'Jaffa' appellation of origin can be used for fruit grown outside Israel

The Appeals Board has issued a majority decision, under the Appellations of Origin and Geographical Indications Law 1965, which reverses a ruling of the Israel commissioner of patents and trademarks (Registration 20481, July 12 2007). The board held that the Citrus Division of the Plant Production and Marketing Board is entitled to continue to maintain the registration for an appellation of origin for fresh citrus fruit, which includes the names Jaffa and Jaffas in English and Yafo, Jaffa and Jaffas in Hebrew. The board ruled that the appellation remained valid despite being used for marketing oranges that were grown in South Africa and not the Jaffa region of Israel.

The appellation was the first (and reportedly only) appellation of origin registered in Israel and it has acquired an international reputation for high quality citrus fruit. The commissioner himself indicated in his decision that over the years the appellation had become "a great asset of permanent value and a prestigious symbol of Israeli exportation". The appellation was registered on March 16 1970 in the register of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration - a convention which facilitates the international protection of appellations of origin. This registration was virtually the sole reason for Israel joining the Lisbon Agreement and adopting it as part of domestic Israeli law. Nevertheless, in a decision handed down on January 9 2005, the commissioner held that the registration no longer met the requirements as an appellation of origin and therefore would not be renewed.

The term 'appellation of origin' is defined in Section 1 of the Appellations of Origin and Geographical Indications Law 1965. This law has been amended to include geographical indications and other amendments so as to comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights.

The main question before the court was whether the fact that the Citrus Division of the Plant Production and Marketing Board allows the use of the appellation for oranges, which were cultivated in South Africa and marketed in the United Kingdom under the name Jaffa, alters the status of the appellation, such that it no longer satisfies the requirements of the law for registration.

The definition of 'appellation of origin' sets out the following three requirements:

• The product's name shall include a geographic name (whether a country, area or a place);
  
  
• The intent of the name is to indicate the geographic source from which the product originates; and
  
  
• The product quality or attributes derive mainly from this particular geographic location, its character and its people.

After reviewing these requirements, the commissioner concluded that they were not being met. The source of the citrus fruit is not Jaffa, nor even Israel, but rather South Africa. Moreover, by allowing the use of the appellation for fruits emanating from South Africa, the Citrus Division admits that there is no connection between the distinctive qualities of the product and a specific geographic place, and certainly not to the city Jaffa or more generally to Israel. The Citrus Division appealed.

In a two-to-one majority decision, the Appeals Board rejected the commissioner's analysis and found that all three requirements are still being satisfied. Among other things, the board pointed to the following:

• The authorization to use the appellation in South Africa was for a limited period of time only.
  
  
• A condition for marketing the oranges in the United Kingdom was that the label must indicate that the fruits were not grown in Israel but in South Africa.
  
  
• The principal condition is that the quality of the oranges shall comply with strict Israeli standards. In order to obtain permission to use the appellation, the South African growers were required to improve the quality of their fruit, including use of know-how and saplings from Israel.
  
  
• The growing seasons in South Africa and Israel are different, so that by allowing growing of the fruit in South Africa, the Citrus Division could enjoy a royalty stream during the period in which no exportation of the oranges from Israel took place.
  
  
• The commissioner refused renewal, in part, because the fruit grown in South Africa was highly similar to that grown in Israel, reasoning that, as a result, the appellation did not embody qualities unique to Israel. The board disagreed. It ruled that there are exclusive qualities to the Israel-grown and South African-grown products, respectively, that warrant the continued registration of the appellation of origin.

The board noted that use of the mark JAFFA in non-member countries to the Lisbon Agreement (eg, South Africa and the United Kingdom) serves different, but legitimate purposes, with respect to the fruit marketed under the JAFFA mark. The trademark regime enables use of the mark via the grant of a licence under specified conditions. As a result, the Citrus Division could protect the name in those countries and enjoy royalty payments from use, despite the fact that the fruit grown and exported from South Africa was not identical to that grown in Israel.

The dissent argued that the criterion for an appellation of origin is whether the product's unique qualities result from a specific geographic area. Since the quality of the fruit grown in South Africa and Israel is similar, there is no longer a valid connection to a unique geographic area.

Neil Wilkof and Shir Uzrad, Herzog Fox & Neeman, Tel Aviv