BIO-SPA: What sea comes to mind?
by Eran Soroker
Under Israeli law, a trademark may not be registered if it does not distinguish the goods or services marketed under it. A trademark will be refused registration if it is merely descriptive of the goods or services claimed unless it can be proven that it acquired secondary meaning through use.
Background: Soroker Agmon Nordman, Advocates & Patent Attorneys represent Sea of Spa Ltd. Sea of Spa are a leading Israeli cosmetics company specializing in the development, manufacturing and distribution of Dead Sea Salt products worldwide.
In 2014, Sea of Spa Ltd. filed “BIO-SPA” as a trademark. Their request was denied by the Israeli Trademark Office on the following grounds:
(1) the mark BIO-SPA lacks distinctive character vis-a-vis the goods and services requested;
(2) the terms BIO and SPA are common terms in commerce and should remain open for the use of the public in the field of beauty and cosmetics;
(3) the term BIO commonly describes natural products containing biological elements and the term SPA is commonly used in the field of beauty and body care, thus the mark BIO-SPA is descriptive of the goods and services it claims.
Enter, Soroker Agmon Nordman: we argued on behalf of our client, that the term BIO-SPA has been significantly used by the client and is solely recognized with its products. We submitted an affidavit and comprehensive arguments in support of the acquired distinctive character and goodwill associated with the mark in the Israeli market, arguing that it is eligible registration.
Initially, the examiner maintained her refusal to accept the mark for registration. We motioned for a unilateral hearing before the Registrar, where we presented our claims in person and argued once again that the mark is not descriptive but distinctive and therefore should be eligible registration in Israel.
Our claims included the assertion that when exposed to the two terms BIO and SPA together, consumers are not likely to identify the type of goods and services provided under the mark unless they acquire prior knowledge of the owner’s field of operation. As such, BIO-SPA is inherently distinctive and non-descriptive of the requested goods and services. We argued that the combination is at most suggestive: thought is required to understand the association between the mark and the nature of the goods and services. We also argued that the mark had acquired distinctiveness due to long term use and recognition solely with Sea of Spa, the mark is therefore eligible registration in Israel.
The Registrar accepted our arguments and issued a decision to withdraw the refusal to register BIO-SPA as an Israeli trademark.
The trademark BIO-SPA was registered in Israel in May 2015.