Hong Kong – the IP Factor Road Show

May 30, 2011


After INTA in San Francisco, I dissapparated back to Israel for Shabbat and then, a few days later, dissaparated on to Hong Kong, and felt totally splitched with all the travelling and changes of time zones.

I appologise to readers relying on me to update on Israeli IP developments. There have been a couple of important Supreme Court rulings concerning pharmaceutical patents, one relating to Unjust Enrichment in marketing products described in patents that are under opposition. There has also been a decision of the Israel Patent Office regarding service inventions. I have reviewed these briefly and will blog them properly when I get back to Israel next week. In the meantime, I share some reflections on Hong Kong.

No doubt due to my English roots, I am commencing with the weather. Hong Kong is more humid than Tel Aviv. It is clingy and uncomfortable out in the streets, but pleasantly cool in the high rise buildings with their air-conditioning.

Hong Kong has a similar population to Israel. It is densely packed into vertical, high-rise villages. To get a view of the country, the best place to go is Victoria Peak, and I took the Peak Tram to the top. As we were yanked up at a steep 45 degrees, I realized how only a week ago, I thought the tram in San Francisco was impressive with its easy negotiation of mere 25-30 degree slopes. The Hong Kong Tramway, more accurately, a Fernacular railway, is so steep, that the passenger is subjected to an optical illusion and feels that the sky scrapers the railway passes are tilting over in a Pisa like manner.

The peak had a welcome surprise in the form of a Haagen Dazs ice-cream parlour. Suitably refreshed, I walked around the peak, enjoying the exotic trees and shrubs and the colourful butterflies. I saw a very impressive rubber tree. My mother had a potted rubber plant that she was rather proud of that eventually grew to the ceiling of our home in London and needed to be circumcised. Seeing a 20 meter high monstrosity, with a trunk that appeared to be over a meter in diameter, with aerial roots that had become supporting pillars, really put things into perspective. There were some truly monstrous monster plants, impressive camphors, and a host of trees with helpful names and descriptions, mostly indicating how impressive the blossoms would have been had a come three months ago, and what interesting fruit I could se if I waited around for another 4 months. In what could best be described as a Narnian anomaly, the path had wrought iron Victorian lamp-posts.

Hong Kong is all about perspectives. To me, the Chinese influences gave a very oriental feeling. I suspect that for a first time visitor from mainland China, the place has a distinctly Western, indeed, English feel. Are hydrangeas Chinese plants brought over to England, or English plants imported into Hong Kong? I saw very many so called house-plants,growing wild and growing well in the tropical, high humidity climate.

Although I speak a little Mandarin, Cantonese, Tariaki, Sweet & Sour and number 34, I couldn’t understand what people around me were saying. Indeed, it hardly mattered whether they were talking Chinese or English. I am not quite sure what a Nasal Dipthong is, but assuming it is onomatopoeic, it aptly describes the pleasant twang of Chinese to an uncultured ear.

As always, I wandered around in a Kippa (skull cap). I suspect that even if I had worn a baseball cap, I would have somewhat stuck out, as I am rather larger than the typical Chinese. I understand that there is no Antisemitism in Hong Kong. I certainly felt very comfortable wandering around.

Only the most jaundiced eye would describe the attractive compexion of the Chinese as anything other than the colour of milky coffee.  Apart from the odd Buddhist monks trying to give me good luck beads, clothing was western and thus rather boring. The school children wore English style school uniforms. Even more Western and boring!

The business area is ultra-modern. Nevertheless, it was noticeable that scaffolding was made of bamboo, lashed together with nylon. Clearly bamboo is a superior material to steel tubing for this purpose. Notably, construction workers or supervisors are both sexes.

The street markets seemed to sell clothing, underwear, Chinese souvenirs like silk, jade and teapots, electrical toys and Unidentified Frying Objects. The king of the sky is the black kite which is common in Israel as well. I would have thought that the tower blocks would be ideal for peregrines, but then I realized that the orderly government must have banned pigeons as being untidy.

San Francisco is laid out in a tidy grid, but people there are disorderly and all do their own thing. The atmosphere is relaxed. In contrast, Hong Kong’s streets are anything but neat and tidy, with walkways weaving through a warp of main-roads. The population seems orderly and there is an urgency. Everyone seems in a hurry to get to wherever they are going.

I spent the first three nights in the Bishops Lei hotel which is convenient for the Ohel Leah Synagogue. I asked for a low floor, so as not to have to climb too many stairs on Shabbat. However, we were given a room on the 15th floor. Charitably, it could well have been the lowest twin bed room available. Nevertheless, I decided that the Catholic owners wanted me to do a penance for rejecting Jesus as the Messiah.

The Ohel Leah synagogue, which is five minutes away from the hotel is something else. It reeks of dignified history. Built by the Sassoons, the seats appear to be camphor wood with woven wicker back-panels. The floor is grey and green marble. The Torah scrolls are Eastern cased, and apparently travelled from Baghdad via Bombay. The nusach is Sfarad, and the tunes are English. The membership seems to include some older, long-term residents and a lot of young bankers and accountants who are stationed in Hong Kong for 2-3 years.

