Wishing Our Chinese Clients and Associates a Happy New Year

February 8, 2016

Monkey business\

We wish all our Chinese clients and colleagues a Happy New Year of the Monkey.


Pop Group Anthrax Sued for Ripping Off a Hannuka Sweater

February 8, 2016
Anthrax photo by Jonas Rogowski

Anthrax Photo by Jonas Rogowski

Anthrax is an American heavy metal band from New York City. It was formed in 1981 by guitarist Scott Ian and bassist Dan Lilker. The group was considered one of the leaders of the thrash metal scene during the 1980s. Of the “Big Four” thrash metal bands (the others being Metallica, Megadeth and Slayer). The name was chosen as being “sufficiently evil”.

Anthrax were the only thrash metal band from the East Coast. As of 2014, the band has released ten studio albums, a number of singles and an EP with American hip hop group Public Enemy. According to Nielsen SoundScan, Anthrax sold 2.5 million records in the United States from 1991 to 2004, with worldwide sales of 10 million.

Cummin's Hannukka sweatshirt

Aaron Cummins, claims he created the original design for the Ugly Hanukkah Sweater in 2012 and has exclusive copyrights to it, but that it’s being ripped off by others to promote the famous Anthrax rock band. According to his lawsuit, the sweater’s design was registered with the U.S. Copyright Office in 2013, and has since been marketed and sold through his Detroit company, Wet House.

Cummins claims that sometime around September, Cummins’ Hanukkah sweater design started showing up on the Internet as an Anthrax sweatshirt and continues to be sold online at Rockabilia.com as an Anthrax sweatshirt.

More details of this strange copyright infringement case may be found here.


Israel Supreme Court Refuses to Soften Stiff Sentences for Counterfeit Viagra Dealers

February 8, 2016

Fake Viagra

On appeal, the Central Region District Court in Lod ruled a ten month gaol sentence and fine for Roi Peer who had distributed counterfeit Viagra pills. Roi Peer appealed the ruling to the Supreme Court, where Justice Jubrahn ruled as follows:

The crimes that the appellant were convicted of are serious and the weight of evidence required to show a likelihood of rehabilitation is consequently significant. The fine and the gaol sentence are separate punishments that should be considered separately as is the ruling that the convict be detained in an appropriate secure installation.

The Appelant was convicted on the basis of his admission, of selling and marketing pills allegedly for treating impotence, without a Dr’s prescription, not in original packaging, infringing the trademarks and without meeting the patients or gaining medical information about them.

The Court of First Instance ruled six months community service and a 150,000 Shekel fine. The District Court rejected the appeal concerning the size of the fine but accepted the State’s Appeal regarding the rest of the sentence and changed it to 10 months actual prison time. This is the basis of the appeal to the Supreme Court.

Whereas a first Appeal is a matter of right, a second Appeal is granted only in cases having a significant public interest, an important legal question requiring clarification or where there are specific issues concerning the fairness of the punishment. In this instance, there is no such justification for further judicial review. The stiffness of a punishment is only grounds for review if it is significantly disproportionate to other sentences for similar crimes. In this instance, the punishment is reasonable and balances the various considerations.

In this instance, there is insufficient indication that the Appellant will be restored to being a productive member of society to justify not sentencing him to prison. The psychological evaluation was inconclusive. The crimes were serious and the financial greed could have adversely affected the public health. The evidence of likely rehabilitation required in this case is significant and not available.

The argument that the District Court acting as an Appeal Court exceeded its mandate thereby justifying a further appeal is rejected since the sentence was in the same category as that issued by the Court of First Instance and is reasonable in the circumstances. The fact that the District Court did not detail how the punishment was reached is insufficient to justify a further appeal. The Supreme Court does not consider that time equivalent to paying the fine can used to determine the appropriate additional gaol sentence since gaol time for not paying fines is different from a gaol sentence per se and these cannot be combined in ascertaining whether a  punishment exceeds that allowed for by law or whether such a punishment is reasonable.

