M.N. 81 Canceled

January 27, 2016

division

We were not surprised that following the Genentech decision, The Commissioner circular M.N.  81 was canceled and later circulars that referred to it were amended.

This means that anyone (not just Genentech) can file a divisional from what is itself a divisional patent application in Israel.

We expected this to happen as one has to have common ground rules for all applicants.

There is, however, a downside to this. In cases that have a tendency to go litigious, such as with pharmaceuticals, there is an incentive on the applicant to keep a divisional application alive long after the parent application issues, so that the claims thereof can be amended following litigation on corresponding patents abroad, and judicial rulings concerning wording, claim structure and the like. This makes attacking such patents difficult as they become a moving target.

On grounds of ultra vires, I was unhappy with M.N. 81, but I do feel that on substantive grounds there is room to amend the law. I just feel that it requires the Knesset to do so. Possibly claims in the parent that were canceled due to plurality of invention objections should be allowed to be reintroduced, but I am not sure that allowing anything arguably based on the specification to be reintroduced at any time by keeping a divisional application alive is necessarily a good policy.

Note, there is a dirty word in Israeli legal circles for people with views like me. I am dismissed by the crusader crowd as being a ‘formalist’. I am aware of the arguments that we need judicial fiddling to protect democracy. However, I see them as Orwellian, and inherently dangerous.


IPad Mini, IPad Air and MI Pad

January 20, 2016

Apple Inc filed Israel Trademark Application Number 261500 for IPAD MINI and Israel Trademark Application Number 261449 for IPAD AIR on 12 November and 20 November 2013. both in class 9 for 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.

Subsequently, on 14 May 2015, Xiaomi Singapore Pte. Ltd filed Israel Trademark Application Number 270078 for Mi Pad. The mark covers 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 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 9.

Since Apple Inc.’s marks have not yet issued, a competing marks procedure was instituted and both parties are invited to a hearing before Ms Jacqueline Bracha on 1 February 2016 to states their cases.


Dynavisk

January 20, 2016

Fzio Med Inc.  filed Israel Trademark Application No. 258762 for “Dynavisk”.

After it published as allowed, Genzyme Corporation opposed the mark on 7 October 2015. The period for responding has passed and the Applicants did not respond. They are therefore considered as having abandoned their mark and in view of the material in Genzyme’s statement of case, costs of 2500 Shekels are awarded to them.


Clik-Lock

January 20, 2016

Michel Falgir and Elias Or-Hayim filed Israel Trademark Application No. 254327 for “Clik-Lock”.

After it published as allowed, Assa Abloy AB opposed the mark on 27 August 2015. The period for responding has long passed and the Applicants did not respond. They are therefore considered as having abandoned their mark and in view of the material in Assa Abloy AB’s statement of case, costs of 2500 Shekels are awarded to them.


Orchid Mark Not Defended by Rolex, and Apparently not in use in Israel, but partially maintained anyway

January 20, 2016

Rolex SA make watches. They obtained Israel trademark number 148809 for Orchid.  The mark covered a variety of chronology related goods but also bracelets, diamonds, earrings, chains, brooches, jewelry and other items.

Rolex Orchid

On 20 August 2015, Lily Diamonds fined to have the mark canceled for all goods other than watches, on the basis of lack of use. They claimed that the mark was never used in Israel and certainly not in the past three years.

Lily Diamonds filed the cancellation request as they intended to register Israel Application Number 259590 for “Orchidea” for cut and polished precious and semi-precious gemstones, watches encrusted with cut and polished precious and semi-precious gemstones and accessories for the above in class 14. Their application was refused based on the Examiner’s opinion that there was a likelihood of confusion with Rolex’s mark.

The cancellation request was sent to Rolex’ representative, but they did not file a counter-statement. On 13 December 2015 a hearing was set but since the cancellation request was unopposed, Lily Diamonds requested that the Commissioner rule on the material submitted.

The Ruling

Section 14 allows interested parties to request cancellation of marks that were not used or were filed without intent to use for the goods covered, or were not used within previous three years.

Although such marks may be cancelled, since trademarks are property rights, cancellation may occur only after careful consideration.

Although Rolex make and sell watches, some of the goods claimed are accessories for watches and a mark for a watch may provide protection for other goods in the same class.

Lily Diamonds submitted an affidavit from a private investigator who visited two Rolex stores and 10 precious watch stores and claimed that none of them sold or had heard of Rolex watches or anything else called Orchid. Nevertheless, since Rolex did not defend the mark, the Deputy Commisioner Ms Bracha who heard the case was suspicious that Lily Diamond was prepared to leave the mark for watches and only challenged it for other goods.

Using her discretion to do a bit of snooping as per Supreme Court Ruling 941/05  Agudat HaKormim vs. HaKerem LTD, the Deputy Commisioner Ms Bracha googled Rolex Orchid and discovered that there was such a line and they were still available on the second hand market. Since Rolex trades in second hand watches, this was considered adequate usage.

The classic Israel trademark treatise by Seligsohn which predates the sections of the ordiance that deal with well-known marks states that usage abroad may be sufficient to maintain a mark in Israel.

With reference to foreign trademark law, the ECJ only requires sufficient usage for the purpose of preserving or creating market share to prevent a third party cancelling a mark.

James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkeley in  “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 352-353 3  also shows that “In essence, use of a mark on a website will only constitute use in a particular territory if the website is specifically aimed at and used by consumers in that territory.”

