Plasson

January 25, 2015

PLasson

Plasson manufactures pipe couplings. Unidelta launched a competing product and Plasson claimed patent infringement of their patents IL 125899 and IL 127327 and passing off and requested an injunction. The District Court accepted the charges that the “main point of the patent” was infringed and issued an injunction preventing the manufacture, import or sale of Unidelta’s pipe connections in Israel as they are a copy of Plasson’s product. On Appeal, the Supreme Court overturned the finding of patent infringement and referred the case back to the District Court. The Supreme Court ruled that where the similarities between the allegedly infringing product and the patented invention lie in features that are in the public domain, there can be no case of infringement.

Background

In addition to literal infringement of the claims of a patent, Section 49 provides grounds for legal remedies where the kernel of the patent is copied. This is rather like the “pith and marrow” doctrine in the UK. Essentially, the Law provides remedies where claim infringement is avoided by a technicality, and may be seen as similar to the doctrine of equivalents. Arguably contributory infringement and inducement to infringe may be considered as judicial extensions of this doctrine. It is important to allow general inventing around, but to avoid situations where poor claim drafting can result in no literal infringement of the claims.  What the Supreme Court has done is to clarify the extent of application of Section 49.

Ruling

Judge Meltzer of the Israel Supreme Court ruled that Section 49 provides monopolistic powers to the patentee to prevent literal infringement of the claims defining the invention and also similar products / processes that infringe the kernel of the invention. In this instance, both parties accept that there is no literal infringement so the only issue is the kernel of the patent. The kernel cannot be wider than that described in the Specification and, where the patent is for a device or system comprising a combination of known parts, the kernel of the patent cannot include the parts themselves. In this instance, the District Court did not address the question of what the kernel of the patent is, and without identifying the kernel of the patent, it is impossible to establish that this is infringed by Unidelta’s product. Once the kernel is established, the court must consider whether the infringing product operates in a similar way to achieve similar results.

The Supreme Court ruled that the patent issued because of a limiting feature added to the other components.

The main claim recites:

“1. A pipe coupling comprising a tubular housing having an axial bore adapted to receive a pipe end to be coupled and having an externally threaded housing portion and an inner housing abutment; a pipe gripping sleeve having formed therein a plurality of substantially equiangularly distributed, axially directed slits extending from a first end thereof to a region adjacent to but spaced from a second and opposite end thereof thereby defining an integrally formed, axially distortable, ring-like sleeve end portion, a first axial portion of said sleeve, through which said slits extend, tapering externally from a peripheral, outwardly directed flanged portion towards said first end and being formed with a plurality of inwardly directed, axially spaced apart serrations; a tubular collar having a first inner axial portion tapering from an inner collar abutment to a first end of said collar and a second inner axial threaded portion extending from said collar abutment to a second and opposite end of said collar; and a flexible sealing ring; the arrangment of said coupling being such that with said pipe end extending through said collar, sleeve, sealing ring and housing, said collar is screw fitted on said housing, said sleeve is located in said housing and said collar with said flanged portion located between said collar abutment and an adjacent end of said housing and said sealing ring is located between said sleeve ring and said housing abutment; screw tightening of said collar on said housing causes the respective tapering portions of the collar and sleeve to be mutually displaced with the gripping contraction of said sleeve about said pipe end and the axial compression of said sealing ring about said pipe end”.

Plasson’s patent is for a ring fitting that includes a wide and flexible ring that enables different sized pipes to be attached together in one smooth motion without dismantling the connector. Since Unidelta’s system did not include this limiting feature, but merely combined pre-existing components to create an alternative pipe fitting, there was no infringement of the kernel of the patent.

Quoting from the specification:

Pipe couplings of the type herein described, which are presently in wide-spread use, normally require pushing the pipe through the seal (typically an O-ring) in the bore of the body member in order to achieve compression of the O-ring on the pipe, and thus a leak free joint. However, for pipes of large diameters, the operation of pushing the pipe through the O-ring seal requires a large force, making the operation very difficult, and sometimes even necessitating an extra operation of chamfering the pipe end for this purpose.

A further disadvantage in the pipe couplings of the type herein described now in use is that such couplings do not tolerate substantial variations in the pipe diameter so that precise pipe diameter tolerances must be maintained, or a large number of different-size couplings must be produced for the different diameter pipes to assure good sealing and gripping actions”.

