Legal Updates

A descriptive mark is not eligible for registration unless a distinctive characteristic is added

December 24, 2020

A center operating a global financial forum requested the registration of a trademark for the mark “Center for Fourth Industrial Revolution”, for which it has a trademark registered in Switzerland.
The Trademarks Registrar held that the mark is a descriptive mark only, lacking a distinguishing character and therefore, not eligible for registration. A descriptive mark is a mark without distinctive characterization and perceived by the public as a general concept of a name of a phenomenon. Because no one person or entity should be granted exclusive rights in a concept of phenomenon, such mark is not eligible to be registered as a trademark, unless it is accompanied by some addition which makes it distinctive. Such addition, such as some word play or double meaning, must transform the descriptive expression to a different, unique expression which eludes or describes the original meaning and by doing so gives it new meaning, which overshadows the original meaning in the mind of the consumers. In fact, a wholly descriptive mark can only be registered if it can be seen as acquiring a distinctive character due to wide spread use. Thus, in cases where it can be shown that a mark has achieved a level of recognition among potential consumers in a way that creates a distinction between the mark and other uses of the descriptive expression, a registration of the mark may be justified. Here, the expression at the base of the mark “Fourth Industrial Revolution” is descriptive, which was not made distinctive by the addition of several additional, also generic, words. Similarly, the mark is not widely known or exclusively linked to the Center in a way that grants it distinction, nor does the fact that the mark was registered in other countries diminish from the requirement that the mark be considered distinctive when reviewed in Israel. Therefore, the mark is descriptive without distinctive characteristics, and is not eligible for registration.