Trademark Oppositions involving Trade Secrets

February 17, 2012

Stichting BDO has opposed Israel Trademark Application Numbers  222941, 222937, 222936 and 220381 to BANCO DE ORO UNIBANK INC.

In a joint approach to the Israel Patent Authority, the parties requested that the proceeding and decision be restricted since it includes trade secrets.

Background

This is a rather interesting development. To prove usage of a mark a party often submits evidence of sales, market share and other information that may legitimately be considered as being proprietary business information, or a trade secret. On the other hand, judicial proceedings should be open to public scrutiny. Justice should be seen to be done. This is why the Israel Patent Authority and the Israel courts routinely publish decisions that summarize the evidence brought and the decision made. Publishing decisions creates precedents.

Sometimes, to protect minors or rape victims, or for reasons of national security, hearings are held behind closed doors and a censored decision providing the legal analysis but with sensitive information withheld is published.

Section 23D of the Commercial Torts Law 1999 (חוק עוולות מסחריות) and section 68B(8) of the Combined Israel Courts Law 1984 allow for proprietary information to be kept confidential in trademark hearings. The Commissioner or whoever hears the case has to decide if the information is indeed a trade secret worthy of protection, or if the general considerations that require decisions to be published take precedence.

On reviewing the arguments presented, the Israel Commissioner of Patents and Trademarks, Assa Kling has determined that restricting access to sensitive information is reasonable in this case, and has made provision for access to sensitive evidence to be restricted. He has, however, requested that both sides limit restricting evidence in this manner, to that which legitimately can be considered a trade secret.

Ruling from 24 January 2012.

COMMENTS

Obviously, I can’t relate substantively to this judicial ruling since I don’t know what the trade secrets are, or whether I could find them by googling.

It does seem however, that it is correct to facilitate the submission of evidence to be considered by a judge or commissioner without it automatically becoming public knowledge. A ruling can certainly detail legal principles used and generalize the results, such as stating that one side presented compelling evidence that their usage of the mark was significant and exceeded the use of the other side. Presumably if appealed, the file with the evidence would be transferred to the courts.

 

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Posted by Dr Michael Factor

More Tobacco Trademark Wars in Israel

February 17, 2012

Philipp Morris Products S.A opposed a trademark registration filed by British American Tobacco (brands) Inc.

The mark in question, No. 227383 is shown above.

Despite taking extensions, Philipp Morris didn’t submit any evidence. Nor did they bother to inform the Israel Patent Authority or British American Tobacco that they wold not be submitting. Consequently, British American Tobacco didn’t submit evidence either.

However, rather than having the case dismissed, British American Tobacco have asked for a hearing, and in an intermediate ruling, Ms Yaara Shoshani-Caspi, the Arbitrator of Intellectual Property at the Israel Patent Authority, has granted this, since she considers them entitled to their day in court.

She has also awarded intermediate costs of NIS 1000 (maybe $280) to British American Tobacco within 20 days, as a way of rectifying the damage caused. failure to settle will result in the case being closed.

This decision was given on 18 January 2012.

COMMENT

I understand and am familiar with Ms Shoshani-Caspi’s position on using costs to rectify time-wasting. however, the money goes from one party to the other, not to the Patent Authority. These shenanigans are costly to the tax payer who pay Ms Shoshani-Caspi’s salary.

Furthermore, I suspect that the sum in question is insignificant to both parties, and indeed, to their legal representatives.

I have no idea what the grounds for this opposition are. However, if I was fighting this opposition, I think I would argue that the logo is simply a visual representation of a cigarette (end on), and thus descriptive and generic.

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Posted by Dr Michael Factor

Israel Patent Authority Welcomes Feedback on Satisfaction

February 17, 2012

One doesn’t need to maintain an Israel IP Blog to let those that matter know whether one is satisfied with the Israel Patent Authority’s service.

Customers are invited to fill out a questionnaire and to provide their feedback. The survey  (in Hebrew) is to be found here: קישור לסקר

I am sure that this initiative is welcome. However, from discussions with Examiner Moshe Cohen who amongst other things is the ombudsman at the Israel Patent Authority, suspect that the quantity of feedback will be dismal.

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Posted by Dr Michael Factor

A Colourful Circular for Trademarks

February 6, 2012

Perhaps so that my brother and other trademark attorneys don’t feel left out, Adv. Assa Kling, the Israel Commissioner of Patents and Trademarks has kindly issued a circular for them as well!

