World IP Day Celebration in Jerusalem

April 22, 2014

World IP Day

Tomorrow, 23rd April 2014 is designated by the United Nations as World IP Day.

The Israel Patent Office is hosting an evening at the Bloomfield Science Museum in Jerusalem, where the two students who’ve won the annual IP Essay competition will receive their prizes and Nobel Laureate and self-declared candidate for Israel President, Professor Dan Shackman will be speaking on “Technology Innovation for a Blossoming World of Peace”.

There will also be a video linkup with Francis Gurry, head of WIPO.

An invitation and more details are available הזמנה לציבור יום הקניין הרוחני .

COMMENT

Does a groundbreaking discovery concerning quasi-penta-symmetry in crystals qualify one to be a national president? I note that Haim Weizman was less than happy with being booted upstairs and away from the action by Ben Gurion, and that Albert Einstein had the rare good sense to refuse the presidency (he was a great physicist, but his politics were lousy). Perhaps of more interest than the titled lecture would be a presentation by Professor Shackman as to why the Knesset members should vote for him as President.

 


April 20, 2014

Machsanei Electric

Bet Electric Elite Mehandesim LTD applied for the above trademark no. 232670 covering wholesale and retail of electric, electronic, communication home appliances and computers; all included in class 35.

Electra Consumer Goods (1951) LTD opposed the mark. Their behavior was not found to be equitable, and ruled 2000 Shekels costs against them, and Ms Shoshani Caspi gave opposer 14 days to file a statement in response to applicant’s statement.

Since Electra Consumer Goods (1951) LTD failed to respond, so Ms Shoshani Caspi allowed the mark to be registered, but noted that opposer could file cancellation proceedings.


Camtek announces that they have been caught infringing

April 7, 2014

camtek rudolh

Generally press releases published by companies are about the publishing company filing suit against others infringing their IP, or a court ruling in their favour. In a weird development, Camtek, an Israeli wafer imaging and processing company has announced that the district court of Minnesota has entered a summary judgment finding that certain previous models of Camtek’s Falcon systems were capable of infringing upon two claims of a Rudolph patent in the United States.

See here  for more details. Perhaps not surprisingly, Camtek’s shares dropped over 3% on the day.


Striking Evidence in a Trademark Opposition

April 6, 2014

Al Shurkah Alwataneya Lisenael Al-Alamenyom Walfrofilat – otherwise known as the National Aluminium & Profile Co. or NAPCO, filed Israel trademark No. 240139 for aluminium profiles. On it publishing for opposition purposes, Exstel filed an opposition. The mark in question is a simple line in a profile extrusion, whether an indentation or a protrusion.

NAPCO’s mark is shown here.

Al shurkah indentation

Exstel uses such indentations/protrusions at an angle of 120, and claims that their mark is very well known. The Exstel mark is reproduced below.

Exstel's mark

Unfortunately, Exstel’s mark had not been renewed and had thus lapsed, allegedly due to a clerical error.

Marking extrusions with one or more parallel indentations or protrusions is the only practical way to mark them. The  single 120 indentation does seem to be rather similar.

Since the Exstel had been allowed to lapse, they have to claim that their mark is well known. It may be well known among building contractors, but it certainly is less well known than, say, the Adidas three striped mark.

Applicant argued that the Opponent was using the protruding mark, and not the indented mark. Both sides supplied evidence including various statements.

Applicant has requested that various statements should be deleted since they were submitted as responses to applicant’s statement but are, in fact, new evidence.

One such statement is that Exstel has been using both protrusions and indentations for years. Another related to the likelihood of confusion when purchasing profiles from a store that stocks both NAPCO and Exstel is NAPCO continued to mark their profiles with V indentations.

A third piece of evidence relates to a recording of a conversation with a stockist, that NAPCO wanted dismissed on grounds of it being heresay,  also on grounds that the private investigators did not present this evidence which was slipped in as an appendix, and thus could not be cross-examined.

Opposer argued that all these statements relate to the issue of the mark being new and distinctive.

Finally, the file wrappers concerning the 240081 and 240082 marks to Sharmer were submitted as evidence only at the stage of responding to the  applicant’s evidence, since they were unavailable earlier. (For details of these marks see here).

