No exclusive rights in the phrase 'The Day After Pill'

Is the phrase 'The Day After Pill' registrable with respect to a medical preparation to prevent pregnancy after sexual intercourse? The question reached the Israel Commissioner of Trademarks in Application 231231 - in his decision, given on July 15 2012, the commissioner's answer was "no".

The applicant, Trima Israel Pharmaceutical Products Maabarot Ltd, was - at the time of the application - the exclusive distributor in Israel of Postinor, a pill to prevent pregnancy for up to three days after sexual intercourse. The applicant sought to register the phrase 'The Day After Pill', in both Hebrew and English, for a "pharmaceutical composition for gynaecological use". The examiner rejected the application on the grounds that the mark was not distinctive and described a feature or characteristic of the goods for which registration was sought.

The applicant then requested a right of hearing before the commissioner (during the course of the application process, a competitor selling a generic version of the product entered the Israeli market and the two competitors carried on parallel proceedings in district court).

To support the registrability of the mark, the applicant argued that:

• the phrase was merely suggestive, rather than descriptive; and
• in any event, it had acquired secondary meaning.

With respect to the distinctiveness of the mark, the applicant argued that the essence of the product lay in its pharmaceutical composition and not in the time period that it claimed to be effective. In fact, the pill worked over a span of three (and possibly five) days after intercourse. As such, the phrase, with its emphasis on 'the day after', was not descriptive. The commissioner rejected this claim. He reasoned that the combination of the words 'the day after' and 'pill' described precisely the temporal nature of the pill in relation to the act of intercourse.

With respect to the claim that the mark had acquired secondary meaning through years of sales in Israel, the commissioner observed that the evidence did not support this assertion. In particular, the commissioner stated that the applicant always used the mark at issue (in Hebrew) together with the mark POSTINOR, usually in the form 'Postinor - The Day After Pill'. According to the commissioner, it is this form that the public recognises, and not 'the day after pill' alone.

In support of the application, the applicant also sought to submit the results of what was described as an internet survey carried out among 420 women between the ages of 16 and 40. The commissioner attributed little or no weight to the results of the survey. He noted that:

• it was not supported by an affidavit from an expert as to the methodology of the survey;
• the questions posed were not clear; and
• the results were not presented in an unambiguous manner.  

Based on the foregoing, the commissioner affirmed the refusal to register the mark in its Hebrew and English forms.

While no mention is made of this in the commissioner's decision, it is noteworthy that the applicant was merely the local distributor of the Postinor product. There is nothing exceptional when a local distributor registers a service mark in respect of its distribution services and adds that service mark to the product that is being distributed. Here, however, the applicant was seeking to add another trademark to the product itself. If the applicant had been successful, the upshot would have been that the product would bear two marks, indicating presumably two different sources for the same product. Such a result would have raised fundamental questions about the nature and function of a trademark.

Neil Wilkof, Dr Eyal Bressler and Co, Ramat-Gan