I purchased a Friday night supper in the Jewish Community center, and the food was excellent. Not expensive either. Not being used to it, my brother and I found the Chinese waiter service a little uncomfortable. As every time I took a couple of mouthfuls, my glass was topped up, it was good that I was drinking water only.

There was a Bar Mitzva the week I was there. The Bar Mitzva boy seemed a little tall for a 13 year old, and it turned out that he was 15; his family was simply becoming more committed. The community is Orthodox, but tolerant. One long-time member explained how he had married for love, but that his wife attended Synagogue and kept a Kosher kitchen. Eventually, the Rabbi suggested that converted. We had Shabbat Lunch and Seudah Shlishit with the community. Apparently everyone eats these meals together every week. I suspect there are levels of intrigue there as with all communities everywhere, but for my one Shabbat, I found the community very welcoming, open and non-sanctimonious. A pleasant sociological and even spiritual experience.

I found an Indian tailor. To be more accurate, his sons and nephews found me. They hijack tourists coming off the ferry from Hong Kong Island, offering hand-made suits. I ordered a suit to be made-to-measure within 24 hours, with spare trousers, shirts, etc. Bearing in mind the amount of material that goes into a suit for me, the price is quite good. There are a number of such establishments in Hong Kong, all situated near to each other. I suspect, like the joke regarding the two beggars outside the Cathedral, that the trade is a cartel; the unsuspecting tourist or business man thinks that there is stiff competition, but actually the choice is limited to the tailor who measures you up and swipes your card. I suspect that in actual fact, all the establishments front the same sweatshop, and the various suits are cut and sewn by the same people, regardless of which Indian tailors one patronizes. Indeed, even if the cloth in adjacent establishments is cut and sewn by different Chinese seamstresses, does it matter?

Although I am not in Israel, the newspapers and television keep me in touch with developments. It is very difficult to make small talk with a Hong Kong Patent Attorney who asked what I think about the Rafah crossing between Egypt and Gaza being opened. I explained that if it results in the free flow of tradeable goods and an increased quality of life, I am in favour, but if it is results in missiles being transported in from the Sudan via Egypt, I am less enamoured. With its British occupation and serving as a port into the relatively backward, enormous market and awakening giant that is China, it strikes me that Hong Kong and Israel are somewhat similar. Indeed, if God forbid, Israel would return to the pre 1967 cease-fire lines, the country would be about 15 kilometers wide at the narrowest point. To rehouse the 300,000 ‘Settlers’, Israel would have to build high-rise tower blocks and the Tel Aviv skyline would resemble that of Hong Kong. To keep the international airport out of reach of Palestinian guns, Ben Gurion airport (which is 2-3 kilometers from the pre-1967 border) would have to be evacuated and building an airport on an artificial island off the Tel Aviv coast seems a workable solution. Such an Israel would be very much like Hong Kong. If accompanied by peace, it could serve as the g ateway to the Middle East. In a similar manner to Hong Kong serving as the gateway to China. It would be a businessman’s dream; a western, English speaking metropolis, banking and business center. A businessman’s dream perhaps, but totally soul-less. No history and no destiny. I don’t believe that the issue between Right and Left is about Palestinian rights or demography; the Arabs living in the West Bank under Israel occupation have more self-determination and greater political freedom that any other Arabs in the Middle East outside of Sovereign Israel. self-determination. The issue is simply one of whether one wants a Jewish state, with Biblical holy sites, history and destiny, or a Hong Kong like frenetic business opportunity. The Westerners I spoke to who lived in Hong Kong before the hand-over by the British were pleased with how things turned out, but were worried before hand. It is possible that the Arab Spring heralds a change in heart and new democratic Arab, and that a return to the 1967 ceasefire lines will lead to peace and prosperity for all. However, I see the repressive regimes in Syria and Libya shooting dissenters and am skeptical. The problem with revolutions is as Orwell framed it; typically the pigs become men.

Next stop, Shanghai.


The Streets of San Francisco; 133rd INTA

May 24, 2011

What’s nice about flying into an American city for an IP Conference is that American Airways provide a Sky Mall magazine resplendent with wacky inventions, some of which make the casual callers that think they have a great idea, seem sensible.  My favorite pages are the Hammacher Schlemmer listings for things that one can’t imagine how one did without them. For instance, the May offering included the 40 inch foldable photo studio, the weed whacking golf driver for getting out of the rough with its built-in grass trimmer, the magic wand remote control that you can teach to operate the TV, the ultrasonic barking dog deterrent and the Litter Kwitter for potty training a cat to use a human toilet in 8 weeks or less! Does anyone buy these things I wonder? Perhaps I should take up golf or get a cat…   

In previous years INTA has held a fun Run. This was supposed to be cancelled this year, see the IPKAT http://ipkitten.blogspot.com/2011/01/where-there-is-friendship-there-is-also.html. However, Humberto Rubio & CIA were advertising it. See http://www.rubiolawyers.com/Sanfran/default.htm I am not sure if this took place, but the Beta Blockers Run most certainly did, and on the way to a breakfast reception in the harbor office, I saw many very strangely dressed (and undressed) people.

