Commissioner grants mark after furnishing it with secondary meaning

In an appeal from a refusal to register, the Israel Commissioner of Patents, Trademarks and Designs has ruled that the Hebrew word for 'furniture' in its plural form had acquired secondary meaning with respect to use for arranging furniture exhibitions. The mark can therefore be registered, provided that the year of the exhibition is indicated in a noticeable manner in conjunction with the mark.

The applicant, TIM Exhibitions & Trade Fair Co Ltd, filed in 1999 an application (133,517 ) to register the mark RIHOOTIM in Hebrew form for advertising, business management, business dealings and arranging exhibitions services. The meaning of the word in English is the plural form of furniture. The examining attorney refused registration of the mark for three reasons:

• it merely describes the goods and services;
  
  
• the word 'furniture' is in widespread use in commerce in the fields of manufacture and sale of furniture; and
  
  
• the name of many companies in the furniture field contains the word furniture.
  

On appeal, the applicant argued that the mark is suggestive rather than descriptive, because it refers to an exhibition of furniture and not merely to a store that sells furniture. The exhibition identified by the mark has been held every year for the past 28 years and has gained a widespread reputation among persons in the furniture business as well as the broader public. The applicant further pointed to the following:

• It is the only person to have used the mark with respect to an exhibition of furniture.
  
  
• Its chief executive officer owns the domain name 'rihootim.co.il', which is the official website of the yearly exhibition.
  
  
• The mark has become well known within the meaning of the Israel Trademarks Ordinance.
  
  
• The mark has become distinctive by virtue of having acquired secondary meaning.
  
  
• Surveys indicate that 75% of the public has come to identify the exhibition with the mark and that the exhibition enjoys extensive goodwill.
  
  
• The slogan "Furniture 2006 - the Exhibition Continues" has been used by the applicant's competitors, further pointing to the extensive reputation that the name of the exhibition has acquired due to the applicant's efforts.
  
  
• The use of the Hebrew word in plural form is extremely rare.
  

The registrar rejected the claim that the mark is suggestive. Even though the word in plural form is not as prevalent as in the singular, it is still a part of the lexicon of common Hebrew words. Indeed, a Google search revealed 11,100 results.

Moreover, the mark directly describes the services offered thereunder. From the consumer's point of view, the exhibition fills a very similar function to that of a regular furniture store. When confronted with the mark, a consumer will not have to go through a series of mental steps in order to determine the precise nature of the services, but will know almost immediately that the mark describes a place that is connected with the sale of furniture. Further, the fact that the mark is in plural form does not thereby render it suggestive: the consumer will still identify the mark with services connected to the sale of furniture.

The burden of proving that the word 'rihootim' has acquired a distinctive character is not a light one. The closer that a proposed mark is to being generic, the heavier the burden on the applicant to prove secondary meaning.

The registrar pointed to the following factors in assessing whether the mark has acquired secondary meaning:

• the period of use;
  
  
• the nature and extent of advertisement;
  
  
• the market share under the mark with respect to the relevant services; and
  
  
• the geographical scope, intensity of use, and duration of the use of the mark.
  

The applicant presented various surveys and publications to support its claims. While the registrar did not accept the conclusion that the evidence was sufficient to show that the mark had acquired secondary meaning among the general public, it did point to more limited recognition among attendees of, and businesses connected to, the exhibition. Accordingly, the registrar was prepared to accept that the mark had acquired secondary meaning provided that it is in the form RIHOOTIM together with the year of the exhibition (eg, RIHOOTIM 2007), and further that it be limited to use with respect to exhibitions only.

It is to be wondered whether the multiple restrictions imposed by the registrar have the effect of turning the mark into the name of a specific genus of exhibition, rather than serving as identifying the source of the exhibition offered under the mark.

Neil J Wilkof and Shir Uzgad, Herzog Fox & Neeman, Tel-Aviv