Large Consignment of Fake Plumbing Components Destroyed at Importer’s Cost

February 10, 2016

huliot

When one thinks of fake goods, luxury items such as Rolex watches and perfumes spring to mind. Software and music is also copied and distributed easily, but one doesn’t think that anyone would fake plumbing materials.

Actually, fake light switches, plasterboard, aluminium profiles and plumbing materials are made.  Huliot Have now managed to have a large consignment of 88,000 fake plastic plumbing components destined for Gaza destroyed in Ashdod Port at the importer’s cost.

Huliot a long established manufacturer of pipes and plumbing components based at Kibbutz Sde-Nehemiya.

A few months ago, the Customs Office at Ashdod port compounded a large consignment of counterfeit plastic plumbing components imported from China and destined for Gaza.  The plastic components had the registered trademarks of Huliot A.C.S. Ltd embossed on each component and were also packaged in packaging bearing Huliot’s name and distinctive green diamond logo.

The Customs Office were suspicious of the large consignment because the goods appeared to be of low quality so IP Factor who is the registered Agent of Huliot trademarks was contacted by the Customs Office. We take this opportunity to complement the Ashdod Customs for their vigilance in this matter.

Adv. Aharon Factor of our firm, IP Factor, filed a petition at the Tel Aviv District Court for a restraining order and for an order for the destruction of the goods.  The parties subsequently negotiated an out-of-court settlement further to which the goods were destroyed at the importer’s expense and some legal costs were paid by the importer to Huliot.

Huliot’s CEO Mr. Paul Steiner believes that the large consignment has a retail value of about 400,000 Shekels and would have tarnished Huliot’s reputation for high quality products.  Although destined for Gaza, Mr Steiner believes that some of the goods would have found their way back to Israel which would have caused even more damage to Huliot’s reputation.

Mr Steiner is a great believer in IP development and enforcement and engages veteran Israel Patent Attorney Simon Kay as part-time in-house IP Manager. Simon has developed a vigorous strategy to protect the company’s intellectual property and reputation, including patenting developments, registering the designs of new components, marking components and their packaging with Huliot’s logos and trademarks.  IP Factor handles the trademark portfolio for Huliot and for some of Simon’s other clients.

COMMENT

In a recent post we noted that suppliers of fake Viagra pills had received prison sentences since the product posed a danger to the public. We noted that most fake Viagra pills are merely ineffective rather than dangerous. Fake building materials can cause tremendous damage. Sewage and grey water piping that cracks can contaminate drinking water supplies. Whilst untreated individual erectile dysfunction can adversely affect reproduction, cholera can kill millions. One of my clients has developed and is launching a child safety device for adjusting car seatbelts to children. The device has undergone very extensive safety testing. Fake devices are now being advertised on Chinese wholesale websites. Quite possibly, these are inferior and unreliable products. Perhaps the courts and police should reconsider what types of fake goods are dangerous and what importers and distributors should be sent incarcerated?


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.


Double Jeopardy in A Design Cancellation

January 13, 2016

Double Jeopardy        Hood

Diesel S.P.A. own Israel Design No. 51959 and Hoodies LTD  filed for cancellation of the design claiming that it was published in Israel prior to registration which is contrary to the current Design Ordinance. Diesel requested that the hearing before the Israel Patent Office be suspended whilst the District Court consider the on-going infringement proceeding and where the issue of validity based on prior disclosure is being considered.

As discussed this in a previous posting, the cancellation action in the Patent and Trademark Office was stayed at Diesel’s request, since Hoodies LTD did not file a response.

Hoodies LTD have now appealed this decision, claiming that they were only served the staying request three weeks after it was filed and did not have the statutory window of opportunity to respond.

In the circumstances, Deputy Commissioner Ms Jacqueline Bracha was prepared to reopen the case and reconsider her ruling, but since it was inefficient for two forums (fora?) to hear the same issue and could result in contrary rulings, she again concluded that the case before the patent office should be suspended, and requested an update regarding the progress of the complaint in the district court in three months time. No costs were awarded.