I was surprised to learn that San Francisco, like Manhattan, is laid out on as a grid, with roads criss-crossing each other perpendicularly. Whereas Manhattan is flat, San Francisco isn’t, and the roads around Nob hill sloped up and down at 30° to the horizontal.

I took a street car, offering the conductor a business card before realizing that outside the INTA Conference Center, people wanted Clipper cards and money, not business cards. The car lurched along unpleasantly. Due to a misspent youth watching the movies, I was expecting a car chase to cause police cars to come bouncing over the hill and crushing into the street car, but thankfully it didn’t happen.

I saw the sea-lions on Wharf 39 and from the way they lay down lazily, patting their bellies and barking at each other, like INTA participants it appeared that they were recovering from too much beer and partying the night before.

My kids don’t understand the hectic schedule at INTA and expected me to bring back some stuff that is cheaper in the US than in Israel. My wife wanted king sized fitted sheets for our bed, and unfortunately the stuff provided by the hotel was queen sized, so I went to Macy’s.

The kids wanted Lego. I couldn’t find the Danish IP Office who often have a stall advertising search services. No one else had Lego either, so I had to find a toy shop.

Sanyou’s booth at the exhibition center  had some very useful suitcase straps in easy to spot rainbow stripes. I put one on my case and felt that it was too San Franciscoish, and not wishing to make loud statements about my sexuality and even less wanting to make loud statements about what isn’t my sexuality, decided not to walk around the San Francisco hotel lobby with rainbow straps about my case, and so travelled from San francisco to Los Angeles without the straps but did put them on for the second leg of the trip only, i.e. from Los Angeles to Tel Aviv.

The guy at passport control was cross that I handed him a business card instead of passport and the same thing happened with my boarding pass at Check In. I seem to have got conditioned to swapping the damn things.

Taking off one’s shoes and belt in the airport seemed a little excessive and running after an INTA bag holding man in a dark suit to take advantage of a final opportunity to swap cards whilst hoisting one’s trousers up is not easy. The woman in front of me was stopped by the security gate. Apparently it was the under-wiring of her bra.

Settling down to sleep on the plane, I swore I’d never do it again. Looking forwards to seeing you all at INTA in Washington next year.


The Goldrush – 133rd INTA Conference, San Francisco

May 24, 2011

I don’t know how it started, but following a rumour that ‘there was gold in them hills’ some 9,000 patent attorneys and trademark lawyers converged at INTA San Francisco looking for fame and fortune.

There may be some people looking for new service providers to give work to, but it seems that the overwhelming majority of patent and trademark professionals were hoping to make useful contacts and to grow their practices.

Instead of hitting the mother lode, most miners merely found other miners staking their claims, and spend the conference drinking beer in the saloons receptions.

According to the IP KAT, Lord Jacobs calculated that 9,000 attorneys all trading their business cards was a total of 81 million cards. He is, of course wrong. Not in squaring 9000, but in assuming that everyone sees everyone else. It is not possible. INTA is a four-day event. That is about 100 hours. No-one can network at 90 cards-an-hour around the clock. It’s not possible.

Whether you visit the exhibition hall, attend lectures, tour the parties and receptions, or run an unfocussed multi-channel campaign comprising a little of each, I don’t think it is possible to squeeze more than about 5% of the available paws. As an exhibitor I have a full list of participators. I know there were many friends and colleagues that I didn’t manage to see.

With the flights, hotel attendance and registration, it is necessary to generate at least $3000 of new work to break even. But INTA is a disruption that easily wipes off a week of work with travel and jet lag on top of the actual conference participation. This means that in addition to the cost of participating, one loses 2% of one’s annual work time.

It seems unlikely that many participants can get enough out of INTA to make participation worthwhile.

The problem is, of course, that we are like lemmings. There is peer pressure to attend. How can I be a leading practitioner if I don’t show up?

On behalf of the Kashrut observers, I’d like to thank INTA for the boxes of Kosher food at the opening reception. There was even Kosher vegetarian. This was much appreciated. We also note gratefully, that the various corporate receptions often had Ghirardelli chocolate and fruit so there was what to eat.  Kudos to Michael Chesal and Andrea Rush for coordinating a Kosher get-together in Sabra – a kosher restaurant in town.

This time around we had a booth, so I spent my time in the exhibition center and didn’t attend any lectures. I will, therefore, review the swag.

Our stall gave out recycled, reusable, green swag bags in turquoise and white, that was ideal for collecting everyone else’s junk or for leaflets and magazines for the more literate amongst the profession. Using our non-prententious swag bag, I toured the booths looking for presents  for the kids, but it was a little disappointing.  The Association of African Countries had ebony African head key-rings. Like last year, Fasken Martineau had some cool curly pencils. Appleby had some nice regular pencils and also some reusable bags that were very eco-friendly and appropriate for San Francisco. Lehman Lee had a very attractive stall with Chinese walls, that was giving away iPad bags but no-one was giving out free iPads, though they seemed to be the most popular prizes in business card raffles.