9102/15 Dismissal of Further Appeal of Ruling 3933-09-15, the Dismissal by S Gubrahn, 16 January 2016

COMMENT

We note that there doesn’t seem to be any evidence justifying allegations that the pills were a health risk. Indeed, there doesn’t seem to be any evidence that they don’t work. Erectile dysfunction may be a medical condition that causes stress for the sufferer and his partner but it is not the sort of condition that is life threatening. That is not to say that wilful trademark infringement and passing off fake goods should not deserve serious fines and gaol time. I just don’t see this instance as more serious than other examples of willful trademark infringement and distribution of counterfeit articles.


Can a Patent Term be Extended in Israel on the Basis of a Patent Term Adjustment in the US?

February 8, 2016

calendar

Most patents are renewable up to 20 years from filing. The exception is basic pharmaceutical patents which may be renewed until 25 years from filing to ensure at least 14 years of post regulatory approval in Bolar countries.

The Israel Law relating to pharmaceutical extensions is complicated and has been amended several times. It is based on the Hatch Watchman Act in the US, and was legislated in Israel under a great deal of pressure from the United States. The Amendment itself has been amended a couple of times. Because of the large sums of money involved, drug development companies are willing to spend a small fortune to obtain extensions and Unipharm and Teva frequently oppose such extension periods.

Novartis applied for an extension for IL 154465 titled IL-1BETA BINDING MOLECULES AND USE THEREOF IN THE PREPARATION OF PHARMACEUTICAL COMPOSITIONS AND MEDICAMENTS.

The active ingredient is known as Canakinub, and this received regulatory approval in October 2010 under the trade name ILARIS.

In this instance, regulatory approval preceded allowance of the patent so Applicant requested an extension of the period for requesting an extension of the patent as defined in Section 61(XV). The patent was granted on 1 March 2011 and following this, the patentee requested an Extension.

It transpired that requests for extensions were filed in the US and in most of the European countries that can be used as the basis for a request for patent term extension as detailed in Appendix B to the amendment.

In the US, there are Patent Term Extensions (PTEs) which may be used as the basis for requesting a corresponding extension in Israel. But there are also Patent Term Adjustments (PTAs) which are not to be confused with Parents and teachers Associations considered different things entirely. The PTA is granted to compensate for delays attributed to patent office tardiness in the USPTO. They do not have anything to do with ensuring a term of enforcement from regulatory approval.

In this instance, the Patent Term Adjustment exceeded the theoretical Patent Term Extension so no Patent Term Extension was granted. In other words, there was regulatory approval in the US which starts the clock for usage. However, the corresponding US Patent never was extended by a PTE. The Israel Examiner therefore rejected the request to grant a PTE in Israel as there was no PTE in the US to consider under Section 64(IV)5.
Novartis were not happy with this decision and requested a hearing before the Commissioner on 17 February 2015. They submitted written arguments on 22 June 2015, a hearing was held on 22 July 2015, and on 11 August 2015 a supplementary affidavit was submitted by a Ms Leslie Fisher (maybe that should be Lesley?).

After the 11 amendment to the Israel Patent Law of 27 April 2014, Novartis requested an extension based on the Notice of Final Determination:

“A determination has been made that U.S. patent No. 7,446,175, claims of which cover the human biologic product Ilaris® (canakinumab), is eligible for patent term extension under U.S.C. § 156. The period of extension has been made determined to be 0 days.

The period of extension, if calculated using the Food and Drug Administration determination of the length of the regulatory review period published in the Federal Register of December 9, 2010 (75 Fed. Reg. 76739), would be 205 days.

Because the patent term adjustment awarded to U.S. Patent No. 7,446,175…of 1,131 days extends the original expiration date to September 24, 2024, which is beyond the 14 year exception of 35 U.S.C. 156(c)(3), the term extension is 0 days…”

(the underlying is by the Commissioner Assa Kling (we suspect that Novartis would have preferred not to draw attention to it).

Essentially what happened was that the US patent was in force for over 14 years due to the Patent Term Adjustment, so no Patent Term Extension was required.

