SCARLESS case highlights distinction between suggestive and descriptive marks

The distinction between a mark that is found to be suggestive - and therefore inherently registrable - in contrast to a mark that is found to be descriptive - and therefore not registrable in the absence of proof of secondary meaning (acquired distinctiveness) - is among the most crucial, yet nuanced aspects of trademark examination practice. A recent decision given by the adjudicator on December 29 2014, regarding an application for the mark SCARLESS in English and in its Hebrew phonetic equivalent filed by Medicure Technologies Ltd for “a gel for the protection of scars” (Application No 248551), is an instructive example of the approach taken to this matter in Israel.

In this proceeding, the adjudicator affirmed the decision of the examiner in denying registration on the ground that the mark was descriptive, inasmuch as it refers directly to the substance or quality of the subject goods. The adjudicator first stated that it was undisputed that the meaning of the mark is “without a scar”. She further stated that, in determining whether a mark is descriptive, it is not necessary for the mark to identify the goods in an unequivocal manner. Rather, it is sufficient that the mark identifies a property that characterises the goods. The adjudicator further observed that, while the mark at issue does not indicate the word 'gel', this was not required because the mark relates to the results that are promised upon use of the product. Thus, the mark was descriptive.

The extent to which the adjudicator distinguishes the case before her from the two decisions cited by the applicant, in support of its claim that the mark is suggestive and therefore registrable, is of particular note. In both instances, the key question was whether the mark in question requires at least a moment of thought by a consumer in identifying the mark with at least a characteristic of the goods or services. The first case, No 150473, was for a two-word Hebrew mark that literally translated as “post that follows after”, for “mail services, namely directing mail from one address to a new address according to the request of the customer”. The second case, No 125036, was for the mark NEW-LOOK in stylised form in both English and it its Hebrew phonetic equivalent for “a clothing store”.

In both cases, the adjudicator was of the view that at least a moment of thought was required in connecting the respective services with a characteristic of the mark. By contrast, in the present case she ruled that not even a moment of thought was required to identify the mark SCARLESS as “a word that describes directly, explicitly and unequivocally one of the characteristics or purposes of the goods for which registration of the mark is sought”. Accordingly, she concluded that the two cited cases were inapposite with respect to the instant application.

It cannot be gainsaid that so distinguishing between the two cited marks and the applied-for mark is not free from doubt, as opinions may differ on when at least a moment of thought is required. That said, the adjudicator has set out a structured framework within which to address the question.

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