“…a pipe coupling constructed in accordance with the foregoing features provides a number of important advantages including: convenient assembly, since the particular seal, in its relaxed condition, introduces very little resistance to the forceful entry of the pipe during assembly; …increased diameter range of pipes capable of being coupled, since the two-ribbed (or three-ribbed) sealing ring can accommodate substantial differences in diameter sizes…”.

This emphasizes that Plasson did not invent the only pipe coupling for joining pipes of different diameters, and there patent was limited to one that is easy to seal due to little resistance.

As to passing off, the Supreme Court was critical of the District Court for finding this without explanation of why they considered that this was applicable. The Supreme Court referred the case back to the District Court for further consideration on this issue.

Judge Meltzer established costs against Plasson of 75000 Shekels.

Judge Miriam Naor (now president of the Supreme Court) commended Judge Melzer on reducing the issue to non-technical matters without technalese that regular people could understand.

Appeal 6750/10 Unidelta vs. Palson, Supreme Court 18 December 2014

COMMENT

One wonders who the non-technical people are in this case, plumbers or the President of the Supreme Court? Is the technical issue here flanges and pipes, gaskets and washers, or non-literal infringement, pith & marrow and other legalese?


US Supreme Court Overturns Federal Circuit’s Ruling Regarding Validity of Patent for Teva’s Copaxone

January 21, 2015

copaxone

Copaxone is a blockbuster drug based on the glatiramer acetate copolymer which was patented by Yeda (the Tech Transfer Company of the Weizman Institute) and licensed exclusively to Teva to manufacture.

On Tuesday 20 January 2014 the U.S. Supreme Court reversed an appeals court ruling that invalidated Teva Pharmaceutical Industries patent on the blockbuster multiple-sclerosis drug Copaxone, giving the drug maker a new opportunity to forestall generic competition.

The claims specify a particular molecular weight range but do not specify what method was used to measure the molecular weight. Sandoz argued that this is a fatal flaw and the claims are indefinite under §112. The District Court found for Teva, and was convinced by Teva’s argument that the claim clearly meant the “peak average molecular weight”, and not either of the two alternatives of “number average molecular weight” or “weight average molecular weight”.

On appeal, the Federal Circuit held to the contrary and found the patent invalid for indefiniteness. In reaching this conclusion, the Federal Circuit reviewed de novo all aspects of the District Court’s claim construction, including the District Court’s determination of subsidiary facts. The issue before the Supreme Court was whether that was permissible, or whether the Federal Circuit had impermissibly set aside the District Court’s findings of fact without the requisite finding of clear error on the part of the District Court (in violation of Federal Rule of Civil Procedure 52(a)(6), for what it is worth). The Supreme Court of the USA accepted TEVA’s appeal that found that the Federal Circuit had indeed impermissibly conducted a de novo factual review. So the Federal Circuit’s decision was vacated and the case remanded.

The Supreme Court Decision ruling was made by seven judges with two dissenting. Justice Breyer gave the Opinion with Justices Roberts, Scalia, Kennedy, Ginsburg, Sotomayor and Kagan affirming. Justice Thomas filed a dissenting opinion which Justice Alito concurred with. According the majority opinion the Federal Circuit had indeed impermissibly conducted a de novo factual review. So the Federal Circuit’s decision was vacated and the case remanded. In the dissenting view, the opinion was that the Federal Circuit had not overturned findings of fact, but had instead formed a different conclusion of law as to the claim construction. Therefore, there had been no breach of the Federal Rules of Civil Procedure. The case has been referred back to the Federal Circuit Court of Appeals.

COMMENT

The ruling will help TEVA prevent generic competitors from entering the Copaxone market until the patent expires in September. There seems to be a power struggle going on in the US court system with the Supreme Court reprimanding the Federal Circuit for assuming powers that are not rightfully theirs.


PCZL (Pearl Cohen Zedek Latzer LLP) Appeals Source Vagabond Decision Sanctioning the Law firm for bringing Frivolous Law Suit.

January 21, 2015

shlooker

Background

Source Vagabond is one of a number of companies making personal portable water supplies that are known in Israel as Shlookers – a shlook being slang Hebrew for a sip.

On August 2, 2011, Source Vagabond sued Hydrapak for, inter alia, infringing “at least claim of the US 7,648,276 patent, either literally, or under the doctrine of equivalents.” On September 16, 2011, Hydrapak served a sanctions motion under Rule 11 which provides that, before a motion for sanctions is filed, the party against whom the sanctions will be sought must be notified of the potential Rule 11 violation and given a twenty-one-day period to withdraw the offending claim. Fed. R. Civ. P. 11(c)(2). Source declined to withdraw. On October 6, 2011, Source filed an Amended Complaint, and on October 12, 2011, Hydrapak served an amended Rule 11 motion.

The court of first instance ruled that granted Hydrapak’s motions for summary judgment and Rule 11 sanctions on April 11, 2012.

Regarding claim construction, the court said there was “nothing complicated or technical” about the claim limitation “slot being narrower than the diameter of the rod,” and that none of the words of this limitation “requires definition or interpretation beyond its plain and ordinary meaning.” Accordingly, the court gave “slot being narrower than the diameter of the rod” its“plain and ordinary meaning.”

The district court stated that Source’s proposed claim interpretation “violates all the relevant canons of claim construction” and that even under Source’s own construction, Hydrapak did not infringe. It also found the literal infringement claim “lacked evidentiary support no matter how the claim was construed” and “the difference is apparent to the naked eye, and the tape measure leaves no room for doubt.”

Specifically, the district court determined that in Hydrapak’s products the slot is larger than the diameter of the rod, even under Source’s proposed construction. The original decision ruling that the case was frivolous and fining attorneys PCZL is reported here.

Source Vagabond and Pearl Cohen Zedek Latzer appealed the ruling.

The Appeal

On appeal, judge Cott determined that the sanctions were bases on two grounds:

“Source made frivolous legal claims in its submissions to the Court, in violation of Rule 11(b)(2); and Source failed to conduct an adequate investigation before filing this lawsuit, in violation of Rule 11(b)(3).”. He recommended Source’s counsel (i.e. Pearl Cohen Zedek Latzer pay $187,308.65 in partial attorney’s fees, but that Source not be sanctioned.

The logic, explained by the district court was “Given counsel’s sole responsibility, as a matter of law, for the violations of Rule 11(b)(2), and counsel’s additional responsibility for the failure to investigate under Rule 11(b)(3), I recommend that Yonay and Shuman be held responsible for any monetary sanction. I further recommend Yonay and Shuman’s law firm, Pearl Cohen Zedek Latzer LLP be held jointly and severally liable in accordance with Fed. R. Civ. P. 11(c)(1).

Hydropak successfully argued that it should receive legal fees for defending against te reconsideration motion, and the court concurred, raising the damages to $200,054.

The decision was appealed to the Court of Appeals of the Federal Circuit.

Court of Appeals of the Federal Circuit Ruling

In patent lawsuits, defending against baseless claims of infringement subjects the alleged infringer to undue costs, and this is precisely the scenario that Rule 11 contemplates.

The District Court found that Source had an obligation to demonstrate why they believed they had a reasonable chance of proving infringement, and that Source failed to show either literal infringement or infringement under the doctrine of equivalents. The issue revolved around the meaning of “slot being narrower than the diameter of the rod”. The district court dismissed Source’s construction stating, “an ‘analysis’ that adds words to the claim language [without support in the intrinsic evidence] in order to support a claim of infringement” does not follow “standard canons of claim construction.” Additionally, the surrounding claim language demonstrates that the “the slot,” “the rod, and “the portion of the container . . . folded over the rod” are distinct from each other. The claim language does not compare the size of the slot to the size of the rod together with the folded over container. Source had the ability to draft the claim that way but did not. It cannot correct that failure by adding words to otherwise unambiguous claim language. In other words, there is a limit to what one can argue a claim means.

Finally, Source argues that Hydrapak’s proposed construction “would render the entirety of claim 1 nonsensical.” This is a fascinating admission that not only does the scope of the claim as prosecuted by PCZL not include the product fabricated by Hydrapak, but that the claim is actually meaningless.