As far as the Affidavit’s went, the Deputy Commissioner accepted that a protrusion was better than an indentation since indentations created a point of weakness. The Deputy Commissioner was prepared to delete a statement in an expert opinion that a single store might carry profiles from more than one source, since this was beyond his expertise. Since the private investigators had been available for cross-examination, the Deputy Commissioner did not see reason to strike this evidence.

Ms Bracha could not see any reason to cancel the submission of the file wrappers of 240081 and 240082 marks to Sharmer. However, she didn’t think they provided much support to either side, and clearly the opposer could not be cross-examined on the accuracy of their content.

In summary, Ms Bracha struck the statement of Mr Sagi Sgian from the record and ordered 1000 shekels be paid to the applicant

COMMENT

There is always a conflict over whether to favour procedure or substance. The issue here should be whether or not the relevant public, i. e. builders and glazers, would be confused. I think that this is more significant than whether data is submitted in a timely fashion. Having allowed their mark to lapse certainly doesn’t help the opposer. If they do, however, widley use the same mark, i.e. an indentation, then there is a likelihood of confusion. If, for reasons of weakening profile, or other reasons, they only use protrusion, there is probably no likelihood of confusion.


Accelerating Patent Examination when Inventor is Aged

April 3, 2014

old inventor

Background

In Israel, applications are sorted into tentative technology groups on filing and then, within each technology group, are examined approximately in order of priority date. Periodically, when the ratio of examiners to applications under examination drops sufficiently, the Israel Patent Office sends out Notices Prior to Examination for another batch of applications. There is no need to request examination and no special fee for so doing.

Under Section 19a of the Israel Patent Law, the applicant may pay a fee and request accelerated examination. If there are sufficient grounds for so doing, the patent office will allow the examination of a pending case to proceed, and the examiner should prioritize examination of that case on receiving a response to office actions.

This model has been confused somewhat by the various bilateral and multilateral patent prosecution highway agreements, where positive examination results from the country of first filing may be used as the basis of accelerating examination elsewhere.

The case

On 9 December 2012, Cimas Limited requested accelerated examination of Israel Patent Application No. 216870 on the grounds that the inventor, Professor Shimon Slavin, was born in 1941. Examiner Itay Katz noted that section 19aa1 allowed acceleration based on the age of the applicant, but not of the inventor. Since the applicant was a company, he rejected the request.

Applicant responded that Section 19aa6 allows acceleration in special cases where it is warranted. Whilst section 19aa1 does indeed relate to applicants, the fact that a company may be formed and a patent assigned to it for economic reasons was not supposed to shut the door in the face of elderly inventors who might benefit from acknowledgement of their inventive contributions.

The ruling

The amendment to Section 19 in 2012 was an attempt to codify patent office practice.

Within the discipline covered, Applications should generally be examined in order of filing. Not only is this fair, but otherwise a later filed patent could become a bar to practicing an earlier filed invention. Section 19 is an open list. As of 15 January 2014, requests for accelerating examination should be brought to the Commissioner’s attention.

There is no doubt that 70-year-old applicants are entitled to accelerated examination. Sections 39-43 of the Law states that inventors are entitled to recognition as such, but not to be entitled to anything else. The Commissioner was skeptical that this throws light on the issue in question. Citing Dr Shlomit Yanitzky Ravid, the Commissioner argued that being recognized as an inventor has indirect financial ramifications. Noting government decision 431 from 2006 to address the needs of the elderly which eventually resulted in a ministry for the elderly, and concerns for them to be able to remain in the workforce, the Commissioner ruled that there was a public interest in allowing elderly inventors to enjoy the fruit of their creation. He also went on to rule that the mere fact that the patent is assigned only partially negates the rights of the elderly inventor, for example, forfeiting the discount in filing fees.

Conclusion

The commissioner ruled that the application could proceed to Examination.

Comments

Age of inventor is certainly grounds for acceleration in the US, even now, after the America Invents Act, when the applicant may be a company.

However, arguably the Ministry for the Elderly and the Pensioner’s Party had plenty of opportunity to create an age of inventor clause in this amendment and didn’t. Age of Applicant is a general consideration not an exceptional circumstance and in absence of clear legislation, I am not sure that this interpretation is fair. If we accept age of inventor as being relevant, then what is the cut off age? Retirement age? 70? 80?   Then again, since the Law clearly states that age of applicant is grounds for acceleration, presumably companies such as IBM, Kodak, Coca Cola and the like, should have an advantage over start-up companies! The ruling opens the door to fraud by grandfathering in the inventor, i.e. adding grand-dad as an inventor to skip the queue.