In Circular 12/2012, the commissioner notes that Israel trademark applications under the Madrid Protocol may be filed in colour (that’s color for American readers).  In such cases, the colour may provide a distinguishing feature, but  is a limitation on the scope of coverage.  henceforth, the Pantone number won’t be listed in the registration, but the colour will be a feature of the mark and may therefore be limiting. Applicants wanting wider coverage should therefore file their marks in black and white.

The additional frivolous comment:

When first posted, I wrote:

“Strangely, the circular comes into force from when it was published, i.e. 31 January 2012, but it carries the date of 6 February 2012 and I received it along with everyone else only today. Still, in comparison with the retroactive amendment of the patent law last year, see here this is a minor problem.”

I suspect that at least one person in the Israel Patent Agency follows my musings. Today, 7th February, an amended Circular issued, correcting the coming into effect to 6 February 2012. This will be a relief for any applicants who responded in the week prior to publication of the Circular, who didn’t have the foresight  to anticipate this development!

 

Leave a Comment » | Israel IP, Israel Patent Agency, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

The Duty of Disclosure in Israel

February 6, 2012

In Commissioner Circular No. 011/2012, the Commissioner of Patents, Adv. Assa Kling has clarified the Duty of Disclosure under section 18 of the Israel Patent Law.

Prior art cited against corresponding applications abroad as novelty or inventive step destroying (for example X and Y citations in PCT applications, and citations cited under Sections 102 and 103 in the US) should be provided on a CD or other appropriate digital media. Only these citations should be provided on the CD which should be clearly labeled as appertaining to the specific application and, if more than one disk is submitted, these should be labeled 1 or x, 2 of x, etc.

COMMENT

Although the commissioner does not ask for it, and perhaps does not want it at all, I would nevertheless advise clients to submit a list of other references believed relevant, such as those cited in another related application that does not share a common priority, art referenced in the background cited in an Information Disclosure Statement (IDS) in the US, etc., since I can see failure to do so could be considered as bad faith by the courts, and in Israel Law, bad faith is considered very seriously indeed.

In this point, I am aware that I am at odds with my former colleague, Mr Shimon Shalit, whom is an authority in such matters.  I would therefore be interested to hear from other practitioners with views or strong feelings one way or the other.

Footnote

I suspect that Merpel, the IP Kat’s friend, would make some Katty remark about the CD being a circular in a circular.

The tee-shirt was chosen for Kim Lindy who liked the one I found for oral exams  (see here).

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Posted by Dr Michael Factor

Slogans to be treated like any other trademark applications

January 17, 2012

The Tel Aviv District Court has upheld a decision by the Israel Patent Office  to refuse Eveready’s Trademark Application Number TM 204, 832 for shaving creams and 204,499 for razors and shavers  for the slogan “Free your skin”.

However, the court has over-turned the assumption that slogans are always descriptive or laudatory and therefore invariably non-registerable, ruling that they should be examined like any other mark. Consequently, the current Commissioner or Patents and Trademarks Adv. Assa Kling has cancelled Patent Office Circular MN 29 that held that slogans cannot be registered.

BACKGROUND

On August 28, 2010, then Deputy Commissioner Noah Shalev Shmulovits upheld a decision of the trademark examiner, that Israel Trademark Number    was invalid for registration.

Shmulovits based his decision on Israel Patent Office Circular Number M.N. 29 in which then Commissioner of Patents and Trademarks Dr Meir Noam ruled that slogans could generally not be registered.

Since then, there have been a number of exceptions. See  for example party-like-a-rockstar,  im-lovin-it, shufersal, its-all-for-you, bleach-free and diamond in your pocket  for specific rulings.

Eveready appealed the decision to the courts. In a well-reasoned ruling, Judge Yitzhak Anber has ruled that slogans may often be laudatory or descriptive, but should be considered as simply multi-word marks and judged on their merits.

21488-05/11 Eveready vs. Commissioner of Patents and Trademarks, Tel Aviv District Court  by Judge Yitzhak Anber, 8 December 2011.

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Posted by Dr Michael Factor

Software patents in Israel

January 12, 2012

The long awaited guidelines regarding the patentability of software inventions in Israel have finally been published by the Israel Patent Authority.

In brief, it appears that the term ‘industrial application’ as required by section 3 of the Israel Patent Law 1967 may be fulfilled by patents in any field of technology.

  1. Software inventions having a real world effect are considered technological and thus patentable. To establish whether a  software implemented invention is technological it has to be considered in its entirety. I think this means that the Commissioner of Patents requires examiners to take a holistic approach to the question.
  2. Business methods are not considered industrial, nor are algorithms.
  3. A real world effect may be indicated by something that may be perceived by the senses.
  4. Software that creates new links and causes a computer to work better or faster may be considered a real world effect.
  5. Software per se, abstract thought processes and algorithms not having a real world effect are not patentable, but may be protected as a literary creation under copyright law.
  6. Beauregard claims are allowable.
  7. A software invention that enables automation that is more than simply doing something automatically that could previously be achieved manually, may be patentable.  I think this means that software inventions that enable a result to be obtained that could not hitherto realistically be obtained, could be patentable.

Helpfully, the relevant guidelines for the Examiner are appended to the circular, together with a number of specific examples from real patent applications, a verdict regarding whether the claimed invention is patentable subject matter and a brief explanation.

For reference purposes, I am reproducing the examples below:

GB 2391348

A data processing apparatus, comprising:
a processor;
a compiler for compiling application code to generate instructions for execution by the processor;
a non-invasive trace unit coupled to the processor for generating, from input signals received from the processor, trace signals indicative of the instructions being executed by the processor;
the compiler being arranged to control the compilation of the application code dependent on the trace signals.

This is considered patentable.

GB 2407655

A method of operating a computing device having an operating system and a dynamic link library containing a plurality of functions accessible by an executable program, each function in the dynamic link library being associated with an ordinal number, the method comprising:
Providing the dynamic link library as a first part and an extension part each containing one or more of the plurality of functions;
Causing the executable program to link to functions in the first part directly by means of the associated ordinal numbers;
and Causing the executable program to link to functions in the extension part indirectly via a further library containing additional functions.

This is also considered patentable.

WO2007002296

A method for automatically calculating a discount for a customer offered by a merchant through a reservation system, comprising:
accessing at least one reservation file relating to a reservation;
accessing transaction data relating to at least one payment card transaction;
comparing one or more elements of the transaction data against one or more elements of the reservation file to determine a match;
and electronically calculating the discount based on[e or more] one or more elements of the transaction data and one or more elements of the reservation file.

This is considered non-patentable as although computer implemented, the real world effect is a business method which is not considered as having a technological effect.

EP 1301912

A method of operating a transaction processing system enabling users to authorize transactions, said system comprising a central transaction processing system (19) having at least a first data communications interface and a second data communications interface, comprising the following steps carried out by said central transaction processing system (19):
receiving transaction data from an offering party, relating to a specific transaction to be authorized by a user, and receiving a first transaction reference (TRN) relating to and uniquely identifying said specific transaction, via a first data communication path (16), at said first data communications interface;
generating a second transaction reference (TRR) which is different to the first transaction reference (TRN) and which uniquely identifies the transaction within the central transaction processing system (19);
sending said second transaction reference (TRR) to the offering party; after receiving said transaction data, conducting communications over a second data communication path (22), different to said first data communication path, with said user over said second data communications interface;
using said second path, conducting a secure access procedure in which authentication data is received and said authentication data is verified;
using said second path, receiving said first transaction reference (TRN) relating to and uniquely identifying said specific transaction from said user, said transaction reference not being previously transmitted to said user in said second communication path (22);
using said second path, receiving confirmation from said user; and
in response to said confirmation, transmitting an authorization signal to authorize said transaction, said authorization signal including said second transaction reference (TRR), wherein said second transaction reference (TRR) is not known to said user.

Despite being applied to business applications, there is a technological effect of improved data security so the claimed invention is patentable.

GB 2171877

A method of making a telephone call from any available telephone, comprising: obtaining a special code by making a prepayment;
inserting the prepayment in a memory in a special exchange and being allocated to the special code in the memory for use in verifying a calling party call;
dialing the special exchange when a telephone call connection is desired;
inputting the special code for verification; inputting the number of called party;
verifying at the special exchange by checking the special code and comparing the prepayment less any deductions for previous calls in the memory with the minimum cost of a call to the called party station;
connecting the called and calling parties’ stations in response to said verification; monitoring the remaining prepayment less deductions for the running cost of the call;
and disconnecting the call when the remaining prepayment has been spent by the running cost of the call.

Despite being a business method, by virtue of the ‘special exchange’, there is a redeeming device and the invention is patentable.

GB 2418281

A method of creating a document having a displayable area on which information is placed, the method comprising:
a. providing a plurality of content-items which contain information that it is possible to display on the displayable area;
b. dividing the displayable area into a set of subareas each capable of receiving one or more of the content-items;
c. generating at least one set of proposed arrangements in which the content items have been arranged within the set of sub-areas;
d. selecting at least one of the proposed arrangements, according to predetermine criteria, as the layout of the content-items within the sub-areas of the displayable area to create the document; and
e. causing a printing means to print the created document.

This is considered simply automation of manual type-setting and is not considered as patentable.


