Trademark for hair care products rejected due to geographic meaning
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The deputy registrar has rejected Moroccan Oil Israel Ltd's applications for the registration of the word mark MOROCCAN OIL and the stylized mark MOROCCANOIL for hair care products on the grounds that the marks had a geographical meaning and were descriptive of the goods (April 8 2010).
The applicant claimed that it had coined the term 'Moroccan oil' for argan oil and that it was the first to use the term for hair care products. It applied for the registration of the word mark MOROCCAN OIL (in Hebrew) and the stylized mark MOROCCANOIL for hair care products in Class 3 of the Nice Classification (applications to register marks 205142 and 205143).
The examiner denied registration on the grounds that both marks had a geographical meaning. It noted that the term 'Moroccan oil' relates to argan oil, which is sometimes called 'Moroccan oil' due to Morocco's reputation in that field.
The applicant argued that:
- the marks had acquired distinctiveness through continuous use in Israel and abroad;
- the term 'Moroccan oil' was not common for argan oil; and
- argan oil was not well known before the applicant's innovative use of this substance for cosmetics in general, and for hair care products in particular.
The applicant also relied on registrations for the marks in other countries.
The deputy registrar invoked Section 11(11) of the Trademarks Ordinance (5732/1972), which provides that a mark whose ordinary meaning is geographic is barred from registration, unless it is presented in a special manner or has distinctive character. Therefore, the deputy registrar had to examine whether:
- the ordinary meaning of the marks was geographic; and
- the marks had acquired distinctiveness.
With regard to whether the marks had a geographic meaning, the deputy registrar pointed out that the reason why geographic names cannot be registered is that their degree of descriptiveness is high. However, if a geographic name is not descriptive of the goods and the geographic location has no connection to the goods, the ordinary meaning of the mark is not geographic. The deputy registrar cited the decision in Winemakers Cooperative Society v Infineon Technologies AG (2003), in which it was held that the name Carmel was arbitrary, rather than descriptive, when used in connection with electronic components. Moreover, in Tea Board of India v Delta Lingerie SA (CA 10959/05 (2006)), the name Darjeeling was held to be arbitrary when used in connection with lingerie (for further details please see "Use of DARJEELING mark for lingerie allowed by Supreme Court").
The deputy registrar also cited Section 11(6)(a), which provides that a mark containing a geographic indication in respect of goods that do not originate from the relevant region cannot be registered if it could mislead consumers as to the origin of the goods. In order to determine whether a geographic name is used descriptively or arbitrarily, the deputy registrar must consider the following questions:
- Is the mark the name of the place from which the goods originate?
- Is the mark likely to lead a reasonable buyer to believe that the goods come from this place?
- Is this place well known for such goods?
Most of the oil used in the applicant's products originated from Morocco. As the consumers would expect that the oil came from Morocco, and given Morocco's reputation for the production of argan oil, the deputy registrar concluded that the applicant's marks were not arbitrary, but descriptive of the origin of the goods.
The deputy registrar then proceeded to examine whether the marks had acquired secondary meaning. The deputy registrar held that evidence of extensive use and advertising, although central to the issue of distinctiveness, would not necessarily be sufficient to show secondary meaning. Other circumstances surrounding the use of the marks, the nature of the name and its perception by consumers had to be examined.
Further, the deputy registrar held that a geographic name rarely acquires the requisite secondary meaning, as such a name is highly descriptive and, therefore, is closer to a generic term. Furthermore, the general interest in keeping a geographic term free for use by competitors must be taken into account.
As to whether consumers would associate the term 'Moroccan oil' with the applicant's products, the deputy registrar held that testimony by professional hair stylists (according to which their customers associated the term with the applicant's products) was inconclusive. The deputy registrar noted that customers in hair salons cannot choose between various products. The deputy registrar believed that consumers would understand the term in its descriptive sense.
With regard to the applicant's argument that it was the first to adopt the term 'Moroccan oil' for argan oil, the deputy registrar held that, even if the applicant had revolutionized hair care, it had failed to prove that the term had become associated solely with its products.
The deputy registrar concluded that the term 'Moroccan oil' had a geographic meaning and was descriptive. Therefore, it lacked distinctive character and was barred from registration. In a dictum, the deputy registrar held that the applicant's trademark registrations in other jurisdictions were irrelevant, citing, among other things, language differences.
David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv
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