Should Israel Patent Office Hear a Trademark Cancellation Proceedings Where there is an Infringement Case before the Courts?

April 6, 2014

cube in hand

In June last year, I reported on a decision to allow the shape of the Rubik’s Cube to be filed as a trademark. See here  the mark is Israel Trademark No. IL 228232.

A request to have the mark canceled was filed by Dan S. LTD, To Buy Market LTD and Lula Pozalov.

Since there are pending cases regarding trademark infringement before the District Court, which were filed prior to the cancellation proceedings being initiated, there is a question whether the patent office should hear the cancellation proceeding, or should suspend it, pending the outcome of the case in the District Court.

The request to cancel was filed on 22 October 2013, after Civil Proceedings No. 61560—05-13 was filed in the Central District Court. In the District Court, one of the charges was trademark infringement and one of the defenses offered was that the mark should not have been registered. There is thus duplication of the case in two forums.

Ruling

The Commissioner of Patents, Assa Kling ruled that in  8/78 El Okvi vs. Israel Land Administration, P.D. 29 (2) 477 the Supreme Court ruled that where substantially the same question is addressed in two separate proceedings, despite slight differences in the parties and in the style of the complaint, it may be unfair for the defendant to have to address the same issue twice. The question to be addressed is whether hearing the same case in two forums is a fair use of the court’s time. The court case in the District Court covers the validity of the trademark, trademark infringement and additional issues such as passing off and unjust enrichment. The District Court can and will rule on the validity of the mark and so it makes sense for the Patent Office to refrain from doing so, both to avoid double work and to avoid the embarrassing event of the two forums coming to different outcomes.

In the circumstances, the cancellation proceedings in the Patent Office are stayed pending the court decision.

Comment

The decision makes sense. I think it is good that Israel doesn’t have a bifurcated system like in Germany, and that a legitimate defence against infringement can be that the mark or patent should never have registered. In this case I don’t think the mark should have been granted, and hope the court throws it out. That as may be, it certainly makes sense for the Patent Office to await the court’s decision.


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.


Israeli Photographer Wins Copyright Damages from AlJazeera

February 24, 2014

AljazeeraAl JazeeraDalal

Shmuel Rachmani photographed a bus destroyed on the coastal road in a terrorist attack in April 1978, including photographs of the terrorist, Dalal Mugrabia, and one of a victim. At the time, the photographs were printed in Maariv, then Israel’s evening newspaper, now a weekly.

On 15 March 2010, Israel’s Channel 10 broadcast an item about Dalal Mugrabi during which, the two images were aired together with the Al Jazeera icon, thereby alerting the photographer that Aljazeera had infringed his rights. In the Maariv paper from where the photographs were taken, the name of the photographer was displayed, so Shmuel Rachmani alleged that in addition to copyright infringement, his moral rights were trampled on.

Rachmani sued for a total of 80,000 Shekels, consisting of two counts of willful copyright infringement and two counts of willful moral rights infringement. Under the 2011 Copyright Ordinance, the maximum damages is 10,000 Shekels, but for willful infringement, this may be doubled.

Rachmani also requested an injunction against Aljazeera, but dropped this demand. In separate proceedings Rachmani sued Channel 10 and came to an out of court settlement.

Attempts to mediate a settlement were in vain. During preliminary stages of the trial, 7,000 Shekels in legal fees were awarded to the plaintiff.

THE RULING

Judge Raphael Jacoby of the Jerusalem District Court rejected arguments regarding Jurisdiction under International Law, standing and the like, and considered them damaging to the defendant. He noted that Aljazeera is broadcast on local cable television under license, so the company has local presence.

Jacoby went on to rule that the pictures were creative works that were protected by copyright and dismissed the hot news defense, noting that the images related to a historic event from 36 years ago. He did not consider the usage incidental. He acknowledged that the photographer could not produce the negatives and prove ownership or produce proof that the copyright was not transferred to Maariv, but accepted evidence of the archivist of Maariv that this was the standard work terms between the parties, and the acknowledgment of the photographer in the original newspaper as proof that Rachmani was the copyright owner.

Noting that under the new law, Rachmani could sue for 100,000 Shekels a time, Judge Raphael Jacoby ruled that the damages sought were proportional and ordered that Aljazeera should compensate Rachmani a total of 50,000 NIS for the infringements and should pay a further 15000 Shekels in legal fees.