US 2007033615

A method for transferring programs to a secondary storage device using an interactive television program guide implemented on user television equipment, to cause a first display: in a display screen of at least one program listing related to at least one program;
using the interactive television program guide to enable a user to select a program listing from at least one displayed program listing;
using the interactive television program guide to cause the program related to the selected program listing to be recorded on a digital storage device;
using the interactive television program guide to cause a second display in the display screen that includes at least one recorded program listing for at least one program recorded on the digital storage device, wherein at least one recorded program listing includes a recorded program listing for the program recorded on the digital storage device;
using the interactive television program guide to enable the user to select the recorded program listing to transfer the recorded program from the digital storage device to a secondary storage device; and
using the interactive television program guide to transfer the recorded program from the digital storage device to the secondary storage device.

This is considered as having a real world effect and is therefore patentable.

 

EP 1062615

A method of monitoring, diagnosing and treating medical conditions of a plurality of remotely located patients using a central data processing system configured to communicate with and receive data from a plurality of respective patient monitoring systems, wherein each patient monitoring system is capable of receiving and storing patient data, the method comprising the steps of:
obtaining patient data from a plurality of patient monitoring systems at the central data processing system;
analyzing the obtained patient data from each respective patient monitoring system at the central data processing system to identify medical conditions of each respective patient;
displaying identified patient medical conditions for each respective patient in selectable, prioritized order according to medical severity; and
in response to selecting an identified medical condition for a respective patient, displaying treatment options for treating the medical condition.

This is considered as having a real world effect. Presumably the diagnosis – since methods of treatment are not statutory subject matter under Section 7(i).

WO 2010128511

A method for determining a matching score between a first set of H1 feature points, and a second set of n2 feature points, the method comprising the procedures of: producing a triple-wise affinity tensor, including the affinity score of assignments of triplets of feature points of said first set of feature points and triplets of feature points of said second set of feature points; determining a leading eigenvector of said triple-wise affinity tensor; iteratively producing a binary optimal assignment vector by discretization of said leading eigenvector; and determining a matching score between said first set of feature points and said second set of feature points according to said triple-wise affinity tensor and according to said optimal assignment vector.

As claimed, not patentable, since the invention relates to a mathematical abstraction. If image analysis and comparison using the method had been claimed, the result would have been different.

WO 2006082590

A method for adaptive filtering of at least one pixel having an initial value of an image composed of pixels, the method comprising: calculating local expected value for the pixel; calculating local signal to noise ratio; calculating local filtration ratio based at least on said local signal to noise ratio; calculating a weighted average of the initial value and local expected value using said local filtration ratio as weight; and assigning the weighted average as a new value for the pixel.

Since this is applied to at least one pixel, this is not an abstract algorithm, but rather an applied algorithm for image processing and is patentable. Furthermore, this cannot be simply considered as automation of something formerly done by hand since manually processing in this manner would not have been practicable.

 

WO 01/37131

A method of classifying an image, comprising the steps of segmenting the image into a plurality of regions and, for each of at least one of the regions: quantifying each of a plurality of visual properties of the region on a numeric scale for the property; comparing each quantified property with a plurality of bands of the numeric scale for the property, each band being associated with a computer-readable character; and arranging in a predetermined order the characters associated with the bands in which the quantified properties fall to form a region character string.

Can not be done manually and classification is considered a real world effect. Patentable.

 

WO 2005005004 

A method comprising the following steps to be performed electronically: selecting at least two participants from a plurality of participants; presenting a first image to each selected participant; and requesting each said selected participant to provide a description of said first image.

Although implemented by a computer, this is a manual process and is therefore not industrially applicable.

 

EP1184798

1.    A method of processing and presenting data, comprising the steps of:
(1) identifying claim dependencies of claims in a user-selected patent;
(2) constructing a patent claims hyperbolic tree for said user-selected patent using said identified claim dependencies; and
(3) displaying said patent claims hyperbolic tree. 

4.    A method of processing and presenting data, comprising the steps of:
(1) retrieving patent citation information pertaining to a user-selected patent, wherein said patent citation information is backward patent citation information or forward patent citation information;
(2) constructing a patent citation hyperbolic tree using said retrieved patent citation information; and
(3) emphasizing nodes of said patent citation hyperbolic tree according to time-based criteria, wherein said time-based criteria includes at least one of filing date, priority date, length of pendency, effective filing date, invention date, critical date, on-sale date, public disclosure date, and public use date.

Although computerized, could be performed manually by a data searcher, therefore not patentable. However, if linked to specific electronic processes, might be considered patentable.