Commissioner Kling has noted that advancing the interests of senior citizens is on the government agenda and used this as the basis for accelerating examination when the inventor is a senior citizen. What about other groups that the government wishes to advance? Former Chief Justice Barak ruled in favour of preferential treatment to rectify this situation. If women and men apply for a senior position and a woman candidate is as qualified as a man, the Supreme Court under Barak would have the woman chosen. Women are certainly under-represented as inventors. Very few applications list women as inventors. Possibly women inventors could request accelerated examination on grounds of their gender? Similar arguments could be proposed to accelerate examination for minorities (Caucasians, Beduin, Israeli Arabs, or for people living in the periphery, or settlers. There is a difference in that the aged are less likely to be around in 2 or 3 years when their application comes around for examination, but that may be true of citizens living on the Gazan border or actively serving in the army or doing reserve duty, minorities such as lifeguards and frequent flyers. I think this may be what the courts refer to as a slippery slope…

 

Over all, I think the decision is wiser than the wording of the amendment.


RETINA trademark registered by APPLE INC. in same class as identical mark to KODAK

April 3, 2014

RETINA

APPLE Inc. filed Israel trade mark No. 235988 for the word RETINA. The goods covered by the mark included: Computers; computer display screens; handheld mobile digital electronic devices used as a telephone, handheld computer, personal digital assistant, electronic personal organizer, and electronic notepad computer; handheld mobile digital electronic devices used to access the Internet, electronic mail, digital audio and video, and other digital data – all in class 9. 

Since KODAK had an earlier Israel trade mark No 12555 RETINA, from 1953 in class 9 for photographic cameras the mark was refused under Section 9(11) of the trademark regulations. 

Applicant submitted a coexistence agreement from KODAK, but the Examiner felt this was insufficient, and the applicant requested an oral hearing in which Applicant argued that APPLE uses the mark on screens, whereas KODAK used the mark on lenses for mechanical cameras. APPLE argued that their target audience was general, whereas KODAK’s products were aimed at professional photographers. Furthermore, the mark was successfully registered in a number of jurisdictions around the world including the UK, Switzerland and New Zealand. Since the applicant uses the logo RETINA together with the iconic Apple logo, there is no real likelihood of confusion. 

In her ruling, Deputy Commissioner Jacqueline Bracha noted that the triple test (similarity of marks, similarity of goods, customers and any other reasons), was all well and good for similar but non-identical marks. However, where the mark is identical, the test should be applied very stringently. Citing Seligsohn and the visa decision she noted that if the mark is identical, one has to be very careful about allowing co-existence. Nevertheless, the goods so marked are different. She noted that despite both being related to photography, the goods neither compete nor have a symbiotic relationship, where one complements the other. 

The retail outlets are also different. Although the general public purchasing Apple products includes professional photographers, since professional photographers are specialists it is unlikely that they would be confused regarding the origin of the different products. 

Despite the coexistence agreement between the parties not being the be all and end all in such matters, this also supports the contention that there is no likelihood of confusion. 

Ms Bracha also noted that the word Retina has a meaning which lowers the likelihood of association exclusively with one producer or another. She acknowledged that the mark was used together with the Apple logo, but since it was submitted on its own, and, if allowed, could be used on its own, this was given little weight. Nevertheless, on weighting everything up, she concluded that the mark could be registered. 

Decision re Israel trade mark No. 235988for the word RETINA, Ms Jaqueline Bracha, 6 March 2014.  

COMMENT

The decision is well-reasoned. Judge Ginat’s ruling on SoHo, three days later also supports it. The problem may come about if and when KODAK or APPLE branch out into new areas. Apple Records and Apple Inc. lived in happy coexistence until the MP media players.

What I believe Ms Bracha could and should have done is to limit the scope of goods in both registered marks to define the KODAK mark as for camera accessories, lenses, etc. for the professional photographer, and Apple’s mark for consumer goods comprising largely of an LCD screen.

Some years ago I registered a trademark for the boutique winery Tanya, whilst there was a Polish vodka called Tania on the Israel market. We filed a coexistence agreement with from the Polish company, and at their request, marked our goods for wines and not vodka. This avoids future conflict.

