to parts of the image that are not common to trade and to parts that should remain free to those in the relevant trade. Such protection will also not be available for any functional aspect or aesthetic features of such product’s image, these being reserved and secured by the Patent and Design protection.
Since very little is left to protect, having removed what is patentable and what can be protected as a design, the Israeli Trademark Office stated that only those features in the product’s image that were intended to serve a trademark function and have acquired secondary meaning can be registerable. Further it is suggested that the intent of the designer may be examined to determine such intent. Whether it was the designer’s intention to attract the eye of the consumer, to attract a consumer to buy the product, or create a connection between the product and the manufacturer. Finally, the Trademark Office provides some tests to identify those elements which may be registerable, namely, when the product’s image lines exceed its general shape and they suggest to a name or another element testifying about the manufacturer, rather than the product.
Since the Vodka bottle for which registration was requested does not include any special features the Trademark Office refused its registration. As to the additional features, especially those relating to the three dimensional symbol of the Kremlin, the Trademark Office noted that the applicant may re-file for these elements specifically and they will be examined separately.