The commissioner noted that the PTE was zero days and that section 64(I) of the Law states explicitly that an Extension of the basic patent relied upon has to be for one day or more and that this is referred to in the US as a Patent Term Extension (PTE) and in Europe a Supplementary Protection Certificate (SPC).

The Applicant has a different understanding of the correct interpretation of the Law based on its purpose and the legislative’s intent and argued that there was a lacuna. However, the differences between PTEs and PTAs was discussed in a ruling concerning a patent term extension for IL 181673 to Genetech.

The law, the previous decision and common sense implies that if the drug has patent protection of 14 years from first regulatory approval it does not deserve a patent term extension in Israel. Furthermore, the Commissioner referenced the understanding reached between Israel and the United States

“A reference PTE which results from marketing authorization delays means any period extending the Basic Patent by one or more days, up to the maximum period allowed under the Patent Act.
“…However, if a reference PTE has not been granted (either as an interim or final PTE Order) in the United States and at least one EU reference country prior to the expiration of the underlying Basic Patent in Israel, then no PTE (interim or final) shall be granted in Israel in respect of that Basic Patent.”

This supports the Law as formulated and the Commissioner’s understanding.
The rejection of the request for a Patent Term Extension in Israel was upheld despite the Applicant having been given an opportunity to present his case before the commissioner as per section 152 of the Law.
COMMENT
I am convinced by the ruling. I suspect it may be appealed though.


A Cut Throat Dispute

February 8, 2016

sweeney todd

Razer (Asia Pacific) PTE LTD filed Israel Trademark Application Number 242735 as shown below:

RAZER

The mark as currently registered relates to Computers; laptop computers; notebook computers; handheld computers; personal digital assistants; computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; computer displays; computer monitors; computer hardware; computer sound cards; computer peripherals; computer and video game controllers; computer mice; computer keyboards; computer keypads; computer graphics tablets; computer pens; computer joysticks; computer trackballs; flight yokes for computer and video games; steering wheels for computer and video games; accelerator pedals and brake pedals for computer and video games; guns for computer and video games; motion sensors for computer and video games; audio equipment and apparatus; earphones; headphones; microphones; headsets; loudspeakers; apparatus for cable management for the aforementioned goods; computer and video games; computer mice mats; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods; for gaming use and/or gamers and excluding, phablets and television in class 9; to Bags; messenger bags; travel bags; backpacks; knapsacks; for gaming use and/or gamers in class 18, to Clothing; polo shirts; T-shirts; hoodies; headgear; caps; sweatbands; for gaming use and/or gamers in class 25 and to Video game apparatus other than those adapted for use with television receivers; handheld video game apparatus other than those adapted for use with television receivers; parts and spare parts of the aforementioned goods as far as included in this class; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 28.

Not long afterwards, Razor USA LLC filed Israel Trademark Application Number 242450 for RZER covering Computers, tablet computers, and related accessories, namely, computer docking stations, mounts, stands holders and cradles for holding and charging computers, carrying cases for computers, protective covers for computers, protective or decorative skins, screen protectors, namely, fitted or plastic films known as skins for covering and protecting computers, input and navigation devices, namely, keyboards, mouse, track balls, and stylus for use with computers, computer memory, namely hard drives, portable and removable memory for use with computers, networking equipment, namely modems, routers and gateways for use with computers, batteries, power adaptors, computer cables, cable connectors, remote controls, headsets, speakers, sound systems for use with computers, and microphones and web cameras for use with computers and computer software; telephones; corded and cordless telephones for wireline service (PTT (post, telegraph and telephone) POTS or PSTN service); mobile phones, smartphones, and accessories therefore, namely battery chargers and power adaptors; all included in class 9.

Since both marks are similar and each cover computer related goods in class 9, following the parties failing to reach any agreement, a competing marks procedure was initiated.  On 26 January 2015 the parties were cross-examined and a date was fixed for submission of summaries from the two parties.

After several joint requests for extensions, the parties jointly asked to be relieved of having to file summaries and announced having reached an agreement in the various jurisdictions where similar competing marks procedures were taking place, however there was still a disagreement regarding implementing the decision in Israel and further extensions were requested.

