Weak inherent distinctive character limits scope of protection of registered mark

In Société Cooperative Vigneronne des Grandes Caves Richon Le Zion & Zichron Jacob Ltd v Eliaz Binyamina (18-18) Ltd (Opposition to the registration of marks 230010 and 223721), the Israel Patent and Trademark Office has dismissed an opposition lodged by Israel’s largest winery, which holds registrations for the marks SELECTED and VINEYARDS SELECTED for wine, to the registration of two device marks including the words 'Binyamina selected vineyards' by another winery.

Société Cooperative Vigneronne des Grandes Caves Richon Le Zion & Zikhron Ya'akov Ltd, also known as Carmel Winery, is Israel’s largest winery. It has been doing business in Israel and abroad for 120 years since its foundation in the 19th century by the Rothschild family. Carmel Winery holds several registrations for the mark SELECTED for wines in Class 33 of the Nice Classification, including in conjunction with other words, specifically 'Vineyards SelecteD'.

Eliaz Binyamina (18-18) Ltd, another major winery in Israel, sought to register two device marks in Class 33:     

                  Mark 230010 (device)                     Mark 223721 (device)                            

Carmel Winery opposed the registration on the grounds of:

• confusing similarity to its registered marks in contravention of Section 11(9) of the Trademarks Ordinance (New Version) 5732-1972;
• unfair competition in contravention of Section 11(6) of the ordinance; and
• confusing similarity to a well-known mark and dilution in contravention of Sections 11(13) and 11(14) of the ordinance.

The opponent argued that:

• it had used the mark SELECTED, by itself and in conjunction with other words, since the 1970s;
• the sales of wine under the mark reached millions of bottles each year; and
• as a result of its extensive use, advertising and enforcement, the mark SELECTED had become well known.

It claimed that registration of the propounded marks would be tainted by misappropriation of the opponent’s goodwill in the mark SELECTED and would result in unfair competition and damage to the mark’s uniqueness, its dilution and depreciation of its value.   

Defending its right to register the marks, the applicant argued, among other things, that it had used the propounded marks since 1999, and that the words 'selected vineyards' are common in the wine industry and should be open to the trade.  

The IP adjudicator rejected the opposition on all grounds.

As to the grounds of confusing similarity to a well-known mark and dilution, it was held that Carmel Winery had failed to meet the high threshold of proving that its mark SELECTED, by itself, had become a well-known mark. In this regard, it had failed to demonstrate the use of SELECTED by itself, separately from the house brand CARMEL WINERY or the house device of two men carrying a bunch of grapes, and to demonstrate sales under the mark SELECTED separately from the sales under CARMEL WINERY SELECTED or advertising in relation to SELECTED by itself. It was noted that the opponent had not adduced a consumer survey regarding the reputation acquired by the mark SELECTED among consumers.

As to the ground of confusing similarity to a registered mark, the adjudicator held that the propounded marks, taken in their entirety, were not confusingly similar to the mark SELECTED or to the mark VINEYARDS SELECTED.

In this regard, the adjudicator stated that the central prong of the confusing similarity test - visual similarity - was not met, since the words 'Selected Vineyards' were not dominant in either of the propounded marks, as they appeared under the word 'Binyamina', the applicant’s name, within a round stamp bearing a graphical representation of a landscape (as well as other graphic elements and, in the case of one of the marks, the words 'Binyamina Reserve'). Besides the lack of confusing visual similarity, the words 'Selected Vineyards' were held to be descriptive of wines and their quality, and were thus found to be customary in the trade; therefore, they would be given little weight by consumers when distinguishing between the marks. In addition, the adjudicator gave regard to the non-syntactic form of the opponent’s mark VINEYARDS SELECTED and its stylised 'D', which minimised similarity, and to the fact that the word 'selected' in the propounded marks, albeit similar to an extent to the mark SELECTED, was part of a descriptive phrase in respect of wines. 

Analysing the other circumstances of the case and the conceptual similarity of the marks, the adjudicator, citing the Supreme Court's ruling in Angel v Berman, ruled that the presence of the applicant’s name, Binyamina, in the propounded marks, along with the applicant’s undisputed reputation in the field, served to distinguish the applicant’s marks and prevent confusion. She also held that the protection afforded to the opponent’s mark VINEYARDS SELECTED was to be limited to its unique design and not extended to the descriptive/laudatory words that it comprises. Similarly, the mark SELECTED was held to be entitled to a low degree of protection in light of its descriptive character in the wine industry and, accordingly, its weak inherent distinctiveness. As the Supreme Court held in adidas v Yassin, a weak inherent distinctiveness limits the degree of protection of a mark, even after it has secured protection due to its secondary meaning.

Accordingly, the propounded marks were allowed to proceed to registration and the applicant was awarded costs in the amount of IS15,000.

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