On Appeal, the Federal Circuit stated that “The district court properly determined that “claim construction is a function of the words of the claim not the ‘purpose’ of the invention,” and that Source’s construction “violates nearly every tenet of claim construction and amounts to a wholesale judicial rewriting of the claim.” Source was required to “perform an objective evaluation of the claim terms” to satisfy its obligation to conduct a reasonable pre-suit evaluation. Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1329 (Fed. Cir. 2011). By proposing a definition that ignores the canons of claim construction, Source did not meet that standard. The district court did not abuse its discretion in imposing Rule 11(b)(2) sanctions based upon Source’s frivolous claim construction arguments.

Regarding the doctrine of equivalents:

(“[N]either the attorney’s affidavit nor plaintiff’s ‘pre-suit analysis’ . . .[ever] mentioned, let alone analyzed, how Hydrapak’s product infringed Source’s patent under the doctrine of equivalents.”). Counsel was obligated to come forward with a showing of exactly why, prior to filing suit, they believed their claim of infringement under the doctrine of equivalents was reasonable. See View Eng’g, 208 F.3d at 986. Source did not comply with this requirement below. Under these circumstances, the district court did not abuse its discretion in finding a Rule 11 violation. The cost of $200,054 against Guy Yonay and against Pearl Cohen Zedek Latzer was affirmed.

Court of Appeals Federal Circuit, SOURCE VAGABOND SYSTEMS and Pearl Cohen Zedek Latzer LLP v. HYDRAPAK, INC., decided June 5, 2014

COMMENTS

I apologize to readers for being tardy in reporting this decision from June 2014. It has only recently come to my attention. Guy Yonay accused me of unfair reporting of the original decision and argued that the judge was clearly wrong, and Zev Pearl accused me of publishing lies. I think this decision, which may be found in full here appeal PCZL vindicates my reporting.

The court is correct that the attorneys are responsible for filing the frivolous law-suit. Why did this happen?

Well, the decision states that “Guy Yonay and Clyde Shuman are partners in the law firm Pearl Cohen Zedek Latzer LLP. Prior to the present action, Mr. Yonay prosecuted the ’276 patent application. In the underlying district court litigation, Mr. Yonay signed the original Complaint on behalf of Source, and Mr. Shuman signed the Amended Complaint.”

I would suggest that the first problem is that Yonay apparently prosecuted the claim before the patent office (and may have drafted the application) and then went on to litigate it. This is never good practice. Before litigating one should seek an independent opinion of the chances of prevailing. Yonay could not objectively review the claims he’d prosecuted. He appears to be confused between the purpose of the product and the claimed structure. With mechanical patents one cannot, by obtaining a patent for a specific device, prevent third parties from competing with devices having different structures that are well beyond the ambit of the claims, by arguing that they achieve the desired aim and are thus functional equivalents.

In general, it is ill-advised for the prosecutor of the patent to litigate it in court. Indeed, it is ill-advised for the prosecutor and litigator to belong to the same firm. At least on Appeal, Pearl Cohen took an external counsel, Jenks.

The managing partner of PCZL, Zev Pearl is not licensed to practice in the US. There is, however, a senior partner, Mark Cohen, who is US licensed. Both these gentlemen could and should have prevented the frivolous case being filed. Their failure to do so explains why the courts find the firm responsible and not just Yonay and Shuman.

In a newspaper article on trolls that originated in PCZL was published in the Jerusalem Post and also appears on the Pearl Cohen website, it is implied that only under new Obama legislation, can non-practicing entities be sued for costs in unsuccessful law suits. The implication is that prior to the proposed legislation trolls had nothing to lose by filing frivolous lawsuits and that practicing entities have nothing to lose as they are not trolls. This decision shows the error in this approach. Any entity, whether practicing or otherwise, must have reasonable grounds of validity and infringement to bring a case against a third-party to court. The courts have the authority to sanction the plaintiff and their legal counsel for filing frivolous cases. Pearl Cohen should have known that the interpretation they were giving to the claim was untenable. It was not infringed. The courts were therefore correct in fining PCZL.

 


Nespresso sues Espresso Club for using Clooney look-alike in advertisement

January 21, 2015

david siegal

Espresso Club aired an advertisement in December 2014 that uses a George Clooney look-alike actor called David Siegal. The actor leaves a shop selling coffee machines with a paper bag in hand.

Nespresso, who has an international campaign for their coffee capsules that features George Clooney sued to obtain a preliminary injunction against Espresso Club. The charges included well-known and egistered trademark infringement, unjust enrichment, encroachment, copyright infringement, passing off, interfering with fair trade and unreasonable behavior.