On 12 October 2015 Razer Asia Pacific PTE LTD informed the Israel Patent and Trademark Office that a coexistence agreement had been reached and requested amendments to Application number 242735 to bring an end to the competing marks procedure.

Israel Application Number 242735 is a national phase of an International Application and the list of goods is in English only.  The requested amendments included limiting class 9 goods to “for gaming use or gamers”. In class 18, sport bags would be deleted and the remaining goods would also be limited to “for gaming use or gamers”. In class 25, the term sweaters would be deleted and the remaining goods would also be limited to”for gaming use or gamers”, and in class 28, reference to “games and playthings; electronic games and playthings other than those adapted for use with television receivers” would be deleted.

RULING
Section 22a(a)(2) of the regulations (1940) allow the Commissioner to authorize amendments to the lists of goods so long as they are by nature of clarifications or narrow the scope of goods, and so long that they are in no way widening.

There is a prima facie case that the amendments are all narrowing the scope of the mark. The Competitor, Razor LLC USA accepts the changes, apart from that to Class 9 where Razor LLLC USA wants the following amendment: “for gaming use and/or gamers and excluding, phablets and television“, and argues that this further differentiates between the goods that the two companies sell under the marks and minimizes still further, the likelihood of confusion. Consequently, both marks would then be acceptable for registration under Section 30 and this amendment better reflects that agreed between the parties.

Razer accepts the Israel Patent Office’s authority to decide on the appropriate limitation but disagrees that the narrower interpretation was agreed.

Neither party provided the Commissioner with a copy of the agreement. Razer even argued that it was secret as were the negotiations leading up to the agreement. Since he did not have access to it, the Commissioner could not interpret the agreement. Consequently this ruling is limited to the Commissioner’s authority to allow coexistence and parallel use.

Section 30 authorizes the Commissioner to allow parallel registration in cases where they were applied for in good faith and where the Commissioner sees fit.

Since the parties agree with coexistence in 4 classes, and only disagree about a selection of the goods in class 9, there is no evidence of inequitable behaviour or a will to deceive.

Although, Section 30 does not include the term to mislead, the case-law, such as Appeal 8778/04 Yotvata vs. Tenuva, 30 April 2007 page 30 makes clear that only amendments that are not likely to mislead the public regarding the source of goods may be registered.

The two marks in question are word marks for Razer and Rzer and whilst not identical, do look and sound similar. Coexistence has been deemed allowable in cases where there is a difference in the protected goods or in the customers for a product. For example, in  a 2001 decision concerning TM 206317, TM 207981 and 108389, Naaleh Itzik and Nimrod Manufacturing LTD 1979 could both register the brand Sahara since the Commissioner was persuaded that there was no likelihood of confusion between shoe and sandals. Where marks are similar but not identical, such as in the TM No. 174521 “Cosabella”, 178831 “Cocabella” case, it is even easier for the Commissioner to allow two marks to coexist in the same class.

In this instance, the Commissioner has enough evidence regarding the goods and usage of the mark to decide whether or not to allow coexistence and the appropriate descriptions of the goods, and such a ruling is final as per Section 10c of the Ordinance.

Razer (Asia Pacific) PTE LTD does not see it necessary to explicitly exclude phablets and television which anyway weren’t listed in the goods description for Trademark application no. 242735 Class 9.

The full list of goods available under Section 9 includes computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; …. computer graphics tablets;….

The term phablet is some sort of mobile phone / tablet device. The Commissioner gave the parties the opportunity to explain why the additional disclaimer was or wasn’t required.   Razer (Asia Pacific) PTE LTD relied on the fact that TVs and computer graphic tablets weren’t listed. However, in the Afidavit of Mr Kornbrot that was submitted by them, the term tablet did appear and by considered as included in the term “other external display screens or monitors”. Furthermore, in the corresponding Argentinian, Canadian and Indian registrations, the terms Handheld computers, Personal Digital Assistants and Television sets were included.  Consequently, in this instance, the commissioner did not consider these goods as implicitly disclaimed, but would allow both marks to be registered if the mututally agreed disclaimers  and the disclaimer in  class 9 specifying “for gaming use and/or gamers and excluding, phablets and television “.