However,”McCarthy on Trademarks and Unfair Competition”

states that:

“While both aspects are relevant to the ultimate determination of whether an abandonment has taken place, where the firm claims that it had an intent to resume use and has some evidence to support, the primary emphasis should be on the degree to which will result in a likelihood of confusion. Consumers know nothing of the state of mind of the former trade-mark user, but they may well mistakenly think that a new use of that mark by another is a renewed use by the former user. While the state of mind of both the former user and the purchasing public are both important, in a close case, the state of mind of the public should prevail.

and that:

“Famous automobile marks of models no longer in production retain their recognition value and good will as a result of continuing public use of such relatively long-lasting products.”

Although Rolex did not defend the mark, where a mark has a reputation and the product has a long life, the reputation may still exist and the commissioner may be required to uphold the mark to prevent confusion. Furthermore, Lily Diamond did not file to cancel the mark completely, only to restrict it to watches.

In conclusion, the mark is canceled for bracelets and jewelry and the like, but remains in effect for: Anchors (clock and watch-making), atomic clocks, barrels (clock and watch-making), cases for clock and watch-making, cases for watches (presentation), chronographs (watches), clock cases, clockhands (clock and watch-making), clocks, clocks and watches electric, dials (clock and watch-making), movements for clocks and watches, pendulums (clock and watch-making), sundials, time clocks (master clocks), watch bands, watch cases, watch chains, watch glasses, watch springs, watches, wrist watches, all included in class 14.

Rolex will  pay Lily’s costs of 2500 Shekels and 2500 Shekels lawyer’s fees. The fees were estimated as no affidavit was filed by Lily’s lawyers.

Cancellation of 148809 for “ORCHID” to Rolex – ruling by Ms Jacqueline Bracha, 30 December 2015.

COMMENT

The ruling seems a fair compromise if a little timid.


Glide

January 19, 2016

Glide Talk LTD filed Israel Trademark No. 252076 for the stylized mark glide as shown below:

Glide

The application covered Optical apparatus; apparatus for recording, transmission or reproduction of sound, images, or video; computer application software for mobile phones, tablets, computers, notebooks, and handheld computers, namely, software for voice, text, picture and video messaging; computer software for internet and telecommunications messages; computer and video game software for mobile phones, tablets, computers, notebooks and handheld computers; Computer software for providing access to computer and video games through online social networking websites; all the aforesaid excluding blank and pre-recorded USB flash drives and Telecommunication services, namely, providing online and telecommunication services between and among users of desktop and tablet computers, mobile and handheld computers, and wired and wireless communication devices concerning topics of general interest; enabling individuals to send and receive messages via online messaging in the field of general interest; providing online communications for registered users to share information, photos, audio and video content about themselves, their likes and dislikes and daily activities, to get feedback from their peers, to form virtual communities, and to engage in social networking; broadcasting over the Internet, electronically transmitting, posting, displaying, and tagging information of audio, video and textual content; transmission of greeting cards over the Internet or other communications network; all included in class 38.

SanDisk Corporation opposed the mark. In this instance, the parties came to an agreement under which Glide Talk LTD would amend the list of goods in class 9 and SanDisk Corporation would abandon the Opposition.

The Israel Patent Office does not rubber stamp such agreements automatically, since in addition to the interests of the parties, there is a public interest so where such agreements leave a situation where there is a reasonable likelihood of confusion, the Israel Patent Office may decide not to ratify such agreements and can continue an Opposition in the shoes of the Opposer becoming inquisitional instead of merely observing and adjudicating.

In this instance, Glide LTD undertook to add the following to the list of goods in Hebrew and English:

and excluding software used (a) for security and encryption of data stored in blank and pre-recorded USB flash drives, and (b) to facilitate, enable and manage flash storage of electronic data and electronic files stored in blank and pre-recorded USB flash drives; all included in class 9.

Since this is a disclaimer that limits the range of goods, it was allowable under Regulation 22(a)2 of the regulations and accorded with Section 21 of the Ordinance granting the Commissioner authority to amend the list of goods to disclaim and clarify.

Ms Yaara Shoshani Caspi allowed the amendment and closed the opposition, ruling that each side should bear its costs.

COMMENT

Coming to a mutually acceptable resolution in a fairly amicable way is generally in the interest of all parties. Some attorneys are adversarial and fight uneccessary battles. In this case, the attorneys representing the parties have saved the parties time and money by identifying the problematic issue and bringing this to a quick resolution.

 


IL 214003 to Moshe Binyamin Remains Closed

January 17, 2016

Diy brain surgery.jpg      magic bracelet

In December we reported that a private inventor, Moshe Binyamin had filed a request for his closed patent application be reopened. The case was considered abandoned when the inventor failed to respond to the Notice Prior to Examination.

The inventor represented himself. Generously, the Deputy Commissioner Ms Jacqueline Bracha gave the applicant seven days to file a detailed Affidavit as to why the case was abandoned. Since the case had published and over a year had passed since it was abandoned and the applicant failed to provide an adequate explanation for the case going abandoned and did not attend a hearing, The case remains closed.

COMMENT
It seems that Ms Bracha was more than generous towards this inventor. Representing oneself in legal matters is not usually a good idea.

The invention is for some sort of bracelet with magical health powers. This is a very good idea. As the revival of the application was rejected it remains in the public domain. Unfortunately it doesn’t seem to be fully enabled and I doubt its efficacy.


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