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Kfar Chabad, Israel

Ruling: ‘Chabad’ and ‘Lubavitch’ Cannot Be Trademarked

In 2010, the Chabad-Lubavitch umbrella organizations in Israel, Agudas Chassidei Chabad and Tzeirei Agudat Chabad, applied to the government for a trademark on the words “Chabad” and “Lubavitch,” in order to prevent its unauthorized use by unaffiliated organizations. Recently, the IPO examiner denied their application, on the grounds that the words are “descriptive” and not “distinctive.”

From The World Trademark Review:

In a ruling on applications to register the marks CHABAD (232770) and LUBAVITCH (232771) in Latin and Hebrew scripts in the name of Chabad Hasidic Association in our Holy Land and Young Chabad Association, the trademarks registrar has refused registration of the said word marks, holding that the marks were descriptive of the Jewish religious movement dating back to the 18th century and therefore were not distinctive and should be left open to the public.

One of the best-known Jewish Hasidic movements, Chabad, originated in the late 18th century in Western Russia and is also referred to as Lubavitch, after the name of the small Russian village of Lyubavichi where the spiritual leaders of the movement resided in the 19th century. The name ‘Chabad’ is a Hebrew acronym for ‘wisdom, understanding and knowledge’. Under the last Lubavitcher Rebbe in the latter half of the 20th century, Chabad grew to a network of institutions providing educational, religious and humanitarian outreach in many different countries and establishing community centres, synagogues and schools.

In 2010, two Israeli non-profit associations, Agudat Hasidei Chabad (Chabad Hasidic Association in our Holy Land, an Israeli branch of Agudas Chassidei Chabad, a worldwide umbrella organisation of the Chabad movement) and Tzeirei Agudat Chabad (Young Chabad Association, purportedly the first applicant’s executive body), applied to the Israel Patent Office (IPO) for the registration of the word marks LUBAVITCH and CHABAD in Hebrew and Latin scripts. Registration of the marks was requested for a variety of goods (eg, publications, clothing, embroidery, games, toys and foodstuffs) and services (eg, advertising, business administration, financing, donation services, educational services, scientific and technological services, design and development of computer software and hardware, catering, accommodation, ticket booking and charity).

The IPO examiner refused registration of the mark CHABAD, citing the mark’s lack of distinctive character required by Section 8(a) of the Trademarks Ordinance (New Version), 5732 – 1972 in respect of the goods and services for which it was requested, in that the mark described a Jewish Hassidic movement (comprising many organisations, institutions and communities), philosophy or mode of life and thus could not be taken out of the public domain. The examiner further based his refusal on Section 11(5) of the ordinance in that registration of such a mark in the name of a specific entity would be liable to contravene public order and morality, in that it would deprive others of use of the name of a religious movement or mode of life, which should remain public.

The mark LUBAVITCH was refused for the same reasons, as it had become identified with the religious movement, as well as on the grounds of Section 11(11) of the ordinance, which bars from registration names with a geographical meaning unless they have acquired secondary meaning.

In a hearing before the trademarks registrar, the applicants argued that non-registration of the marks would lead to possible confusion of the public as a result of misrepresentation by entities pretending to act in the name of Chabad.

The applicants adduced evidence purporting to show that they were the entities within the Chabad movement that were authorised to represent the movement to the outside world and that such a role was expressly authorised by the latest Lubavitcher Rebbe, the movement’s spiritual leader (an argument not duly substantiated by evidence in the opinion of the registrar). The applicants, among other things, adduced treatises on the history of Chabad in Israel and abroad, and contracts with Chabad emissaries.

The applicants alleged that the propounded names were not in the public domain, but rather that it was due to the applicants’ activity over the years (with each being active for several decades) that the names became known to the public. They further argued that the geographical meaning of the mark LUBAVITCH was not relevant to the public, who would identify Lubavitch with the Chabad Hasidic movement, and that the movement’s spiritual leaders for most of its history did not reside in Lyubavichi.

The registrar held that the applicants had failed to substantiate the claim that they were expressly authorised by the rebbe to represent Chabad for the purpose of registration of the marks or to provide the consent of all other Chabad entities to be so represented. The registrar further held that no one following the tenets of the Chabad teaching could be prevented from representing himself or herself as a follower of Chabad.

