Israel: "Do What Feels Good" — Registration of a Slogan as a Trademark

Last Updated: 17 May 2007
Article by Avi Ordo


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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions