Sakare and Sacara Competing Marks

September 11, 2014

Sakare boxes    Sakare shops   Sacara products    Sacara

Sakare and Sacara are trademarks that are co-pending and are confusingly similar so a competing marks procedure was instituted under Section 29 of the Trademark Ordinance.

Sacara LTD is an Israel brand of cosmetics. Sakare is a UK-based brand of Cosmetics owned by Soap & Co. UK LTD

Both companies filed their confusingly similar trademarks for their confusingly similar brands selling confusingly similar products at around the same time, and a competing marks procedure was initiated.

Sacara submitted a statement from a branding expert that testified to when he conceived and suggested the name. Soap & Co. UK LTD filed a submission on 9 July 2014 to have the expert testimony submitted by Sacara LTD struck from the record!

On 24 July 2014 Sacara LTD responded and on 31 July 2014, Soap and Co. filed a response to the response.

This is an intermediate ruling that relates to the request to strike the Statement.

On 30 March 2014 Gidi Adar who is a branding specialist prepared a statement for Sacara. During cross-examination he claimed that the statement was prepared on 27 December 2012. The statement claims that Adar offered Sacara LTD a list of 17 names. On 30 March 2014 at the end of the hearing the parties agreed that the question to be considered was when Adar first prepared the list and the parties would agree on an expert to determine when the computer file was created.

On 15 May 2014 Sacara noted that the sides were unable to agree on an expert to collaborate when the file was created and that Adar’s statement would be acceptable but that Soap and Co. could cross-examine him on it. Adar stressed that for the sake of clarity and for the record, the term file indicates the digital file containing document appended to the witness statement.

On 28 May 2014 in a hearing, Deputy Commissioner Bracha gave Soap and Co. (Sakare) 30 days to submit an expert testimony and Adar could be present whilst the file was examined. On 6 July 2014 Soap and Co. filed an opinion by Mr Yoav Zilberstein who is a forensic computer recompiling specialist. The specialist determined that the file was created on 23 December 2012 and that a second file with a similar name was created on 19 February 2012.

Although Sacara claims that the sides agreed that both files were authentic, the Sakare withdrew from this position. On 9 July 2014, Sakare requested that the expert testimony be voided as the file contained 15 names instead of 17 and the wrong date. Additional files examined constituted and illegitimate widening of the issues. Sacara claims that Mr Zilbersten’s job was to determine when the file was created and he did this as requested and there was no widening of the issues.

Reviewing Mr Zilberstein’s statement indicated that although he claimed to be addressing wider issues in his investigation he actually addressed the issue in question, i.e. when the file was created. The predetermined agreed scope of his research did not take into account that two files with the same name would be uncovered. Ms Bracha ruled that the Expert Statement did not exceed that agreed and did answer the question. She found additional support in Issues of Civil Procedure p 145, 11th edition, 2013. Furthermore representatives of both parties were there when Mr Zilberstein did his investigation. As to the list only having 15 and not 17 names, whilst the file did no include Glossy24 and Gloss24, it did include the name Sacara, so the testimony did show that the name Sacara was considered in December 2014. Then again, the appended list was from a file not in the computer. Although the parties are not in agreement as to the authenticity of the files, Ms Bracha felt that the evidence could be included as something contentious rather than as agreed evidence and both parties could relate to it later.

Ms Jacqueline Bracha therefore rejected the request to cancel the expert opinion but ruled that the applicant is allowed to cross-examine the expert witness on his testimony on a mutually acceptable and agreed date in December 2014 or January 2015. She saw no reason to allow the applicant to cross-examine the workers of the printing-house. The Applicant is, however, allowed to submit an expert testimony within 14 days. Costs will be awarded at the end of the competing marks proceedings.


The date of conception and even the first use of a mark is rarely decisive in a competing marks issue, and scope of actual use and reputation is generally given more weight. The third consideration is equitable behavior and I suspect that the summations will attempt to argue this point in relation to when Sacara thought of the name.

Both parties are using arbitrary names that nevertheless recall mascara. I warn clients trying to be cute when selecting trademarks, that they will invariably run into these kinds of difficulties. they rarely listen, which is why these competing mark, opposition and cancellation procedures happen.

Adding Evidence in a Patent Opposition Procedure

September 10, 2014

glass transition temperature late entries

DSM IP Assets LTD filed Israel Patent Application No. 168200 for “Process for the Manufacture of a Ballistic-Resistant Moulded Article”. PMS Migun LTD opposed the patent issuing.

On 4th and 6th February 2014, a hearing was held at the Israel Patent Office and then, on 19 May 2014, the parties filed a joint request to amend the protocol. In addition, on the same day, the Applicant requested permission to add a further piece of evidence.

The additional evidence related to the witness statements for both sides concerning the glass transition temperature of the matrix material Witcobond 737 which were already on file. It appears that following the hearing, the Applicant had done some research into the glass transition temperature and wished to submit this now, at the summation stage of the proceedings.

The request to add new evidence generated a spew of claims and counter claims and requests to admit statements into the record and to deny the opposing party from adding new material.

Arbitrator’s Ruling

Regulation 63 states that neither party can submit additional evidence without the Commissioner’s authorization. The courts and the Patent Office have ruled that evidence should be submitted at the correct junctures. When the arbitrator is presented with new evidence, her responsibility is to weigh up its importance in clarifying the outstanding issues, where the proceeding is up to and whether the party could have submitted the evidence earlier.