The judge, Magen Oltavia threw out the request, arguing that the chances of Nespresso eventually prevailing were slight. At worse, this was a strong hint and parody against the competitor with the intent of producing a more popular low brow competing product. There was neither copyright nor trademark infringement.

In the advertisement the graying actor wears a suit and sunglasses and makes purchases in a shop selling coffee machines, but during most of the advertisement, the words “The actor is not George Clooney” appear in the top left hand corner fo the screen.

Clooney is not a brand. Real people are not protected characters and are not copyright protected. None of Nespresso’s marks include a likeness to Clooney. The judge did not consider that the actor had even a resemblance to Clooney, a man in an white open necked shirt, suit and sunglasses would not necessarily be associated with Clooney and the words “the actor is not George Clooney” is sufficient to avoid any possibility of confusion. Clooney promotes different goods over time and the CEO of Nespresso in Israel concurred the brand is Nespresso and not Clooney.

The Judge accepted that the actor was intended to recall Clooney and was providing a broad hint parodying Nespresso’s campaign, but this was far from copyright infringement or trademark infringement. The defendant claimed to be parodying Nesspresso by offering a cheaper less elitist alternative where the machine is provided for free and one only buys the capsules. The advertising campaign was designed to promote a legitimate competing product.

The grounds of passing off and copyright infringement were also rejected. Judge Oltavia stressed that Clooney plays himself in the advertisement, not a character created by Nespresso and protectable under copyright.  Clooney would be unlikely to transfer rights in himself to Nespresso giving them lifetime +70 years rights to himself.

The advertisement was not based on a specific Nespresso advertisement. Using attractive looking people for product branding is standard practice in advertising and not the monopoly of Nespresso.

Nesspresso does not have rights in this case that override the right to free speech and creativity of Espresso Club.

Civil case: 451922-12-14 Nespresso vs. Espresso Club, before Judge Magen Oltavia, 19 Jan 2015 

COMMENTS

Selling machines cheaply or giving them away and then charging through the nose for consumerables such as ink or toner cartridges or coffee capsules is an established business model.

Courts do not necessarily enforce registered designs for the compatible cartridges as there is a retrofit clause that prevents machine manufacturers from forcing customers to purchase original replacement parts at any price. This is a matter of public policy. In general, Israel is pro-competition so this ruling is not surprising.

 


Narrowing Claims During Oppositions

January 18, 2015

narrowing

IL 188066 to Elta “Gunshot Detection System and Method” is being opposed by Rafael.

During opposition proceedings, the Applicant is allowed to narrow the scope of protection by deleting claims or by adding restrictive features.

In addition to claim amendments that were specficially authorized, Elta deleted some additional claims and made further amendments. These amendments were clearly restricting the scope of the claims but Elta exceeded the amendments that were agreed between the parties and did not flag that they were making further amendments.

In the circumstances, the Commissioner Asa Kling accepted the amendments, gave Rafael two months to correct their statement of case and awarded costs of 7000 Shekels costs to Rafael.

 


Reviving Lapsed Patents in Israel

January 18, 2015

revival

The December crop of patent office decisions included a number of attempts to revive lapsed patents. The requirements for revival, broadly speaking, are that the patent lapsed unintentionally and that the patentee acted promptly to restore the lapsed patent. Three out of five requests for reinstatement were allowed. Two requests were refused due to tardiness in filing the request for revival.

IL 152965 to Shlomo Lavel unintentionally lapsed. Patentee claims to have paid the renewal fee on-line but could produce no evidence of this. He further claims to have made steps to commercialize the technology. When trying to pay the second renewal he discovered that the patent had lapsed. As Deputy Commissioner Ms Jacqueline Bracha was convinced that the patent lapsed unintentionally and that the patentee took steps to rectify the situation promptly on learning that the patent had lapsed, she has ruled that it may be revived and the decision will publish for opposition purposes.

IL 168588 to Sharine Polishing technologies LTD unintentionally lapsed. Patentee paid the renewal fee on-line but did not send the proof of payment to the patent office. Following a random check he discovered that the patent had lapsed. As Deputy Commissioner Ms Jacqueline Bracha was convinced that the patent lapsed unintentionally and that the patentee took steps to rectify the situation promptly on learning that the patent had lapsed, she has ruled that it may be revived and the decision will publish for opposition purposes.

