Opposition to Patent on Grounds of Failure to Cite Prior Art Results in Withdrawal and Hugh Cost Ruling

February 10, 2016

tweedledumdee
Orbotech and Camtek are old enemies. Camtek have successfully opposed a number of Orboetch patents from issuing in Israel.

This time, it was Orbotech, represented by Gilat Bareket who successfully opposed Camtek’s patent application No 208585 for “SYSTEMS AND METHODS FOR NEAR INFRA-RED OPTICAL INSPECTION”, and when the application was abandoned, filed a request for 100,400.5 Shekels in accumulated costs.

The request was supported by Affidavits and invoices. Orbotech further claimed that Camtek failed to inform the Israel Patent Office of three citations against the corresponding application in China. In Israel, there is a duty of disclosure of relevant prior art. In this case, Orbotech alleges that Camtek new about these citation in December 2013 and responded to the Chinese patent office in April 2014. However, the citations were not reported to the Israel Patent Office which allowed the patent at the end of November 2014. Orbotech considers that this act of bad faith made the Opposition proceedings necessary and so Camtek should be punished for failing to report the art.

Orbotech opposed the allowed application on 26 February 2015 and requested and received an extension to file their statement of case. On 20 April 2015, they approached Camtek and requested that they abandon the application noting Camtek’s failure to inform the Israel Patent Office of the publications cited in China. Camtek ignored this approach.
On 25 June 2015, Orbotech filed their statement of case. On 21 September 2015, Camtek abandoned the application. Orbotech claimed costs of 100,400.5 Shekels, for learning the application, reviewing the file wrappers in Israel and China and supported the cost analysis with affidavits.

Camtek (represented by Adi Levit) responded that the costs were unreasonable, disproportionate and Orbotech’s counsel’s rates were unreasonable. They alleged that the statement of case included short and irrelevant publications, and argued that it was unreasonable to issue costs as if the opposition was fought to the bitter end. Finally, regarding the Chinese citations, as the case was allowed under Section 17c on the basis of US 8,492,721. Camtek argued that they were not obliged to inform the patent office about the citations in China.

Orbotech countered that in the past similar costs had been awarded for a statement of case that resulted in a patent application being abandoned. They argued that there was nothing to prevent the Patent Office from ruling on Camtek’s hehaviour during patent prosecution and noted that Camtek had received costs at a similar hourly rate when they had won previous encounters.

Orbotech was referring to IL 179995 where the agent of record, Reven Brochovsky forgot to challenge the costs submitted by Adi Levit on behalf of Camtek, and so the rather enormous costs of 296,895 Shekels were awarded. See here and here.

In her analysis, the Deputy Commissioner Ms Jacqueline Bracha ruled that there were three issues:

  1.  Reasonable costs for an opposition that resulted in an allowed patent being abandoned after the statement of case was filed.
  2. The duty of disclosure regarding the Chinese citations
  3. Whether Camtek’s failure to disclose the Chinese citations resulted in the Statement of Case being required.

Clearly the three questions are inter-related and the reasonableness of the costs is determined by the extent that the failure to disclose required the statement of case to be submitted and in what detail.

The Deputy Commissioner understands Section 18 as requiring the Applicant to continuously update the Israel Patent Office regarding art cited abroad up until allowance of a case.

This case was allowed on 30 November 2014 and Camtek knew about the citations before this time.

Section 18 does not differentiate between the duty of disclosure for a patent being allowed after examination on its merits under Section 17a and 17b, and a patent allowed under section 17c based on a corresponding application being allowed by an examining jurisdiction that the Israel Patent Office is prepared to rely on.

Furthermore, Section 17d notes that the Israel Patent Office can refuse to allow a patent under Section 17c based on art that they are aware of or is brought to their attention during the examination process. This is seen to counter Camtek’s interpretation of the Duty of Disclosure since regardless of Section 17c during the examination process, i.e. prior to allowance, the Applicant is still obliged to provide the patent office with details of relevant prior art.

Additionally, as clear from IL 219586 Data Detection Technologies vs. Collischan GMBH& Co. (9 March 2015) and from 33666-07-11 Unipharm vs. Sanofi (8 October 2015),  there is a duty n the applicant of candour and equitable behaviour.

Furthermore, the purpose of the duty of disclosure and logic undermine any interpretation that invoking Section 17c removes the obligation to report prior art, and the obligation starts prior to examination so is independent of section 17c.

Thus Camtek’s argument that since allowance was under section 17c, there was no need to inform the patent office about the Chinese citations is rejected.

The timeline makes clear that Camtek’s failure to inform the Israel Patent Office regarding the prior art was an omission that is unacceptable, but since the Applicant abandoned the patent, the issue of applying the sanctions under Section 18c is moot.
In the cancellation request concerning 94634 Israel Industrialists vs. R Roy Calne (26 April 2015) it was ruled that Applicants behavior during an opposition can certainly affect costs. The question remains whether the Applicant’s behavior during the patent prosecution can affect the costs awarded in the opposition proceeding.

Citing BAGATZ 891/05 Tnuva Cooperative vs. The Office for Imports PD 60(1) 600, 615, the Deputy Commissioner reasoned that where applicant’s behavior results in an opposition proceeding being required, it is reasonable to apportion costs accordingly.
The question of whether the patent would have issued had the Chinese patents been made of record is moot as the Applicant finished the prosecution without citing them. However, it was this failure that resulted in the opposition being necessary and this issue being raised.

Camtek’s complaint regarding Gilat Bareket’s hourly rate is not accepted since the rate is similar to that charged by other offices. Examination of the number of meetings and lawyer arguments indicates that they were justified. The only thing not justified was the costs related to the extension for filing the statement of case, and so 18886 Shekels were deleted from the requested costs. Noting that Orbotech did try to bring this case to a close without filing a statement of case by informing Camtek of their failure to report the Chinese citations and giving them an opportunity to withdraw the application, the Deputy Commissioner ruled that 98,514.5 Shekels costs be paid.

COMMENT

Adi Levit does not prosecute patents so did not prosecute this patent and was not responsible for the failure to cite the Chinese patents. He was, however, responsible for the Unipharm vs Sanofi decision, where he successfully argued the duty of candour. This undermines his argument regarding the duty of disclosure when invoking Section 17c.
That said, one wonders to what extent Orbotech needed to simply compare the prior art cited in Israel with that cited abroad and oppose the patent on the grounds of failure to disclose, and to what extent, studying the citations was necessary. 98,514.5 NIS does seem an awful lot of money for a statement of case in an opposition of this kind.


MiPAD and iPAD

February 10, 2016
ipad

i-PAD

Mi Pad

MI PAD

Apple Inc. filed Israel Trademark Application Numbers 261449 and 261500 for IPAD MINI and IPAD AIR in November 2015. The marks cover Handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data in class 9.

Xiaomi Singapore Pte LTD filed Israel Trademark Application Numbers 270078 for
MI PAD in May 2015 for Portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks; tablet computers, electronic book readers, periodical readers, digital audio and video players, digital camera, electronic personal organizers, personal digital assistants, electronic calendars, mapping and global positioning system (GPS) devices; computer peripheral devices; computer and portable and handheld electronic device accessories, namely, monitors, displays, keyboards, mouse, wires, cables, modems, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, charging stations, drivers, battery chargers, battery packs, memory cards and memory card readers, headphones and earphones, speakers, microphones, and headsets, cases, covers, and stands for portable and handheld electronic devices and computers; computer software for the development of content and service delivery across global computer networks, wireless networks, and electronic communications networks; downloadable audio works, visual works, audiovisual works and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; computer software for transmitting, sharing, receiving, downloading, displaying, transferring, formatting, and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via portable electronic devices and computers; computer game programs; downloadable music files; downloadable image files; video telephones; navigational instruments; screens [photoengraving] in class 9, and for Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services, namely, providing users access to communication networks for the transfer of music, video and audio recordings; teleconferencing services; providing Internet chatrooms; voice mail services; transmission of digital files in class 38.

Since Apple’s marks had not yet issued, and due to the apparent similarity between the marks and the goods, a competing marks procedure under section 30 of the Trademark Ordinance ensued.

In competing marks procedures some weight is given to the first to file, but the extent of use and equitable behavior are generally more important.

In this instance, Apple also has issued trademark numbers 226418, 226421, 226419 for IPAD and the Examiner considered that Xiaomi Singapore Pte LTD.’s application was confusingly similar to these as well.

Both sides were invited to produce evidence supporting their claims, and oddly, Apple submitted an affidavit from Thomas R. La Perle, the legal counsel of Xiaomi! Xiaomi did not submit evidence at this stage.

