Summary

In a decision of the Israeli Trademarks Registrar dated March 6, 2006, it was held that Coca Cola's trademarks for "DO WHAT FEELS GOOD" consist of a slogan which has no distinctive character and are therefore not acceptable for registration.

The Factual Background

The Coca Cola Company filed applications to register the mark "DO WHAT FEELS GOOD" in classes 25, 28, 32, 35 and 38. Upon examination of the applications, the examiner issued Office Actions stating that the marks consist of a slogan and lack distinctive character; and that the marks relate directly to the nature of the relevant goods or services.

According to a circular issued by the Registrar on August 17, 2004, a slogan may be registered as a trademark provided that the following criteria are met:

  1. the slogan has acquired distinctive character as a consequence of use; and -

  2. the slogan is used as a trademark, namely –the slogan associates, in the eyes of the public, between the goods or services with respect to which the registration is sought and their origin.

As the examiner rejected all the applicant's arguments in response to the Office Actions, and upon the applicant's request, the case was scheduled to be heard by the Registrar.

In the hearing, the applicant raised, inter alia, the following arguments:

  1. According to the provision of the Trade Marks Ordinance, a slogan is a combination of words and may be the subject of a trademark.

  2. An applicant requesting to register a combination of words should not be presented with stricter conditions than those set out in the Trade Marks Ordinance.

  3. The applicant uses the mark with respect to advertising the goods.

  4. The mark does not relate directly to the nature of the goods and has an arbitrary connection to the goods. Alternatively, the mark implies that using the goods gives a good feelings.

  5. The mark is inherently distinctive as it is a combination of words not used in the relevant trade and is even not correct grammatically.

  6. The applicant further argued that the mark gained distinctive character as a result of use, but the applicant did not provide any evidence to such effect, as the applicant did not deem it necessary.

  7. Even if the mark is protected under the Copyrights Act, this does not prevent its registration as a trademark.

The Registrar's Decision

The Registrar rejected the applicant's arguments and determined that the marks will not be accepted for registration. The Registrar determined, inter alia, as follows:

  1. A mark is classified as a slogan only after examination thereof. If the examination reveals that the mark is not the applicant's principal trademark, but rather a secondary mark, which does not indicate the origin of the goods or services, and is used to glorify the applicant's goods or services, then as such, it is fund to be lacking descriptive character and considered a slogan. In such case, it will not be accepted for registration unless it is proven that it has acquired distinctive character.

  2. A single word may also be a slogan if it is used to glorify the principal trademark.

  3. There is a distinction between a phrase which is submitted independently for registration, to be used as the applicant's principal trademark, to a phrase which is submitted for registration in order to serve the principal mark.

  4. A slogan, by nature, is used to glorify the goods, and convince the public into buying them. Thus, it serves as a sales promoter, and is not designated to create a reputation for its proprietor.

  5. Slogans, which are usually comprised of several words, tend to embrace different meanings. Therefore, a slogan will enjoy the protection of a trademark only when it has an acquired distinctive character or in cases where it is proven that the phrase implies a new and non-descriptive meaning with respect to the goods/services.

  6. The mere existence of phrase with synonymous meaning as the slogan, does not cure the slogan's descriptiveness.

  7. Indeed, the phrase "DO WHAT FEELS GOOD" is only partially composed of words with a descriptive or glorifying nature. Nevertheless, the phrase does not create a new and non-descriptive meaning with regard to the goods. The connections between the mark "DO WHAT FEELS GOOD" and the essence or quality of the requested goods is not unambiguous, however, it is not an implying mark.

  8. The mark encourages buying the goods, under the assumption that they give a good feeling. Therefore it is deemed as glorifying and describing the goods. These characters alone should lead to the disqualification of the mark. Moreover, use of such phrase should remain in the public's domain, and not protected under an eternal monopoly.

  9. The fact that the phrase "DO WHAT FEELS GOOD" is not common in the English language, is not relevant in determining its distinctive nature. Further, the fact that the mark is grammatically unique does not grant it a distinctive nature, as the Israeli consumers are not aware to such nuances in the English language.

  10. Even if the Coca-Cola company can prove extensive use of the requested mark, it will only be accepted for registration if it functions as a trademark, namely, indicates the source of the goods.

  11. When a slogan benefits from copyright protection, it should be registered as a trademark adjacent to a principal mark. This, in order to prevent a situation where the slogan, in itself, benefits from a longer proprietarily protection than given by copyright.

  12. The mark "DO WHAT FEELS GOOD", was designated to be used in Coca-Cola's advertisements and is not, in itself, a name of a product, and does not indicate the source of goods. Thus, the mark lack inherent distinctiveness and is used as a slogan.

  13. Due to the fact that Coca-Cola had not presented any evidence to the extent that the slogan acquired a distinctive nature, the applications do not meet the requirements set forth in the Trademarks Ordinance or in the Registrar Circular.

  14. The applications are therefore not accepted for registration.

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