ECOSYSTEMS ECONOMICS – Overcoming lack of distinctive character
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 Ariadne Capital Limited, a British Investment Company who develop and market business and economic goods and services. The client’s forte is in upgrading the market position of leading enterprises by partnering them with young innovative players. More details at: http://www.ariadnecapital.com/ecosystem-economics/
In 2015, Ariadne Capital Limited, attempted to register “ECOSYSTEM ECONOMICS” as a trademark for the protection of their services (including: advertising, print material, consulting services, financial services, instruction and seminars, etc.) *. The application was denied by the Israeli Trademark Office based on lack of distinctive character adding that the mark is merely descriptive of the services offered by the applicant.
The examiner believed consumers were not likely to be able to distinguish between Ariadne’s Services from those of others solely by reference to the requested mark. The examiner also noted that the words ECOSYSTEM and ECONOMICS are dictionary terms referring to “economy of the ecological system”, deducing that ECOLOGICAL ECONOMY is “a knowledge field where the interactions between human activity and nature are analyzed”. Thus, the examiner believed that the mark lacked inherent distinctiveness as it assumed that Ariadne was active in this field.
Soroker Agmon Nordman submitted legal arguments in support of the registration of ECOSYSTEM ECONOMICS as a trademark. We initially claimed, among other arguments, that the mark was inherently distinctive and therefore eligible for registration – the examiner maintained refusal to register the mark.
At this point, we motioned for a unilateral hearing before the Registrar, in which we presented our claims and argued that the mark is not descriptive but rather suggestive and therefore eligible for registration in Israel.
Our claims included the assertion that Ariadne does not offer goods and services in the field of ecological systems but rather provides services and related goods to businesses to assist in the implementation of business models to improve the work environment. Thus, the mark ECOSYSTEM ECONOMICS is not descriptive of the goods and services but rather suggestive at most.
After re-consideration, the registrar commented that the term ECOSYSTEM referred to an environment with set rules and could relate to “closed systems” beyond the ecological reference. We claimed that the pairing of the two words – ECOSYSTEM ECONOMICS could relate to various services and therefore is NOT descriptive of Ariadne’s services.
The registrar accepted our arguments and issued a decision that the refusal to register ECOSYSTEM ECONOMICS as an Israeli trademark is withdrawn.
The trademark ECOSYSTEM ECONOMICS was accepted for publication in all requested classes and is expected to register shortly. This outcome provides our client’s mark the widest protection of all existing territories.
* Request to register “ECOSYSTEM ECONOMICS” as a trademark for the protection of services: type 9, 16, 35, 36 and 41.