Mark meaning 'highly kosher' descriptive, rules Supreme Court

In MB Glatt of Lemehadrin Ltd v The Registrar of Patents, Designs and Trademarks (Case 1427/05, June 25 2007), the Supreme Court of Israel has upheld an earlier decision and has refused to allow the registration of the mark GLATT.

The appellant, a company named MB Glatt Chicken Lemehadrin Ltd, filed an application to register the trademark GLATT LEMEHADRIN with respect to "meat, poultry and products containing fully or partially the above goods". The registrar of trademarks rejected the application, stating that the combination GLATT LEMEHADRIN was descriptive pursuant to Article 11(10) of the Trademarks Ordinance, according to which:

"A mark comprised of digits, letters or words that are common in trade for indicating or describing goods that are directly related to the essence or quality of such goods except if the marks have a distinctive character according to the meaning of this term in Section 8(b) or 9; shall not be eligible for registration."

The registrar held that the ordinary meaning of the combination GLATT LEMEHADRIN is that the related product has a high degree of kashrut (severe standards of certification). MB Glatt appealed.

In its judgment the Supreme Court noted that Section 11(10) of the Trademarks Ordinance constitutes an extension of the basic rule that marks that are devoid of distinctive character may not be registered. The court noted that when dealing with a trademark that is comprised of digits, letters or words, such a trademark will not be eligible for registration except if it is inherently distinctive or has acquired distinctiveness.

Against this background the court went on to examine the components of the mark GLATT LEMEHADRIN. It noted that the word 'Glatt' originates from a German word that was adopted in Yiddish - the Jewish German dialect that became the language of European Jewry from the beginning of the Middle Ages - the dictionary meaning of which is 'smooth'. The word Glatt has also become synonymous with the meaning 'highly kosher'. The word 'Mehadrin' also means 'highly kosher'. Against this background, the court concluded that the mark GLATT LEMEHADRIN, when used in respect to meat and poultry, would constitute a mark with the meaning that the related products were 'very kosher'. Allowing the registration of this word combination as a trademark would impinge on the rights of manufacturers and traders of meat and poultry to use these descriptive words for their products, while allowing exclusivity to MB Glatt. This would be contrary to the purpose of Section 8(a) of the Trademark Ordinance, which allows only distinctive marks to be registered.

MB Glatt claimed that even if the combination GLATT LEMEHADRIN was descriptive, it had acquired distinctiveness through use. It produced evidence that it had started operating in 1992 and commenced use of the mark in 1995. It showed that it had about 700 customers and its yearly sales amounted to IS75 million. MB Glatt also showed that it advertised the mark on certain calendars and on its trucks.

The Supreme Court held that the more descriptive or generic a mark, the greater the quantum of evidence for showing acquired distinctiveness required. Since the mark GLATT LEMEHADRIN was highly descriptive, a significant amount of evidence was needed to show acquired distinctiveness, and MB Glatt had failed to overcome this high obstacle. However, the court did not resolve the question as to whether this obstacle was almost insurmountable.

David Gilat, Gilat Bareket & Co - Reinhold Cohn Group, Tel Aviv