In a precedential decision, the District Court of Tel Aviv – Yaffo in Israel has ruled that the title of a book may be registered as a trademark. This is the first time that an Israeli court addressed the issue of the registrability of the name of a literary work as a trademark and established the line between the protection granted by copyrights and trademarks.
This decision was rendered on April 9, 2024, in appeal of the Registrar’s decision to partially reject the trademark application for the title of a famous children book “A FLAT FOR RENT” (“Dira Lehaskir” in Hebrew) written by Leah Goldberg (1911 – 1972), which is widely known in Israel and was translated in multiple languages.
The trademark application for the wordmark “A FLAT FOR RENT” (in Hebrew) was filed for goods and services in classes 9, 16, 28, 35 and 41. The Trademark Office rejected the application, claiming that trademark protection for a name that is already protected as a copyright, cannot be granted, since this would result in the artificial extension of the duration of protection of these rights.
Although he admitted that a work protected by copyright could be registered as a trademark, the Director of the Patent Office decided to partially accept the application in classes 16 and 35 but rejected all the other classes.
The publishing house that owns the rights in the name “A FLAT FOR RENT”, represented by Adv. Hagit Peled Henig and Adv. Amir Friedman, appealed this decision to the District Court of Tel Aviv. The appeal was based on several pieces of foreign case law and, among others, the INTA Amicus Brief filed before the European Union Office in relation with the still-pending “Animal Farm” and “1984” cases, which are in the European Union (cases R 1719/2019-5 and R 1922/2019-5, respectively, Estate of the Late Sonia Brownell Orwell).
Judge Gontovnik of the the District Court of Tel Aviv, decided to grant registration of the mark for all the requested goods and services (except part of class 41), based on the facts that the mark acquired secondary meaning and that it functions as a source identifier for the consumers (CA 1477-12-22 HaKibbutz HaMeuchad Publishing Ltd. v. The State of Israel – The Israel Patent Office).
However, the judge emphasized that caution should be exercised in determining whether similar trademark applications can be granted, depending on the factual circumstances of each specific case.