T.A, 45542-12-11 Rachmani vs. Aljazeera International LTD, Jerusalem District Court, by Raphael Jacoby, 19 February 2014.


Hair-raising

February 19, 2014

head and shoulders pantene

Proctor & Gamble and their local representatives sued for compensation for trademark infringement and passing off after police raided a store-room in the Yagel village and seized thousands of bottles of Head & Shoulders and Pantene shampoo, some full and some empty.

The bottles were counterfeit, but Proctor & Gamble could not prove actual substantive damages, and the Magistrate’s Court ruled 30,000 Shekels (about $7000) in estimated damages.

COMMENT

Counterfeiting causes tremendous damages, not only in lost sales, but in damage to reputation. A lot of R&D goes into developing a liquid gunk that removes oiliness and dandruff without irritating the scalp, which can be washed out leaving a conditioning component behind.  I assume that the counterfeit stuff is less effective.

 


Ice-lolly Targets

February 17, 2014

מטרהמטרה 2

Strauss, which is part of Unilever, sells an ice-lolly called מטרה Matara – literally target. The lolly has been available since 1983 (we hope this means, similarly looking lollies, but I suppose if kept frozen, they can last 30 years…)

Noga, a competing ice-cream manufacturer, markets Nestle Ice-creams, including a banana chewing gum flavour that is also round and has three concentric colours as shown below:

מסטיק בננה 2מסטיק בננה

Strauss sued Osem, claiming to have marketed the Target lollies for 30 years and have sold millions since the product was launched. They alleged enormous investment in marketing and advertising the product as evidenced by newspaper reports, consumer surveys and the like. Strauss noted that the wrapper of the Nestle product shows the ice-lolly clearly and this is an attempt to capitalize on Strauss’ reputation. Strauss noted that both products were aimed at the same market, and that often consumers asked for a product from a vendor in a kiosk or ice-cream van and couldn’t even select the real product.

Osem asked to be removed as a defendant as it was simply a shareholder in Noga and didn’t even manufacture ice-lollies. In response to the charges, defendants argued that targets were known objects and Strauss did not deserve a monopoly since they had not registered the design of their ice-lolly as a registered design or as a trademark. The concentric circles were identified with targets and not with Target ice-lollies, and over the years, other target like lollies were available on the market from various suppliers. Defendant also argued that  the Target lolly was unpopular and had dwindling sales. They argued that the claims for significant advertising and large market share were unsubstantiated. In summary, the defendants noted the different size, colour scheme and wrapping and argued that there was no likelihood of confusion and therefore no grounds to claim Passing Off. Furthermore, plaintiffs hadn’t even alleged, let alone proved, lost market share.

In response to Osem requesting the case be thrown out as they weren’t the manufacturer, Strauss asked that Noga be added as a co-defendant. They also noted that Noga did not appear on the wrapping, whereas Nestle did and Nestle was owned by Osem. Finally, they noted that this point was not raised in the correspondence between the parties and anyway, Osem, as a shareholder, was responsible for Noga LTD.s debts.

Judge Ginat noted that Strauss had failed to show that Osem was a correct defendant, but agreed to allow Noga to be added as a co-defendant. He went on to rule that the exchange between the parties could be construed as Osem-Noga accepting the correction, and forfeiting the right to file an additional response.

As to the main charges, Judge Ginat noted that the issues were Passing Off, well known Trademark infringement and perhaps Unjust Enrichment.

Judge Ginat accepted that Strauss had proven a reputation in their product.  He also accepted that the target market of the two products was the same and the distribution channels were the same. However, he noted that the goods were sold in different wrapping with different names, and, citing the Moby and Meshubach precedents, (competing maternity brassieres and generic Apropos or bugle snacks) came to the conclusion that there was no likelihood of confusion.  He accepted that ice-cream kiosks and vans showed pictures of ice-creams and ice-lollies which the purchaser could select,  but sales of this nature were only about 4% of total sales and that the product was still dispensed in its wrapping, enabling the purchaser to notice the mistake and request a different product.

There is a second issue, in that the product could be shared with a second party after purchase. This was discussed in the Apropos (Bugles) case where the Supreme Court ruled that the tort of Passing Off is of relevance when the product is sold, not later on.  Since the allegedly infringing product is sold in its wrapping, he rejected the charges of Passing Off.

