Registrability of mark determined based on EU case law

Israel

In The Opposition of Sky Net Group Ltd against Maximumasp LLC (June 30 2010), the Israel deputy commissioner of patents, trademarks and designs has held that, where a trademark consists of two words, one laudatory and the other one descriptive, registration will be granted only if the applicant can prove that the combination of these words creates a meaning that departs from their ordinary meaning, or that this combination is unique in linguistic terms.

The deputy commissioner relied on the decisions of the Court of Justice of the European Union (ECJ) in Procter & Gamble v OHIM (Case C-383/99) (the BABY-DRY Case), Koninklijke KPN Nederland NV v Benelux-Merkenbureau (Case C-363/99) (the POSTKANTOOR Case) and Campina Melkunie BV v Benelux-Merkenbureau (Case C-265/00) (the BIOMILD Case).

On July 22 2007 Maximumasp LLC filed an application for the registration of the mark MAXIMUMASP in Class 42 of the Nice Classification for "website hosting services". The mark consists of the combination of the word 'maximum' and the abbreviation 'ASP', which is commonly used to refer to application service providers. On February 24 2008 Sky Net Group Ltd filed an opposition against the registration of the mark MAXIMUMASP on the grounds that:

  • it was confusingly similar to its unregistered trademark; and 
  • it was not capable of registration because it lacked distinctive character.

The deputy commissioner noted that Sky Net's first argument would be addressed only if it was found that the mark MAXIMUMASP was capable of registration. Therefore, because the deputy commissioner ruled that the mark lacked distinctive character, he did not address the alternative grounds for opposition.

In reaching his decision, the deputy commissioner placed primary emphasis on the BABY-DRY, POSTKANTOOR and BIOMILD Cases, in which the ECJ set forth the criteria under which a mark consisting of two commonly used words can be registered. The deputy commissioner indicated that, in later decisions, the ECJ had narrowed the scope of registrability set forth in BABY-DRY. Following the POSTKANTOOR and BIOMILD decisions, it is possible to register such a mark only if the applicant can prove that the mark creates an impression which is sufficiently far removed from that produced by the mere combination of the elements of which it is composed, with the result that it is more than the sum of its parts. 

The deputy commissioner indicated that the test set out by the ECJ in POSTKANTOOR and BIOMILD should be applied to the case at hand. He ruled that the combination of the terms 'maximum' and 'ASP' does not create a meaning that departs from their ordinary meaning, nor is it unique in linguistic terms. The deputy commissioner noted that, as Maximumasp is a provider of ASP services, the mark MAXIMUMASP constituted only a laudatory term. Therefore, the deputy commissioner ruled that the mark was descriptive and was not capable of registration.

It remains unclear to what extent to the commissioner will rely on foreign judgments in general, and ECJ judgments in particular, as a basis for determining the registrability of trademarks under Israeli law.

Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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