The Korean Patent Office had neat flash memory sticks. Thompson Reuters had a USB hub which seemed very appropriate for an information company, if not particularly useful. I did pick up a couple of nice business card holders, particularly leather ones from Pham and one with a magnetic catch from MSP, which were, perhaps the most useful freebie.

For some reason, WIPO were giving out a leather folder of the type used for the bill in restaurants. I did take one, but am not sure what to do with it. Go Daddy were giving out lens cleaning cloths that worked surprisingly well. The Copyright Clearance Center had some nice Post-It arrow labels in various colors in a handy holder. Great for labeling patents, text books and decisions.

There were some nice pens. My serious 12 year old Binyamin voted the wall map of the world by Domain Names  as the best free gift.  The youngest, Matan, aged 8, liked the domain tools binoculars. He actually wanted Lego – as he reminded me was the main reason for my trip to the States whenever I rang home. Unfortunately, no-one seemed to be giving Lego away, not even the Danes, so I had to find a toy shop and buy the stuff.

Grant Thornton, our Lebanese friends, were giving away nice historic plaques of the Phoenicians and also rather good backlawa.

There was the usual collection of unrecognizable odds and ends of non-descript usage.

One Chinese firm was handing out packets of tea that seemed appropriate for China, and I also managed to collect a selection of decorative bookmarks. Kangxin’s was particualarly attractive.  

Sanyou had some very useful suitcase straps in easy to spot rainbow stripes. I put one on my case and felt that it was too San Francisco, and not wishing to make loud statements about my sexuality and even less wanting to make loud statements about what isn’t my sexuality, decided not to walk around the San Francisco hotel lobby with rainbow straps about my case, and put the straps on for the second leg of the trip only, i.e. from Los Angeles to Tel Aviv.


Tigris Trademark Considered as Infringing Puma – Cat fight in Israel

May 10, 2011

Israel Trademark Number 197349 to City Wash LTD is for a combination word-image mark consisting of a silhouette of a Tiger and the word Tigris which is tiger in Hebrew.

Their mark is reproduced below:

PUMA, AG Rudoph Dassler Sport, a German clothing company filed an opposition proceedings claiming that the tiger was confusingly similar to their puma logo.

Both companies make hats and shoes.

Puma claimed that the mark was non-distinctive, was confusingly similar to Puma’s marks and diluted the Puma mark.

According to Puma, the similarity lies in the combination of an image and a word, in the word being in capitals, and in bold. Both cats had the head, tail and claws in the same places. (This is a translation of the basis for the claims of ‘confusing similarity’ )  

The Deputy Commissioner, Noach Shalev Shlomovits accepted the opposition and refused the mark. To add insult to injury, he also awarded NIS 30,000 damages.

COMMENT

I don’t think the fact that one manufacturer uses a combination mark including an image and a word gives a monopoly for marks of this sort. Nor does the choice of writing the brand name in capital letters or in a bold typeface.

Although it is true that both big cats have the head and tail at different ends, and depict claws on the feet, I am not sure that this fact is particularly confusing.    

Both tigers and pumas are big cats, but tigers are bigger and fiercer than pumas.  Although shown in silhouette, I think many people will have little trouble telling the felines apart. For those less familiar with feline anatomy, the opposed mark includes the word Tigris, which is something of a give-away.

Puma are not the only company using silhouettes of a big cat for branding purposes. So does Slazenger and Jaguar, also in Class 25. Interestingly, Slazenger has a mark for the silhouette not including a word. Their cat, which is rather more like a puma than a tiger is also facing to the left. So is Jaguar’s jaguar – which is also registered in Class 25.

With the word Tigris, which is very different from Puma, it is difficult to see the two marks as confusingly similar. This is particularly the case since Puma does not have anything like a monopoly on silhouettes of big cats, I therefore can’t see much logic in this decision.

I am not even sure that Puma is better known than Jaguar or Slazenger. District Court Judge Michal Agmon Gonen ruled that 4 stripe training shoes did not infringe Adidas’ three stripe mark, and that there was room for a cheaper, less exclusive brand. See West Bank Arab Prevails Against Adidas – Four Stripe Cheap Training Shoes Do not Infringe. That decision is on appeal to the Supreme Court but in general I would expect this to guide the arbitrators at the patent office.


Canada Supreme Court to Hear Challenge to Pfizer’s Viagra Patent by Teva Canada

May 9, 2011

The Supreme Court of Canada has announced that it would hear Teva Canada Ltd.’s challenge to Pfizer Inc.’s patent for Viagra. The high court granted Teva Canada’s leave to appeal without comment Thursday, agreeing to review a September 2010 ruling from Canada’s Federal Court of Appeal that barred Teva Canada from producing a generic version of the drug prior to Teva Canada could not produce a generic version of Viagra until Pfizer’s Canadian patent expiring.