 As to the charge that the shape of the lolly was a well known mark, he rejected this as well, mostly on the grounds that well known marks were well known internationally. He accepted that the target lolly had acquired distinctiveness, but believed that kids chose ice-lollies by flavour not shape.  He noted that the Noga lolly had different colours and a different length stick. 

In conclusion, Ginat ruled that as in the Meshubach case, as long as there is no likelihood of confusion, there was no justification to provide a monopoly on a shape. The shape is to enable the consumer to knowingly choose a competing product, not to confuse the consumer regarding the source of the goods.  He simply did not believe that there was a likelihood of confusion. He justified this by noting the various peanut butter flavoured snacks that compete with Bamba and the various traffic light ice-lollies.

The charges of passing off and famous mark infringement were rejected.

T. A. 14824-10-13 Strauss vs. Osem et al. (Target ice-lolly wars) by Gideon Gilat, Tel Aviv Jaffa District Court, 13 February 2014

COMMENT

This is a well reasoned decision that relates to the extensive case-law. I enjoyed reading it. We note that there was a spat between the parties concerning gold ice cream tubs five years ago. See here. Judge Binyamini threw out that attempt by Strauss to gain a market advantage.


Cialis Again – District Court Rules that Only Parties to an Opposition have Standing to Appeal the Decision

February 10, 2014

assume a spherical cow

Lilly Icos produce a drug called Tedalafil, which is used to treat male impotence due to erectile dysfunction. The drug, is marketed as Cialis. When their patent application number IL 146742 covering the drug was allowed, TEVA opposed the patent issuing. After cross examination of expert witnesses but before final summaries were submitted, a commercial arrangement between Lilly Icos and Teva resulted in the opposition being dropped. However, then Deputy Commissioner, Noah Shalev Smylovezh ruled that the ‘inventive step’ on which the patent had been allowed was that fine grinding increased the solubility of the active ingredient. He ruled that this was obvious, and so, under authority of Section 34 of the Israel Patent Law, he rejected the patent anyway. This decision of his is correct. Dissolution is a surface effect and for a given mass of material, the more finely ground, the larger the surface area to volume ratio.

Expressed mathematically:

Assume spherical particles:

For a given mass M, the number of  particles n =  M / (4/3πr^3)

The surface area A of each sphere is 4πr^2

Thus the total surface area A = n 4πr^2 = 3M/r

As r shrinks, the surface area increases.

Since perfect spheres have the lowest surface area to volume ratio of any solid (which is why soap bubbles are spherical), for any other shape, the surface area increases even faster as the dimensions decrease.

The standard of obviousness for patentability in Israel is ‘obvious to try’ – see Fosamax decision by Dr Meir Noam, which was upheld by Israel Supreme Court.

Section 30 is there to prevent patents issuing that shouldn’t. This is a patent that then Deputy Commissioner, Noah Shalev Smylovezh had concluded lacked inventive step, and so  under Section 34 he refused the patent, thus ensuring the integrity of the register, allowing generic competition and allowing impotent men and their partners to benefit from cheaper erections.

An earlier posting on Noah Shalev Smylovezh’ decision may be found here.

The applicants requested further clarification, but Deputy Commissioner Noah Shalev Smylovezh’s contract as Deputy Commissioner had ended and he had returned to private practice. Ms Yaara Shoshani, an adjudicator at the Israel Patent Office took over his open files. She clarified the decision but gave the parties 30 days to respond. After reviewing their submissions, she decided not to use her powers under Section 34 of the Law, and to allow the patent to issue. Her reasoning, which overturns Dr Noam’s ruling regarding obvious to try is found here. Essentially she replaces the ‘obvious to try’ standard, with a ‘not necessarily the first thing one would try’ standard.

Unipharm appealed this decision to the Jerusalem District Court, where Judge Ben-Zion Greenberger heard the case.

Unipharm claimed that there was a chain of events that had resulted in a miscarriage of justice and requested that the Jerusalem District Court rehear the case. They claimed that the onus was on the applicant to prove that they deserved a patent and merely because the opposition was dropped, the basic requirement of a non-obvious inventive step remained missing.

Instead of addressing this issue, agent for patentee argued that Unipharm lacked standing since they were not a party to the opposition and therefore the case should be thrown out under Section 421 of the Civil Procedure Law and / or regulations 101 and 102. Unipharm countered that under the Patent Law, 174(a) anyone who sees himself hurt by a patent office decision has the right of appeal.