Ruling by Asa Kling Concerning IL TM 242735 “Razer” and IL TM 242450 “Razr”, allowing coexistence with appropriate restriction of goods covered. 11 January 2016.

COMMENT

The marks are very similar. The companies reaching a coexistence agreement is not necessary sufficient for the Patent Office to conclude that there is no likelihood of confusion.  However, it is not clear to me what the companies actually sell. I therefore cannot comment on whether it is likely that customers might be confused into thinking that products of one company originated with the other.

 

 

 


Can the Commissioner of Patents Suspend Implementation of a Court Ruling Voiding a Design that is Subject to Appeal?

February 8, 2016

Design Registration

On 29 December 2014, in Civil Dispute No. 21740-03-11, the Haifa District Court ruled that design registration Number 53151 to S.H.L. Alubin be struck from the design register.
The design relates to a profile. S.H.L. Alubin have requested that this order be suspended pending appeal. Silver Hong-Kong Israel LTD and Extel LTD oppose the suspension.

S.H.L. Alubin argues that the ruling by the Haifa district court is not final in that he can appeal against it and intends to do so. Since the ruling could be overturned, it makes more sense to stay the ruling than to cancel the design and possibly reinstate.

Silver Hong-Kong Israel LTD who requested the cancellation on the basis of the court ruling, considers that there is no basis to stay the decision as there is a court ruling from 31 December 2015 that the design is void, and the Commissioner cannot maintain a voided mark pending any future development. The jurisdiction appropriate for suspending a cancellation ruling pending appeal is the District Court that issued the ruling. The request to suspend the decision was further defective as it neither detailed the expected damages from carrying out the ruling nor included a personal obligation from S.H.L. Alubin.

Extel LTD who won the case in the District Court concurs with Silver Hong-Kong Israel LTD that the forum responsible for granting a suspension is the Haifa District Court, and the Commissioner does not have the jurisdictional authority to relate to the request.

RULING
There is nothing in the Design Ordinance or the 1925 regulations that relates to suspending a cancellation of a design pending appeal. However, with the nature of rulings before the Commissioner it is doubtful that suspending such a ruling is beyond his Authority. In the cancellation proceedings regarding IL 157925 Moshe Lavie et al. vs Tzach Maoz Mazganim LTD (21 June 2015) and in numerous trademark rulings, the cancellation of the patent / trademark was suspended pending appeal, including after such an appeal was filed or notice of filing of the appeal was received. The Commissioner cannot see justification for design cancellations to be any different. Consequently, the Commissioner can simply draw a comparison form similar patent and trademark rulings.

As a general rule, however, Section 466 of the Rules for Civil Procedure, filing an appeal does not stop a decision being carried out. Section 467 gives the court authority to suspend a decision subject to appeal or to effect any other temporary arrangement as it seems fit. However both sections are applicable to the court that issues the ruling – See Zusman on civil procedure, page 862.

In this instance, the Haifa Court vacated the mark and the Commissioner as head of the Design Department of the Israel Patent Office is being asked to suspend this decision. It is not clear that the Commissioner has authority in such instances, and even if he had, Section 466 would imply that he should not stop such as action.

Suspension of a ruling is justified where the applicant has a reasonable likelihood of prevailing in an appeal and that the damage caused by suspending is estimated to be less than that of implementing the decision and then having to restore the design following successful appeal. See the Supreme Court Ruling 3158/91 concerning Flatto Sharon.
Thus it is for the Commissioner to decide if and to what extent reversing an action will be problematic.

Although he has claimed that implementation won’t harm third parties and that not suspending will cause problems, Alubin has failed to make a reasonable case that implementation of the ruling should be suspended. Section 466 states that the general state of affairs is that rulings should be implemented and the onus is on the design owner to provide convincing arguments to justify acting differently.