“DIVA’S LASHES” – How the Israel Supreme Court Does Justice

May 8, 2011

An Italian multinational cosmetics manufacturer, Micys Company S.p.A, sells its products worldwide under the “PUPA” brand. Its mascara is marketed as ”DIVA’S LASHES.”.

After this product was put on sale in Israel, a small, Tel Aviv family firm called Diva Cosmetics and Perfumes that manufactures cosmetics under the name DIVA and has a registered trademark for same in International Classes 3 and 5 sent Micys a cease & desist letter and a demand for compensation for trademark infringement.

According to the findings reported in the ruling by the Israel Patent Office, which was the Court of First Instance, most of the Israeli firm’s activity is in bulk manufacturing for other distributors and their name appears on the repackaged goods as ‘manufactured by Diva’ in small print. Nevertheless, they do market a little known toothpaste bearing the DIVA trademark; toothpaste, like mascara, is a Class 3 product.

Micys responded to the Cease and Desist letter by filing for cancellation of the DIVA registration in both classes on the grounds of non-use, or in the alternative restricting the specification of goods in the registrations to products actually sold.

Yaara Shoshani Caspi, Adjudicator for Intellectual Property at the Israel Trademark Office ruled that there was use in the classes, upheld the registrations, and refused to restrict the specification of goods.

Micys appealed Shoshani Caspi’s ruling to the Supreme Court, and was represented by Advocates Reuven Bilet and Aaron Lewin (who recently joined our firm). We note that these attorneys did not handle the cancellation proceedings at the patent office.

taking the opportunity to watch an IP related decision at the Israel Supreme Court I went along last Thursday to see justice in action.

I wasn’t surprised but was, nevertheless disappointed to learn that my Israel Patent Attorney card wasn’t recognized to allow me to avoid a security check.

The case was heard by a panel of three judges (E. Hayut, H.Melzer, I. Amit) who had clearly read the submissions and prepared themselves for the case. They made some initial jokes about putting on mascara in the morning, etc. which I think was somewhat inappropriate as the case may have seemed trivial to them, but was clearly of significance to the parties.

Rather than hear the case and rule on the substantive issues of what type of use must be made of a registered mark to repel cancellation, and whether a registration could be restricted to the goods actually sold, they bullied the counsel for the mark-holder to negotiate an agreement with Micys according to which the appeal would be withdrawn in return for their renouncing any claim against Micys for selling mascara under ‘DIVA’S LASHES”.

 The Supreme Court justices  used various arguments such as:

  • Diva Cosmetics didn’t make or market mascara
  • Their attorney was leading them on and not explaining to them the legal issues
  • The use by Micys of “DIVA’S LASHES” could help the sales of Diva Cosmetics
  • If they were to hear the case they would be inclined to restrict the scope of the registration which would not be in Diva Cosmetic’s interest

Seeing which way the wind was blowing, Diva Cosmetics agreed to the compromise.

COMMENTS

I was not comfortable with the proceedings. I think the compromise reached was in the interest of Micys and may also have been in the interest of Diva Cosmetics, but I feel that the function of the Supreme Court is to establish legal precedent and not try to get cases resolved by compromise. I also don’t think that Supreme Court Judges should undermine an attorney by accusing him of looking at legal fees and not at the client’s interest. I don’t believe that the training and experience accumulated by a  Supreme Court judge gives  insight or authority to judge commercial interests and to tell one side of a dispute that something will or won’t increase their sales. The competence of Supreme Court judges is the law. They had an opportunity and should have ruled on the legal issues before them and created binding precedent.

They failed to do so.


If tattoos are copyright protectable, what about breast reconstructions and what is considered fair use?

May 6, 2011

 The tattoo artist Victor Whitmill who designed and tattooed the left side of former heavyweight champion Mike Tyson back in 2003 has now sued Warner Bros for copyright infringement.

The basis of the claims are allegations that the studio has copied the tattoo design in its upcoming movie, The Hangover Part II. Whitmill has requested an injunction to prevent the film from copying, distributing and publicly displaying the design in the film and promotional marketing of the sequel to the 2009 box-office success, The Hangover.

Whitmill created the tattoo for Tyson in February 2003. The copyright in the tattoo design, is owned by Whitmill and Tyson has additionally signed a release acknowledging that he doesn’t have rights. The complaint argues that Whitmill has never reproduced, authorized or licensed the design to anyone else, making Warner Brothers use of the design “reckless”.

Whitmill claims that the Warner Brother’s film, The Hangover 2, features a “virtually exact reproduction of the Original Tattoo, which appears on the upper left side of the Stu Price character’s face, played by actor Ed Helms.” One complication in this complaint is that Mike Tyson appeared in the first The Hangover movie in 2009. For more information on this case, see The AmeriKat.  

