September 15, 2015
Israel: may a building design be registered as a trademark?
For the first time in Israel, the Registrar rendered a decision concerning the registrability of a building design as a trademark.The decision was rendered by the Trademark Office on September 16, 2015 concerning a trademark application (No. 239676) filed by the Azrieli Group, a leading Israeli chain of shopping malls, for registration of a three-dimensional mark representing the following design of a building:

Azrieli mark

Two malls were already built in Israel with such structure constituting the entrance part of the mall, one in Acre and the other in Kyriat Ata. Here is a picture of the mall built in Kyriat Ata:

Azrieli mall

The application was filed on July 31, 2011 in classes 6, 19, 35, 36, 37 and 43. The trademark was refused for registration by the Examiner for being non-distinctive and a hearing took place at the applicant's request on May 28, 2014. The applicant filed evidences regarding the use the mark.

Pursuant to the Registrar’s Circular No. 032/015 of March 16, 2015, registration of three-dimensional signs as trademarks may be considered only in exceptional cases, when it is shown by evidencing material that the three following cumulative conditions are fulfilled:

1.    The sign effectively functions as a trademark.
2.    The shape has no esthetical or functional role.
3.    The mark has acquired distinctiveness through intensive and substantive use.

In Israel, architectural creations are protected by the Copyright Law of 2007. An architectural creation is defined as “a building or any other construction, as well as a model for a building or a construction as mentioned”. Copyright protects a creation from copying only for a limited duration (life duration and 70 years after the decease of its creator), unlike the protection of a trademark registration, which is unlimited in time. Copyright in Israel does not require any registration, as compared to trademarks, which require either registration or extensive reputation (well-known trademarks) and are vulnerable to cancellation for non-use.

Thus, contrary to copyright, granting trademark rights to a three-dimensional sign results in granting the exclusivity of use of such mark to its owner for an unlimited time.

The Adjudicator refers in her decision to the Toffifee Decision of the Israeli Supreme Court of March 23, 2008 (Civil Appeal 11487/03) in the matter of August Storck KG vs. Alpha Intuit Food Products Ltd., which set the following principles regarding three-dimensional trademarks:

1.      As a rule, the appropriate way to protect three dimensional designs of goods or their packaging is by filing an application for            registration of a design.
2.      A three-dimensional sign is not eligible for registration as a trademark on the basis of having inherent distinctive character.
                                 
The Adjudicator pursues in mentioning that buildings may be registered and protected as designs pursuant to the Patents and Designs Ordinance of 1924 (in class 25.03 for “houses, garages and other buildings”). Pursuant to article 7 of the Copyright Law, there will be no copyright in a design, unless it is not intended to be used for industrial production. This disposition prevents a double protection for creations which should be protected as designs.

The Adjudicator notes that there is no similar legal disposition concerning a double protection as copyright and trademark. A copyright may even be brought in an opposition to registration of a trademark (Registrar’s decision of December 1, 2013 in Abraham Berman and GB Clothing LLC v. G.B. Hassidic Clothing Ltd).

Article 1 of the Israeli Trademark Ordinance of 1972 expressly provides that a sign may be two-dimensional or three-dimensional. But not all signs are trademarks and a trademark is defined as “a sign used, or intended to be used, by a person in respect of the goods that he manufactures or commercializes”. A trademark must fulfill all conditions set in the Ordinance in order to be accepted for registration, namely, it must be distinctive. The distinctive character of a trademark, which enables to distinguish between the products of the trademark owner and those of his competitors, may be either inherent or acquired.

Pursuant to the Israeli practice, a three-dimensional trademark is unable to have an inherent distinctive character and thus acquired distinctiveness must be established in order to obtain registration.

The applicant refers to decisions rendered by the US Trademark Office and the Lanham Act, enabling architectural works to obtain federal registration as trademarks when the building “is used in such a way that it is or could be perceived as a mark.”

For example, the Guggenheim Museum in New York has obtained four trademark registrations in several classes of goods and services, for the cylindrical appearance of its building (outside and inside views).

However, the Adjudicator reminds that no conclusion should be taken from trademark decisions rendered abroad when interpreting the Israeli law regarding trademarks.

The proofs submitted by the applicant in order to establish that the building design is used as a mark are not sufficient in the opinion of the Adjudicator. She notes in this regard that the advertising materials submitted are including a two-dimensional representation of the building and not the three-dimensional mark applied for.

The Adjudicator reminds that “it is the perception of the ordinary customer which determines whether the asserted mark functions as service mark” (Standard Oil Co., 275 F.2d 945, 125 USPQ 227). Such use must be continuous and comprehensive in order for a sign to become a trademark. However, since it was not proven that the building shape is used as a trademark, there is no point to verify if the mark has acquired distinctiveness.

In any event, the Adjudicator notes that the existence of two malls only with such building shape amongst the numerous malls built by the Azrieli Group in Israel, is not sufficient to establish public recognition of the mark.

The survey submitted by the applicant showed that 58% of the Israelis recognized the building design as being a mall of the applicant. However, this does not prove that the building is used as a trademark enabling to distinguish applicant’s goods and services from those of others. In the Adjudicator’s opinion, the principal use of the building design is to serve as a building and not as a trademark and it is perceived by the public as such, namely only as being the design of a building.

The Adjudicator further notes that the survey was performed in cities of the North of Israel only, where the two existing malls are located. Moreover, the survey’s first question was clearly a leading question: “Did you go to a mall in your residence area during the last six months?” Also, the design presented to the participants was not the design applied for, but the whole mall structure including the design of its entrance. The Adjudicator mentions that the participants questioned would have identified in the same way their house, the school they attended or the supermarket where they use to shop.

The Adjudicator estimates that this does not enable to state that the building design functions as a trademark, especially in respect of the goods included in the application; the mark was actually filed in class 6 for “Structures made of simple metals and their alloys, including from aluminum and/or from other construction materials or from iron and other items of metal products that are used for building and construction of structures” and in class 19 for “Structures made of non-metal materials, including from construction materials, glass, pipes and other materials”.

Moreover, the Adjudicator considers that the building design is not unique in Israel and mentions another similar building structure already existing at Rehovot Science Museum of the Weizman Institute:

Rehovot museum

In its conclusions, the applicant stated that we are concerned by a trademark which takes its expression in the form of a building. Since trademark protection is requested for constructions goods in classes 6 and 19, the purpose would be to prevent third parties from building a construction including a similar design. The Adjudicator notes that the copyright in the architectural creation provides exactly the same protection and thus there is no point in granting such registration in these classes.

As for the services covered by the trademark application, the applicant did not succeed in establishing that the public identifies the three-dimensional representation of the building as a service mark. The Adjudicator cites a decision of the European Office (OHIM) stating that “consumers do not generally perceive the shape of a product as indicating a particular source of manufacture” (Application no. 8622367 SHK/2476/S64.13 Roger Zogolovitch T/A Dolidspace (18.4.2011)).

Accordingly, the application is rejected.

The interest of this decision is that the Israeli office does not negate the possibility of accepting to register a building design as a trademark under exceptional conditions. However, it will be difficult to obtain such registration in relation to constructions goods.

In order to satisfy the two criteria of functioning as a source indication and having acquired distinctiveness through intensive and continuous use, it must be proven that the building shape is clearly identified by the public as being the source of the goods or services provided.

The shape of the Azrieli Group two malls in Northern Israel is definitely far from the worldwide recognized cylindrical shape of the Guggenheim Museum of New York in this regard.