Descriptive word combination issues clarified by Supreme Court

In Coffee to Go Marketing (1997) Ltd v Shaked (Case 2673/04, April 15 2007), the Supreme Court has clarified whether a combination of words, each being a generic or descriptive word, may be registered as a trademark, or whether the descriptive character of the separate words dictates the conclusion with respect to the combination as a whole.

The appellant, Coffee to Go Marketing (1997) Ltd (CTGM), operates coffee stands and also coffee houses and 'espresso bars' throughout Israel. It also owns the trademark COFFEE TO GO (stylized) in Class 42 of the Nice Classification, which is comprised of the words 'Coffee to Go' on an oval background with a drawing of a cup. The registration of the mark includes a disclaimer of the right to exclusive use of the word 'coffee' and of the shape of a cup, except in the combination and form as appear in the mark.

Israel Shaked, the respondent, has been the owner of a coffee house called Cool Café since 1996. Shaked hung a sign above his coffee house on which the words 'Coffee to Go' appeared under the name Cool Café. In 1998 CTGM sued Shaked in the Tel Aviv District Court for trademark infringement. The District Court accepted CTGM's claim in part and ordered Shaked to remove the sign and avoid using the word combination 'Coffee to Go'. Shaked then changed the wording of the sign of his coffee house to 'Cool Café to Go'.

Against this background Shaked applied to the registrar of patents, designs and trademarks to remove the COFFEE TO GO mark from the register. Alternatively, Shaked requested to limit the scope of the rights in the mark in a way so that anyone would be able to use the combination 'To Go' together with the word 'Coffee'.

In a decision dated February 15 2004 the registrar ordered that the mark COFFEE TO GO may remain on the register only if a disclaimer was given with respect of the combination 'To Go' and the combination of the word 'Coffee' with the words 'To Go'. CTGM appealed.

The Supreme Court held that the combination 'To Go' was descriptive, as was the word 'Coffee'. After examining the descriptiveness of the components of the combination, the Supreme Court went on to examine whether the expression 'Coffee To Go' was descriptive. It concluded that the combination of the descriptive components did not have any synergistic effect and that the degree of descriptiveness of the combination was high. To establish secondary meaning, CTGM had to show that a relatively large majority of consumers would identify the combination according to its secondary meaning, namely as an indication of source. The court held that (i) CTGM did not show sufficient factual basis in order to support its claim of secondary meaning, and (ii) it was not assisted by the fact that it was also selling other products under the trademark. The court noted that CTGM failed to carry out a survey in order to show the contended secondary meaning. However, it also stressed that a survey is not the only way to show secondary meaning; other convincing evidence may also be appropriate, but CTGM had failed to produce such evidence in the case at hand.

Although the court examined whether the COFFEE TO GO mark had attained secondary meaning, its concluding remarks seem to indicate that the combination 'Coffee To Go' is an expression which is inherently unregistrable.

In another part of the judgment the court addressed the question of whether the burden is on (i) the trademark owner to show that its mark enjoys a secondary meaning, or (ii) the applicant for cancellation to show that the mark has no secondary meaning. In this regard, the court distinguished between the burden of convincing the court, namely the onus of proof which rests on the shoulders of the applicant for cancellation, and the burden of adducing evidence which shifts from one party to the other in the course of the trial. The court did not decide whether it is sufficient for an applicant for cancellation to show that the registered mark is inherently descriptive in character in order to shift the burden to show otherwise onto the trademark holder, or whether the applicant for cancellation is required to adduce further evidence in order to show that prima facie the mark has not acquired a secondary meaning. The court held that since the evidence that shows secondary meaning is in the hands of the trademark owner, it is sufficient for the applicant for cancellation to produce only a limited amount of evidence in order to shift the onus of submitting evidence in support of secondary meaning onto the trademark owner. On a practical level, this seems to imply that not only in pre-grant opposition, but also in post-grant cancellation proceedings the onus is essentially on the owner of the mark to show acquired distinctiveness.

In light of its findings, the court ordered the cancellation of CTGM's mark unless it submitted a disclaimer notice within seven days from the publication of the judgment, regarding the combination 'To Go' and the combination of 'Coffee' with 'To Go'. CTGM was ordered to pay the costs of the proceedings and attorneys' fees in the sum of IS20,000.

David Gilat, Gilat Bareket & Co, Tel Aviv