In a recent decision, the District Court of Tel Aviv – Yafo (“the Court”), upheld the decision of the Patent Office (“the Office”) to reject APPLE Inc.’s application for the trademark “CREATE YOUR OWN” (the Requested Mark” or the “Application”), since it was found to descriptive and lacking inherent or acquired distinctiveness, and therefore ineligible for registration.[1]
The Application and Initial Rejection
In March 2019, APPLE applied for the registration of a trademark in Israel for the Requested Mark: “CREATE YOUR OWN”, for goods and services in classes 9, 41 and 42, including for materials educating users on the use of computer capabilities (hardware and software) for artistic and creative uses.
Following the examination of the Application, in July 2022, the Office rejected the Application.[2] The Office found that the Requested Mark did not have any inherent or acquired distinctiveness and its registration in other jurisdictions did not provide sufficient grounds for its registration in Israel.
APPLE appealed the Office’s decision to the Court in November 2022.
Three Key Issues in Court’s Decision
The Court’s Decision agreed with the reasonings of the Office and upheld the rejection of the Application for the Requested Mark, focusing on the three following arguments made by APPLE in the appeal:
- Lack of Inherent Distinctiveness
The Court reiterated existing case law ruling that the process of considering a grant of a trademark should carefully balance considerations and interest. Under such a balancing test, borderline cases, where the mark is not clearly eligible for registration, should favor protecting public interests, and not allow the requested monopoly to limit freedom of occupation, free competition and the public’s freedom of speech. Under the doctrine of a “Spectrum of Distinctiveness”, the closer a requested mark is to describing a product or service, or their characteristics, the stronger the court should lean into leaving the mark for public use. Furthermore, the Court relied on existing case law in ruling that examination of a trademark application is always content-dependent: what may be “descriptive” for a product in one type of market or in respect of certain consumers, may not be descriptive for another market or audience. The Court even cited APPLE’s well-known mark itself as an example of such a mark: while it may be considered descriptive in, perhaps, the field of produce, it is certainly not descriptive (and is distinctive) in APPLE’s world of operation.
As such, the Court agreed with the Office that the Requested Mark (“EVERYONE CAN CREATE”) is a widely understood phrase, even by the generally-Hebrew-speaking audience of the Israeli public. The Requested Mark is therefore descriptive or fanciful in respect of the characteristics of the products or services. In this regard, the fact that it may be descriptive or fanciful in respect of only part (but not all) of the products or services, still renders it ineligible for registration. For a phrase presenting a “general statement” to have inherent distinctiveness – it must be clearly associated with a certain source. However, the Requested Mark presents a grammatically correct “general statement” phrase that can be understood to describe the experience from the use of the product or service, thus rendering it ineligible for registration. Furthermore, “ANYONE CAN CREATE” is a descriptive or fanciful phrase in the semantic fields of guides or tutorials for software and accessibility to educational resources concerning drawing, photography, music etc. On this matter, the Court also cited to the European Union General Court cases In Re ‘CREATE DELIGHTFUL HUMAN ENVIRONMENTS’.
- Lack of Acquired Distinctiveness
The Court similarly rejected APPLE’s arguments in respect of the Requested Mark’s acquired distinctiveness. In upholding the decision of the Office, the Court found that APPLE presented to the Office no evidentiary support for the use of the Requested Mark in Israel (for example, by way of affidavit or other data). The support presented by APPLE’s concerned its general reputation in Israel (which is not contested). The Court noted that the Office does appear to have the ability to conduct certain research into use of a Requested Mark in Israel, if it so wishes. However, the burden to prove acquired distinctiveness in the requested jurisdiction (here: Israel), is the burden of the applicant, and such a burden was not met.
The Court also considered arguments made by APPLE with respect to the Israeli Office’s rejection of the Application, in contrast to other jurisdictions which deemed the Requested Mark to be sufficiently distinctive. The Court determined that notwithstanding considerations of market globalization and promoting international harmonization of intellectual property law (which are also reflected in legislative amendments in accordance with agreements and conventions which Israel is a party to) – the law demands a local independent assessment, in view of the local context. Thus, it is possible that the answer to the question of acquired (or inherent) distinctiveness may differ between jurisdictions. Such is the case of the Requested Mark.
- Section 16 (“Telle-Quelle”) Registration
The Israeli Trademarks Ordinance [New Version] 5732-1972, in Section 16, allows registration of a trademark based upon a foreign registration, even if the mark would not be deemed registrable pursuant to otherwise applicable stricter standards of distinctiveness (“Section 16”). APPLE’s arguments for registration of the Requested Mark under this provision were also rejected by the Office and the Court.
The Court upheld the Office’s rulings that the existence of a foreign registration does not provide an automatic right for a registration in Israel. Indeed, even a Section 16 application requires a separate and independent review of the Israeli context: differences in scope and way of use of the mark may have created an acquired distinctiveness in other jurisdictions, which does not exist in Israel (and vice versa). The Court did agree with APPLE that a Section 16 application requires a lower burden of proving distinctiveness. However, the Court did not find a compelling reason to interfere with the Office’s conclusion that the Requested Mark does not meet even this lower burden threshold.
Practical Implications and Takeaways
Applicants for trademark registration in Israel should be cognizant of the local context of their applications: how is the language and meaning of the mark likely to be understood by the relevant Israeli consumers. Even if basing their applications on an international trademark registration (utilizing the fact that Israel is a signatory of the Madrid Protocol), applicants must prepare to show, and bear the burden of showing, a basic threshold for the mark’s distinctiveness. While applicants may enjoy the ability of the Israeli Office initiate independent examination to determine the scope and way of use of a mark in Israel, such an ability will not excuse the burden the applicants must be ready to bear. In this regard, an application with inherent distinctiveness or one supported by actual evidence of use in Israel, showing acquired distinctiveness, for the relevant Israeli consumers, in the relevant market of the product or service, would fare significantly better chances of success than an application relying solely on the reputation of the applicant.
Published at Lexology
