In a precedential and comprehensive ruling, rendered on April 9^th, 2024, the Tel-Aviv District Court Judge, Gershon Gontovnik, acknowledged the right of “HaKibbutz HaMeuchad Publishing House” (“the Publishing House”) to register a trademark for the title of the well-known and best seller children book “Dira Lehaskir” – meaning “Apartment for Rent” – in Hebrew (“the Requested Mark”). The book was authored by the famous Israeli writer Leah Goldberg and was translated into several languages (including, among others, French, English, Korean, Indian, German, Russian, Portuguese, Spanish, Uzbek and Chinese) and sold around the world. The ruling (CA 1477-12-22 HaKibbutz HaMeuchad Publishing House Ltd. v. The State of Israel – The Israel Patent Office) concerns an appeal against a decision of the former Registrar of Trademark, Ofir Alon (“the Registrar”), regarding the application for registration of the Requested Mark. This was the first time an Israeli court addressed the issue of eligibility for registration as a trademark of a literary work’s title.

In the aforesaid Registrar’s decision, the Registrar had approved the registration of the Requested Mark, but only for limited specifications and classes of the ones requested by the Publishing House – mainly for binding of books and writing instruments (class 16) and advertisements (class 35). However, the application to register the Requested Mark for various goods and services – such as video, software, computer games, CDs, educational materials, toys, education, and entertainment – was rejected. The former Registrar has ruled that the title of a literary work cannot be registered as a trademark with respect to goods/services relating to the work itself.

The Publishing House, represented by Advs. Hagit Peled Henig and Amir Friedman, appealed arguing that the name “Dira Lehaskir” functions as a trademark, in the sense that it serves as an identifier of origin; And this, mainly in view of the great reputation that the book has accumulated over the years.

Judge Gontovnik’s recent decision allows the registration of the Requested Trademark for all the requested goods and services, except for education and sports, which he deemed too broad.

Judge Gontovnik’s ruling emphasizes the current trend of commercial exploitation of literary works. According to the ruling, in modern reality, literary works can promote commercial interests in a way that was not common in the past. Nowadays, a literary work can be commercialized in the context of games, videos, outfits and costumes and other related merchandising products. Therefore, writers and book publishers should not be left behind compared to the creators of movies, plays and other works. However, Judge Gontovnik emphasized that the outcome of his decision is strongly connected to the specific circumstances associated with the “Dira Lehaskir” work, and should not be extrapolated broadly to other works where the circumstances might differ significantly. Such specific circumstances taken into account by Judge Gontovnik were: the work has a great reputation and is well known in Israel; the Publishing House owns the copyright in the work; the copyright term has not expired yet; the work does not have any known or famous different versions; consumers make associate the name “Dira Lehaskir” with the work; the Publishing House is the work’s sole distributor. On this background, according to Judge Gontovnik, this is a clear case of a trademark identifying an origin, and the Requested Mark can be used, and is in fact being used, as an identifier of origin and promote the Publishing House’s interest in the commercialization of the reputation of the work.

Judge Gontovnik considered whether the fact that the title which registration as a trademark is being sought is also subject to copyright protection negates its eligibility for trademark protection. The main concern in this respect being the ability to circumvent the time limitation of copyright protection by registering a trademark for the book title, which protection may be infinite. Judge Gontovnik pointed out that copyright must be given a meaning that takes into account both the incentive for creators and the public’s accessibility to works. Trademark law has other purposes – namely, to prevent consumer deception and protect the manufacturer’s reputation. Hence, there should be no absolute obstacle to registering a trademark with respect to a book title just because it is protected by copyright.

Given the precedential nature of this discussion in Israeli case law, Judge Gontovnik also analyzed and considered in depth foreign case law dealing with the registration of titles of book as trademarks. Based on such comparative review, Judge Gontovnik concluded that foreign laws usually allow for the registration of books titles as trademarks, and the basic question determining the eligibility for registration is whether the title of the work indeed serves as a trademark, namely – identifies one specific source.

Following the discussion, the court emphasized that the title of a literary work that has become particularly common, to the extent that it has become part of the spoken language and is not (or rather, no longer) identified only with the original literary work, will not be registered as a trademark. Similarly, the existence of several different versions of a literary work makes it difficult to establish a distinctive character for the title of the literary work, which could be used as a specific source identifier – a basic condition for the registration of a trademark.

As for the concern that the trademark registration might, de facto, extend the copyright term, Judge Gontovnik suggested addressing this concern when the copyright expires, for example – through the concept of fair use..In his opinion, it would be possible to consider allowing descriptive use of the title of the work to describe the goods of other commercial parties who wish to rely on it. This, while avoiding misleading consumers into thinking that the trademark owner is the one behind those goods.

Against these guidelines, Judge Gontovnik reached the conclusion that the name “Dira Lehaskir” is eligible for registration as a trademark – it is not overly descriptive, as the work “Dira Lehaskir” does not deal with the apartment rental market, but rather with values of humanity, fairness and tolerance. It carries distinctiveness and widespread recognition, and the Publishing House already uses it commercially. In order to prove the distinctiveness, the Publishing House also submitted a consumer survey that indicates a connection between the name of the literary work and the literary work itself. In particular, 83% of the respondents answered that when they hear the name “Dira Lehaskir” they think of the literary work.

In essence, this ruling reflects an attempt – and a successful one, in our view – to define the inter-relations between different intellectual property rights that may apply simultaneously to a single work, based on an analysis of the rationales and interests underlying the respective rights.

* We thank Assaf Kshatot-Stein for his assistance in preparing this review.

 

Published in Lexology