3D trademark application for tahini container rejected – but for all the wrong reasons

Tahini (also known as tahina or tehini) is a paste of ground sesame seeds used in cooking. The word "tehini" comes from the Semitic verb for grinding that is common to Hebrew and Arabic.

Tahini is a major component of hummus bi tahini (chickpeas with tahini) and other Middle Eastern foods. It is usually sold as a ready-to-eat salad paste in ubiquitous plastic containers used for hummus, Turkish salad, various eggplant salads and the like. It can also be sold as raw tahini paste, which is almost as resistant to bacteria and mould as honey. It can last unrefrigerated for years after opening.

AGS Green LTD filed Trademark Application 198897 for a tahini container in Class 29 of the Trademark Register. The mark consisted of the three-dimensional (3D) container that the firm uses for selling its raw tahini paste.

In August Storck KG v Alfa Intuit Foodstuffs LTD (11487/03), concerning the distinctive shape of Toffiffee sweets, Judge Gronish of the Supreme Court ruled that a distinctive shape can serve as a trademark in some circumstances, but left open the question of whether distinctive packaging can be trademark protected. Deputy Commissioner of Patents and Trademarks Noach Shalev Shmulovich used the case in question to rule on the  registrability of containers for liquids.

The Israel Patent Office generally holds that aesthetic designs should be protectable for up to 15 years as registered designs and should then enter the public domain. To some extent, shapes of containers for liquids are arbitrary, so the design cannot be considered overly functional. Nevertheless, in general, due to an aversion to allowing different means of protection to cover the same object, where an element may be protected as a design, it should not be protected as a trademark.

Using this tahini example, Shalev Shmulovich ruled that henceforth, containers could not be registered as trademarks.

Tahini is a staple product comprising only ground raw sesame seeds. To the extent that the tahini container is distinctive, consumers associate it with tahini paste and are ambivalent to the identity of the manufacturer. For this reason, the shape of the container is not indicative of the manufacturer and the trademark application should be rejected.

Nevertheless, where a distinctive container is used as an indication of the manufacturer, it seems reasonable to protect it as a trademark - particularly as trademarks may be three-dimensional. The twisted, fluted Coca-Cola glass bottle is a design classic that says "Coca-Cola" and is sufficiently established and recognised such that no additional labelling is necessary. The square brown Cointreau bottle is another example of a distinctive design of a container that could legitimately be filed as a trademark, since it serves as an indication of origin. There are other colas and orange liqueurs on the market, but consumers can select Coca-Cola or Cointreau from the distinctive shape of the container alone. It seems likely that the container may become associated with the product to the extent that trademark protection is warranted after a period of time, if the company is the only user for the period of design protection.

Although Shalev Shmulovich is setting policy, while the Supreme Court decided to leave the question open, rulings of a deputy commissioner of patents and trademarks are not binding on other Patent Office adjudicators or on the courts. Thus, this decision expresses Israel Patent Office policy in the interim until a new commissioner is appointed.