A Yiddischer Mama

April 17, 2014

  • The Jewish Mother, a restaurant and live music venue, at one time had venues in Norfolk, Hampton, and the Hilltop district of Virginia Beach.
I have my mother-in–law, an 85 year old Polish, Holocaust veteran staying for the whole of Pessach. To keep my sanity, I periodically disappear into the den to “work”.
According to Mike Holtzclaw,  apparently “The Jewish Mother” is a  restaurant and live music venue, that at one time had venues in various places.

David Coleman, a Toano businessman says he will take legal action to stop the re-opening of The Jewish Mother, a popular restaurant and live music venue, at the Virginia Beach Oceanfront.

Both David Coleman of Toano and Scotty Miller of Virginia Beach claim to own the trademark, name, logos and recipes associated with The Jewish Mother. Miller is suing Coleman, and Coleman is trying to stop Miller from continuing to use the name. If anyone wants to open a restaurant called a Yiddscher Shvigger, I am happy to gift wrap and post…


Can Israel and China Develop a Symbiotic Relationship?

April 16, 2014

China Israel  yinyang

In per capita terms, Israel is the highest patenting country in the world, despite the previous blog article. China is a big market, and a manufacturing powerhouse with a very large population.

An interesting article describes symbiotic relationships between the countries.

At present, the single client who I’ve done most IP work for in the past three years is a Chinese company part owned by an Israel start-up, that is essentially a joint venture between China and Israel, with an Israeli CEO and president, and Chinese workers. I don’t know how representative this business model is, and suspect that it is a unique phenomenon, but it is a highly successful one.

I hope there will be more cooperation in future years.

China and Israel are both ancient civilisations. The classic overland trading route to China via India starts in Israel’s Negev Desert. Columbus was actually looking for a Westward way to India when he stumbled on the New World, which he called the West Indies, and the populations Indians.


Lies, Damn Lies and Statistics

April 13, 2014

statistics

Indus TechInnovations sent me the following “informatic” for publication: Patent trends – Israel. It is very gung-ho and positive. The problem is that last year’s statistics have published and are less positive. See my article from February. Since the 2013 statistics have been published, ignoring them does a disservice. Particularly where they buck the trend.

There was anArticle from Idiot Achronot last Friday, by Sever Plotzker (טור ששי) that claimed to provide the true facts behind the propaganda in various areas, one of which was patents and innovation. Dr Esther Luzzatto, managing partner of the Luzzatto Group, one of the big five accountancy firms [sic] specializing in technology and IP was quoted. Now, we can argue whether or not the Luzzatto group is one of the largest patent attorney and law firms in Israel, but it is not a large accountancy firm and I am sure that Drs Kfir and Etty Luzzatto would be the first to acknowledge that.

The article included a number of interesting statistics and theories.

Briefly, the points raised were:

  1. A drop in PCT filings of 30%
  2. Significant drop in investment in start-ups
  3. Privatization of technology incubators
  4. International companies opening R&D facilities in Israel
  5. In 2013, there were 780 start-up companies registered, where the general average is about 650 a year.

The drop in PCT filings was considered a reliable indicator of innovation in general, and patent activity in particular. It was linked to the drop in funding, which was linked to the privatization of incubators and venture capitalists wanting a quick exit and to international companies creaming off talent by opening R&D facilities, where the patents were registered in name of international holding company.

I would not be surprised if the original research by the Luzzatto group resulted in a coherent report. What was clear was that the journalist who extracted the data and summarized it in a column and a half didn’t have much of an idea about the subject matter.

Nevertheless, the article made a few points worth considering. The first one was that there is apparently a drop in PCT filings by Israelis of 30%. This statistic is worrying, but I am not convinced that Dr Luzzatto is correct that this is a representative marker of innovation or even of patenting activity. The underlying assumption that this statistic clearly shows a drop in patenting, but it actually only shows a drop in PCT filings. There is an inherent assumption that patent filing is always reflected by use of the PCT mechanism. I suspect, however, that a lot of activity is going on in telecommunications and software, particularly in developing mobile phone applications. In these fields, many start-up companies have filed PCT applications only to run out of money 18 months later. With the speed at which these fields change, it is a reasonable to file in US only. The calculation of the company’s value may be based on US market only.

Some medical device companies also only file in US. Here it is less easy to justify, but with a limited budget some companies are perhaps more careful where and how widely they file, but are, nevertheless, innovative and may be able to bring a product to market. of course, sometimes the invention is only patentable in the US. I’ve had that with medical methods, for example.

One of my clients makes industrial digital printers. The company’s market is world-wide, but competing products are manufactured by companies based in Israel, the US and recently Italy. The company has traditionally filed in Israel and then in US under the Paris Convention, and recently also files in Europe. There is little justification for them to file PCT applications. One of my client makes game changing computer hardware. The company files in the US and immediately afterwards in the Far East under the Paris Convention since their competitors are all in Asia. It may make sense or them to consider filing a PCT application for the more critical applications to keep their options open, or to file in India and Europe just in case competing factories open up there. Client considers the $100 million required to set up a fab rules out this possibility. So there you have it, start-ups, small Israel manufacturers and a large company all actively patenting, but not using the PCT mechanism.There may indeed be a drop in inventing, but it is less severe than the 30% discussed in the article.