The registrar held that, given that the words ‘Chabad’ and ‘Lubavitch’ were not exclusively identified with the applicants, but were used by the general public to refer to the religious movement, its teaching and its mode of life, they did not meet the threshold criteria of registrability as to a distinctive character. The registrar also held that the marks lacked an inherent distinctive character and that, as to secondary meaning, the applicants failed to show that they acquired and owned goodwill in the commercial context which was distinct from the public domain. With regard to the importance of proving ownership of the goodwill, the registrar referred to the ORT matter (CA 5207/08 [2011]]).

Addressing the applicants’ claim that they were the bodies competent to authorise others to use Chabad’s name, trademark or goodwill, the registrar noted that such a claim would have been appropriate in an application for a certification mark in accordance with Section 14 of the ordinance (which, the registrar opined, may nevertheless have been similarly unsuccessful in light of the other determinations in this decision).

The registrar emphasised that the Chabad movement was established in the 18th century and enjoyed the leadership of seven consecutive Lubavitcher rabbis; and while it gained unprecedented recognition on the part of the general public under the guidance of the last rebbe between 1951 and 1994, the teaching and the international religious movement crystallised before the applicants and other Chabad institutions were established, and its 230-year history could not be disregarded. The registrar had regard to a 2004 court decision in Israel, in which the Haifa District Court refused the request of one of the current applicants to enjoin another Chabad non-profit organisation, The Tents of Menachem Lubavitch, from making use of the words ‘Lubavitch’ and ‘Chabad’, holding that the applicant did not represent the Chabad movement in its entirety.

The registrar held that the applicants failed to prove they had exclusive authority over the affairs of the Chabad movement in its broad sense and, in particular, over the wide range of goods and services for which registration was requested. Contrary to the applicants’ claim, they enjoyed no special status with the registrar of Amutot (non-profit organisations) in Israel, the registration department of which noted in 2011 that the applicants did not represent all the factions in the movement. The registrar also had regard to the fact that the applicants made use of the word ‘Chabad’ in stylised form and accompanied by wording “wholeheartedly toward everyone”, as evidencing the need for the applicants to distinguish themselves through the use of stylised design and additional wording. It was also noted that the second applicant in its contracts distinguished between its specific name and the general name ‘Chabad’, from which it distanced itself in business contexts.

The registrar concluded that the applicants failed to show that they were the rightful owners of the marks, had these been registrable. Moreover, it was held that the names ‘Chabad’ and ‘Lubavitch’ should remain open to the public, and in this case the interests of free speech and freedom of occupation prevailed over the interest of preventing confusion, which is not all-important and which moreover in this case was not clear-cut due to the applicants’ failure to prove ownership of the marks. In the context of non-commercial interests overruling commercial considerations, the registrar cited Section 11(5) of the ordinance, which bars from registration marks that prejudice or are liable to prejudice public order or morality.

The registrar cited the US case of Christian Science Bd of Directors v Evans, 520 A.2d 1347 (NJ 1987), in which the Mother Church/First Church of Christ, Scientist, as the organisational structure of the Christian Science religion, unsuccessfully sought to enjoin the use of ‘Christian Science’ or ‘Church of Christ, Scientist’ by the defendants in reference to their church, and in which the New Jersey Supreme Court distinguished between the religion and the organisation where the religion pre-existed the organisation and held that the name ‘Christian Science’ was generic. A similar ruling of the Trademark and Trial Appeal Board regarding the Seventh-Day Adventist religion and the Seventh-Day Adventist Church, made in the US case of Stocker v General Conference Corp of Seventh-Day Adventists, 39 USPQ 2d 1385 (TTAB 1996), was also mentioned.

The registrar held that the fact that third parties followed the Chabad teaching without being supervised by the applicants would not lead to public confusion when using the names ‘Chabad’ and ‘Lubavitch’, and depriving them of the use of such names would amount to restricting free speech and freedom of religion, contrary to Section 11(5) of the ordinance.

The registrar concluded that the names ‘Chabad’ and ‘Lubavitch’ referred to the religious movement in the broad sense, rather than to the organisational structure represented by the applicants.