 

 

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Soho in Israel

March 20, 2014

SoHo

Collection Soho LTD owns a chain of design shops selling furniture, kitchenware, ornaments, bags, jewelry and fashion accessories. The chain has been in existence for 10 years, and in June 2013, the company was awarded a trademark for the word Soho in class 35, covering Shops for sale of designed goods in different consumer sections including – foodware and tableware, office supplies, appointment books and planers, calendars, kitchenware, baby and infant products, greeting cards, bathware (sic), furniture.

When Electra Real Estate LTD and Ben Ephraim and Sons, Building and Entrepeneurship LTD publicized a plan for a shopping mall called So Ho, Collection Soho LTD filed for an injunction, under the Equitable Trade Laws and the Trademark Ordinance.

Judge Gidon Ginat of the Tel Aviv District Court heard the case. As is his custom, and as he explained at an AIPPI conference in Israel a few months back, Judge Ginat prefers to address the whole issue in one hearing rather than rule on temporary injunctions and let cases drag out. He ruled that under both trademark infringement and the tort of Passing Off, the relevant test was whether there was an objective likelihood of confusing potential customers such that someone might purchase the goods of one company thinking that they were purchasing the goods of the other company.

Based on the fact that New York and London have Soho districts of a Bohemian, arty character, and with reference to Judge Gronis’ decision (Supreme Court Rules that Usage of “Shemesh” by Competing Restaurant is Kosherconcerning the word Shemesh, where the now head of Supreme Court ruled that registration of the word Shemesh (Sun) as a trademark by a grill restaurant, was insufficient to prevent others from calling their restaurants various names that included the word Shemesh, Judge Ginat ruled that in addition to the classic triple test for likelihood of confusion and the distinctive-indicative-generic term spectrum, he went on to rule that there are words with a universal aura and that it was difficult to accept that someone could take ownership over such words, and felt that Soho was in that category.

Although there is a chain of design shops called SoHo, there are other enterprises using the name Soho as part of their name. Here there was an interest in developing a shopping precinct called SoHo, not a single shop. Judge Ginat felt that there was no real likelihood of confusion, and therefore denied the injunction and ruled that the precinct could use the name SoHo. But should use a different font and not use the phrase Collection SoHo.

In the circumstances, due to the other goods sold in the shopping mall, Judge Ginat ruled that it would be clear to customers that the mall was not related to Collection SoHo, and threw out the case. However, he also ruled that the defendants could not use the same font as that used by Collection Soho LTD or use the phrase Soho Design.

13408.02.14 Collection Soho LTD vs Electra Real Estate LTD and Ben Ephraim and Sons, Building and Entrepeneurship LTD, Tel Aviv District Court before Judge Ginat, 9th March 2014

COMMENT

The term Soho conjures up a bohemian arty sort of lifestyle to Americans due to the neighborhood called South of Houston or Soho for short. To the British, the term indicates London’s historic red light district

There are 13 marks for Soho in the trademark registry, six of which have lapsed and 7 that are in force. For example, International Paper Company of Memphis, Tennessee, U.S.A. has a trademark No. 202063  for Disposable containers for use in the food and beverage service industry, namely, cups, lids, bowls, plates and serving platters; all included in class 21 and mark 202062 for Disposable containers made of paperboard for use in the food and beverage service industry, namely, cup carriers, cup sleeves, boxes, buckets, and bags; all included in class 16. Two of the lapsed marks, Soho and Soho Club were for registered to a Tango LTD, for clothing in class 25.

It is not clear to me why the word Soho should not be monopolized in Israel by registration of a trademark. If such a mark is registered, I fail to understand why the mark owner should not be able to enjoy a monopoly for the word.

I can see that the two signs use different fonts, but only can tell this as they are reproduced side by side. Both signs use san serif thin letters. The H is more or less identical. The S is slightly different and the O is more round in the complainant’s logo and more oblong in the defendants. The overall impression is very similar. I think this indicates intentional passing off, or at least inequitable behavior.