There is a drop in venture capital. However,  in the past there have been bubbles where venture capital invested has been out of all proportion to real worth.  This is a world-wide phenomenon, not one exclusive to Israel. With low-interest on safe investments and now some govt. intervention in the property market, one imagines that venture capital will grow again. Recently investors have been looking to buy existing patents in order to sue infringers. This model is diverting funding from research, but won’t last.

Privatization of technology incubators may result in investors being short-sighted and focused on a quick return for investment. However, it is doubtful that this is related to the drop in PCT filings. One needs a first filing, maybe a provisional application, to solicit funding in the first place since investors want to see that there is something allegedly patentable. The Paris Convention Deadline, or PCT filing date, comes around a year after the provisional is filed. Private investors may want a quick return, but it won’t be that quick that the money’s run out before a PCT application can be filed.  The preference for private vs. govt. funding models are more tied up with political ideology than with anything else. Generally capitalist economics assume that the private market will do a better job than the government in creating new industries. Whether or not this us true, State funding of basic research in universities makes sense, but I am not sure that the tech transfers should be funded by the government.  Certainly some government-funded start-ups should never have received funding since the basic concept was obviously wrong.

As to International companies opening R&D facilities in Israel, this as generally positive. It is preferably for Israelis to work for large corporations such as Intel, Microsoft, Google, GM, etc. in Israel, than that they go to Silicon Valley to work for them.  The large companies offer a reasonable salary and conditions, but the entrepreneur willing and able to try to establish a start-up will forgo the salary and conditions to take the risk of starting up something of his own, if he can obtain funding. It is unlikely that the existence of R&D centers makes obtaining funding for a new venture less likely.

The drop in start-up companies from 960 In 2013, there were 780 start-up companies registered, where one would expect 650 when taking a longer perspective.

Many patent firms are keen on clients filing PCT applications. It generates income. Perhaps the hesitancy by inventors reflects a greater sophistication and realization that funding is difficult to come by, and companies are filing less widely but not necessarily less first filings?

My problem is with the article in Idiot Achronot. It is unclear to what extent it reflects the views of the Luzzatto group in general, or of Etty in particular.


Camtek announces that they have been caught infringing

April 7, 2014

camtek rudolh

Generally press releases published by companies are about the publishing company filing suit against others infringing their IP, or a court ruling in their favour. In a weird development, Camtek, an Israeli wafer imaging and processing company has announced that the district court of Minnesota has entered a summary judgment finding that certain previous models of Camtek’s Falcon systems were capable of infringing upon two claims of a Rudolph patent in the United States.

See here  for more details. Perhaps not surprisingly, Camtek’s shares dropped over 3% on the day.


Clip Fresh and Click & Fresh – Confusingly Similar or Not?

April 7, 2014

Farm Chalk Investment LTD filed Israel trademark application no. 234114 for “Clip Fresh by Farm Chalk” on 7 December 2010. The stylized mark is for vessels and container for food storage, from glass, porcelain and pottery in class 21.

Clip fresh

The mark is shown above.

On 7 December 2011 the mark was allowed and it published for opposition purposes in the patent office journal of 29 December 2011. On 29 March 2012, Millennium Marketing Intertrade LTD filed a notice of opposition, and the applicant submitted counter claims on 17 May 2012. Both sides submitted evidence, some of which was cancelled in a minor skirmish, and on 19 June 2013, a hearing was held after which both sides submitted more claims and counter claims and their summing up statements were submitted on 5 December 2013.

The opposer has a registered Israel trademark no. 204165 for a  stylized  logo Click & Fresh as shown below.

click and fresh

The Opposer has been importing quality household items for about 12 years and claims that their click & fresh logo is well-known. When comparing the sight and sound of the two marks, they are confusingly similar and likely to confuse the public since the words ‘clip’ and ‘click’ start with the same sound and the rest of the mark ‘fresh’ is identical. Furthermore, both marks embody the same message of closing to keep produce fresh. The opposer opposed the mark under Sections 11(6), 11(9) and 11(13) of the trademark ordinance.

The applicant responded that they have been using the requested mark since 2011, had a reputation in the container field and had invested in publicizing the mark, including via their website www.clip-fresh.co.il, and thus had no need to free ride on anyone elses reputation. Furthermore, not only are click and clip different, but there is an ampersand & in the mark and this and makes the marks both look and sound different.

Finally, the applicant noted that the opposer had no exclusive rights to the word fresh or click., and had disclaimed rights to these words in the process of registering the mark.

Both sides prevented their evidence.

In the ruling, the Commissioner, Asa Kling, noted that the grounds for the opposition was likelihood of confusion with a previously registered mark, and the legal question was whether the marks are confusingly similar to the extent that the public could purchase goods from one source, believing it to be from the other.

