CHEF LINE: descriptive or suggestive?

• The examiner refused to accept the mark CHEF LINE for goods and services in Classes 7, 11 and 35 on the ground that it was descriptive
• The adjudicator upheld the examiner’s finding that CHEF LINE was devoid of inherent distinctiveness
• However, the adjudicator found that the evidence of use provided by the applicant was sufficient to establish that the mark had acquired secondary meaning

The IP adjudicator of the Israeli Patents, Designs and Trademarks Office has accepted to publish for opposition the word mark CHEF LINE (in Hebrew characters) with respect to goods and services in Classes 7, 11 and 35, including professional and industrial kitchen machines and related services (Application No 315406 for CHEF LINE (in Hebrew characters) – ex parte decision on eligibility for registration). It was held that, while the mark CHEF LINE is inherently descriptive in relation to the goods and services at issue, it could be registered as it had acquired distinctive character through use.

Examiner decision
The examiner refused to accept the trademark on the ground that it was descriptive, rejecting the applicant’s contention that it was merely suggestive. Further, the examiner stated that the evidence of use submitted by the applicant was insufficient to show that CHEF LINE had acquired secondary meaning with respect to the list of goods and services applied for. The applicant requested a hearing before the registrar of trademarks.

Adjudicator decision
The adjudicator upheld the examiner’s finding that CHEF LINE was devoid of inherent distinctiveness.

First, the adjudicator stated that names describing the general properties of goods and their purpose are deemed to be descriptive. The mark applied for consisted of the Hebrew transliteration of the words ‘chef’ (meaning a professional cook) and “line” (meaning a line of products). Accordingly, CHEF LINE referred to a line of products intended for professional cooks, thus bearing a direct reference to the purpose of the goods and services at issue. The adjudicator refused the applicant’s claim that CHEF LINE is suggestive since the connection between the words “chef” and “kitchen” is immediate: a reasonable consumer would immediately make a link between the word “chef” and the concept of a kitchen or to professional machines and equipment for the kitchen.

The adjudicator further held that the mark applied for did not need to be descriptive with respect to all the listed products and/or services in order to be considered devoid of distinctive character; one descriptive meaning was sufficient to determine that the mark applied for was descriptive.

In addition, the adjudicator determined that the combination of the two descriptive elements ‘chef’ and ‘line’ did not create a different non-descriptive meaning in relation to the goods and services at issue; the mark was thus devoid of distinctive character for this reason as well.

Finally, the adjudicator rejected the applicant’s claim that the several examples brought forward by the examiner of use of the combination CHEF LINE online were irrelevant to prove descriptiveness and common use in the trade, as these did not constitute use in Israel. The adjudicator explained that all instances were available to the Israeli public, which is aware of the descriptive character of the mark applied for and its meaning.

While the adjudicator concluded that CHEF LINE was inherently descriptive, she concluded that the evidence of use provided by the applicant was sufficient to establish that the mark had acquired secondary meaning and overcome the grounds for refusal set forth in Sections 8(A) and 11(10) of the Trademarks Ordinance, and accepted the application for publication. The evidence submitted by the applicant included:

• proof of continuous use of CHEF LINE as a trademark for over 10 years;
• extensive use on the applicant’s website and social media;
• substantial market shares and sales figures; and
• large list of clients and several declarations from clients stating that CHEF LINE is a trademark associated with the applicant.

The adjudicator accepted that, in the circumstances, there was no need to submit a survey to show recognition of the mark by the limited relevant public.

This article first appeared in WTR Daily, part of World Trademark Review, in July 2022. For further information, please go to www.worldtrademarkreview.com.