IL 192499 to S. M. B. T. technologies issued on 25 June 2013. The first renewal should have been paid within three months, i.e. by 29 September 2013, and, when it was not paid within the subsequent six months, was deemed to have lapsed as of 29 September 2013. The current owners took possession on 3 September 2013 and responsibility was transferred to Zvi Ben Ari, Patent Attorney. Mr Ben Ari attempted to pay the next renewal on 3 June 2014 and learned that the patent had lapsed. He contacted the previous representatives for an explanation but was unsuccessful in this attempt. It seems that the patent was abandoned due to human error. The problem was that the request to reinstate was only submitted some four months later. In the circumstances, Deputy Commissioner Ms Jacqueline Bracha could not find that the patentee or his representative had acted promptly to reinstate as required by Section 60 of the Law, so reinstatement was not allowed. The patentee is entitled to a hearing under regulation 90.

IL 196017 to Microsoft lapsed due to failure to pay the second renewal which lapsed at the end of June 2013, and the fact that it had lapsed published in the February 2014 patent office journal. Microsoft filed for reinstatement, claiming that their foreign renewal service provider unintentionally noted the filing date as June 2008 instead of June 2007 and so docketed the renewal for 28 June 20014 instead of 28 June 2013. In April 2014 the local agents (Colb) were contacted and on 15 July 2014 they filed for revival with affidavits from the service provider. Although the reasons for the patent lapsing were explained, no explanation was provided for the nearly four months that passed before the reinstatement request was filed. In the circumstance, reinstatement was not allowed. The patentee is entitled to a hearing under regulation 90.


Competing Marks

January 15, 2015

sweeney todd

Razer (Asia Pacific) PTE LTD. is a Singapore based company that has filed a Madrid International trademark application no. 1097804, Israel TM No. 242735 for “Razer” in classes 9, 18 25 and 28

The mark covers 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 in class 9; Bags; messenger bags; sport bags; travel bags; backpacks; knapsacks in class 18; Clothing; polo shirts; T-shirts; sweatshirts; headgear; caps; sweatbands in class 25, and Games and playthings; electronic games and playthings other than those adapted for use with television receivers; 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. The mark was filed on 28 August 2011.

Before this could be examined, on 29 November 2011, Razor USA LLC filed Israel trademark no. 242450 for Razr in class 9 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.                        .

Because of the similarities between the copending marks a competing marks proceedings was instituted.

In such proceedings, the first-to-file is only one consideration. The extent of use of the mark and indications of inequitable behaviour are also considered.

After evidence was submitted and before a hearing was held, Razer (Asia Pacific) PTE LTD. submitted additional evidence showing sales during the years 2006 to 2010, and also Google searches for the term RAZER. The additional evidence was submitted under Section 41 of the Trademark Ordinance and under Circular M.O. 55. Razer claimed that the peculiar nature of competing mark procedures and the importance of the supplementary evidence justified its submission. They also argued that the affidavits of both parties related to these statistics, so their submission was by way of clarification rather than widening the range of issues under debate. Razor USA LLC did not challenge the relevance of this supplementary material, but did consider it should be inadmissible at this stage of the proceedings.

The Commissioner noted that the competing marks procedure is adversarial by nature, but there are no clear binding procedures. He considered that to not allow additional evidence to be submitted which could help clarify which side should prevail, it would be necessary to show that doing so would be particularly burdensome or could create an unfair advantage. Section 41 of the trademark ordinance authorized the Commissioner to request additional information at his discretion. Whilst the general civil procedure may be applied, this should only be done to the extent that it doesn’t interfere with a fair result being reached.

The sales information is considered germane to the issue of which side should prevail. Razer had related to sales and provided details of sales in 2011 and 2013, and the additional evidence simply details sales at an earlier date. The Google search results are less fundamental and require more explanation as to their relevance. Although these may indicate the respective usage of the parties, there was no explanation why they weren’t submitted earlier. Consequently, the sales information was accepted as additional evidence but the Google search data was not. Razor USA was provided a ten-day window to submit their sales data and costs of 8000 Shekels were awarded to Razor US for having to fight this additional submission.

Decision re Competing Israel Trademarks No. 242735 and 242450, by Commissioner Asa Kling, 14 December 2015

 

 

 

 


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