 


Onnuri and Sujuk – Bifurcation!

December 9, 2015

Divide and Conquer

Yoad Potrimelach owns Israel Trademark Nos. 183243 and 190290 for Onnuri and Sujuk. Zvi Alfisher filed a request to cancel the registrations on the grounds of inequitable conduct under Section 39(1a).

Israel Trademark Nos. 183243 and 190290 for Onnuri was filed on 22 August 2005 in class 16, and were registered in May 2007.  On 29 June 2015, the Israel Trademark Department sent a reminder for renewal of Israel Trademark No. 183243 for Onnuri but it wasn’t renewed. The request to cancel the mark was submitted on 9 July 2015.

Israel Trademark No. 190290 for Sujuk was submitted on 18 May 2005 and issued on 9 March 2008 in class 44. The request to cancel the mark was submitted on 18 June 2015.

On 23 August 2015, Yoad Potrimelach requested that the cancellation proceedings be suspended as there was an ongoing court case between the parties before Judge Dr Avnieli (Civil Complaint 25921-02-14 Yagil et al. vs Alfisher. The proceeding was filed against Zvi Alfisher in February 2015 and relates to IP infringement regarding these marks. The plaintiffs claim to have sole Israel rights from the Intenational Sujuk Association and have the sole rights to distribute and teach Sujuk in Israel.

In the hearing before Dr Dafna Avnieli regarding this case, it was ruled that the statement of defense does not undermine the validity of the registrations, and the Court offered the defense the opportunity to correct their statement of defense to raise this issue, however Alfisher declined to claim this and the validity of the marks is not an issue before the District Court.

Alfisher considers the two cases separate and different and does not see a reason to suspend the case before the patent office until the District Court issues its ruling. Alfisher considers that the Patent Office has sole authority to cancel marks and the correct approach is bifurcated attack, challenging the validity in the Israel Patent Office. Support for this understanding is found in 667-01-13 Financial House Y. C. LTD vs. Itzchak Yaakov.

On 28 October 2015, the trademark owner filed his response to the opposition. The mark owner claims that the cancellation request was filed to circumvent the court’s order that the statement of defense be corrected. The court case is at the evidence stage. Although the case before the court is one of infringement, the court may rule on validity of the marks in such cases, and having two courts ruling on the same issues is ineffective and may lead to contrary conclusions.

RULING
The Israel Trademark Office has sole discretion whether or not to suspend proceedings when there is a related case in the courts. The purpose of suspending proceedings is to protect parties and the courts from managing parallel proceedings and efficiency. See 3765/01 Pheonix vs. Alexander Kaplan.

The main issue is to prevent identical factual or legal issues being addressed in two courts which is inefficient and could lead to contrary rulings.

In the District Court, the issues are copyright and trademark infringement, and the Alfisher’s defense is based on tardiness in filing suit and on a contractual arrangement between the parties. Alfisher considers that the Court will have to address validity issues but this is not ideal.  The fact that a mark was registered is indicative of it being valid and raises a high level of proof on him. The Patent Office is better equipped to address this issue.

Alfisher considers the trademark registration was in bad faith and should be canceled under Section 39(1a). This is a different legal and factual issue from the infringement question which is before the courts. Consequently, there is no reason for the cancellation proceeding not to continue. Since the parties are relating to the two marks together and the issues are identical, the two cases are combined. The mark owners are given three months to submit their response to the cancellation request.

Costs of 1500 Shekels are awarded against the mark owners!


Competing Certification Marks

December 8, 2015

CERTIFIED INTERNAL AUDITOR

מבקר פנימי מוסמך מטעם לשכת המבקרים הפנימיים – ישראל

This ruling relates to certification marks. It has ramifications for marks for the word Kosher and the like. The background is a fairly common occurrence where a local organization has ties with an international body and there is a dispute between them as to whether the local organization merely cooperates with the international body or is a branch thereof.

Israel Trademark Number 238007 for “CERTIFIED INTERNAL AUDITOR” was filed on 12 January 2011 by the Institute of Internal Auditors Inc. in Class 41 and covers “Testing services, namely developing, constructing and administering tests and testing programs for candidates as internal auditors.”.

