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Denial of Booking.Com Trademark Application

September 15, 2016 B.V. filed an application before the Israeli Patents and Trademarks Office for the registration of “” as a trademark under the 39 and 43 classes of transportation services and storage and supply of food and beverages. The registration was denied because the trademark lacked distinctive character as to the services applied for.

The claimant operates a website called “” through which one can book hotels worldwide. B.V. claimed that the trademark is not generic but descriptive and is capable of acquiring distinctive character as a result of its use. Further, the claimant argued that the word “Booking” is a gerund, not a noun and therefore it distances the mark from the services. The claimant continued that the verb “to book” has additional meanings such as “to arrest” and other activities related to books. B.V. submitted different domain names registered as trademarks throughout the world such as “” registered for insurance services in the UK, “” registered for computer games in Israel and in the UK, “” registered for meteorological devices under class 9 in the US, “” registered for consulting and marketing services in the US.

The Israeli PTO based its examination of the trademark at stake on whether it is indeed generic or descriptive. The Israeli PTO cited multiple cases of US federal courts stating that generally adding a top-level domain (TLD) such as “.com” cannot turn a generic term into a non-generic one and the cases where this is actually possible are extremely rare. Further, the examiner assessed the meaning of the word “booking” and it noted that the claimant did not mention any additional services provided on the website but the booking of rooms. Moreover, the Israeli PTO rejected the claim that whenever the mark is composed of a gerund instead of a noun, that could prove it is not generic. First, the examiner explained that the US case law showed that the mark does not have to be composed of a generic noun. The trademark could be a verb, a gerund and as such could still remain generic. Second, upon examination of the services provided, it seems that precisely the gerund describes more accurately the services than the noun.

Furthermore, B.V. argued that there was a clear connection between the name of the company and the name of the website. Nevertheless, the Israeli PTO ruled that it was not sufficient for the trademark to acquire a distinctive character because even the name of the company was a very generic one as to the services provided. The examiner continued to prove further her point by stating that the enumerated above “.com” trademarks were actually registered for different type of services that the ones to be reasonably expected from the generic terms applied for registration (i.e. “” was registered for computer games). The examiner resolved that B.V. has already registered several design marks in Israel and abroad, and the protection they provided to the applicant was the adequate one. A broader protection would deprive the public from the possibility to register other domain names, generic or not.

The Israeli PTO restated the case law in re that the registration rules as to domain names are different from the registration rules as to trademarks and that is possible to register even generic domain names. The examiner concluded that even though that was registered as a trademark in New Zealand, it was nevertheless refused registration in multiple other countries such as: USA, Japan, Korea etc. The registration was hence denied in Israel too.

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