Lower threshold of registrability applied in REMEDE Case
In an appeal against the refusal of the trademark examiner to register the trademarks LABORATOIRE REMEDE and REMEDE SPA, the deputy commissioner of patents, trademarks and designs has held that, when a trademark application filed in Israel is based on a registration for the same mark in the applicant's country of origin, a lower threshold of registrability on absolute grounds will apply (December 10 2009).
Bliss World LLC applied to register in Israel the mark LABORATOIRE REMEDE and REMEDE SPA (and design) for various cosmetic products in Class 3 of the Nice Classification and "spa services; massage services; cosmetic consultation services" in Class 44. The examiner rejected the applications on the grounds that LABORATOIRE REMEDE (French for 'cure laboratory') and REMEDE SPA ('cure spa') were descriptive of the goods and services for which registration was requested.
Bliss World appealed to the deputy commissioner. First, Bliss World argued that the LABORATOIRE REMEDE mark was not descriptive. It pointed out that the mark had no meaning in Hebrew, which, by itself, was sufficient to show that the mark was not descriptive. Bliss World also agreed to disclaim the word 'laboratoire'.
Second, Bliss World argued that because REMEDE SPA was a design mark, it was thus distinctive.
Finally, Bliss World claimed that since both LABORATOIRE REMEDE and REMEDE SPA are registered in its country of origin (France), a lower standard of registrability should be applied under the telle quelle provisions of the Paris Convention for the Protection of Industrial Property. Bliss World based its argument on the language of Section 16 of the Israeli Trademarks Ordinance 1972 (New Version), which states that "the registrar shall not refuse to register a mark registered as a trademark in its country of origin unless… the mark is devoid of any distinctive character". Bliss World alleged that since both marks are not devoid of "any distinctive character", they should be accepted for registration.
The deputy commissioner agreed with Bliss World that because the marks were registered in its country of origin, a lower threshold of registrability on absolute grounds should be applied.
The deputy commissioner also noted that based on the evidence provided by Bliss World, the latter was active in the operation of a laboratory (which manufactures various cosmetic products) and the provision of spa-related services (eg, massages). Therefore, the deputy commissioner concluded that the word 'remède' was descriptive of the goods and services at issue. The deputy commissioner further noted that the fact that both marks were in French had no influence on their registrability.
However, the deputy commissioner concluded that the marks were not "devoid of any distinctive character" with regard to the goods and services at issue. Therefore, the deputy commissioner allowed the registration of LABORATOIRE REMEDE and REMEDE SPA.
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv
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