The marks were refused registration (decision dated May 22 2016).

David Gilat and Sonia Shnyder, Gilat, Bareket & Co, Reinhold Cohn Group, Tel Aviv

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32 Comments

  • Good.

    Finally perhaps this will help halt the obscene waste of hekdesh funds misused by these people to sue everyone and their brother. Now they can get back to the business at hand of actually doing what the Rebbe, Melech HaMoshiach wants us to do.

  • Avraham Shimon

    In this case I think they need to get the “Top Men” in Lubavitch & that is Rav Avraham Shemtov, Reb Moshe Kotlarsky & Reb Yudah Krinsky, being that they are the heads of Lubavitch World wide, they probably need to go 2 Isreal & fix up this issue, they are the only ones, even though Chabad Lubavitch of the Holy Land is separate from Lubavitch worldwide, yet they still are somewhat under the world headquarters in Brooklyn, so yes in some degrees they are their own Kehot & Merkos which is the same thing as Chabad Lubavitch, however in this case they are gona need the help from the above Rabbis to get invovlved, they probably have to fly in for this & probably bring Lawyers from the US.

  • Former Bochur

    This is a very good thing! A secular government should not be able to rule on what is Chabad and what isn’t. Much better to leave it in the hands of the chassidim.

  • US law

    It’s been the same in the U.S. for years.

    ‘Chabad’ is not copyrighted, not trademarked, and can be used freely (though certain baatei dinim will say it is restricted, based on politics).
    There are cases that were brought in the 1980’s that show Chabad is fair game.

    ‘Lubavitch’ is a place. According to US law, names of places cannot be copyrighted or trademarked.

    • Milhouse

      Single words can’t be copyright anyway. Unless you actually invented a word, and don’t want it to become part of the language.

  • Sholom Dovber

    All these issues will continue until we “bite the bullet “, a living Rebbe in Lubavitch is a necessity.
    Until that occurs all competing leadership groups will continue to promote themselves as being “in charge”.
    unfortunately, continuing the “Rebbe is the Moshiach” campaign is both delusional and damaging to the future of our community worldwide.

    • Random Bochur

      Wow first of all we do BH have a living Rebbe and yes he did put certain people in charge of the mosdos And of course we should continue to spread that the Rebbe is moshiach cause he told us to.

  • Yes

    The Rebbe is the boss of Lubavitch and He indeed appointed people to be in charge of his major Mosdos.

    • Pedant

      Yes, and that means that these people own everything and all your words are mine, and resistance is futile. They own the ideas, they own the inyonim and they own the religion. You are what they permit you to be.

      When all chasidim excepting said people and their direct beneficiaries rejoice in their legal loss take the hint.

      Yad Chasidim al hoelyoina.

    • Pedant is right.

      Yad Chassidimal ha elyona!!

      These people were meant to facilitate the Geulah Shleimah, as we all are. Not sue.

      This is a Didan Notzach for all Chassidei Chabad.

  • Its time

    Chabad-Lubavitch is a philosophy that became a movements that became thousands of organizations worldwide. How long until Chabad-Lubavitch teachings are able to spread throughout the entire world? How long until the teachings of Chabad are able to be taught in Reform and Conservative schools alike (as they already are in many cases) and the true edict of “l’chsheyafutzu” comes true as the “maayanos” come FROM the “chutzah” as the Rebbe said they would. The Talmidim of the Maggid were concerned this might happen and hence the Alter Rebbe’s moshul of the Prince and the precious crown jewel.

    • US law

      No. No places can be.

      Anyone who brings theses fraudulent applications or lawsuits is just wasting good time and money, while trying to control and inflict damage through the courts.

    • Milhouse

      The word “Brooklyn” written in a specific distinctive and easily recognized style could be registered as a trademark. No single word can ever be copyright. (Well, technically, if someone were to write a one-word poem it would be copyright, but it would be impossible to infringe.)