EP 1618498

A method for managing a treelike data structure for text-to-phoneme mapping for automatic speech recognition or text-to-speech, which method comprises steps for creating a decision tree comprising a parent node and at least one leaf node, said method comprising also steps for searching data from said nodes, characterized in that the decision tree is created by storing the nodes sequentially in such a manner that nodes follow the parent node in storage order, wherein the nodes refining the context of the searchable data can be reached without a link from their parent node.

Unlike the previous example, by virtue of the highlighted section, the claimed software implemented invention is linked to specific hardware and is thus patentable.

COMMENTS

In general, I think the Commissioner has got this right.

It is a shame that the guidelines issued a year after they were promised.

3 Comments | Business Method, Israel, Israel IP, Israel Patent, Israel Patent Agency, Israel Related, software Patents | Permalink
Posted by Dr Michael Factor

Coexistence of trademarks in Israel is not merely a matter of consent of the parties concerned

January 1, 2012

MusicArt LTD applied for Israel trademark Nos 236517 and 236701 for “Alma” in classes 41, 44 and 43.

The marks cover: Entertainment and culture activities including live entertainment and musical entertainment; nightclubs, sport clubs, providing recreational facilities; arranging and conducting of functions, conferences, conventions, exhibitions, seminars and meetings; theatre, opera, concert, ticket reservations; all included in class 41, and
Rental of temporary accommodation; reservation; hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings in class 43.

Ganor opposed these registrations, since the marks were confusingly similar to mark number 136149 (Alma Beach) that she owned.

The two sides came to a co-existence arrangement under which MusicArt would have rights to the wordmark Alma in the North of Israel, North of Caesaria, whereas MS Ganor would have rights to the Alma Beach mark as illustrated, South of Caesaria. However, withdrawal of the opposition was conditional on the coexistence agreement being accepted by the Patent and Trademark Authority.

 Ms Yaara Shoshani Caspi, the adjudicator of intellectual property in the Israel Patent and Trademark Authority refused to accept the coexistence agreement. Since the word marks were distinguishable from the graphic image, she was prepared to allow the registration of the marks, and the opposition to continue.

Her position is that although two parties can decide to coexist, the Trademark Office is obliged to consider other issues, such as protecting the public from confusion. Geographical limitations are particularly problematic bearing in mind the small dimensions of the country.

The parties have been given 20 days to inform the Israel Patent & Trademark Authority how they wish to continue.

Leave a Comment » | Israel Patent Agency, Israel Patent Office Rulings, Israel Trademark | Permalink
Posted by Dr Michael Factor

Israel Patent Law Ammended

December 14, 2011

On 8th December 2011, the Israel Knesset passed an amendment to the Israel Patent Law 1967.

There appear to be two changes, the first cosmetic and the second substantive.

Firstly, all references to the Israel Patent Office “משרד הפטנטים” or uses of the word “לישכה” meaning ‘office’ are amended to “רשות הפטנטים”  and “רשות” , i.e. Patent Agency and Agency.

More substantively, there is an amendment to reflect that the Israel Patent Office, whoops, Agency will henceforth provide PCT style International Search Report compliant search reports (ISRs) and will also be able to provide International Search Reports for applications received by the Israel Receiving Office of the PCT, where one or more inventor or applicant is an Israeli Citizen or corporation, and also for citizens or corporations of other countries having a relationship and appearing in an appropriate appendix to the Law, to be updated from time to time.

COMMENT

The Israel Patent Office (it’s OK, I can still use the old name until 8 January 2012 when the amendment comes into force) has been styling itself Israel Patent Agency for a while now, but this is now enshrined in the Law. There don’t seem to be punishments for people who forget, but I will do my best to comply.

Regarding the Searches, there are a few questions that require clarifying and no doubt the Commissioner of Patents will issue a Circular in due course:

  1. Can Israel applicants still elect the USPTO or EPO to search their applications as they can at present?
  2. What happens if applications are filed at the International Receiving Office in Geneva? – at present, this does not affect the authorized International Search Authorities, but maybe this will change.
  3. How much will an Israel PCT search cost?
  4. When will this come into effect – not the amendment to the Law, but that Israel will provide ISRs?
  5. Now that the Israel Patent Agency  is to provide ISR type searches, does that mean that at last they will start searching and examining all claims, at least for the first invention as defined by PCT Law and Regulations, and not just the independent claims as they generally do at present.

Time, and Patent Office Circulars, will no doubt tell.

Leave a Comment » | International Search Report, ISR, Israel, Israel Patent Agency, Israel Patent Office, patent search, Patents, PCT, WIPO | Permalink
Posted by Dr Michael Factor

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