Alubin’s argument that if the appeal is successful he would have to refile his design is not the case. The Commissioner can simply restore the design registration as being in force.  Damage may be compensated for by court ordered costs. Irreversible damage needs to be shown not merely claimed.

In conclusion, request for suspending the cancellation is refused and the cancellation of design number 53151 will publish in the next design journal.

Ruling by Asa Kling, Concerning Cancellation of Design 53151, 27 January 2016.


Angel’s Bread

February 8, 2016

Angelbread

No, this decision has nothing about Bread of Heaven which is more formally known as Cwm Rhondda, or even about Manna, the fabled bread eaten by the Israelites after the Exodus from Egypt on the way to the Holy Land.

Shlomo A. Angel LTD in Jerusalem is Israel’s largest bakery, and is also the largest bakery in the Middle East. It supplies 275,000 loaves of bread and 275,000 bread rolls a day. The bakery also carries a range of 250 cakes and biscuits, including roggeluch, of course.

There is a smaller bakery called Engel Y. Pattisserie and Baking Goods LTD.
The two bakeries each submitted trademark applications that included the word angel or engel in Hebrew  (אנגל) where vowels are not written, and whether a g is a soft g as in giraffe or a hard g as in gamma is generally indicated by a dagesh or dot in the letter but also not shown in words printed without vowels. Actually, Yemenites are the only group that pronounce the jalet sound in regular Hebrew. Angel writes their name with an apostrophe indicating that it is a foreign word, pronounced Anjel.

Due to possible likelihood of confusion regarding the origin of good thus marked, a competing marks procedure under Section 29 of the Israel Trademark Ordinance is called for. Under Section 29, the Israel Patent Office considers the application dates, the extent of usage and the equability or otherwise of the behaviour of the applicants in order to determine whose rights are stronger and which marks should be examined first. Only then, is the eligibility of the mark under Section 11 considered.

In this instance for some reason, probably a mistake on the part of the Trademark Division, b0th competing mark objections and substantive objections based on previously registered marks were raised against the applications submitted by Angel Y. Pattisserie and Baking Goods LTD.

Shlomo A. Angel LTD’s representatives suggested that it would be more efficient to consider the eligibility of the marks first, and only then, if both marks are considered eligible, to have the competing marks procedure to consider which applicants pending marks should be registered first.

The advantage of first looking at basic eligibility is to avoid wasting time and resources on a competing mark decision only to have the prevailing mark then refused. However, the problem with this approach is two-fold. Firstly, even if one or both pending marks are considered eligible sans consideration of the other competing mark, once the competing mark procedure is initiated, the mark that wins that procedure can then be cited against the other mark, so the substantive examination occurs twice. Secondly, having a hearing to decide whether to follow or deviate from procedure is itself time-confusing. Nevertheless, if both parties agree, it may make sense.

In this instance there was no consensus between the parties, to suspend the competing marks procedure and to first examine the marks themselves. This leads to the question of whether it is ever legitimate to deviate from the procedure set out in the relevant Patent Office Commissioner’s Circular, and to decide on registerability first, and competing marks issues afterwards.

In this instance, both bakeries filed a number of trademark applications which were copending.  On 26 May 2014, Shlomo A. Angel LTD filed Israel TM Application Number 265729 for Conditoriat Angel (A conditoria קונדיטוריה is a patisserie in Hebrew, so this means Angel’s Patisserie). The mark covers flour, grain products, bread, baked goods, sweets, yeast and baking powder in class 29. On 19 October 2014, Shlomo A. Angel LTD filed Israel TM Application Number 269159 and 269160 for Angeli and Angelino for the same list of goods.

On 24 November 2014, Conditoriat Engel Y. Baked Goods LTD. Filed Israel TM Application Number 269996 for Engel Cookies in class 29, also covering flour, and grain based goods, baked goods and sweets and Israel TM Application Number 269997 for the same goods.
In addition to the competing goods procedure, Section 11(9) objections were raised against Conditoriat Engel Y. Baked Goods LTD. on account of earlier marks to Shlomo A. Angel LTD that included Angel’s Bakery Jerusalem, Angel Oranim, Women’s light bread, phyto bread, Angel’s bread in the French style and Angel 100. So if Conditoriat Engel Y. Baked Goods LTD.’s marks were to win the competing marks procedure and be examined first, they could subsequently be refused on grounds relating to previously registered marks owned by Shlomo A. Angel LTD.

