Arutz 7’s take on the 2013 Report of the Israel Patent Office

July 28, 2014

Arutz 7

In an earlier post, I summarized the 2013 Patent Office Report.

It is interesting to see what happens when journalists who are non-patent professionals analyze and report on the same data.

Arutz 7 is a nationalist news web-site.  It used to be a popular pirate radio station, but was eventually closed down in an en-banc Supreme Court Ruling, which gave the impression that the cutlass welding settlers were making Palestinian’s walk the plank. None of the eminent judges saw fit to refer to freedom of speech or to the classic Kol HaAm decision. Funnily enough, the same politicians who appealed to the Supreme Court against the pirates, nominated Voice of Peace pirate Abu Natan for a Nobel Peace Prize. It is a funny world, but I digress.

Anyway, Arutz 7 have published a write-up of the 2013 report. It may be found here.

What I find fascinating is that they see the main story that can be culled from the data is that the Israel patent office manages to get 99.7% of PCT filings to Geneva in under 4 weeks, where the majority of those held back have security related issues. To me, this statistic indicates that the PCT department works efficiently, but this is probably a factor of over-staffing as much as anything else, since to become an International Search Authority, the Israel Patent Office needed to reach 100 examiners and some of these pad out the PCT Department.

According to Adv. Emi Plimor, the Secretary General of the Justice Ministry, “this reflects the technological level, creativity and innovation of Israeli inventors”.

I am pleased that the Israel Patent Office is so efficient at forwarding applications, but I am not sure how significant it actually is. When it took them a couple of months, there were no repercussions that I am aware of. That said, the on-line payment innovation that saves having to go to the Post Office and then submit the payment physically is a great improvement from the perspective of the practitioner.


Moroccan Oil Loses Passing Off Case in UK

July 28, 2014

Miracle OilMoroccan Oil

Our friends at Marks & Spenser Clerk have reported an interesting case concerning the hair-slicking Israeli product Moroccan Oil.

Essentially, Moroccanoil Israel Limited (MIL) sued Aldi Stores Limited for packaging their Miracle Oil in a confusingly similar packaging, under the law of Passing Off. the case was heard in a specialist IP Court, the UK Intellectual Property Enterprise Court.

Morrocanoil Israel LTD charged that Aldi’s Miracle Oil packaging amounted to a misrepresentation calculated to deceive or confuse the public.

As can be seen in the images, the box shape and colour, the bottle shape and size, the colour of the term Miracle Oil is identical to the M in Morrocanoil’s logo.

They claimed three alternative grounds of misrepresentation:

  1. a substantial proportion of the public would take Aldi’s “MIRACLE OIL” product to be MIL’s “MOROCCANOIL”;
  2. although the public would distinguish between the products, they would assume there to be an association between them in the form of there being a common manufacturer; or
  3. the public would assume that Aldi’s “MIRACLE OIL” was being sold under licence from MIL.

Previous UK case law had drawn a clear distinction between an intent to take advantage of a claimant’s goodwill and an intent to “live dangerously” by inviting comparison. In this ruling the judge considered that the subjective intention of the defendant must be taken into account and, if the defendant’s intent is that the name and / or get-up of its product will bring to mind the claimant’s product but not lead to any false assumption on the part of the public as to any sort of trade connection, including common manufacturer or a licence, then this cannot be deemed to establish that a misrepresentation has been made.

The judge went on to rule that none of the evidence provided by MIL demonstrated that members of the relevant public had assumed there to be a trade connection between the two products as a result of the name and / or get-up of Aldi’s product. Evidence that certain individuals viewed Aldi’s packaging as “cheeky” was held to be insufficient as such remarks served to demonstrate an awareness that MIRACLE OIL was not MOROCCANOIL and did not come from the same manufacturer.  Ultimately, while it was accepted that Aldi did intend to make the public recall MIL’s product when they saw MIRACLE OIL, it was held that purchase of Aldi’s product was not, and was not likely to be, made with any relevant false assumption in the mind of the purchasers.

COMMENTS

There is also an IPKAT post on this case.

It seems that to be able to prevent this type of copying in the UK, claiming ‘passing off’ is insufficient. That type of doctrine is only good to prevent identically names goods. Perhaps brand leaders should consider using unique packaging and should register these as designs. In my view, this seems an expensive requirement. In copyright law, there is a long established defense for satire. I don’t think that satire should be available for cases like this.

If one labels, say, jeans, as ‘Levy’s Kosher 613′, and use the stitching and studs, etc. of the iconic 501’s, Would Levi Strauss have a case of passing off? I don’t know. I do know that an Israeli producer of modest skirts with a wavy pocket design was threatened by Wrangler’s local representative and settled out of court.