A hearing was scheduled for 1 February 2016, and then cancelled. The Israel Trademark Office therefore has ruled on which mark should proceed to examination, based on the evidence submitted and the response to the office action from Xiaomi against the issued Apple marks.

Apple claims that the IPAD was launched in 2010. The smaller IPAD MINI and IPAD AIR models were launched in 2012 and 2013 and the marks were widely registered. Apple spent over a billion dollars in promoting the devices in 2014 and had sales exceeding 70 billion dollars. Apple further claims that MIPAD is confusingly similar to IPAD, with the difference between IPAD and MIPAD being one letter. The products are confusingly similar. In Israel there is no Apple Store, so the distribution channels are similar.

Xiaomi claims that MI means rice in Chinese and virtually all Xiaomi’s products include the term MI since rice is part of the corporation’s family [I don’t understand what this means, either, and suspect that they are trying to claim that they started as a rice distributor and branched out into other areas. The point of the argument is that they are not trying to free ride on Apple’s reputation and are arguing that any similarity is coincidental and not evidence of bad faith – MF].

Oddly, at the evidence stage, Apple submitted an affidavit from Thomas R. La Perle, the CEO of Xiaomi. Xiaomi did not submit evidence and a scheduled hearing was cancelled, and the Deputy Commissioner ruled based on the evidence including Xiaomi’s argument in response to the office action claiming similarity to issued Apple marks for IPAD.

Xiaomi argued that IPADs marks were combinations of descriptive elements. They submitted evidence of advertising and sales in Asia and elsewhere but this did not focus on tablets and so was given little evidentiary weight.

Xiaomi also showed that their MI mark was registered, but this was considered as not addressing the similarity issue between MIPAD and IPAD.

In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that following the Appeal 5454/02 Tiv Tam vs Abrosia ruling, it was proper to consider the marks in their entirety rather than the separate elements thereof since customers consider marks in their entirety. Consequently, the fact that the words MINI and AIR may be descriptive and generic did not render IPAD AIR or IPAD MINI as descriptive or generic, by virtue of the IPAD which was descriptive, whether inherently so or by acquiring distinctiveness [due to the advertising, sales, etc.].

That MI means rice is unlikely to be known by most Israelis. Citing “Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011) p. 301:
“The perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion.”

Since MIPAD has I next to Pad, the similarities between MIPAD and IPAD are compelling.

Regardless of whether the visual similarities between the MIPAD and the IPAD are due to functional reasons or design, they are very similar and this further increases the likelihood of confusion. See 4250-07-14 Gewiss S.P.A. vs. Timnah Electricity LTD
Both sides accept that the distribution channels and consumer base is identical, therefore it is concluded that there is a real likelihood of confusion.

In a competing marks procedure the three considerations are who filed first, scope of use and equitable behavior. Apple filed first. They have additional products in the IPAD line which indicates that their choice of mark was not an attempt to copy MIPAD. They also have other marks including AIR, such as MACBOOK AIR.

Furthermore, Apple has produced compelling evidence of greater use.

As Xiaomi has successfully registered its logo MI logo in Israel and elsewhere, one cannot rule out that their pending mark was chosen in good faith. Furthermore, had they attempted to register the mi logo together with PAD, this may have helped their case.
The similarity between the marks rules out coexistence. After weighing up everything, Apple’s marks are considered as preferable to continue to examination and Xiaomi’s mark for MIPAD is refused.

Since there was no hearing and Xiaomi did not take an active part, but also did not inform the Israel Patent and Trademark Office that they would not be attending, Xiaomi were ordered to pay costs of 6000 Shekels to Apple.

Ruling in competing marks procedure concerning pending trademark numbers 2610449, 261500 and 270078 (Xiaomi vs. Apple) by Deputy Commissioner Ms Jacqueline Bracha, 26 January 2016.


Costs in Aminach vs. Gabai

February 10, 2016

SIDS
Aminach is a large mattress manufacturer. They opposed a patent application No. 179840 filed by Moshe and Anat Gabai that allegedly reduced likelihood of Sudden Infant Death Syndrome (SIDS). Theyir invention was a foam mattress with holes punched out so that a face down child could not be suffocated by rebreathing trapped exhaled carbon dioxide.

The Israel Patent Office refused the patent by accepting Aminach’s submission that the mattress did not have proven efficacy. The Applicants appealed this ruling to the courts and the whole thing went to the Supreme Court and back down, and eventually the patent was registered but with a narrower claim set which specified that the the mattress may help in cases of SIDS attributable to rebreathing the same air.

Our report on the original ruling is here. Our report on the Supreme Court ruling is here.

Aminach, represented by Colb, filed for costs of 444,615.99 Shekels for all actions. As a fall-back position, they requested costs of 300,796.37 Shekels for the costs from when the Gabais appointed legal counsel, and as a further fall back position, costs of 113,841.36 Shekels from when the case was referred back to the Patent Office.
The Gabais, now represented by Glazberg, Applebaum & Co, opposed this. The courts decided not to rule costs and this was an active decision and not a lacuna and the issue was therefore moot. As to the patent office costs, the Gabais claimed that essentially they had won, and all Aminach had achieved was a claim narrowing. The Gabais alleged that the costs were incurred because Aminach and their lawyers had leveraged their greater resources.

The Gabais claimed that the costs were unnecessarily incurred. For example, Aminach did not need to compare their products with the patent claims. Aminach argued that where the courts had not ruled costs, they could be ruled, and where actual costs were considered excessive, the patent office could award what they considered to be reasonable.
Aminach were awarded 40,000 Shekels legal fees and 5,597 Shekels costs for the original opposition. They were awarded a further 20,000 Shekels by the District Court who upheld the Patent Office Decision and was not prepared to review additional experimental evidence. The Supreme Court didn’t award costs (arguably declined to do so), and nor did the District Court when ruling that the case should be returned to the patent office. This decision was also appealed to the Supreme Court as was a request to stay the ruling until the end of the process. No costs were awarded for this either.

The Deputy Commissioner then accepted new evidence and the Applicants corrected the specification. Costs of 5,500 Shekels were awarded to Aminach.

The Deputy Commissioner noted that all courts had addressed the costs issue, even if to rule that costs were not granted. She also noted that Section 162B of the Israel Patent Law 1967 only empowers the Patent Office to rule costs for proceedings before it. Unless the courts specifically delegate the awarding of costs to the Patent Office, it has no authority to rule costs for appeal proceedings before the courts. Further support for this was found in section 462 of the Civil Court Procedure and in the cost ruling regarding IL 165705 Israel Aircraft Industries vs. Rafael Advanced Warfare LTD, 12 July 2012. Furthermore, Circular MN 80 if these have already been awarded.

The only costs to be considered, therefore, are the costs related to the additional evidence submitted by each side after the Supreme Court ruling and the subsequent hearing including cross-examination of the expert witnesses and the correction to the specification for which costs were previously awarded.

The Deputy Commissioner then went through the various invoices and decided which ones related to the proceedings before her and concluded that costs of $21,864.55 were attributable to the proceedings before her. She also noted that the Gabais had chosen to cross-examine witnesses and submit evidence prior to narrowing the claim set which had incurred the costs.

COMMENT

I rather enjoyed this epic battle between the little inventor who was not represented, and an Israel corporation with expensive IP counsel. I suspect that the Israel Patent Profession as a whole found it quite entertaining. I was critical of the original patent office ruling to cancel the patent on appeal and do not think that the patentees can fairly be criticized for conducting tests and submitting and cross-examining expert witnesses, whether or not they could have reached a compromise with Aminach.

In awarding full actual costs for the proceedings before her, I feel that Deputy Commissioner is punishing the patentees for what was originally a poor decision by her. If the Supreme Court felt it could rule on the Appeal against the District Court’s ruling without awarding costs, we think that the patent office could have as well.

Although it is detailed and not obviously unreasonable, maybe the Gabbais and Glazberg will appeal the cost ruling anyway?

Obviously apparently healthy babies could die for a number of reasons, some of which doctors may not yet understand. Nevertheless, it would be interesting to see if baby mattresses with air holes become common place and if this has a statistically significant effect on SIDS which is very distressing for the families concerned.


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

February 8, 2016

calendar

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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


A Cut Throat Dispute

February 8, 2016

sweeney todd

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

RAZER

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

COMMENT

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

 

 

 


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

February 8, 2016

Design Registration

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

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

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

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

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

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

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

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

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

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

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

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


Angel’s Bread

February 8, 2016

Angelbread

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

COMMENT

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

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


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