On  13 September 2012, the Organization of Internal Auditors – Israel (OIA) (R.A) filed a certification mark number 249443 in Class 41 for “מבקר פנימי מוסמך מטעם לשכת המבקרים הפנימיים – ישראל”. Literally the mark means “Internal Auditor, Licensed by the Board of Internal Auditors”. The mark covers a virtually identical set of services.

On 24 September 2012, the Israel Patent Office declared a competing mark proceedings. Since the parties failed to come to an understanding, on 19 February 2013 they were asked to present their evidence.

On 2 March 2014 a hearing was held by the Israel Patent & Trademarks Office.  The parties were asked to relate to the ramifications of 18306-07-10 The Non-Profit for Farm Animals vs. Man Hateva Beerotayim LTD et al. from 6 May 2013, which issued after the two trademark applications were filed. The parties chose to relate to this in their summations, which were filed in September 2014.

Background

238152

The Institute of Internal Auditors Inc. was founded in 1941 in the United States as a professional organization for internal auditors. Over the years, its activities widened and it s reputation in the US and elsewhere was strengthened. Currently it claims 175,000 members worldwide. It publishes the Internal Auditor journal both on line and in print form, and has a number of registered trademarks in Israel including. Israel Trademark No. 238471 for IIA in classes 35 and 42, Israel Trademark No. 238152  in classes 35, 41 and 42, Israel Trademark No. 235863 for CIA in  class 41, all from 2012, and earlier graphic marks 88935 and 88936 both in class 35 from 1996.

The Organization of Internal Auditors – Israel (OIA) (R.A) started its activities in Israel in 1960 and was a registered organization since 1984. Its main purpose is to provide a professional organizational framework to represent, advance and train those practicing internal auditing in Israel. The organization claims 1200 members and claims to be legally recognized in the Law of Internal Auditors 1992.

Both parties acknowledge business dealings from the 1960s. They signed business agreements in 1980, 2004 and 2007. In 2011 the  Institute of Internal Auditors Inc.  gave the Organization of Internal Auditors – Israel (OIA) notice terminating their business relationship. There is a disagreement between the parties as to the nature of the business relationship up until that time. The  Institute of Internal Auditors Inc.alleges that the Organization of Internal Auditors – Israel (OIA) was a local chapter of their international organization. Whereas the Organization of Internal Auditors – Israel (OIA) claims that it had a simple business relationship and it had full discretion regarding its activities in Israel.

Statement of Case of the Institute of Internal Auditors Inc.  

  1. The Institute of Internal Auditors Inc. claims that their marks take precedent over the Organization of Internal Auditors – Israel (OIA) as they filed first.
  2. They claim to have used their mark in the US since 1972 and via the Organization of Internal Auditors – Israel (OIA), since 1993,whereas the Organization of Internal Auditors – Israel (OIA) had not used their mark at all.
  3. The  Institute of Internal Auditors Inc. claims that the Organization of Internal Auditors – Israel (OIA)  are acting in bad faith. The Organization of Internal Auditors – Israel (OIA) was founded as a branch of the Institute of Internal Auditors Inc., and it represented itself as the only representative of the Institute of Internal Auditors Inc. in Israel, throughout the 1980s and beyond. The Organization of Internal Auditors – Israel (OIA)  used the standards, the Code of Ethics and the trademarks of the Institute of Internal Auditors Inc. for financial gain. Furthermore, in the signed agreements between the parties, the Organization of Internal Auditors – Israel (OIA) was obliged to help the Institute of Internal Auditors Inc. file their marks in Israel, but failed to do so. Only in 2011 following the  Institute of Internal Auditors Inc. canceled the agreement on the basis of alleged breach of contract did the Organization of Internal Auditors – Israel (OIA)  claim independent standing and file Israel Trademark Application No. 249443 which was inequitable behavior.
  4. The Institute of Internal Auditors Inc. claims that their mark is registerable under Sections 8a and 11(10 of the Trademark Ordinance. It has inherent distinctiveness. It also has acquired distinctiveness due to the long usage and is thus registerable under Section 8b of the Ordinance as well. The Institute of Internal Auditors Inc.denied that following the farm animals decision, its mark had become generic since the word certified had synonyms.
  5. Finally, the Institute of Internal Auditors Inc. claimed that their mark was registerable quelle telle on the basis of the US mark.