Here’s my question. If a plastic surgeon (he) resculptures a pair of breasts for a client, does he have copyright in them? Is there an implied license that the client’s (her) display of his work in photography and film is acceptable? Would this be considered fair use? I expect that the answer to both questions would be yes. However, even if the assumed license and fair use would cover the magazines and film studios, would the plastic surgeon have standing if such images were reproduced illegally against the bootleg copier? She wouldn’t, but would he?


Patent for Hydrated Salt of Risedronate Refused in Israel Opposition

May 4, 2011

Risedronate is used for the treatment of Paget’s disease of bone, a disease in which the formation of bone is abnormal, and for treating sufferers of osteoporosis in which the density and strength of bones are reduced. By slowing down the rate at which bone is dissolved, risedronate increases the amount of bone. The FDA approved risedronate for treatment of Paget’s disease in 1998 and for the prevention and treatment of osteoporosis in 1999. The drug is marketed as Actonel.

Proctor & Gamble filed worldwide patents titled for WO/2001/056983 ”Selective Crystallization of 3-Pyridyl-1-Hydroxyethylidene-1,1-Bisphosphonic Acid Sodium as the Hemipentahydrate or Monohydrate.” This patent has issued in Korea, Europe and the US. After allowance in Israel, it published for Opposition purposes and Unipharm filed an opposition. The claims in Israel were those allowed in the US.

The main claim is:

A process for selectively producing 3-pyridyl-1-hydroxyethlidene-1,1-bisphosphonic acid sodium hemipentahydrate and monohydrate comprising the steps of:

a) providing an aqueous solution of 3-pyridyl-1-hydroxyethlidene-1,1-bisphosphonic acid sodium;

 b) heating the aqueous solution to a temperature from about 45° C. to about 75° C.; c) adding a solvent to the aqueous solution; and

 d) optionally cooling the aqueous solution.

The Opposer claimed that the applicant knew full well that the hydrated salt was a mixture of the hemipentahydrate and the monohydrate and that the method of crystallization was the standard method of dissolution and was totally lacking in inventive step. The Applicant claimed not to have been aware of the monohydrate, although it is apparently always precipitated with the hemipentahydrate.

Deputy Commissioner Noach Shalev Shlomovits who heard the opposition, was apparently impressed by the fact that neither in the application nor during the opposition proceedings, did the applicant produce any crystallographical evidence, but simply deduced the two salts from the weight of the crystals, estimating the water of crystallization. Without any other evidence, it is clear that both crystal forms must have been known, and it appears that the general observation of controlling the rate of cooling and concentrations does not involve an inventive step. Shlomovits ruled that not only was there a lack of inventive step, but that the application was not properly enabled. Furthermore, he states that the claimed invention is not fairly based on the specification. Additionally, for greediness in clearly claiming more than is entitled, the Deputy Commissioner ruled that the application should be rejected. Finally, he stated that the scope of the composition claims include the pure hemipentahydrate which the applicant accepted was previously known since it was claimed in an earlier application.

Comments

The decision is resplendent with words like obvious’ and clearly, yet it should be noted that other, significant examining jurisdictions did allow the patent. Nevertheless, claims 16 to 18 relate to mixtures of from 50%-100% hemipentahydrate which does indeed lack novelty due to previous patents for the salt. Is this an attempt at ever-greening? Perhaps. If the applicant is dissatisfied with the Deputy Commissioner’s analysis, this decision will be appealed to the courts.

It should be noted that Teva tried unsuccessfully to invalidate the main Actonel patent in 2008. Earlier this year Teva was sued by Roche and by Warner Chilcott for patent infringement when trying to obtain FDA approval for a generic version of the drug.


Container Shapes as Trademarks: Israel Patent Office Reconsiders

May 4, 2011
 

 
BACKGROUND
 
There is consensus that the correct protection for a distinctive object that is mass-produced is by a registered design. In the US, designs are protected by design patents and are required to be aesthetically non-obvious and not merely novel and original. There are various formal requirements for registering a design. In Israel, absolute local novelty is required.

Offering the articles for sale or displaying them locally prior to filing a design registration makes its unregisterable. There is a further drawback. Designs are protectable in Israel for up to 15 years and then the design enters the public domain and third parties can freely copy the design. In contrast, trademarks are renewable indefinitely if the mark is in active use, so there have been many attempts to protect three-dimensional objects, including packaging, as trademarks.

Previous decisions in Israel

In the past, various bottles and other containers were recognized as trademarks in Israel, but in recent years, the policy of the Israel Patent Office has been to refuse such marks on the grounds of double protection. In 2004 former Israel Patent Commissioner Dr. Meir Noam ruled in a circular (MN 28) that three-dimensional trademark applications were to be indicated as such in the filing. This was to clear up the possible confusion of whether an image of a three-dimensional object is the trademark, or the three-dimensional object itself is the mark.

In 2007, Attorney Moshe Goldberg, himself a former Commissioner of Patents and Trademarks, now in private practice, attempted to register a rectangular box with cut-outs for viewing the perfume bottles within, as a trademark. This was rejected as lacking distinctiveness.

