Globex trademark cancelled after opposition not responded to

July 28, 2015

Konkov Andrii Anatoliiovych filed international trademark number 1168258 that was allowed in Israel and received the Israel trademark number 257718

The mark is shown.

Globex

The mark covers a massive arrange of goods and services in classes 9 and 35.  Chicago Mercantile Exchange Inc. opposed the mark. Since Applicants did not bother to respond, the mark was canceled.


July 28, 2015

182763

IL 182763, 184179, 182759 and 182758 are trademarks owned by Krasnyi Octybar and by the “Open-Type Joint Stock Company Rot Front”

The marks cover Waffles; confectionery for decorating Christmas trees; cakes; pastries; peanut confectionery; almond confectionery; pasty; cocoa; cocoa products; caramels [candy]; sweetmeats [candy]; liquorice [confectionery]; peppermint sweets; coffee; crackers; meat pies; farinaceous foods; candy for food; fruit jellies; marzipan; custard; honey; ice cream; sherbets [ices]; muesli; mint for confectionery; cocoa beverages with milk and coffee beverages with milk; coffee-based beverages, tea-based beverage, chocolate beverages with milk, chocolate-based beverages, cocoa-based beverages; lozenges; petits fours [cakes]; biscuits; pies; fondants; pralines; gingerbread; chewing gum, not for medical purposes; sugar; cake paste; confectionery; rusks; sandwiches; almond paste; tarts; cakes

(Edible decorations for-); halvah; bread; tea; all included in class 30.

Roshen Confectionary Corporation and Dealer BMD international LRD, Kharjov Biscuit Factory, Dolina Group and Letfood LTD requested that the marks be canceled. Krasnyi Octybar and Open-Type responded by requesting that those requesting the marks be canceled deposit 150,000 Shekels to cover legal costs should they lose. They considered that the initiators of the action should be made to deposit these relatively large sums as the plaintiffs are limited companies formed outside of Israel without significant Israeli assets. The plaintiffs countered that Open Type has not provided a shred of evidence that they would have a problem paying costs should they lose.

Ms Shoshani Caspi, the adjudicator of IP disputes at the Israel Patent Office noted that Section 253a of the Company Law 1999 provides the courts with wide discretion whether or not to grant such request.  Citing Judge Gronis, she noted that with minimum evidence such costs should be deposited.  Citing 10376/07 L. N. Computerized Engineering vs. Bank HaPoalim 11/2/2009, a three stage review of such requests should be conducted. The first stage is to ascertain the economic footing of the company.  Having ascertained that the company may have problems settling their bills, the court then has to decide whether there are grounds to require the side to place a deposit or not, based on the likelihood of them losing. Only then is the third stage, which is ascertaining the amount to be deposited.

In this instance, the respondents are the plaintiffs who launched adversarial proceedings against the mark holder. The onus is therefore on them to show financial ability NOT on the mark holder to show that they don’t have financial ability. The main grounds for the bond request are that the plaintiffs are foreign entities. As far as individuals are concerned, that is not, in and of itself, sufficient grounds to require a bond to be posted.  A lack of Israel assets does not indicate a lack of ability to pay if one loses, but it does indicate a lack of ability of the other party to collect which is, after all, the rationale for the Law. This, according to the adjudicator of IP, Ms Shoshani Caspi, is sufficient grounds to open the requirement of the posting of such a bond to be considered.

Meanwhile, the companies requesting that the marks be canceled have not shown evidence of having assets in Israel and have not provided evidence of financial standing. In the circumstances, there is no reason to assume that were the plaintiffs to lose, they would be able to pay costs. Consequently, it seems fair to require the party suing for the marks to be canceled to post a bond to cover defendants costs should they prove unsuccessful.

The defendants have managed to find the resources to register and maintain their marks and there is no indication that they should have problems paying costs were they to lose. Indeed, their comments indicate that they have resources. Nevertheless, if this is indeed the case, requiring them to post bail will not adversely affect their ability to conduct this legal proceedings.

Ms Shoshani Caspi does not accept the respondent’s position that the mark is likely to be canceled. She feels that unless a case is very obvious to succeed or to fail, she should reserve judgment until the evidence is submitted. She was not impressed with comments concerning the strength of other marks of the defendants or that they themselves had not requested that a bond be made.