Statement of Case of the Organization of Internal Auditors – Israel (OIA)

  1. The Organization of Internal Auditors – Israel (OIA)  claims precedence since it has more activity in Israel as the Institute of Internal Auditors Inc. have failed to show usage.
  2. The Organization of Internal Auditors – Israel (OIA)  claims to be recognized as the official organization of Internal Auditors in Israel and that its activities are and always were independent. It claims that through its efforts it has developed a reputation for itself and its marks, and its relationship with the Institute of Internal Auditors Inc. are and always were merely cooperation.
  3. The Organization of Internal Auditors – Israel (OIA)  claims to have advanced the legislation in Israel and to have statutory rights regarding Internal Auditing in Israel and that its educational program is recognized as further education in the relevant laws.
  4. The Organization of Internal Auditors – Israel (OIA)  claims that following the Farm Animals decision, the application by the Institute of Internal Auditors Inc. is non-registerable as it lacks the distinctiveness required by Section 8a of the Ordinance. However, the Organization of Internal Auditors – Israel (OIA)’s mark is inherently distinct due to the identification sign noting that it is from the Organization of Internal Auditors – Israel (OIA), thereby making it easy for the public to differentiate between services they provide and competing services. They further allege that the Institute of Internal Auditors Inc.’s mark is descriptive and widely used in the field and therefore Non-registerable under Section 11(10) of the Ordinance. Additionally,since it is without acquired distinctiveness under Section 11(10), it also cannot be registered under  Section 8b if the ordinance as it is not registerable. In contradistinction, the service mark of the Organization of Internal Auditors – Israel (OIA)  does not attempt to monopolize the terms Registered Internal Auditor as it only claims these terms as part of a mark including the certifying body.
  5. Since the Institute of Internal Auditors Inc.’s mark is wholly generic, it cannot be registered under Section 16(2) on the basis of the US mark.
  6. The Organization of Internal Auditors – Israel (OIA)  claims that as they monitor and have a mechanism, their mark is a certification, whereas the Institute of Internal Auditors Inc. do not have a mechanism behind the certification and thus their certification is not a certification of quality.
  7. The Organization of Internal Auditors – Israel (OIA)  further claims that the proposed mark of the Institute of Internal Auditors Inc. is against the public order since it is confusing and prevents fair trade.
  8. Finally, the Organization of Internal Auditors – Israel (OIA) accuses the Institute of Internal Auditors Inc. of inequitable behavior since during the examination of Israel Trademark No. 154515 they had to file a disclaimer fo the term “Certified Internal Auditor” to get that mark registered.

Evidence

On 16 July 2013, the  Institute of Internal Auditors Inc. filed an affidavit from the legal representative and Vice Chairman of the organization in the US and one from Eliad Shlomovitz, a trainee of the Israeli legal counsel. The affidavit included copies of the 2004 and 2007 agreements and the letter terminating the relationship, publicity regarding the mark abroad and copies of the various trademark registrations including those in Israel.

On 2 July 2013, the Organization of Internal Auditors – Israel (OIA) filed an affidavit of Mr Mordechai Shnabel, the president of the Organization, copies of programs taught at various seminars and certificates issued to graduates of such courses, agreements between the organizations from 198 2004 and 2007, the constitution of the organization, the syllabuses for Internal Auditors  and various agreements between the Organization of Internal Auditors – Israel (OIA) and third parties.

Ruling

Section 29 states that:

 Where separate claims are made by different persons to be registered as proprietors respectively of identical or similar trade marks in respect of the same goods or description of goods, the Registrar may refrain from registering any such persons until their rights have been determined by agreement between them approved by the Registrar. In the absence of such agreement, the Registrar shall refer the dispute to the Supreme Court.