In 11487/03 August Storck KG vs. Alfa Intuit Foodstuffs Ltd., concerning the distinctive shape of Toffiffee sweets, Judge Asher Gronish of the Israel Supreme Court ruled that a distinctive shape could serve as a trademark in some circumstances, but left open the question of whether distinctive packaging could be trademark protected.

At the end of 2010, Noah Shalev Shlomovits, the Arbitrator of Intellectual Property addressed this issue in a ruling concerning trademark application number 198897 for tehini in class 29 of the trademark register and ruled that the three-dimensional container that A.G.S. Green Ltd. uses for selling their raw tehini paste could not be registered.

Notably, he did not argue that the specific mark lacked distinctiveness but issued a blanket rejection of the registerability of containers.  See 3D Trademark Application for tahini container rejected – but for all the wrong reasons

I was very critical of that decision because containers such as liqueur bottles and perfume containers are often sufficiently distinctive to serve as an indication of the source of the goods. Furthermore, there is no logic to accept the appearance of an object of manufacture as registerable as a trademark but not the shape of the packaging, since the object is usually sold wrapped, and it is at least as easy to analyze whether the shape of a container is functional /aesthetic and thus should not be a perpetual monopoly, or arbitrary and serves to indicate the brand or origin, or is functional /aesthetic and thus should not be a monopoly.

Several decisions have recently issued that suggest that the Israel Patent Office has backtracked from its position that three-dimesnional  containers cannot be protected by trademarks. Unfortunately, the new decisions appear to be inconsistent with each other and provide little guidance to the applicant as to what the policy of the Israel Patent and Trademarks Office is in this regard. What is registerable and what isn’t.

Concerning Israel Trademark Application Number TM 174402 to Diageo North America, Inc, the bottle shown above (Crown Royal Whiskey) was refused based on the circular MN 61 and the Toffiffee precedent (see Previous decisions in Israel above). The applicant appealed, arguing that the shape of the bottle, the engraving and the distinctive cap provided a distinctiveness that could not be considered merely aesthetic or functional. Therefore it could serve as a trademark, i.e. as an indication of the origin of the goods enclosed.

The applicant argued that the test to apply for cosmetics and liqueur bottles is the availability of alternatives. If other packaging choices are available, then use of a distinctive package could indicate the source of the goods, and pointed out that Australia, the US and the European Union had all allowed the trademark. Furthermore, the applicant argued that with liqueurs, the bottle shape is the distinctive feature when purchasing a drink, particularly in a wine bar.

Can container designs be registered? With a warning that the identification of a product by the design of its container is not enough for it to be registerable as a trademark, Shlomovits indicates that

the shape of a container may be used for branding purposes and this is in the common interest of the manufacturer and the public.”

 This statement is very clear and helpful. Unfortunately the meaning of his next statement is somewhat more obscure:

However, not every bottle, or indeed every bottle that is identified with a particular manufacturer is registerable as a design, but only those that fulfill three requirements: •

Identifying elements beyond the design that have no aesthetic or functional purpose

• Both the public and the supplier view consider the bottle design as indicative of origin

• Identification of container with the product over many years I do not understand what visible design features that are non-functional, can be considered as having no aesthetic purpose.

Designs do not need to be attractive to be registerable. Having clarified the legal framework, Shlomovits goes on to argue that the crisscrossing cut lines of the Crown Royal bottle in question are designed to evoke a crown, that the bottle is long-identified with the product and that there is a public interest in allowing such a design to be unique to the supplier. Consequently he allowed the bottle to be registered as a design.

COMMENT

I don’t know what non-aesthetic design features are. I suspect that the original design purpose of the crisscrossing lines is to evoke a Royal Stuart cut glass pattern as is common in whiskey decanters and glasses. This was probably the consideration behind the rectangular shape of the bottle as well. I am, therefore, not sure that other manufacturers should be prohibited from using cut glass designs on their bottles or the shape, but possibly the combination of both could be registered as a trademark or considered as passing off or unjust enrichment.

CASE: TM 174402 to Diageo North America, Inc. 13 April 2011 before Noach Shalev Shlomovits.

In TM Application 195184 to Martell & Co. the registerability of a cognac bottle is discussed. The bottle in question has a swallow embossed thereon and a raised dome base. The bottle also included the manufacturer’s name (Martell), but the applicant wanted this removed from the trademark. According to applicant’s statements, the raised dome was supposed to indicate the interface between different cultures. The Deputy Commissioner of Patents and Trademarks decided that the combination of the unique bottle shape and the flying bird that has been long identified with the manufacturer and the unique bottle shape was sufficient to allow the bottle to be registered as a trademark.