A couple of year back I wrote up a case concerning generic body warmers which the judge threw out.  It seems that Israeli courts are taking a similar approach to that taken in the UK.

For some reason I am reminded of ‘The Sale of Two Titties’ by the Dutch author Dikkens.


Congratulations to the IPKAT

July 21, 2014

top cat

The IPKAT has clocked up its 10,000,000 hit today.

Congratulations to Professor Jeremy Phillips, to veteran Israel trademark attorney Neil Wilcoff and to the other Kats on this tremendous achievement.


Trade Secrets in the Employer-Employee Relationship

July 21, 2014

forum shopping

In Israel, workers have freedom of occupation and can change jobs or set up their own businesses and may compete with their former employers. The work relationship often exposes the employee to trade secrets. Ex-employees are obliged to maintain confidentiality with regards to trade secrets and cannot compete with former employers by using such secrets. But was a legitimate trade secret?

Work related disputes are dealt with by the Labour Courts, but what establishes the employer-employee relationship?

Nissim Versano appealed an interim Decision of the Tel Aviv District Court given by Judge Ginat to refer the case to the Labour Court to decide whether or not there was an employer-employee relationship. Judge Amit of the Israel Supreme Court refused the Appeal.

On 25 March 2014, Nissim Versano filed suit in the Tel Aviv District Court, claiming that for a number of years he has been involved in the tobacco industry, and has developed contacts with a number of parties in the field. He claims that he took Moshe Ninio into the business as a partner, with a verbal agreement that Ninio wouldn’t use acquired knowledge against the wishes of Versano.

Versano claimed that Ninio set up a competing shop with similar design, stock and prices to Versano’s and that this created a situation of passing off, Unjust Enrichment and theft of trade secrets.

Ninio claimed that he was an employee of Versano and not a partner. He claimed that the District Court was thus not the correct forum to hear the case which should have been filed in the Tel Aviv Labour Court, and requested that the case be thrown out as not within the jurisdiction of the Tel Aviv Court. To substantiate his case, Ninio appended three salary slips testifying to him being an employee.

Judge Ginat of the Tel Aviv District Court referred the case to the Tel Aviv Labour Court to rule on the issue of whether there was an employee-employer relationship, and Versano appealed this referral.

Versano claimed that the District Court should decide whether it was competent to hear the case and, if not, should refer it.

The Supreme Court ruled that Ginat should either hear the case, refer it or throw it out. In other words, he should have ruled on whether or not it was a labour related dispute, and not referred that decision to the Labour Court. Cases cannot be batted back and forth.

However, the appeal was thrown out. The appellant should have appealed by right instead of requesting right of appeal. If a case is heard by District Court instead of by the Labour or Rabbinical tribunals, there is a right of appeal. However, if a case is transferred to a tribunal, one should appeal immediately.

The Supreme Court could use the Request for Right of Appeal as grounds to rule substantively on the Appeal, but did not see fit to do so.

The issue is a partial transfer, which is correctly seen as an interim decision and therefore there are grounds to file an interim appeal.

The Supreme Court related to a case transferred to the Rabbinical Court by a woman claiming financial support on the grounds of having acquired status of a wife by having had intercourse with a man in a manner establishing common law wife status as being an example of an interim decision that could be appealed, but ruled that in this case, the claim of employee – employer relationship should be heard by the labour tribunal who not only have sole discretion to hear labour disputes but also to rule on whether there is an employer-employee relationship.

Furthermore, cases concerning trade-related disputes having an employer-employee aspect are in the sole jurisdiction of the labour court. Trade secret related cases are also the sole jurisdiction of the labour court if there is an employment aspect to the case.

Once transferred to the Labour Courts, cases should stay there rather than be transferred on.

Appeal to Supreme Court  3930/14 Versano vs. Ninio, by Judge Amit, 26 June 2014

COMMENTS

Having one court only being the correct forum for hearing a case prevents ‘forum shopping’. This decision is likely to have repercussions on employee compensation for patents as well as for trade-secret issues. Many companies might be less than happy with this, since the Labour Courts are seen as being pro-employee. With the Iscar case (Plony vs. Company) on appeal to the Supreme Court, this could get interesting.


Israel Patent Office Awards Costs of 281,651 Shekels for Unsuccessful Opposition

July 14, 2014

costs

Rafael Advanced Weapons Systems LTD filed two patent applications, IL 149934 and IL 180478 “Airborne Reconnaissance System”, which were opposed by Elbit Electrooptical ELOP LTD.