Where a competing marks proceeding is initiated, the Israel Trademark Office considers: (a) which mark was filed first, (b) the usage of the marks and (c) good faith or the lack of it. See Yotvata, Malchi vs. Old Fashioned Soap 2000 and the Star is born rulings.

The Registrar decides which mark takes precedence and the question of registerability is not addressed until the mark taking precedence is decided. See Bagatz Fromein and Sons LTD. vs. Pro-Pro Biscuits LTD., PD 19(3) 337, where Judge Zusman ruled that a proceeding initiated under Section 17 of the ordinance (now section 29) is NOT designed to determine if a trademark will be granted. The proceeding is based on the assumption that both marks are registerable. Only later , on a mark registering and being opposed is registerability considered.

Furthermore, Judge Zusman ruled that the Registrar could initiate a competing marks proceeding only if he were prepared to assume that both marks were registerable per se if the competing mark was not filed. Otherwise it is pointless deciding which mark should be examined first.

In Bagatz Al Din vs. the Registrar of Trademarks PD 35(2)  187, on 189 Judge Aharon Barak repeated this ruling and stated that the registrar could decide that neither mark may be registered, and endorsed Zusman’s view that only if both marks were per se registerable was the exhausting competing marks procedure appropriate.

The case-law clarifies where, instead of a competing marks procedure, the judicial body can decide that a mark is non-registerable. The conditions are:

  • the parties themselves raised non-registerability issues
  • the parties had an opportunity to relate to registerability issues
  • the parties knew that during the competing marks procedure the issue of registerability would be addressed.

Thus the Registrar may relate to registerability per se in a competing marks procedure. Deputy Registrar Israel Axelrod related to this in Yotvata vs. Tenuva regarding Eshel, and the Supreme Court endorsed his ruling. Similarly the issue was raised concerning Jerusalem Winery.

In this instance, the parties themselves each raised validity issues, specifically Sections 8 an 11(10) and the issue of registerability in the light of the Farm Animals decision was raised in the evidence stage. Furthermore, the adjudicator Ms Yaara Shoshani-Caspi noted in the hearing that she would relate to this issue. Thus, as a preliminary matter, before relating to which side prevails in a competing marks proceeding, Ms Shoshani-Caspi addressed the issue of registerability of each of the marks per se.

Section 1 of the Ordinance (definitions) states that:

A certification mark is defined as something intended to serve someone not providing a business regarding the sources of goods that he has some interest in, their components, method of manufacture, quality or some other property, or to provide assurance of their quality, nature or type.

There is no disagreement that the marks in question are intended to certify internal auditors. From the protocol, the marks are not intended to certify the services provided by either party, but rather to indicate the type and quality of service provided – specifically training and licensing of internal auditors. Therefore, it is clear that they are certification marks as per Section 1.

In Section 14 of the Ordinance the criteria for issuance of service marks states that:

The Registrar can authorize registration of a certification mark if (a) he is convinced that the applicant is able to provide the services covered, (b) a service mark can be registered even if it lacks inherent distinctiveness as per Section 8(a) and (c) such marks cannot be transferred without the Registrar’s authorization.

Thus certification marks are different from regular trademarks which require inherent or acquired distinctiveness.

The Farm Animals ruling (which issued after these applications were filed) relates to the distinctiveness requirement for certification marks.  Nevertheless, Ms Shoshani-Caspi considers its teachings should be applied here. In the Farm Animals decision, Judge Amiram Binyamini related to the application of Section 14b to the term Free (Range) Eggs, and ruled that despite the Section of the Ordinance, service marks nevertheless require a distinctive characteristic. They do not have to allow indication of the supplier. Nevertheless, they have to be able to distinguish between services certified by one mark owner and those by another. The ruling states:

If so, one asks how Section 14b of the ordinance allowing certification marks lacking distinctiveness as per Section 8(a) should be interpreted. Although there is a lack of clarity in the Section, one cannot but conclude that the intention of Section 14b is not to give a blanket allowance for Service marks to lack distinctiveness, but only to be lenient regarding the requirements of Section 8a which enables differentiating between one provider and another. This specific requirement is not relevant for certification marks, since the owner of the certification mark is not the owner or supplier of the goods or the manager of the business. This is clear from the definition in Section 1. 

