EIN GEDI marks held to be geographically descriptive

In the appeal by Ein Gedi Cosmetics Ltd (EGC) against the examiner's refusal to register the EIN GEDI marks, the deputy commissioner of patents, trademarks and designs has held that the term 'Ein Gedi', which is the name of a kibbutz near the Dead Sea, is geographically descriptive in relation to cosmetics, even though EGC's goods are not produced in, or directly related to, either Ein Gedi or the Dead Sea (April 22 2009).  
EGC is a manufacturer of cosmetics products. In 2004 it filed a series of applications for various cosmetic products in Class 3 of the Nice Classification (Applications 171632, 171634, 177705 and 177706). All of the marks contained the words 'Ein Gedi', and one of them contained the additional term 'Dead Sea'. The examiner refused registration on the grounds that:

  • the marks were confusingly similar to earlier registered marks; and
  • 'Ein Gedi' and 'Dead Sea' were geographically descriptive in connection with cosmetic products.
EGC appealed, arguing that:
  • the likelihood of confusion was low because the three earlier marks were each owned by a different entity, which showed that marks containing the terms 'Ein Gedi' and 'Dead Sea' could coexist; and
  • 'Ein Gedi' is not geographically descriptive in relation to cosmetic products, but merely suggestive of the goods.
The deputy commissioner ruled that the fact that the Trademarks Office had made "a mistake" and allowed the registration of marks that were geographically descriptive could not serve as a ground to allow the registration of other geographically descriptive marks. Therefore, the existence of registered trademarks containing the terms 'Ein Gedi' and 'Dead Sea' for similar products did not mean that EGC's marks were registrable.
Turning to the question of whether 'Ein Gedi' and 'Dead Sea' are geographically descriptive in connection with cosmetics, the deputy commissioner adopted the test set out in McCarthy on Trademarks and Unfair Competition (Fourth Edition, Volume 2, Section 14.2):
  • Is the mark the name of a place or region from which the goods actually come? If the answer is 'no', the term is likely being used either in an arbitrary sense or in a misdescriptive sense, depending on the probable reaction of consumers.
  • Is the geographic term likely to denote to reasonable buyers that the goods come from the region or place named? If the answer is 'no', this is evidence of arbitrary usage.
  • Is the place or region noted for these particular goods? If the geographic term is likely to lead buyers to think that the goods come from that place, and the place is well known for these goods such that this is an important inducement to purchase, the mark is probably deceptive and cannot be registered or protected.  
The deputy commissioner ruled that although the answer to the first question was negative, the answers to the other two questions were affirmative. Use of the terms 'Ein Gedi' and 'Dead Sea' could lead the average consumer to think that the source of EGC's products was the Dead Sea and/or Ein Gedi. In addition, Ein Gedi and the Dead Sea are both geographical areas that are well known in connection with the cosmetics industry. The fact that three different companies owned marks containing the terms 'Ein Gedi' and 'Dead Sea' in relation to cosmetic products supported the conclusion that these terms are well known in the relevant industry. 
Accordingly, the deputy commissioner refused to register EGC's marks (with the exception of EGC EIN GEDI (and design), for which the deputy commissioner required a disclaimer for the name Ein Gedi).    
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv 

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