Deputy commissioner uses authority to ensure 'accuracy' of Trademarks Registry

Israel

During opposition proceedings, the deputy commissioner of patents, trademarks and designs has held that a trademark was not registrable on the grounds that it lacked inherent distinctiveness, even though neither of the parties involved in the opposition had raised this issue (March 8 2010). The deputy commissioner based his decision on his interpretation of Section 26 of the Israel Trademarks Ordinance, which allows the commissioner of trademarks to object to the registration of a trademark if the "application has been accepted in error".

Dr Uri Kenig is the inventor of a therapeutic method called Integrated Physical Emotional Clearing or IPEC. Adi Shanan worked with Kenig in developing IPEC. However, subsequently (the exact date being unknown), the relationship between Kenig and Shanan turned sour and they decided to part ways.

On February 20 2005 Kenig filed an application for the registration of the mark IPEC (and triangle design) in Class 41 of the Nice Classification. Upon initial examination, the examiner allowed the registration of the mark, and the mark was published for opposition purposes on November 30 2005. On January 29 2006 Shanan filed an opposition on the grounds that he had prior rights in the mark.

The deputy commissioner ruled that neither of the parties could obtain rights in the IPEC mark because it was descriptive of a therapeutic method and, therefore, was not capable of registration under the ordinance. The deputy commissioner noted that, from the evidence provided by the parties, it appeared that neither of them used the initials IPEC as a trademark (ie, as an indicator of the source of the services), but only as reference to the therapeutic method that they had developed and sought to commercialize.

The deputy commissioner further ruled that, even though neither of the parties claimed that the IPEC mark was not capable of registration, Section 26 of the ordinance allowed the commissioner to object to the registration of the mark, given the overall authority of the commissioner over the accuracy of the Trademarks Registry.

Section 26 of the ordinance states as follows:

"When an application has been accepted and the time for notice of opposition has expired without there having been opposition or, there having been opposition, it has been decided in the favour of the applicant, the registrar shall, on payment of the prescribed fees, unless the application has been accepted in error or unless the court otherwise directs, register the trademark."

The deputy commissioner ruled that, although a plain reading of Section 26 might seem to suggest that the commissioner is allowed to reject the registration of a trademark only after a decision has been issued in the opposition proceedings, it is obvious that the commissioner is allowed to rule on the issue as part of the opposition itself.

The deputy commissioner held that, in his opinion, the name of a therapeutic method cannot be registered as a trademark, as such registration would prevent others from using that name. According to the deputy commissioner, this would be similar to granting the US inventor Thomas Edison the right to register 'light bulb' as a trademark.

The deputy commissioner concluded that, since the parties themselves - and, more importantly, the public - viewed the initials IPEC as the name of a therapeutic method and not as a trademark, the mark was not capable of registration. However, the deputy commissioner did not clarify what evidence could be used to draw such a conclusion if the parties themselves do not provide such evidence.

Neither of the parties was awarded costs.

Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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