From here, Section 14b is intended to provide a dispensation to certification marks from having a distinctive nature as per section 8a (indication of origin) but not from being distinctive.

 ….from the above, it is clear that certification marks are required to be distinctive, not of the supplier but of whether a good is certified or not.

Thus certification marks, though not requiring to indicate the origin of the good, are, nevertheless bound by Section 11(10).

A mark consisting of numbers, letters or  words, that are used to mark or describe goods, types of goods or their quality cannot be registered unless they have distinctiveness as per Section 8b or 9.

Thus Section 11(10), when interpreted as per the Farm Animals decision, prohibits a service mark that is generic or widely used from being registered, even if it has acquired distinctiveness due to many years of use.

The Farm Animals decision reiterates the 5792/99 ruling regarding Family magazine that classifies marks as generic, descriptive, indicative, random and imaginary, and explains that generic marks cannot generally be registered.

Citing 144/85 Klil vs. Commissioner of Patents, the decision goes on to note that as a mark is more descriptive, it will require more indication of acquired distinctiveness due to actual usage to be registered, and for a descriptive mark to be monopolized, a great deal of evidence of acquired distinctiveness is required.

As to Free (Range) Eggs, the mark was considered as lacking inherent distinctiveness and being more descriptive than indicative, and being generic in the industry since there is no other way of saying Free Range than be saying Free Range. Consequently the mark should be available to all. Furthermore, there was not enough evidence to prove acquired distinctiveness to overcome the inherent lack of distinctiveness.

In summary, a certification mark needs to be inherently distinctive as to the certifying organization and not descriptive or generic for the products unless it has acquired distinctiveness. If a certification mark fulfills these conditions, it may be registered. Otherwise, it should be examined in accordance with Section 14 of the Ordinance.

In this instance, the term Certified Internal Auditor cannot be considered a Service Mark as it does not indicate the service provider. It can be considered as a certification mark only if it can be used to indicate whether a service provider is certified or not.  Since it lacks inherent distinctiveness, it cannot be registered. It does not have the power to indicate the certifying body. It does not include a logo or something else linking it to the certifying body. The applicant does have other marks that indicate who the certifying body is, but the requested mark does not. It does not enable a third party to know who is certifying the service and to distinguish between different certifying bodies. Thus, when interpreting the Ordinance in the light of the Farm Animals decision, it cannot be considered registerable.

Furthermore, the term Certified Internal Auditor is descriptive of the services provided, i.e. training of internal auditors. Therefore under Section 11(10) of the law, such a mark cannot be registered. the wording of Section 11(10)of the Ordinance teaches that marks consisting of letters of numbers that are laudatory or descriptive are difficult for consumers to see as an indication of origin and should remain in the public domain and not become private property. The first mark is not stylized. The words are taken from a dictionary and cannot become private property – See the 2673/04 Copy To Go ruling.  The phrase “Certified Internal Auditor” consists of the descriptive “Internal Auditor” to which the term “Certified” is added. It does not indicate who is doing the certification.  The evidence submitted is insufficient to conclude that the certifying body is well known and established or that the mark is well known. Applicant’s arguments that there are synonyms for certified are not persuasive.

Thus allowing the first mark to be registered is not in the public interest.

The second mark indicates the certifying authority as the “Office of Internal Auditors of Israel” which is a real and actual organization that is a registered non-profit. It is not disputed that they have trained and certified internal auditors.  Nevertheless, the second mark does not satisfy Section 11(10) of the Ordinance since the term “Certified Internal Auditor” is included. Whilst it is true that marks should be considered as a whole and not analyzed into separate elements (see 5454/02 Tiv Tam vs. Ambrosa Pd 57(2) 438), and the Applicant is not trying to monopolize the term “Certified Internal Auditor” by itself, but only in the framework of the mark.  Nevertheless, the intention of the trademark applicant is immaterial. This is a word mark that by including the terms “Certified Internal Auditor” effectively monopolizes the terms and will prevent others from using it since it is a significant part of the mark. Consequently this should also be left in the public domain.