  • shlomo

    and all this because one Chabad rabbi do not want sign Beith Chabad on a house of another Chabad rabbi)))
    Rebbe z”l was the man of peace, but today Chabad hungering for war, at least machlockes ,in any place for any reason. sad ,but it can lead to the end of themovement

  • We need Moshiach"

    From the outside, the movement looks like it’s divided and in disarry. Not unlike many other divided Chassidic groups. That;s why we need Moshiach, who will unite us all.

    • Yudi Mandel

      No what we need is a live Rebbe who will lead us until Moshiach comes. Don’t be from the מחשב את הקץ fools that the Gemara warns us about.
      A Chassidis has to have a live Rebbe as is mentioned in Chassidus thousands of times.

    • Human Resources

      K Yudi, may I nominate you. Rebbe Yudi who will lead us until moshiach comes.

      Do you do kugel?

  • DeClasse' Intellectual

    #23) You know that #21) i\sd right. too much non-positive in fighting has been reported on this blog and as far as your wish–it haint going to occur as long as we act like this

  • To #14

    There are a few issues with your comment 1) ” First of all we do B”H have a living Rebbe”, it’s been 22 years since Gimmel Tamuz, I daven @ 770 every Shabbos I haven’t seen the Rebbe come down for Kabolas Shabbos, Shachris & Farbrengen after Musaf as well as Yom Tov, usually Motzei Achron Shel Pesach the Rebbe would give out Kos Shel Bracha, I haven’t seen it in the last 22 years, so either u got vision issues or you don’t want to accept the truth about Gimmel Tamuz. 2) “& of course we should continue to spread that the Rebbe is Moshiach cause he told us to” that is totally not true, the Rebbe never said 2 go around saying that he is Melech HaMoshiach, this none sense has made a lot of issues for Lubavitch worldwide, going into shuls in Williamsburg & Boro Park saying Yechi & that the Rebbe is MH”M , this has messed up Lubavitch, u want to say it, say it to yourself not the world, the Rebbe never said to do such a thing, it’s a chilul Hashem & lubavitch, u are listing to Morons who say this, thank u

  • To #14

    Plz show us in the Rebbe’s Sichos, where the Rebbe said to go around & tell the world that he is Melech HaMoshiach ? Its false !! U won’t find it anywhere, Nowhere, the Rebbe never even said the words “I am The King Messiah & will take all the Jews to Yerushalayim” Never Ever, I have lived in CH for 46 years, I was by every Farbrengen (Weekday, Shabbos & Yom Tov) Sicha, Kos Shel Bracha, Kuntres etc Never Ever did I hear the Rebbe say “Please tell the world that I am Melech HaMoshiach” Mishichistim started this Garbage, Foolishness & Nonsense, yes Lubavitchers believe that the Rebbe is MH”M but we keep it to ourselves, but going around saying it to the world is a horrible thing & has brought “only issues on Lubavitch throughout the world” thank u

  • To #5

    It’s “No Joke” what #4 said, it’s true “The Top Rabbanim in Lubavitch” Which is Rav Avraham Shemtov, Reb Moshe Kotlarsky & Reb Yehuda Krinsky are the only ones that could help solve this issue in Eretz Hakodesh, they are the “Head ppl” in Lubavitch today & yes to bring a US lawyer with them, this isn’t a Joke, so your the last one laughing” let’s see u take care of this issue, which part of Merkos do u work for ? Oh sorry your “just a Random Bachur” u have no say in this matter, so why don’t you leave it up to the Right ppl & keep your mouth shut”

  • We want Moshiach now

    Even a secular person sees this is the right decision, no one ‘body’ should own chabad or lubavitch, and in my opinion these Rabbis are suffering a delusional thought process and are going down a wrong path. They are there to facilitate not control. The Rebbe made an army of generals, each shliach has the halacha of a shliach kemoso.
    This is not about the Rebbe being Moshiach or weather that should be stated in public. (That is at this point just an excuse to make a divide so the power hungry can have a side to back them) for years Jews of all backgrounds have been singing ‘Dovid melech yisroel chai v’kayom’ and there’s a gemorah where the students would say their Rebbe is Moshiach and after the back and forth the maskona there.
    Both schools of thought are right and in chabad (chochma, bina, days) that is possible
    With sincerest wishes for a ksiva v’chasima Tova L’shana Tova u’metuka for all