Nevertheless, it is difficult to criticize Judge Ginat for following Supreme Court precedent. His analysis is solid, and he has indeed moved this case quickly through the system. However, I was critical of the original Shemesh decision. Whilst judges are bound by precedents, bloggers aren’t. My concern is that whereas under common law, the likelihood of confusion may be the issue. trademarks are registered and are generally considered a form of property. If a mark is registered for design, why shouldn’t the mark owner be considered just that, an owner of a piece of abstract property? Can the existence of other retailers selling designer goods be considered as dilution? I would argue that judge Grunis’ decision was wrong since it dilutes the Shemesh brand name and this decision has a similar effect.

What Judge Ginat is doing essentially, is ruling that the right of any third-party to use a place-name like Soho for a shopping area over-rides the rights of a trademark owner to stop this unless there is a likelihood of confusion of origin of goods. There are two torts here. Likelihood of confusion and a separate trademark infringement issue. If the only issue is likelihood of confusion, why register trademarks? It will be interesting to see if this decision is appealed, and if so, what the verdict will be.

One final comment: the late Rabbi Irving Jacobs, formerly Principle of Jews College London, once told me that Rabbi Farber, the minister of Soho used to say that on leaving the synagogue one could make the blessing בורה מיני זונות.


More lapsed patents allowed for reinstatement

March 19, 2014

approved

Although perhaps not all my avid readers will concur, I do try to blog comprehensively on all Israel Patent Office decisions and court rulings concerning IP. One of the generally less entertaining type of decision that I wade through relates to reinstatement of lapsed patents.

In IL 205893, the patent issued on 1 April 2013 and the renewal payment was timely made on 22 April 2013. It was a case I handle. I must admit, it is more fun writing up cases where other firms missed the deadline or something else went wrong rather than reviewing my mistakes.

Recently, having a couple of quiet days, I went through all my cases comparing my files with the status on the patent office website and realized that this patent was listed as having lapsed. In this case I have proof of timely payment and a copy of the covering letter to the patent office. What I don’t have is proof that the payment and letter were submitted.

In the circumstances, I had to file a request for reinstatement which was promptly accepted.

There have been a number of similar cases in recent times. Sometimes the patentee pays on-line and assumes that he does not need to print out the receipt of payment and hand file it. Perhaps partially due to this blog, the patent office now has a large reminder notice that this is the required procedure. It doesn’t help me as I know that is the procedure. I simply can’t prove that I actually followed the rule.

What did surprise me was that along with the decision to allow the case to publish for opposition purposes, I received a request to pay the first renewal fee. This was odd as I had attached a dated payment slip to show that the renewal was timely paid together with the fee for reinstatement and a covering letter. I queried this and it turns out that since we are in a different calendar year, the paid fee cannot now be processed and I need to pay again (now an additional 15 shekels), and can request a refund for the fee paid. This seems a lot of unnecessary aggravation all round, as it creates work for the patent office as well as for me.

What seems like a useful development would be for the patent office to link the on-line payment with an online reporting mechanism. Maybe this will happen one day. I know that the Israel Patent Office is able to see at a glance which cases each firm handles. If we could see the same interface together with an action list and deadline, i.e. a patent office generated docket, that would be grand. I suspect US attorneys have this in private PAIR. I know that there are plans to allow online filing and we are getting there. It will just take time.

In another decision, re 206874, the renewal fee was not paid despite client’s instructions for it to be paid. Since it was not paid by mistake, and the firm was able to provide evidence of reasonable docketing procedures, just something went wrong due to human error, the case was allowed to be reinstated.


Finjan Files New Patent Infringement Lawsuit Against Sophos

March 16, 2014

finjan logo                                      finjan coffee pot

Finjan, Inc. has filed a patent infringement lawsuit against Sophos, alleging infringement of Finjan patents relating to endpoint, web, and network security technologies.

The complaint, filed in the U.S. District Court for the Northern District of California, alleges that Sophos’ products and services infringe upon six of Finjan’s patents. In the complaint, Finjan is seeking undisclosed damages from Sophos.


Happy Birthday

March 10, 2014

80th birthday

The Reinhold Cohn IP Group (RCIP) is celebrating the 80th birthday of the firm. Now headed up by Dr Ilan Cohn, grandson of the founder, Dr Reinhold Cohn, the group is Israel’s oldest and largest firm of patent attorneys, offering patent and trademark registration services and also litigation and enforcement to local and overseas clients. we wish them a hearty Mazel Tov!


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