jeudi, décembre 16, 2010

Israel: Is McDonald's 'lovin' it'?

Is McDonald's 'lovin' it'?

Contributed by S Horowitz & Co


Summary

In a decision recently rendered by the Israeli deputy registrar of trademarks, it was held that the slogan 'I'm lovin' it' used by McDonald's Corporation may be registered as a trademark in Israel.(1)

The deputy registrar ruled that the trademark was a descriptive slogan and thus not registrable under ordinary conditions. However, since it had already been registered in the United States, it was held that it could be registered pursuant to Section 16 of the Trademarks Ordinance 1972, whose conditions for the registration of marks already registered abroad are less stringent.

Facts

The applicant filed an application to register the trademark with the Israeli Trademarks Office. The office refused registration of the trademark on the grounds that the trademark is a slogan, whose purpose is to promote the marketing of a specific product and, in the present case, the slogan is not being used as a trademark. The applicant applied for a hearing before the deputy registrar.

Decision

The slogan was ultimately accepted for registration. The deputy registrar held that in order for a slogan to be registrable as a trademark, three elements must be considered:

  • whether the applicant uses the slogan as a trademark;
  • whether the relevant public recognises the slogan as distinctive of the product - that is, whether the slogan has acquired distinctiveness through association with the product; and
  • whether it is appropriate for the slogan to be registered as a trademark or whether it should remain free to be used by any person.(2)

The deputy registrar first examined whether the slogan was inherently distinctive. The applicant's claim that the word 'lovin'' does not constitute a laudatory term that is considered descriptive or not inherently distinctive was rejected. It was held that a positive description of emotion towards a product or a business constitutes a laudatory term.

The deputy registrar noted that two elements distinguish the phrase from other slogans. First, its grammatical structure - the use of the verb 'lovin'' in its progressive form - is considered erroneous. Second, the slogan is not directed at consumers, but rather stated in the first person, as if the consumer were making such a statement. Nevertheless, it conveys the laudatory message that 'the consumer is lovin' it'. A mark conveying such message would thus be deemed laudatory and not inherently distinctive. Moreover, according to evidence presented by the applicant, its use of the slogan is meant to convey the slogan's literal meaning, and not to blur it or give it a different meaning. The deputy registrar remarked that such intention was further supported by the fact that the applicant had translated the slogan into Hebrew, since a proprietor desiring that its mark attain a secondary meaning would not have translated it.

The deputy registrar also held that the slogan had not acquired distinctiveness. Investment by an applicant in marketing and advertising in which the relevant mark is portrayed is necessary, but not sufficient in and of itself, to prove that such mark has acquired distinctiveness. Furthermore, the use by the applicant was not intended to distinguish the applicant's products, but rather to convey the message that consumers love the applicant, its services and its products.

The applicant also presented a consumer survey, according to which a significant share of the public associated the slogan with the applicant. The deputy registrar held that even if a significant proportion of the public associates a slogan with the applicant, this does not necessarily mean that the slogan has acquired distinctiveness. For a mark to be deemed to have acquired distinctiveness, the applicant must prove that the slogan has acquired a secondary meaning - namely, that when members of the public see the mark, they do not think of the ordinary meaning of the mark, but relate the mark to a specific source.

As for the third consideration, the applicant's use of the slogan was not meant to distinguish its products or services; nor had the slogan acquired a secondary meaning. Therefore, use of the slogan should not be limited to a specific person. The deputy registrar noted that the slogan was generic to such a degree that even if it had acquired a secondary meaning, this might not have sufficed for registration.

The applicant also sought to register the slogan under Section 16 of the Trademarks Ordinance, which provides that a mark registered abroad may not be refused registration, unless one of the six conditions mentioned therein has been met. One such condition is that the mark possesses no degree of distinctiveness.

Generally, a mark may be registered only if it is sufficiently distinctive. The deputy registrar noted that Section 16 sets forth significantly different terms, in that a mark registered abroad need possess only some (or even very little) distinctiveness in order to be registrable. The deputy registrar held that the slogan possessed certain distinctiveness due, among other things, to:

  • its grammatical structure;
  • the indirect approach to consumers by "putting words in their mouths"; and
  • the association of the slogan with the applicant, as proved by the consumer survey.

Therefore, the deputy registrar ultimately accepted registration of the slogan pursuant to Section 16 of the ordinance.

Comment

With respect to registration under Section 16, once the foreign mark that is the basis for the local registration ceases to be registered, it is possible to apply for cancellation of the local registration on any of the grounds precluding local registration under the ordinance. In such case the owner of the registration may be able to prove that the mark would still have been registered in the first place, even if such a registration had not been based on the foreign registration.

For further information on this topic please contact Avi Ordo at S Horowitz & Co by telephone (+972 3 567 0876), fax (+972 3 566 0974) or email (avio@s-horowitz.com).

Endnotes

(1) Application to register Trademark 200350 in the name of McDonald's Corporation (decision rendered on August 19 2010).

(2) Circular MN 29, which was published by the Israeli Registrar of Trade Marks on August 17 2004, sets out criteria for evaluating the registrability of a slogan as a trademark and provides, among other things, as follows:

  • Generally, a slogan is considered as a mark which is not inherently distinctive and/or as a mark which directly relates to the nature of the goods. Therefore, a slogan will be capable of registration as a trademark only if it has acquired distinctiveness; and
  • A slogan will be capable of registration as a trademark if it is proven that the slogan, on its own, causes the public to associate the goods or services for which the mark is being applied with their source.