COMMENT

The decision notes that the bottle has been in existence since 2005 and in Israel since 2006. Although since 2006 some 2,656,500 liters have been sold worldwide, apparently only 1208 70CL bottles. have been sold in Israel which is a mere 846 liters. Consequently, I don’t think this bottle can be considered as well-known in Israel. If the bottle is supposed to indicate the supplier, disclaiming the name makes little sense. If the domed base is to provide a cultural message it is probably not an indication of the supplier. All that is irrelevant. Martell supplies a range of Cognac in a range of bottles and the bottles identify products not the supplier. The bird is a trademark and is used as a trademark. It is a mark fixed onto the bottle and should be registerable as a trademark.

In Appeal Proceeding TM 169606, Shmulovich considered whether to allow a registered trademark for the shape of the Kremlyovskaya vodka bottle, and dissallowed refused the trademark for the bottle but indicated that the glass Kremlin embossed onto the neck could be registered as a trademark. The same logic applies here. The bottle is distinctive and should have been registerable as a design in Israel if an application was filed before it was advertised or marketed. It is not and should not be considered as being a trademark. The embossed flying bird is, however, registerable as a trademark. In a ruling concerning trademark applications 200689 and 200690, an image of a distinctive L’Oreal perfume bottle was filed as a trademark. Since its launch in 2008, the perfume in the bottles has sold some 15,000 units. In his analysis, Noach Shalev  Shlomovits states that it is easy to distinguish between the design of a bottle and its appearance, though difficult to define the differences. In this case, the application includes colour, words on the bottle and a distinctive lid. He went on to allow the bottles stating that infringement could be avoided by changing the colour or the words.

COMMENT

Shlomovits develops his doctrine that the test of trademark registerability of a container is whether the visual elements are part of the design or peripheral to it. Unfortunately with regard to the l’Oreal bottle, this is as meaningless in this case as it is in Royal Crown, nor does it explain why the domed base of the Martell cognac bottle which is clearly a design element, is also a trademark. The question is whether the l’Oreal bottle is indicative of perfume or of l’Oreal perfume. I can’t answer that. Nor, however, can Shlomovits. It requires market surveys and questionnaires. CASE: TM 200689 and 200690 to L’Oreal, 13 April 2011, before Noach Shalev Shlomovits

 The final case relates to Head and Shoulders shampoo. Israel Trademark Application TM 210043 to Proctor and & Gamble, is reproduced below.

Despite the unique shape of the bottle, which makes it unstable and wastes space in packing, despite the unique shape of the lid, and despite the logo and words that are part of the image, Shalev Shlomovits decided that there was nothing sufficiently distinctive in this design to allow it to be registered as a trademark.

COMMENT

I can’t see a common logical thread through the above decisions. Head & Shoulders is widely purchased for its anti-dandruff properties and is a brand leader that is more expensive than other shampoos. The bottle is distinctive. Arguably to stop competitors adopting the bottle, a design registration is required. That as may be, if over time the bottle is identifiable with the supplier, why should this be different to a perfume or liqueur bottle? The law only distinguishes between goods for classification purposes. The legal requirements for trademark registration are the same for shampoos, perfumes and liqueurs and spirits.

A distinctive bottle recently allowed as a trademark in Japan is the famous Gaultier perfume bottle which is in the shape of a female torso. The bottle is distinctive and arguably indicative of the supplier. The bottle does not evoke Gaultier though. It may or may not provide messages of femininity, beauty and sensuality. I don’t think that Shlomovits would allow it as it does not have non-aesthetic design features, but I am not sure.

The trademarkability of containers was discussed back in 1964 in the US, in Mogen David Wine Corp relating to Kosher wine containers, where the judge stated that:

 ”trademark rights which happen to continue beyond the expiration of a design patent, do not extend the patent monopoly. They exist independently of it, under different laws and for different reasons. The termination of either has no legal effect on the continuance of the other. When the patent monopoly ends, it ends. The trademark rights do not extend it.” Mogen David Wine Corp 328 F.2d 925 (CCPA 1964)

The issue of whether a container can serve as a trademark is whether it is used as a trademark by the supplier and is identified as being an indication of the origin of the goods by the purchaser. I think the concept of visual elements distinctive of the design is a meaningless distinction.


Israel returned to the US Special IP Report Blacklist

May 4, 2011

Back in 2010 we reported on an agreement reached between Israel and the US in Washington, where the Israel delegation, headed by the Israel Ministry of Industry, Trade Director General Sharon Kedmi agreed to amend the Israel Patent Law regarding pharmaceutical patent term extensions, in return for which, the US dropped Israel from the blacklist of countries with inadequate IP protection in the Special 301 report, relegating Israel to the watchlist only. See Israel to be Downgraded to US Special 301 Watch List and Proposed Amendment to Israel Patent Law made Public for more details.

Although a draft amendment was circulated to patent attorneys, IP lawyers and others for their comments, the amendment was never passed.

Consequently, Israel has been returned to the blacklist.

COMMENT

This development is not surprising. I don’t think the position adopted by the US is a more moral position or an objectively better balance between free market competition and patentee’s results, nor do I think the amendment is warranted. I see this as simply an example of US protectionist bullying.

Then again, paraphrasing the late great Groucho Marx, who’s interested in joining a club that would have them as a member?


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