The Court ruled that before addressing the substantive patentability issue, it should address the issue of standing and relate to the correct interpretations of Sections 30, 34 and 174(a) of the Israel Patent Law and Section 421 of the Civil Procedure Law and / or regulations 101 and 102.  On this point, it ruled not to allow Unipharm standing, and so the patent remained valid and the decision of the Ms Yaar Shoshani Caspi, overturning Deputy Commissioner Smylovezh’ ruling was not addressed.

COMMENTS

This is an unsatisfactory state of affairs. The reason why the Commissioner (or his delegate) has authority under Section 34 is so that in cases where the parties do a deal and an opposition is withdrawn, but the person hearing the case believes that there are grounds for invalidating the patent, the patent office is supposed to continue in the hearing in-partes and rule on validity on the merits.

Ms Shoshani Caspi’s position disagrees with Dr Noam’s standard of obvious – obvious to try. It also overturns Noah Shalev Smylovezh’ conclusions. Unipharm should have filed an opposition, but missed the deadline. Nevertheless, Judge Ben-Zion Greenberger’ws ruling that Unipharm has no standing means that he is avoiding judicial oversight of this decision and doing so on a technicality.

The arguments put forwards by both parties had the usual dose of ‘smoke and mirrors’. The Judge quoted Barak and claimed to be doing an analysis of what the purpose of the Law was, and decided that the correct balance between patentee and opposers and rest of the public was to allow the opposers to appeal, but not third parties.

There is some logic in interpreting patent law in light of standard civil court procedures. But, clearly all generic manufacturers and importers are affected by this decision, whether or not they were a party to the opposition. indeed, the public – at least the male impotent members subsection of the public – is served by preventing monopolistic pricing on the drug in question. It therefore seems to me that the Court of Appeal should address the issues of patentability, specifically the issue of obviousness on its merit.

Maybe a user of Cialis should have filed the case, perhaps as a class action? Perhaps the way forward is for Unipharm to file cancellation proceedings and to make sure that the issue of inventive step is considered on its merits. Alternatively, they can appeal this decision to the Supreme Court.

We note that in a recent decision the Supreme Court ruled that when hearing an appeal of an opposition ruling, the district court can even hear new evidence if appropriate. In that decision, which also challenged a strange Israel Patent Office decision, the Supreme Court ruled that appeals of Patent Office decisions are different from regular appeals of court decisions and an appeal may, if warranted, be a new trial with new evidence. I think that in the present case, it is likely that the Supreme Court would refer the case back to the District Court to consider on its merits. If that happens, I believe the ruling should be reversed.


Israel Newspaper to Pay Compensation for not correctly attributing photographs to photographer

February 6, 2014

Israel_Post

Israel Post is a Hebrew Language free paper distributed via supermarkets and the like. It is published by Jerusalem Post Publication Media LTD who publish the Jerusalem Post, an established Israel daily newspaper in the English language.

Ariel Yeruzolimsky was a photographer that was employed by the Jerusalem Post over 11 year period up until 2010. The work contracted established that the Jerusalem Post owned the pictures. On 32 occasions, his photographs were printed in the Israel Post. Due to the work contract, there was no case of copyright infringement. However, the pictures were accredited to a different photographer and Yeruzolimsky claimed 32 statutory awards of 10,000 Shekels in statutory moral damages, arguing that each and every photograph published was a separate infringement, a further 200,000 shekels for damages to his reputation and 150,000 Shekels for suffering caused, but the fee paid entitled him to a maximum total of 420,000 Shekels.

Judge Michael Tamir of the Tel Aviv-Jaffa Magistrate’s Court accepted that each and every photograph published was a separate infringement but ruled that in the circumstances, and where the same photograph was used more than once, there was no justification to award maximum statutory damages.

The judge noted that the photographer had requested accreditation over and over again, but the Post continued to publish his photographs without proper accreditation. On the other hand, he considered the photographs fairly run of the mill images that were not of major historical significance ,lacking in particular artistic merit and which had not endangered the photographer’s life to obtain. He dismissed the defence of an unintentional mistake made without inequitable beahviour, and also the newspaper’s rights to publish the news, noting that the paper was aware that there was copyright in the photographs, and should have correctly attributed the pictures. The error was an unintentional mistake, but it was avoidable had the Jerusalem Post taken its obligations seriously. However, the judge did not consider that the photographer was actually harmed by the publication of his photos. Nor did he believe that the photos had resulted in a profit to the Post, i.e. had helped sell papers. He noted that the law gave him wide latitude in ruling damages. He awarded 77,500 Shekels in statutory damages, a further 10,000 Shekels for the suffering caused, 3000 Shekels in legal expenses and 12,500 Shekels for legal costs.

T.A. 19977-03-11 Tel Aviv Magistrate’s Court: Ariel Yeruzolimsky vs. Jerusalem Post Publication Media LTD. by Michael Tamir, 20 January 2014.


Israel Supreme Court Upholds Ruling of Non-infringement of Breaking & Entering Patent, but does not Invalidate it

January 14, 2014

breaking and entering

In 1998, Ofer, Extinguishing, Extracting and Saving LTD supplied hydraulic systems for breaking into looked buildings manufactured by Holmatro to the Israel Ministry of Defense, where they were deployed by the armed forces for use in urban warfare. Further systems were sold in 1999 and 2000.

From 2000 to 2006, the Israel Ministry of Defense ceased to order from Holmatro and purchased systems from Hydro-Na LTD.

In 2007, needing to purchase 562 such systems, the Israel Ministry of Defense issued a tender in which Hydro-Na submitted a bid. However, in November 2011, the Israel Ministry of Defense announced that they would purchase future systems from Sun Hitech.

Hydro-Na filed Israel Patent Number 184211 on 25 June 2007 and it issued on 4 May 2009.

The first claim of Hydro-Na’s patent is as follows:

A system for forcible opening of an entryway by applying pressure to adjacent boundary surfaces, said system comprising:

  • a hydraulically operated pump unit for providing pressure to the system;
  • a hydraulic cylinder unit comprising a piston rod
  • a first anvil comprising a narrow wedge-shaped portion removably and rotatably mounted on the proximal end of said piston rod, said first anvil formed with downwardly facing friction gripping grooves on its surface; and
  • a second anvil comprising a pair of narrow, spaced-apart wedge-shaped prongs formed on the sides of a rotatable ring removably mounted on said hydraulic cylinder until, said second anvil formed with upwardly facing friction griping grooves on its surface;

Such that when the wedge-shaped portion of said first anvil is seated between the wedge shaped prongs of the second anvil so as to be aligned therewith and said first and second anvils are forcibly inserted in a seam between adjacent entryway boundary surfaces, operation of the pump unit applies pressure via the first anvil on a first adjacent boundary surface while said second anvil applies a contrary gripping counterforce on a second adjacent boundary surface, forcibly opening said entryway of said adjacent boundary surface.

There is a second independent claim and also a method claim, but the above claim illustrates the invention fairly well.

Hydro-Na also filed three Israel design applications for various sub-components.

Hydro Na tried unsuccessfully to obtain an injunction against Sun HiTech and to have their bid in the tender thrown out on various grounds as not fulfilling the tender requirements. The injunction was refused and the tender bid was upheld.

On allowance of the patent in May 2009 after accelerated examination, Hydro-Na sued Sun Hitech LTD, its shareholders and the Israel Defense Ministry for patent infringement and claimed 3,376,940 NIS (about a million dollars) in damages, filed for recall of the systems, and for a temporary injunction. The grounds were patent infringement, unjust enrichment, passing off, etc.

Judge Zerankin of the Haifa District Court ruled (T.A. 34912-11-09) that the patent was probably invalid since there were earlier systems known to Hydro-Na that were not disclosed to the patent office during prosecution, but noted that the rotatable ring was apparently novel and arguably inventive. He did not invalidate the patent, but found that there was no infringement since Sun HiTech’s system did not include this novel feature.

As to the designs, the Judge Zerankin ruled that the mechanical components weren’t designs in the meaning of Section 2 of the Patent and Design Ordinance.

Hydro-Na appealed to the Israel Supreme Court.

On appeal, Judge Amit noted that most of the issues were factual and had been examined by the Court of First Instance and appeals were not to retry evidence but only legal analysis.

In cases like this where the defense of the defendant is invalidity of the patent, the plaintiff has only to show infringement, since the rebuttable assumption is that the patent is valid and the defendant has to prove that this is not the case.

The expert witness for Sun Tech LTD, patent attorney Dr Goldreich, showed that there were a large amount of prior art, none of which was brought before the patent office.

Attorney Ed Langer appeared as expert witness for Hdro-Na, but since he wrote the patent and could not provide adequate justification for not relating to prior art, his testimony was found unreliable.

Judge Amit considered the Court of First Instance had been overly cautious in not canceling the patent in question, both on its merits and when considering the issue of equitable behavior with regards to the legal requirement of disclosing the prior art. He assumed that they not only withheld information from the court but also from their patent attorney. Nevertheless, he noted that he wasn’t required to relate to the validity of the patent since it could be shown that it wasn’t infringed.

As to various other claims by Hydro-Na, Judge Amit quoted Ecclesiastes (Koheleth) 7:14 ” It is good that you should take hold of this, and from that withhold not your hand, for the one who fears God shall come out from both of them.” Essentially, he dismissed them as “also ran”.

In conclusion, Judge Amit accepted the earlier court’s finding that ‘cold’ door forcing systems were on the market long before Hydro-Na’s application was filed. To the extent that Hydro-Na deserved a patent, it was for the rotatable ring which was not found in the competing system that won the tender. He noted that Hydro-Na failed to file abroad despite a market potential of NIS 150-225 Million Shekels and deduced that they were well aware that their patent was extremely narrow and easily invented around.

The appeal was unanimously rejected by a triumvirate of the Supreme Court consisting of Judge Amit (who wrote the appeal) and Judges Melzer and Solberg who affirmed his ruling.

Costs of NIS 50,000 were awarded to the Sun Hitech LTD and a similar sum to the Israel Ministry of Defense.

Civil Appeal: 7623/10 Hydro–Na et al. vs. Sun Hitech et al., 12 January 2014

COMMENT

The District Court applied the Gillette Test by declaring that the patent wasn’t restricted to the rotatable ring, it would not have issued.

The Supreme Court did a marvelous job citing the various sections of the Law and analyzing them. It was a little pedestrian and boring, so I haven’t reproduce in full.

I believe that the failure to disclose the prior art should have invalidated the patent and consider both Haifa Court and Supreme Court as being overly cautious in not doing so. What is the point of having a duty of disclosure if, on proof that the applicant withheld information, the court doesn’t invalidate the patent?

Whether or not Dr Goldreich was correct in her analysis that the rotatable ring wasn’t sufficient to be considered inventive, I wonder if there isn’t room for a procedure for referring a patent back to the patent office for reconsideration in view of additional prior art?

As to the registered designs, if Hydro-Na had sold them to the Israel Ministry of Defense prior to registering, they are invalid. Similarly if the same design is used by others. I haven’t read the original decision by Judge Zerankin but it seems that he considers such devices as inherently not-registerable, however, I think this understanding is incorrect. It is a shame that the Supreme Court hasn’t really addressed this issue, as although the Israel Patent Office has established practices regarding registering functional elements, there seems to be little binding legal precedent on this issue.

Finally,  is it ethical for attorneys-at-law or patent attorneys that drafted and prosecute a patent give a validity opinion? Is there attorney-client privilege and is it considered waived when client calls on the attorney as an expert witness? It would have been nice if the Surpreme Court had taken this opportunity to provide guidance to patent attorneys in this matter.


Dr Ilan Sadeh’s Appeal to Supreme Court Rejected

December 29, 2013

boundary condition

Dr Ilan Sadeh is a mathematician, computer scientist and electrical engineer who claims that back in 1992 he developed some boundary condition theory concerning search engines and databases, thereby solving a problem which was not addressed for over 40 years. He was put out that his name wasn’t mentioned and his contribution wasn’t acknowledged in a review paper written by a Stanford academic – Professor Amir Dumbo, together with a student, and published in an IEEE journal edited by Professor Shlomo Shitz-Shamai. Professor Neri Merhav and Professor Ram Zamir also published articles in the IEEE journal, which failed to mentioned Sadeh’s contribution.

Sadeh sued the four academics and the IEEE for NIS 800,000 for copyright infringement, moral right infringement, malpractice by failure to exhibit due care and unjust enrichment.

The defendants requested for the case to be thrown out.

In the ruling, the court of first instance ruled that failure to reference or acknowledge an earlier researcher is not actionable under copyright law. Since there is no copyright in an idea, there is no moral right either. Charges of Unjust Enrichment and failure to take due care were also dismissed.  The court further ruled that the first three defendants hadn’t done anything actionable.  As for the US academic and the publisher, the court ruled that the charges were not properly served to the Stamford academic or to the publishers (IEEE – Institute of Electrical and Electronic Engineers). Since Professor Amir Dumbo emigrated to the United States in 1989 and was domiciled there, the Court of First Instance accepted that Israeli courts were not the correct forum. Furthermore, the court ruled that since Sadeh claimed that some 9 academic publications has wronged him in a similar way, the addition of two Israeli defendants was simply to try to create territorial jurisdiction in Israel for something where the US was clearly the proper jurisdiction to hear the case. The court also accepted Professor Dumbo’s contention that the case had been heard by a committee of academics appointed by the IEEE and again on appeal.

158219-09 Dr Ilan Sadeh vs. Professor Shlomo Shitz-Shamai, Professor Neri Merhav, Professor Ram Zamir, Profesor Amir Dumbo and the IEEE., Tel Aviv Magistrate’s Court 7 July 2010

On 12 November 2013, the Tel Aviv District Court rejected the appeal, upholding the magistrate’s court ruling. It awarded costs of NIS 11,800 to the Israeli academics (defendants 1-3 together, and to the US academic and the journal independently.

Civil Action 11416-09-10 Dr Ilan Sadeh vs. Professor Shlomo Shitz-Shamai, Professor Neri Merhav, Professor Ram Zamir, Profesor Amir Dumbo and the IEEE, Tel Aviv District Court 

Dr Sadeh then appealed to the Supreme Court. Judge Amnon Rubinstein refused to reopen the case, and was dismissive of arguments brought by Dr Sadeh. From his comments, it would appear that Dr Sadeh did not address the issues raised and his legal pleadings were lacking in format and style.

COMMENTS

It appears that Dr Sadeh has sued Ben Gurion University, Tel Hai academic college and the State of Israel in the past.  Since he has so much hands on experience of litigation, I feel it is perhaps inappropriate of me to criticize. Nevertheless, I would respectfully point out that whilst one does not have to retain the services of an attorney to sue in Israel, it is generally strongly advised for anyone planning on litigation, particularly appealing to the Supreme Court, to use an attorney. There are approximately 55,000 of them in Israel.

The District Court cited the Petach Tikveh Doggy DNA case and Angel vs. Berman. Also cited were the Adidas case. I found the legalese unnecessary and tiring. The cited cases were not really relevant and, in my opinion, are best forgotten.

We note that there is a distinction between copyright and Jewish Law in this matter. In Jewish Law, there is an obligation to credit sources, but copying of ideas and using them is not considered wrong or inappropriate. They are in the public domain automatically, but the authors deserve credit. In Copyright Law, crediting sources is not a legal requirement, but quoting a significant amount is an actionable.

 


Advertising Slogans and Other Elements of Advertising Campaign Covered by Copyright

December 29, 2013

cemetary

Alei Shalechet, which literally means, ‘Autumn Leaves’, provides burial services. Actually, services is perhaps the wrong word, because their specialty is burials without a service, i.e. secular funerals.

Lifetime events in Israel are managed by the clergy. Most Israelis, even those who are ambivalent towards religion, want a traditional funeral. However, there is a minority who want a civil burial. Then again, not everyone who passes on is eligible for a Jewish, Christian or Muslim burial. Nevertheless, this is a dead-end business that has little appeal to me.

Presumably to drum up business, since few clients want burying more than once, Alei Shalechet ordered an advertising campaign from an advertising agency called  Kav HaOfek Maarechot Shivuck V’tadmit LTD. (Horizon Marketing and Image LTD). This included a Power Point presentation and a slogan. Alei Shalechet eventually used a different publicity firm, but used the slogan provided by Kav HaOfek.

The Kav HaOfek firm sued for Copyright infringement and Unjust Enrichment, and eventually were awarded NIS 75,000 in damages. Notably, the CEO of Alei Shalechet, Alon Netiv, was found personally guilty.

Civil Case 7357-09-10 Kav HaOfek Maarechot Shivuck V’tadmit LTD. vs. Alei Shalechet and others, Petach Tikveh Magistrates Court

COMMENTS

The Jewish content at a funeral is fairly minimal and I’ve never seen strong opposition to playing the deceased favorite music. For those wanting cremation, it may be a little more difficult. There are a couple of griffon vulture colonies in Israel, and food is put out to feed the birds. I suppose this offers the opportunity for Nepalese style sky burials. Maybe those not wanting a traditional funeral could donate themselves or their nearest and dearest to medical schools? Many rabbis are against this practice, but it does seem sensible for wannabee surgeons to cut their  teeth hone their skills on the already deceased.


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