Today, in an age when we are surrounded with different brand names, choosing a trademark is significant and should not be taken lightly. Amongst others, trademarks assist the manufacturer to maintain his reputation and his differentiation strategy. Additionally, trademarks assist the consumer to distinguish between the products or services of the different companies, thus minimizing the potential for misleading. Amongst the different issues arising from the process of choosing the trademark, we have chosen to focus in this paper on the question of distinguishing between the different classifications and on the extent of protection deriving from it, while referring to the “Well-Known Mark” doctrine.
Preface
One of the issues a company is faced with in the beginning of its journey is establishing a commercial-marketing identity, which is done, amongst others, by adopting a trademark. In fact, the trademark achieves two main benefits: for the manufacturer or the service provider, the trademark enables maintaining a reputation which was established with significant investment, thus even contributing to his differentiation strategy. On the other hand – for the consumer, the trademark enables to clearly identify an object or service which he has gotten to know and prefer, thus also protecting him from misleading regarding other products or services.
To illustrate, when a consumer notices a product by “Coca-Cola” or by “Nike”, he automatically makes the connection between the trademark and the product, its quality, and the reputation connected to it. In other words, due to the trademark, the company is not required to present and prove to the consumer each and every time, the quality of its products and the reputation it has obtained. Thus, the process of choosing of a trademark and its establishment in the consumer’s mind should not be taken lightly.
Is the trademark really “taken”?
When a company or entrepreneurs in the beginning of their journey wish to choose a trademark which will represent the business entrepreneurship or the company, they are faced with different considerations, such as: is the trademark catching the consumer’s eye (whether it is designed), is it catchy, does it indicate the company’s business, and another question – it the trademark already “taken”? In other words, is a similar or identical mark already registered in the Register of Trademarks?
The question of a “similar or identical” trademark is cardinal, especially at a preliminary stage of establishing an entrepreneurship or a company, whereas the recommendation in most cases is to avoid conflicts and lawsuits at the beginning of the journey, before the public has had a chance to get to know the trademark. However, we should consider the question whether that trademark, which was already registered by a third party – was registered for the same classification (definition) that the young company wishes to register.
And what is the true meaning of this? According to the Trademarks Regulations, 1940, as part of an application to register a trademark in the Register of Trademarks, it should be pre-defined to which goods or services the trademark is requested to be registered. Thus, the protection provided to the trademark applies for goods or services defined by the applicant in his application, which have been eventually approved by the Registrar of Trademarks. As a result, allegedly, there is no reason to prevent a third party from registering a similar or identical trademark, for different goods or services. When this idea is applied to the case of the young company applying to register a trademark – we could say that inasmuch as the company wished to register its trademark in the field of clothing and footwear, when there is a similar or identical trademark in the field of computer services – seemingly it should not be prevented from doing so.
A Well-Known Mark
Despite the aforementioned, one of the situations in which the company shall be prevented from registering a similar or identical trademark in a different classification to the one already registered in the Register of Trademarks, is the situation of a Well-Known Mark. According to the Trademarks Ordinance [New Version], 1972 (“the Ordinance”), a mark misleadingly similar to a well-known mark registered in Israel is not possible, even referring to products or services in different classification. And should we wish to apply this to the case of the young company in the aforementioned example – should it wish to register, for example, the mark “Nike” for computer services, while the well-known mark “Nike” is already registered in the Register of Trademarks under another classification (for example, athletic clothing) – it shall be prevented from doing so. We shall note on this subject, that according to the provisions of the Ordinance, had the mark “Nike” not been registered in Israel at all, other companies still would have been prevented from registering its mark, however only regarding those classifications in which it operates.
It should be emphasized, that a trademark doesn’t earn the title of “Well-Known” easily, for a claim that a mark has become well-known in Israel requires proof with hard evidence, such as surveys or questionnaires. One example out of many for this matter was recently published, in the decision of the Registrar of Trademarks during a discussion regarding the objection to register trademark no. 219021 the Cooperative Vine-growers’ Association of the Rishon LeZion and Zichron Yaakov Wineries Ltd. Vs. Interactive Publications Ltd.. The subject matter of objection was regarding the mark “Chapeau, the Israeli Selected Zimmers * Prestige Estates * Boutique Hotels”, which was requested to be registered under “marketing, promotion and advertising tourism and recreation in Israel including online on the internet and in the written media”. The objection was submitted by the Vine-growers’ Association as mentioned, which has registered in its name, amongst others, the trademarks “Carmel Wineries” and “Selected” in the classification of wines. The Association has claimed that its mark “Selected” is a Well-Known Mark, and that the applicant’s mark is misleadingly similar to its own, thus the applicant’s request to register the requested sign should be denied, even regarding a different classification. The Trademarks Registrar has ruled that the opposer has not succeeded in basing its claim regarding its mark “Selected” being well-known, as well as not being able to meet the other requirements in order for it to prevent the applicant from registering the requested mark under another classification. Amongst others, the opposer did not prove that using the mark for goods that are not of the same classification (definition) might suggest any connection to it and therefore misleading, and that it might be harmed from the said use of the mark.
Summary
As stated, registering a trademark is a significant matter within a commercial company’s business and activity, and it is important to know the laws that apply to this matter, in order to wisely choose a trademark which will represent the company towards its clientele. As we see, generally, the law allows registering a mark that is similar to a registered trademark, if the new mark is requested regarding products or services under a different definition. However, extra care should be taken in order to avoid registering a trademark similar to a trademark which might be regarded as Well-Known, under the same classification.