SOVIETSKOYA IGRISTOYA mark deemed common to the trade

In Akciju Sabiedriba Latvijas Balzams v DIL Trade (Maglan) Ltd (Opposition to trademark application 159708, December 5 2006), the Israel Trademarks Registry has allowed an opposition to the registration of the mark SOVIETSKOYA IGRISTOYA in Cyrillic letters (stylized with logo) for sparkling wine.

Akciju Sabiedriba Latvijas Balzams (Balzams) is the largest manufacturer of alcoholic beverages in Latvia and sought registration of the mark in Israel. It has already registered the mark in Estonia, Latvia, Lithuania and the United States. DIL Trade (Maglan) Ltd opposed the application, claiming that the mark SOVIETSKOYA IGRISTOYA, which means 'Soviet Sparkling Wine', is descriptive, merely stating the contents of the bottle to which the mark is applied. DIL further claimed that the mark is common to the trade. In response, Balzams argued that the mark is inherently distinctive and enjoys the status of a well-known mark.

The registrar noted that since Balzams had disclaimed each of the two words of which the mark is comprised, distinctiveness had to be shown for the mark as a whole. For the same reason, the registrar declined to consider the degree of distinctiveness of the component words of the mark.

The registrar then went on to consider whether the mark is common to the trade. When a mark is used by one or a small number of traders, this is not a mark common to the trade. However, when a mark is used by a large number of traders, or used only by a few but in an extensive manner, this could support the conclusion that the mark is common to the trade. The registrar noted that the issue comes down to the question of whether the use, or more precisely the amount of use, by other traders is such that it renders the mark a part of the public domain.

The registrar considered the evidence presented to him as well as his own research on the Internet, which, the registrar opined, is permitted because the Supreme Court had previously ruled that any source of information that is open to the public, such as the Internet, is considered as a part of judicial notice (see Wine Growers Society of Rishon Lezion v Hakerem Co Ltd, SC 941/05). On that basis, the registrar ruled that SOVIETSKOYA IGRISTOYA, along with phrases and logos similar to that of the current application, are used extensively in various Eastern European countries that were once a part of the Soviet Union.

As for the registrar's reliance on the use of the mark in Eastern Europe, he explained that between 1989 and 2007 almost 1 million people emigrated from these countries to Israel, all of whom know and understand Russian. This fact, along with evidence of extensive manufacture and sale of sparkling wine bearing this phrase and logo in these countries, led the registrar to the conclusion that the Russian sign SOVIETSKOYA IGRISTOYA and logo should be considered common to the trade. As such, the mark had not acquired the necessary distinctiveness for registration.

The registrar therefore accepted the opposition.

Neil Wilkof and David Ben Porat, Herzog Fox & Neeman, Tel Aviv