Status of third-party observations during examination considered for the first time

The Israeli registrar of trademarks has held that the word mark HAVE YOU FALLEN ILL? HAVE YOU BEEN INJURED? (in Hebrew) was eligible for registration by a medical rights entity as it had acquired distinctive character through extensive use, which was shown in part by confidential evidence. The registrar had regard to third-party observations made in the course of the examination, notwithstanding that there is no mechanism under the Israeli trademark statute for submitting third-party observations (Application No 243620 in the name of Medical Rights Centre Ltd, December 1 2014).

The applicant, Medical Rights Centre Ltd, specialises in representing individuals in claims against the National Insurance Institute. It sought to register the trademark HAVE YOU FALLEN ILL? HAVE YOU BEEN INJURED? (in Hebrew) in Classes 36 and 45 of the Nice Classification.

The examiner refused registration on the grounds that the mark lacked distinctive character, as required by Section 8(a) of the Trademarks Ordinance [New Version] 5732-1972, and that it directly related to the nature or quality of the services for which registration was sought and was thus barred under Section 11(10) of the ordinance. The examiner considered, among other things, a submission made in the course of the examination by a competitor company, which claimed that the propounded mark was ineligible as it was a descriptive word combination common to the industry and that its registration would afford the applicant an unwarranted trade advantage.  

The issue was brought ex parte before the IP adjudicator, who determined that the mark was descriptive, rather than suggestive. However, the adjudicator held that the mark had acquired distinctiveness through use and had thus become eligible for registration in accordance with Section 8(b) of the ordinance. The IP adjudicator had regard to:

• an expert opinion demonstrating that the public identified the mark with the applicant;
• Google search results the majority of which pointed to the applicant; and
• a third-party competitor’s admission in its correspondence with the applicant that the propounded mark was being used by the applicant and characterised its publications.   

Addressing the applicant’s objection to the examiner’s consideration of a third-party submission, which is not contemplated by the ordinance, the IP adjudicator ruled that, while there is no provision in the ordinance or in the Trademarks Regulations regarding a third party’s right to intervene in the examination (such express statutory provisions do exist in Israel’s Patents Law 1967), general principles of administrative law allowed the examiner, as an administrative arbiter, to have regard to information emanating from third parties, provided that the information was relevant and reliable and that the examiner disclosed such information to the applicant.

The IP adjudicator also granted, in part, the applicant’s motion to keep some of its evidence privileged and not subject to public inspection pursuant to the registrar’s Circular Letter 028/2014 of August 25 2014. Under the Circular Letter, examination files, subject to certain exemptions, become available for public inspection (upon request and for a fee) from the time when they appear in the Trademark Office’s computer system. Exemption may be requested for documents containing trade secrets, among other things. The IP adjudicator noted that the decision to grant protection to a document turns on the distinction between information necessary to the public for understanding the basis for a mark’s registration and information relating to the applicant’s commercial operations. Among other items of information, the adjudicator granted protection to data regarding the number of the applicant’s employees and amounts invested in advertising, noting that the investment in advertising was considerable and long-term.

The mark was accordingly accepted and ordered to be published for opposition.  

David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv