May 26, 2015

New Circular Letter may indicate more liberal approach to registration of product configurations

David Gilat, Partner, Head of Legal Practice
David Gilat

Partner, Head of Legal Practice

Gilat, Bareket & Co.
Sonia Shnyder, Attorney at Law
Sonia Shnyder

Attorney at Law

Gilat, Bareket & Co.

On March 16 2015 the Israeli registrar of trademarks issued a new Circular Letter (032/2015), which sets forth the current policy of the Israel Patent and Trademark Office (IPTO) on the registration of threedimensional (3D) marks consisting of the configuration of products or their packaging.

The new Circular Letter replaces the earlier Circular Letter issued on the subject (MN 61 of April 29 2008), which followed the Supreme Court’s landmark ruling in August Storck KG v Alpha Intuit Foods Ltd (CA 11487/03, March 23 2008). In that case, which concerned a dispute over the registrability of the shape of the Toffifee candy, the Supreme Court recognised the registrability of product shapes as 3D marks based on acquired distinctiveness – a ruling which dictated a change of policy in respect of the registration of 3D product shapes compared to a previous 2004 Circular Letter.

Similarly to its 2008 predecessor, the new Circular Letter reiterates the principles set forth by the Supreme Court in Toffifee – namely, that the 3D shape of a product or packaging is not eligible for registration as a trademark on the basis of inherent distinctiveness, but may be eligible for registration upon demonstration, through evidence, of the following three cumulative criteria:

1. The shape of the 3D mark serves as a trademark;
2. The shape does not have an essentially aesthetic or functional role; and
3. The shape has acquired a secondary meaning.

The new Circular Letter departs from the 2008 Circular Letter in two major aspects. First, compared to the wording of the 2008 letter, the new Circular Letter states that, if the product or packaging meets the above criteria, registration is not limited to “special cases”.

In addition, the Circular Letter clarifies that, because a 3D mark is, like any other mark, examined in its entirety, in the event that such mark contains additional elements permitting the identification of the source of the goods (eg, the applicant’s house mark), the applicant may be exempted from the need to show compliance with the above criteria.

It remains to be seen whether the new wording heralds a more liberal approach to the registration of product shapes than that followed by IPTO up to now (eg, the following shapes have been allowed for registration: the Rubik’s cube, the Ferrero Rocher chocolate and packaging, and various bottle shapes; while the following were disallowed: the Tripp-Trapp highchair and the vitaminwater bottle).

This article first appeared on WTR Daily, part of World Trademark Review, on December 2014. 
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This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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