The competing marks procedure is thus arguably flawed in that it relates to co-pending marks without taking into account previously issued marks.

Shlomo A. Angel LTD requested that the applications filed by Conditoriat Engel Y. Baked Goods LTD should be first examined on their merits, possibly rendering the competing marks procedure moot.

Conditoriat Engel Y. Baked Goods LTD disagreed. They requested that the competing marks procedure should occur first, as per the relevant circular, since the competing marks procedure started by the commissioner indicates an assumption of validity on the merits, citing BAGATZ 228/65 Fromein and sons vs. Pro Pro Biscuits from 1965, which was based on Section 17 of the old ordinance which corresponds to section 29 of the current version. There is was stated:

“the question of which of the competing marks takes precedence for examination, is a court ruling that is final, whereas the question of registerability, is one that at that stage, the Commissioner neither made or was able to make. Deciding which mark is preferable in the competing marks proceeding is “subject to other requirements of the law”. Thus a section 17 (now 29) proceeding does not determine which mark is registered, it is based on a working assumption that marks are registerable…”

The Commissioner did not consider that Fromein was relevant to the current case. In Fromein, the side prevailing in the competing marks procedure was examined first, allowed for publication and then successfully opposed. The issue was whether the proceeding marks ruling was to be understood as indicating that the mark was otherwise allowable and the answer was that it was not. In Fromein, the Commissioner’s competing mark decision was not based on consideration of the mark on its merits and does not indicate that the mark was otherwise allowable. Furthermore, citing BAGATZ 450/80 EL Khadaer, “there is nothing to prevent the Examiner preferring one mark to be examined first under a Section 29 proceeding when, based on the evidence, he does not consider either mark may be registered on its merits. This indicates that the Examiner CAN choose to examine the marks on their merits within the Section 29 procedure. This also indicates that despite a question regarding registerability on the merits of one of the marks having been raised, the Commissioner may choose to continue to discuss which mark takes precedence.”

Nevertheless, the Commissioner was not happy about allowing one mark to take precedence in a competing marks procedure to have the other mark refused, if subsequently the mark taking precedence were to be refused on its merits requiring the other party to resubmit and cited the competing marks ruling regarding 1667390 and 166845 Ilan Danino vs. Keshet Transmissions LTD from 26 December 2005 which came to a similar conclusion.

Clearly, it is inefficient to hold a competing marks ruling only to subsequently refuse on its merits the mark that takes precedence. The Circular allows the parties the opportunity to agree for a preliminary ruling on the registerability of the marks, and this assumes that where the parties do not have strong contrary feelings, such an eventuality will occur, and where there are earlier registrations, the issue of distinguishing features will be considered.

However, as occurred in this case, where one party’s earlier marks were cited against the pending mark and a Section 29 proceeding were initiated together, the parties have different interests regarding the order of proceedings and may not agree.
Reserving the right to raise registerability issues before himself, instead of before trademark examiners, the Commissioner ruled that the section 29 proceeding should take place but before other issues are addressed, Conditoriat Engel Y. Baked Goods LTD were given 30 days to respond to the registerability objection based on the earlier Angel’s marks. Furthermore, to avoid things being dragged out, no extensions to the substantive examination would be allowed apart from in exceptional cases.
Ruling by Asa Kling, Angel vs. Engel, 24 January 2016.

COMMENT

This is not a bad decision from a procedural point of view, but it does not really address any of the questions. The issue is efficiency for all concerned, so why not revise the Circular to give the patent office authority to initiate a competing marks procedure earlier or later in the examination depending on previously registered marks?

Alternatively, why not decide whether or not a proceeding marks procedure is warranted BEFORE issuing objections on other grounds?


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