Applicants should be careful as to what they submit as promotional materials

The examiner in an application filed in Israel will sometimes request the applicant to provide marketing materials in support of the application. There are several possible reasons for this request, the most common of which is in connection with whether the mark that is the subject of the application is inherently registrable. While there is no rule under the Israel Trademark Ordinance (New Version) (5732-1972) that a mark must be used prior to the filing of the application (it is sufficient that the applicant have a good-faith intention to use the mark), nor is it clear what is the legal significance of information about the mark contained in such brochures, a request to provide such information is sometimes made by the examiner. 

As seen in PaloDEx Group OY (Applications Nos 224582-224583), the nature of the response to such a request by the applicant may be decisive in whether or not the application is accepted for registration. The applicant filed two applications, one in Class 9 and the other in Class 10 of the Nice Classification. In each of the application, the mark was identical - namely a visual depiction of the back side of an integrated imaging plate system used in connection with taking X-ray pictures in the oral cavity.

The examiner requested copies of marketing information with respect to the application, which the applicant submitted. On page 9 of these materials, there appeared a circle that served as a marker indicating the back side of the imaging plate. The marker distinguished between the front and back sides of the plate and informed that a further manipulation of the picture was necessary. On the basis of this information, the examiner was of the view that the mark was not registrable because it was not directly discernible to the user and it did not serve as an indication of source but, rather, was an element of the product itself.

The applicant replied that the marking had a decorative function that served as a source identifier, this despite the description set forth in the marketing materials that the applicant had submitted, which emphasised the functional aspects of the marker. The applicant further contended that the mark was in any event registrable under the telle quelle provisions under Section 16 of the ordinance. In response to a further office action from the examiner, the applicant then requested that the file be forwarded to the commissioner for a determination.

The commissioner upheld the examiner’s refusal. He noted that the applicant had not provided any further information or documentary support, nor had it even directly addressed the promotional materials that it had earlier filed (and which the applicant later contradicted by its later submissions). Under such circumstances, the commissioner chose to rely on the information contained in the promotional materials, which supported the decision to reject the application, on the grounds that the mark was functional in nature, rather than serving as an indicator of the source of the goods.

Moreover, based on this evidence, the commissioner refused to grant registration under the telle quelle provisions, ruling that the submitted promotional materials failed to even meet the lower standard for registrability under the telle quelle provisions, namely that the mark lacked all distinctive power as an indicator of source. As a result, the applications were rejected.

The result in this case underscores the importance of submitting materials that do not undermine the registrability of the application. Simply ignoring the materials in response to subsequent office actions will not succeed in overcoming the harmful effect of materials that are not consistent with the use of the mark as a source indicator. 

Neil Wilkof, Dr Eyal Bressler & Co, Ramat-Gan