Here again, the words “Certified Internal Auditor” are descriptive and directly relate to the services provided.  From Farm Animals, the mark is descriptive and thus a priori non-registerable unless it has acquired distinctiveness under Section 11(10). However, the second Applicant has not yet used the mark and thus does not fulfill the conditions of Section 11(10). Were the mark stylized, it would aid their case.

Although the second applicant has demonstrated having a training program as required under Section 14a, since their mark is not distinctive, it cannot be registered.

The  Institute of Internal Auditors Inc. filed first but this only provides a small advantage and cannot be decisive where the parties had a long term relationship. Were the marks registerable it would be difficult to determine which side takes precedence.

Ms Shoshani Caspi concluded that neither mark was registerable and this rendered moot the necessity to rule on the relationship between the organizations from 1960 to 2011. Both files were closed and the parties were ordered to pay their own costs!

COMMENTS

Since Hebrew switches the order of noun and adjective, one could fairly relate to the 18306-07-10 The Non-Profit for Farm Animals vs. Man Hateva Beerotayim LTD et al. as ‘Animal Farm’ and it is tempting to do so.

This decision gives some substance to the recently reported suggestion in the Asos vs. Assos case, that the Registrar relate to one or other mark substantively and, if allowing it, that the mark then be opposable by the other party instead of having a competing marks proceeding. It certainly seems preferable to only debate who takes precedence if the marks in question are inherently registerable.

 


Monkey Business

September 30, 2015

Monkey business

In 2011 British wildlife photographer David Slater was on the island of Sulawesi, following a troop of macaques. He set up his camera and waited. Suddenly, a cheeky monkey grabbed the camera, smiled into the lens and pressed a button. The photographs that followed went on to become internationally known – featuring in a wildlife book by Mr Slater.

selfie

Now, animal rights organisation People for the Ethical Treatment of Animals (PETA) has taken legal action in the United States on the monkey’s behalf (naming it Naruto), claiming that the animal owns the copyright in the successful photographs and should therefore reap the benefits financially.  Slater contends that he, in fact, was the brains behind the set of photographs of the monkey he named Ella. “A monkey only pressed a button of a camera set up on a tripod,” he argues. “A tripod I positioned and held throughout …”

Meanwhile PETA’s argument is that it is not the person who owns the camera that owns the rights but the being (in this case, a monkey) who actually took the photograph. The case will be decided by the US federal court in California.

For more details, and their legal analysis, see the IPKAT here.

COMMENTS

I don’t think this is a laughing manner.

PETA believes that all animals have feelings and therefore rights. They are not ours to eat, wear, experiment on, use for entertainment or abuse in any other way. The basis for their perspective on animal rights is that animals suffer and have a right to live free from suffering and pain.

I don’t agree with their agenda, but I can understand their logic. I have at least one vegan friend who won’t wear leather shoes. As long as they merely demonstrate and persuade nubile young actresses to show their pubic fur in their campaigns against the fur industry, I have no problem.

However, by claiming IP Rights for macaques, PETA is going from a very radical position to an even more radical one.

This would not be serious except that there have been judges willing to see apes as having rights.

In 2013, an organisation called the Nonhuman Rights Project filed a lawsuit in the New York Supreme Court on behalf of four chimps kept for research by Stony Brook University. The eventual conclusion of Justice Barbara Jaffe on 27 April 2015 was that they were not to be treated as property, but as legal persons. Not as persons with full human rights, but as persons with a right not to be held in captivity and a right not to be owned.

It is not inconceivable that some left-wing judge could recognize animals as having the right not merely not to be owned, but also the right to themselves own property. From here, the jump to allowing ownership of non-physical property, such as intellectual property, is not so large as to be beyond comprehension.

