Recent Israeli Rulings on TMs for Slogans

Laudatory words and phrases may generally be used to promote goods and services but they cannot be registered as trademarks. Slogans that are not used to identify the source of goods or services are also not registerable. Of course there are exceptions.

In general the Israel Patent Office is fairly consistent. In several recent decisions slogans were held to be not registerable:

Philip Morris was able to register “best enjoyed slowly” in view of a small graphic element being added, but the slogan itself was refused.

Orange, the mobile telephone supplier, was not allowed to register “together we can do more.”

Interestingly, McDonald’s succeeded in registered “I’m lovin’ it” as the slogan is so very well known, and the non-grammatical nature of the active verb “loving” as opposed to “I love it” was considered as rendering the mark distinctive.

Note: Links to discussions on The IP Factor blog for each of these decisions appear at the end of this article.

“Party like a RockStar”

Israel trademark number 204804 “Party like a RockStar” for RockStar energy drink was originally refused as being laudatory and as being a slogan that lacked distinctiveness.

On appeal, the Deputy Commissioner of Patents and Trademarks ruled that the mark is eligible on the basis that it was registered in the country of origin and has a small element of distinctiveness in the eyes of partygoers. Although the word rockstar is used as a common noun, it is the name of the product. There are additional caveats.

Shufersal (sometimes mispronounced “Supersol”), Israel’s largest supermarket chain filed two marks: “Your money buys more” and “Because time is a valuable commodity.” They were both canceled as not being indicative of the source of goods.

The Gidron bakery mark “Gidron bakes freshness for you” was allowed with disclaimers.

See the IP Factor blog for further discussion of decisions in each of the aforementioned cases:

Philip Morris, Orange and McDonald’s

RockStar

Shufersal and Gidron