Weighing everything up, Ms Caspi came to the conclusion that 7000 Shekels would be an appropriate bond in this case and ordered that it be posted within 21 days, otherwise, the request for cancellation of the marks would be canceled.

Intermediate ruling, Ms Shoshani Caspi, 4th June 2015.


Adultery and Copyright – a cautionary tale

July 27, 2015

life is short
Ashley Madison is an online dating agency with a difference. Instead of focusing on the singles market, it provides its services to wannabee adulterers by inviting them to subscribe to their site and to post details about themselves, and the service helps pair up the wannabee adulterer with interested matches.
Their US registered trademark is ‘Life is short – have an affair’. How that passed the morality limitations is anyone’s guess. I expect that ‘purgatory is long and painful’ Or ‘Hell is Hot, Have an Affair’ are less effective advertising slogans.

Apart from eternal damnation, the service also has other risks. If would be adulterers profiles and perhaps, revealing photos are made available to suitable partners on line, it is not inconceivable that the would be adulterer and their bored spouse or his/her friends may simply be paired up by the service provider. One imagines that a private detective could easily discover identity of users, as could potential partners deciding that blackmail someone is more attractive a proposition than having an affair.

One imagines that blackmailers might intentionally subscribe, use attractive images obtained elsewhere, and fictitious profiles to describe themselves in order to identify targets.
In the past, people have left their computers logged on to compromising websites and have been discovered by their spouses. It has happened before and will happen again.

Ashley Madison has been hacked. Their 37 million anonymous users and estimated 170,000 Israeli users have been wholesale compromised. Not to worry, though. Ashley Madison thinks that they can use copyright law for damage limitation. There is an interesting analysis of why this doesn’t work in Fortune. See here.
The internet has changed many things, but many others stay the same. Intimate relationships have consequences. Always have and always will. Remaining anonymous when compromised and open to blackmail is far from certain.

I think the affair is likely to be short but the consequences may last much longer.


Israel Design Law Proposed

July 27, 2015

INdustrial design

In Israel, the design law in place is the 1922 Patent and Design Ordinance dating from the British Mandate.

The patent sections were canceled and replaced with the 1967 Israel Patent Law, but the design sections are still in force.

Now, nearly 100 years on, a proposed Design Law has been drafted (6 July 2015), and, if it undergoes three readings in the Knesset it may become law.

During the Knesset readings, it may undergo amendments, so it is by no means certain the the proposed law will be legislated as currently drafted. Nevertheless, the draft has a number of points of interest.

The term מדגם is being replaced with the term עיצוב to emphasize that the new design law does not only cover the design of physical objects of manufacture, but also the design of fonts and of computer icons and the like. This was largely to correct a wrong decision regarding fonts.

The previous law related to registered designs only. The new law offers protection for up to three years for non-registered designs, considered suitable for clothing fashions and other trends having limited shelf-life. This proposal will bring Israel into line with Europe where non-registered designs have limited protection. It is proposed that fonts, even if non-registered, will be entitled to up to 25 years of protection.

Currently, designs may be protected for up to 15 years. The proposed amendment will extend this period to 25 years, in line with Europe.

If a design is marketed in Israel as a non-registered design, it may, within 12 months, be registered.

The proposed Law adopts the Locarno Agreement Establishing an International Classification for Industrial Designs Signed at Locarno on October 8, 1968

Under the current regime, absolute local novelty is required. In an attempt to conform this to international practice, a Commissioner Circular M.N. 74 creatively interpreted disclosure on the Internet, particularly in Registered Design Databases from other jurisdictions, as novelty destroying. The proposed law requires absolute international novelty and significant differences from other designs.

Once the Law is passed, Israel may be able to join the Hague system for international design registration.

In an infamous decision known as A.SH.I.R.

ברע”א 5768/94 א.ש.י.ר יבוא יצור והפצה נ’ פורום אביזרים ומוצרי צריכה בע”מ ואח’, פ”ד נב)1998 ( 28

the Supreme Court ruled that the catch-all Law of Unjust Enrichment can be grounds for suing 1998 copiers of non-registered designs where there is some additional element of bad faith. The Proposed law is intended to make this no longer possible. Sanctions can still be obtained under specific laws such as trademark and fair trade ordinance, but Unjust Enrichment cannot be used where a design could have been registered but wasn’t. As a formalist, I am very pleased that A.Sh.I.R. is finally being put to rest.