IL 149934 was filed on 30 May 2002, and on allowance, published for opposition purposes in May 2007. Elbit filed an opposition, as did Elta – Israel Aircraft Industries.

Because of a divisional application,  IL 180478, the opposition was frozen until the second case was allowed and published for opposition purposes on in November 2009.  Both opposers opposed both applications. Since the cases were identical, the oppositions were combined.  The two cases were heard together, although they weren’t combined in a single proceeding.

When the oppositions were eventually dropped, the applicant applied for 711,263.79 Shekels in costs, providing an itemized table of charges for each action.

After reviewing the table and noting a mistake wherein 54,330.25 Shekels was listed instead of 543.3 Shekels, the opposer suggested that a total of 25,000 Shekels would be more appropriate.

In her ruling, the deputy commissioner ruled that for freezing the first opposition until the divisional application published, no costs were appropriate. On the other hand, she considered the full 24,180.73 Shekels charged for the second period, after the divisional application was allowed as being fairly charged.

She also allowed 100,470.58 Shekels for filing corrected statements of case, 150,000 Shekels as reasonable for the submission of evidence and 7000 Shekels for the charges for requesting costs. The total costs allowed were thus  281,651 Shekels, to be paid within 30 days, or interest would be accrued.


Costs for Trademark Opposition

July 14, 2014

visco gel 1visco gel 2

Aminach LTD filed Israel trademark application No. 233949 Visco-gel for Mattresses, beds, sofa beds, armchairs and furniture for bedrooms; all included in Class 20.

The Health Center D. A. LTD. opposed the mark. On 12 January 2014, the opposition was refused and the trademark was registered.

Aminach now filed a costs request for 81,391 Shekels. This included 78,739,45 shekels  for 52.7 hours work of lead counsel, 3.6 hours work of a junior lawyer, and 1.93 hours work of a trainee.  The difference of 2652 Shekels covered courier expenses, printing costs, fax costs and recording the hearing.

The Health Center D. A. LTD. considered the costs charged as exorbitant and referred to the minimum recommended fee established by the Israel Bar for oppositions, which, in 2014 stood at 1859 Shekels, which is rather less.

The Health Center D. A. LTD. also noted that there was no contract provided that set out a fee scale or tax invoices showing that the fees were indeed paid. Finally, the respondent also noted that costs were awarded in the original decision and there was no justification to charge this twice.

THE RULING

The Commissioner reiterated that an applicant who overcomes an opposition is entitled to payment of legal costs. He did not consider that the amount of time spent was unreasonable for the amount of work done, nor did he consider that there was a difference between pro forma invoices and actual tax invoices.

The Commissioner did not find the minimum charges established by the Israel Bar were binding on attorneys, nor on the Patent Office when deciding fair costs.

Since costs of 7000 Shekels were awarded for a specific action in the original decision, the costs of 13,480 Shekels that were calculated for the same action at this stage was considered as double billing.  Furthermore, costs of 1440 Shekels for postponing the hearing were considered unnecessary since the opposer didn’t have a problem with this, so this fee was canceled.

The Commissioner ruled that the remainder of 66, 400 Shekels (nearly $20,000) should be settled within 30 days, or the sum would be index linked and would accumulate interest.

COMMENT

The term visco-gel relates to material properties and is descriptive. I don’t believe that mark should have been allowed. The costs are high, but not unreasonably so.


Opposition Withdrawn, But Commissioner Continues Anyway

July 14, 2014

spraying device

Israel Patent 204070 to Reckit and Colman titled “SPRAYING DEVICE AND METHOD OF USING SAME” relates to a spray apparatus with a safety feature to check that it is not refilled by a third party. It was allowed, and published for opposition purposes on 28 February 2013. On 28 May 2013, Sano Bromium Factory LTD.  filed an opposition, claiming that all the claims were non-patentable due to novelty or obviousness considerations in light of WO 2005/113420 and WO 2005/009325. Furthermore, Sano-Bromium argued that the claims were poorly worded and unclear and lacked support from the specification.

Sano-Bromium subsequently withdrew their opposition on 24 December 2013, and the opposition file was closed. However, under Section 34 of the Patent Law, the Deputy Commissioner put herself in the shoes of the opposer and compared the claims with the two citations and reasoned that they were, indeed, unpatentable.

The Deputy Commissioner published a closely argued comparison between the claims and the two citations and provisionally refused the patent, giving the applicant 30 days to respond.

COMMENT

The purpose of Section 34 is to prevent patents issuing when they shouldn’t. The Deputy Commissioner is correct to analyze the grounds for opposition on their merits and to consider whether the opposition should continue even if the opposer loses interest.


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