The test to be applied is the triple test, where the main feature is the sight and sound of the mark. Since the products are acquired off-the-shelf, the appearance of the mark was given more weight than its sound. Because of the ellipse, the ampersand and the additional word farm chalk, the likelihood of confusion was not seen as being too great, despite the similar customers being target.

Since there were a large number of similar marks being used by third parties, including “keep it fresh-click” ,”Click plastic design”, “Food container with quick click”, “Lock & Fresh” ,”Keep fresh food containers” and the like, Millennium Marketing Intertrade LTD’s earlier Click Fresh mark was considered insufficiently distinct in and of itself to prevent similar marks from registering. Since the applicant’s mark included the branding Farm Chalk, the allegations of free riding and passing off were rejected.

In conclusion, the mark was not considered sufficiently confusingly similar to opposer’s mark to prevent its registration, and the mark was allowed to register.


Total Immersion

April 6, 2014

total immersion

Berlitz filed a Israel trademark No. 232819 for “Total Immersion”. The mark, filed in class 41, is for teaching and practicing language, renting and hiring materials for teaching and practicing language, texts, publications, information, and consulting regarding language skills.

On 26 April 2011, an Examiner rejected the mark as lacking distinctiveness, since the term is widely used for language courses. Applicant responded by noting that the mark had been accepted by the Office Harnonization of the Internal Market (OHIM no 000198820) and requested registration under Section 16 based on the OHIM mark.

Maintaining that the mark was totally descriptive and wholly lacking in distinctive features, the Examiner continued to refuse the mark.

Applicant argued that ‘total language immersion’ may be in common use, but total immersion was a phrase coined by applicant and associated with applicant. This position was supported with statements from the Paul Weinstein, president, legal advisor and secretary of Berlitz to the effect that ‘Berlitz Total Immersion’ was a style of language teaching developed by the applicant and that ‘Total Immersion’ was registered in various jurisdictions.

The Examiner remained unswayed, and the Applicant appealed to the Commissioner of Patents and Trademarks.

The Appeal was based on an allegation that the term had acquired distinctiveness in Israel and that customers associated the term with the applicant.

On the scale from made up marks to descriptive ones, the Commissioner considered the mark as between indicative and descriptive. The Examiner considered the mark descriptive and generic, and cited various language schools. The Applicant considered that those attempting to learn the language would not even know what the word immersion meant. In response to this, and quoting the American Apparel decision, the Commissioner argued that the Patent Office cannot generally relate to the level of English of potential customers in Israel, however in this case, clearly the potential customers lack English schools and would not understand the nature of the word immersion and certainly not Total Immersion.

Since the mark can, at best, be considered indicative and not descriptive to the potential customers, Commissioner ruled that it could be registered under Section 8a, and thus whether or not it could be registered under Section 16 was moot.

COMMENT

The phrase Total Immersion is being used here as a metaphor. Berlitz teaches language. It does not provide Mikva services. I suspect that those trying to learn English via Berlitz have very poor skills, but that may not be true of a company representative purchasing the services for other members of staff.

The question is whether Berlitz is the only user of the term in Israel, or whether other language skills use the term. That’s what the opposition period is for…


Should Israel Patent Office Hear a Trademark Cancellation Proceedings Where there is an Infringement Case before the Courts?

April 6, 2014

cube in hand

In June last year, I reported on a decision to allow the shape of the Rubik’s Cube to be filed as a trademark. See here  the mark is Israel Trademark No. IL 228232.

A request to have the mark canceled was filed by Dan S. LTD, To Buy Market LTD and Lula Pozalov.

Since there are pending cases regarding trademark infringement before the District Court, which were filed prior to the cancellation proceedings being initiated, there is a question whether the patent office should hear the cancellation proceeding, or should suspend it, pending the outcome of the case in the District Court.

The request to cancel was filed on 22 October 2013, after Civil Proceedings No. 61560—05-13 was filed in the Central District Court. In the District Court, one of the charges was trademark infringement and one of the defenses offered was that the mark should not have been registered. There is thus duplication of the case in two forums.

Ruling

The Commissioner of Patents, Assa Kling ruled that in  8/78 El Okvi vs. Israel Land Administration, P.D. 29 (2) 477 the Supreme Court ruled that where substantially the same question is addressed in two separate proceedings, despite slight differences in the parties and in the style of the complaint, it may be unfair for the defendant to have to address the same issue twice. The question to be addressed is whether hearing the same case in two forums is a fair use of the court’s time. The court case in the District Court covers the validity of the trademark, trademark infringement and additional issues such as passing off and unjust enrichment. The District Court can and will rule on the validity of the mark and so it makes sense for the Patent Office to refrain from doing so, both to avoid double work and to avoid the embarrassing event of the two forums coming to different outcomes.

In the circumstances, the cancellation proceedings in the Patent Office are stayed pending the court decision.

Comment

The decision makes sense. I think it is good that Israel doesn’t have a bifurcated system like in Germany, and that a legitimate defence against infringement can be that the mark or patent should never have registered. In this case I don’t think the mark should have been granted, and hope the court throws it out. That as may be, it certainly makes sense for the Patent Office to await the court’s decision.


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