Aaron Lewin, Attorney
JMB Davis Ben-David
A recent decision of the Deputy Registrar of the Israel Patent Office shows how difficult it can be to obtain a trademark registration in Israel for a slogan – even when the slogan has already been registered in a major jurisdiction such as the United Sates.
In application number 328636, filed 14 June 2022, Bristol-Myers Squibb Company requested registration in Israel for the mark, “TRANSFORMING PATIENTS’ LIVES THROUGH SCIENCE”. The application was filed in Class 44 for the following services: “Providing medical and pharmaceutical information on the topic of health issues and health awareness and pharmaceutical preparations for human use”.
The examiner refused the application on the grounds that the mark lacked distinctiveness and was descriptive of the claimed services. The examiner further asserted that the mark was merely a slogan that could not function as a trademark, i.e., as an indicator of origin.
In response, the applicant’s attorney argued that the mark was suggestive and not descriptive of the services and in fact does function as a trademark. In the alternative, the applicant’s attorney requested acceptance pursuant to Section 16 of the Israel Trademarks Ordinance based upon the prior registration of the mark in the United States. After these arguments were rejected by the examiner, the applicant requested review of the refusal by the Registrar.
A hearing on the case was held in May 2022 before the Deputy Registrar, and on July 31, 2022, the Deputy Registrar issued her decision affirming the examiner’s position and finally refusing registration of the mark.
In her decision, the Deputy Registrar noted that a publication of the applicant that was submitted in support of the claim that the mark was distinctive in fact supported the opposite conclusion, that the mark was merely descriptive of the services, in that the publication described the applicant as a pharmaceutical company whose vision and mission was “transforming patients’ lives” through the discovery of new medicines. The Deputy Registrar further noted that the combination of words that constituted the mark was not unique to the applicant – other companies in similar or related fields, such as Merck Serono, Pozen and Ares Trading, also advertised their mission as “transforming lives.”
The Deputy Registrar found that the fact that the mark consisted of a sequence of five words and was used for marketing purposes leads to the legal conclusion that the mark did not function as trademark, i.e., as an identifier of origin. Citing prior case law in Israel and in Europe, the Deputy Registrar conceded that a mark consisting of a sequence of several words or is a phrase could function as a trademark, but only if the combination of words or the phrase had some feature that provided distinctiveness, such as being a play on words, or a double entendre, or originality, or something that surprises the reader or listener. The Bristol-Myers Squibb mark /slogan did not have any such additional feature, and therefore was not eligible for registration.
For the same reason, the Deputy Registrar also found that the Bristol-Myers Squibb slogan was also not eligible for registration pursuant to Section 16 of the Ordinance based upon the registration in the United States.
The Deputy Registrar acknowledged that a slogan that otherwise lacked distinctiveness could be registered in Israel based upon evidence that the mark had acquired distinctiveness in Israel as a result of extensive use, but Bristol-Myers Squibb had failed to provide sufficient evidence to support a finding of acquired distinctiveness in this case.
This case shows that to succeed in an application for trademark registration of a slogan in Israel, it is critical that the sequence of words that comprises the mark must have some unusual linguistic, textual or conceptual feature that provides an element of distinctiveness, otherwise the applicant must be able to provide sufficient evidence that the mark had acquired distinctiveness in Israel through extensive use.