New circular on registrability of three-dimensional marks

The Israel Trademarks Registry has issued a new circular changing its position on the registrability of three-dimensional marks following the decision of the Supreme Court in August Storck KG v Alfa Intuit Food Productions Ltd (for further details please see "Product configuration cannot be registered based on inherent distinctiveness").

Circular 61 reviews the policy of the registry with regard to the registrability of three-dimensional marks (eg, the shape of a container, bottle and tablet) in light of the concern that some applications for registration are seeking to circumvent restrictions on the registration of designs (eg, prior publication and limited scope of defence).

The circular reads as follows:

"A. As a rule, the appropriate manner to protect three-dimensional designs of products or packaging is by means of an application for registration of a design.

B. A three-dimensional mark is not inherently registrable as a trademark.

C. To ensure that the distinction between a design and a trademark will not be meaningless, it will be possible to consider registration of three-dimensional shapes as trademarks in special circumstances where the following three aggregate conditions will be proved by evidence:

1. The figure for which registration is sought functions as a trademark.

2. The figure for which registration is sought does not serve any material, aesthetic or functional purpose.

3. By virtue of use, it has acquired distinctiveness such that the commissioner is convinced that a special circumstance is involved.

D. To the extent that it is decided that the mark is suitable for registration, the registration will be conditioned on the addition of a notice that the mark is a three-dimensional mark.

E. Circular 28 is hereby repealed."

One may query whether an applicant that does not satisfy the standard set out in this circular will try to rely on the Storck decision to argue in favour of a further relaxation of the standard for registering three-dimensional marks.

Neil J Wilkof, Herzog Fox & Neeman, Tel Aviv