Whilst this sort of thing is happening, and California is a center for this type of thought, I note that Islamic fundamentalists have decided that they can go around executing and raping people. They are rejecting Western values in favour of some highly extreme interpretation of their religion. Let’s not provide them with additional evidence that Western Liberal Democracies have gone completely nutty.

It may also be worth remembering that the selfie is not the highest form of Western expression.


J-Date swipes at J-Swipe

August 11, 2015

matchmaker
There are well-defined groups of Jewish singles looking for partners. In traditional society, the match-maker paired up potential partners, and made his/her living from so-doing. In the wider society, friends and acquaintances suggested that people who seemed compatible should meet. Depending on the perceptiveness of the match-maker, the date could be very successful or very tedious for both parties.
In 1997 J-Date offered a computerized match-making service to Jews. Apparently their questionnaires enable people to provide more details of who they are and what they are looking for. J-Date quickly grew to become a leading service provider.
If 1997 was the beginning of the Internet revolution, nearly 20 years later things have changed. J-Swipe is an application that lets those interested in dating discover the proximity of potentially suitable partners, to find out a little more about them, and to contact those of interest. It is apparently a circumcised ritually immersed version of Tinder, a similar application that is less tribal. Apparently J-Swipe is the #1 Jewish dating app with users in over 70 countries. They also claim 375,000+ JSwipe users from across the world (which compares nicely with the number of times this blog has been accessed, but my statistic includes repeat views, and the blog has been going for longer).
Both J-Date and J-Swipe target the same audience, i.e. single Jews, and offer similar services. So J-Date sued J-Swipe and also connected hosting sites and the like, threatening to sue them.
J-Date claims patent infringement and trademark infringement.
Their patent is US 5,950,200 to Sudai and Blumberg titled ” Method and apparatus for detection of reciprocal interests or feelings and subsequent notification”
The independent method claim is

1. A method that notifies people that they feel reciprocal interest for each other, comprising the steps, performed by a processor of a data processing system having a memory, of:
receiving input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
receiving input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
determining whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
determining whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
if and only if a match occurs in both of the determining steps, notifying the first user and the second user that a match has occurred.

There is an independent apparatus claim as well:

28. An apparatus that notifies people that they feel reciprocal interest for each other, comprising:
a first input portion, configured to receive input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
a second input portion, configured to receive input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
a notifying portion, coupled to the first and second determining portions, configured to notify the first user and the second user if and only if the first and second determining portions have detected a match.

There is also a means claim and a software claim.

Back in 1999 such patents issued. Nowadays they don’t.

The trouble is, as VOX put it, JDate claims to own the concept of connecting 2 people based on mutual attraction.

Now, J-Date denies that it against market competition:
“This is not about us discouraging market competition,” Michael Egan, CEO of the company behind JDate, wrote to the New York Observer’s Brady Dale. “Our case against JSwipe is about their theft of our technology.” I am not convinced.
Having an issued patent, there is a rebuttable assumption of validity and they cannot be accused of bad faith in attempting to assert their patent against infringers. However, I doubt that the patent would be upheld in court.

When considering validity, US courts are governed by current case law in their interpretation of concepts such as patentable subject matter, novelty and obviousness. Many patents issued at the turn of the millenium will not stand up in court.

In addition to patents, J-Date also claims trademark infringement. J-Date argues that J-Swipe infringes their mark. Back when I was a student in England, college Jewish Societies were known as J-Socs and presumably still are. The left leaning America-Israel pressure group J-Street uses a J for the same reason. The J indicates Jewish. It seems unlikely that the courts would recognize an individual company having rights in the letter J for dating services.
I doubt that the patent would stand up in court as most of the computerized service patents are voidable in light of recent decisions, and the patent in question doesn’t seem very exciting. I also doubt that the argument of trademark infringement will stand up. The thing is that J-Date have deep pockets and see a threat to their market dominance. They are suing because they can.

Yentl is using behavior more appropriate to a troll. Still all is fair in the business of love.

Matchmaker – Fiddler on the Roof (1971)


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