Employee designs are considered the property of the employer. Here there is perhaps a lacuna in the Law. Designs are often, perhaps usually, created by subcontractors not employers. Consequently, instead of leaving everything to interpretation of contract law and work for hire, it may be sensible to clarify the status of industrial designs products by a design house for a company.


Israel Supreme Court Issues Long Awaited Decision regarding Service Inventions

July 23, 2015

employment agreement

Isscar is a leading Israel company that manufactures hard metal cutting tools. As an employee at Isscar, Gidon Barzani was involved in the development of hard metal cutting tools at Isscar during the years 1992 to 1995, and again between 1997 and 2001 and was involved in a certain service invention, his actual contribution being a matter of contention. The employee signed various documents that gave up on monetary claims.

In Israel, an employee invention is owned by the employer. However, under Section  134 of the Law, the employee is entitled to compensation, the amount of which is determined by a special committee under Section 109.

The Committee, at the head of which sits the retired Supreme Court Justice, Itzak Englard, the Commissioner of Patents and an university professor, rejected Barzani’s claims as he had had waived his rights to consideration for the inventions when he signed on the general waiver.

Barzani appealed to the Supreme Court as a High Court of Justice (BAGATZ) see here which resulted in the committee freezing its actions.

One of the more interesting legal questions is whether a general waiver as part of the employment contract, where no invention is yet conceived can be considered as legally binding. (Talmudist’s may note a similarity to discussion of unlaid eggs).

The Supreme Court rejected the appeal arguing that it had limited power to interfere since under Section 111, the Bagatz ruling was final. The Supreme Court ruled that Section 134 describes a non-cogent right that is not a socialist employee right that requires special defense. On the face of things and with deference to the language of the clause, the decision appears to be correct, and certainly is sufficiently reasonable that there is no justification for court interference.

Nevertheless, the court noted that in a dynamic and changing world there is room for additional legislation or for companies to come up with voluntary compensation schemes. However, there is no reason for the court to interfere.

Judge Reuven, Deputy President of the Supreme Court quoted Section 109 of the Law as follows:

Where there is no agreement providing compensation to the employee for his service invention, regarding the amount of compensation and the conditions, these will be determined by the Committee for Compensation and Royalties.

Section 111 fixes the finality of the committee’s decision, but there is no doubt that in extreme circumstances, the Supreme Court sitting as a High Court of Justice can interfere. Since, however, the committee includes a retired senior court justice, the commissioner and an academic, interference in its conclusions are likely to be minimal, and this instance does not justify the court’s involvement.

The main argument, following the Actelis ruling of 2010 is concerned with the question of whether Section 134 should be considered cogent or dispositive. The committee came to the conclusion that it is not a cogent right and is not an example of employer-employee labour law where (due to the inherent differences in power between the sides) workers’ rights require special protection. The ruling seems to be correct, but anyway, since the Law states that the committee’s rulings are final, there is no room for the court to interfere.

Nevertheless, the court has criticized the current situation and noted that common sense and natural justice indicate that there is room for a more equitable arrangement,  whether the result of voluntary agreement or of legislation, and such arrangements exist in the private sector.

4353/14 Appeal to Supreme Court, Barzani vs. Isscar, Ruling by Rubinstein Fogelman and Mazuz 8/7/15

COMMENT

There was a lot of interest in this case, and we believe that employers will be giving deep sighs of relief. Employees will probably feel that the system favours the company against the individual. I am aware that some academics have strong feelings, see for example, Dr Shlomit Ravid’s position here and here.

Since the court has criticized the committee’s ruling and is not prepared to get involved, it is not inconceivable that a future committee could reach the opposite conclusion. Indeed, one of the judges of this ruling might, on retirement, sit in such a committee. There may, therefore, be room for clear legislation on the issue.

Personally, I think the Supreme Court decision is correct. I encourage corporate clients to institute compensation programs or at least weekend breaks and the like to encourage employees to come forwards with ideas, but think that changing the law in Israel may result in multi-nationals taking their R&D centers elsewhere, and that is not good for the economy or the workers.


Random House Loses Copyright Case to Goebbels Estate

July 20, 2015

Goebbels Diaries

The estate of notorious Nazi propaganda minister Joseph Goebbels won a lawsuit against Random House publishing company in Munich last week.

The case was brought against Random House Germany by the estate because royalties were not paid out for the use of Goebbels’ personal diaries in a 2010 biography written by historian Peter Longerich. The biography was originally written in German and was republished in English by Penguin Random House UK and its imprint Bodley Head.

 

The Newsweek Report may be found here. Versions in the Israel press are slightly different.

COMMENT

This is far from the first copyright argument related to Goebbels’ diaries. When they  were first discovered in the early Nineties, different British papers published extracts. I believe the Mirror Group paid royalties but the Sunday Times refused to.

Substantively, Random House showed creativity in suggesting that the royalties be paid to Holocaust Survivors. I can understand why Nazis sympathizers may find the suggestion inappropriate. I suspect that the same considerations that caused Menachem Begin to oppose German reparations to the State of Israel might make more than once survivor feel uncomfortable with the idea as well.

I think that Random House’s arguments that the copyright was removed along with other possessions after the War is an interesting one. Jewish courts can also appropriate private property in the principle known as הפקר בית דין הפקר. That as may be, if the German court did not accept the argument and the State of Barvaria has shown no interest in contesting their rights, the legitimate heirs of Goebbels are entitled to seek retribution. Unlike Goebbels, I believe that IP and other property rights have to be recognized regardless of the political leanings, race and nationality of the owners.

Random House’s arguments regarding scholarly access, etc. have more than a little merit. This is one reason that I am against the present long copyright periods, and think that copyright should be for, say, 10 years, extendable on payment of a fee, for a second ten year period. This is also probably why rather than writing books I write a blog and am happy for anyone to reproduce or quote, so long as they attribute.

 

 


A lack of uniformity in unity of invention

July 20, 2015
UNity
As Israel’s leading IP blogger, I regularly get emails and phone calls from students, inventors, academics and professionals, both from Israel and abroad, about various aspects of patent and trademark practice.
Most recently, I received an interesting question on what constitutes unity of invention. The question is rather better than the answer.
All regimes require unity of invention. One is entitled to protect one invention in a single patent. There are separate issues regarding double patenting, i.e. protecting the same invention with more than one patent, but, how is a single invention determined?
The practice relates to claims and differs in different jurisdictions.
In the US, unity seems to depend on the main class that the Examiner classifies the invention as and has to search when evaluating novelty and non-obviousness. One can file up to three independent claims (regardless of type) for the same basic price. However, there is no limit on the number of independent claims in the same class, since the searching requires trawling the same material.
US Examiners love to issue restriction orders due to multiple inventions, and sometimes do this based on the figures. They may require a restriction to a product or process, but may also require an election of a preferred species where different figures show different embodiments. However, once a structure is allowed, corresponding and withdrawn method claims can be allowed and rejoined so long as the method requires using the allowed apparatus.
In Europe, the theory relates to the inventive concept to be searched. In practice one is entitled to one independent method claim and one independent apparatus claim. Anything else and the claims will be reject as ambiguous.
It will be appreciated therefore, that the same claims may be considered as having unity in US but not in Europe and vice-versus.  Indeed, with two independent method claims and two independent structure claims each with minor differences, I’d expect the USPTO examiner to want inventor to elect either method claims or structure claims, and EPO examiner to want one of each.
In Israel (and there is no logic to this – it was a circular from Previous Commissioner, Meir Noam), one is entitled for up to two claims of each type. this can be method, product, system, gene sequence (now no longer patentable anywhere else).
Examiners will require restrictions on unity considerations, but there is no clear definition of unity. If a foreign patent office allows a set of claims one can request allowance under Section 17c and the issue of unity is not a grounds for objection by examiner or in opposition. What this means is that something acceptable in the US or in Europe (or in UK, Austria, Australia and other jurisdictions recognized in Appendix B for purposes of Section 17c) is acceptable in Israel. Since US and Europe have different standards, it will be clear that there is no clear standard in Israel.
See http://blog.ipfactor.co.il/2010/02/03/israel-patent-office-to-allow-no-more-than-two-independent-claims-of-each-type/ for more information.

 


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