In the specific instance, the issue (according to MS Shoshani Caspi) is whether the party could and should have submitted the glass transition temperature of the Witcobond matrix during the evidence stage and how important this is anyway. Since the application does not relate to the glass transition temperature or indeed to the Witcobond matrix, the evidence was considered unnecessary to ensure a fair ruling. Ms Shoshani Caspi considers the disagreement between the parties concerning this issue as not relevant to the patentability of the invention as claimed. In this regard, she gave weight to statements from the patentee that the evidence was submitted out of concern to provide a full picture and not to create a lacuna in the evidence, whilst the opposer considered this a litigator’s trick to distract from the real issue. She was not convinced that the evidence was critical.

The Adjudicator of IP, Ms Yaara Shoshani Caspi who heard the case refused to allow the evidence to be submitted and awarded costs of 4000 Shekels against the Applicant. The Opposer was given 60 days to submit their summary, not to exceed 45 pages.


Funnily enough, in an earlier intermediate ruling, the Opposer was not allowed to submit evidence that was not referenced in the statement of case.

When submitting additional evidence, the guiding principle should be whether or not this affects the patentability of the invention. If as a result of the hearing, the patentee does additional laboratory work or literature searches to respond to a point raised, or, as in this case, checks things up with the R&D staff, I believe the party should be allowed to submit it. A patent should not be refused on procedural grounds. The opposing party can be awarded costs for any inconvenience. What is not allowed is to simply present evidence at late stages as a delaying tactic. This is something that opposers have an invested interest to do, since a patent under opposition cannot be enforced until the opposition is dismissed. The applicant has no advantage in delaying tactics and so it seems clear that the additional evidence wasn’t there earlier.
Preferring to relate to substantive issues affecting patentability rather than procedural issues regarding when material can be submitted appears to be the of the court is clear from an Appeal against the Patent Office and Ms Shoshani Caspi to the Courts.

The problem is that the present intermediate decision issued on the 3 August 2014 and the court’s decision on appeal issued on the 18 August 2014. We suspect that the patentee will appeal if, as a result of this new evidence not being considered, the patent is cancelled. No doubt the Opposer will then want the additional evidence that wasn’t allowed to be submitted to be considered.

Interestingly, the entire discussion, including the protocol of the hearing and the evidence is in the file wrapper which is available on the patent office website. As a materials scientist with both theoretical and lab experience in composite materials – I started a PhD in Applied Chemistry at Casali Hebrew University in polymer matrix composites, before eventually joining a coatings project managed by the propulsion physics laboratory of Soreq – NRC and doing a PhD in Applied Physics at the same institution – and having a client who is busy patenting anti-ballistic materials, it is tempting to discuss the evidence and the patentability of the claimed invention. As it is sub juris, I don’t think that would be appropriate.

As to submitting a 45 page summary, it is an art to cut down the volume of material without throwing something important out. This was something we practiced in High School in England. Patent Attorneys do it for PCT abstracts, and when I had columns in various IP magazines such as AIM, WIPR and MIP, I got quite competent at cutting down blog articles to a fixed number of words. We think that 45 pages is more than enough wordage to summarize the case, and to keep the Adjudicator focused on the real issues, the summation should be kept short and focused.

Competing Marks – the extent of Power Of Attorney and submitting summaries in writing

September 9, 2014

The cook store 253157

In my previous post I noted that Gornitzky and Partners, Attorneys-at-Law, seem snowed under and unable to help their client, Surprise Import & Marketing of Gifts Ltd ward off an attack on the validity of their trademark in a timely manner. Well, amongst other time-consuming activities, it seems that they and the client have also got caught up in a competing marks proceedings.

The mark in question, Israel TM No.253157 “The Cook Store” in classes 8 Tools and work hand-operated; cutlery; razors, In respect of devices for lighting, hitting (heating?) extracting streams (steam?), cooking, cooling, drying, airing, supplying water, and sanitarian (sanitation?) purposes in class 11, Tools and Household or kitchen containers, combs and sponges, brushes (except paint brushes detergents), items for cleaning, glassware, porcelain and earthenware not included in other classes, in class 21.

The Cook Store

The mark was filed at around the same time as Israel TM No.  241892 also for the Cook Store in classes 8 and 11, this time filed by TABLE TOP COLLECTION LTD.

Although both marks include styling, the text is identical and the logos are similar. In fact one seems to be a red on white negative of the other in white on red.

An oral hearing was arranged on 28 May 2014, and Ms Helena Kazen, the owner of Surprise Import & Marketing Of Gifts Ltd did not turn up to be cross-examined on her statement, and also failed to inform the adjudicator Table Top Collection LTD. that she would not be coming. The lawyer representing Ms Kazen and Surprise Import, Gornitzky and Partners claimed to have Power of Attorney to represent her, and went outside with the Table Top’s representative who phoned their client. Table Top decided to give up on their mark and also on the expense of cross-examining Ms Kazen.

On 9th July 2014, Surprise Import requested that Table Top, represented by Ehud Porat, Attorney and Notary, put something in writing to the effect that they were dropping their application. On 10 July Surprise Import requested 30 days to update the court. On 14 July Ms Yaara Shoshani Caspi gave Surprise Import until 20 July 2014 to give their decision to Table Top and both parties were to inform the court as to what had transpired and how they intended to continue

On 20 July, Table Top informed the court, and on 29 July Surprise Import informed the court. In their report to the court, Table Top requested legal costs, clarification and an additional hearing on the main dispute or on intended.

In her ruling, Ms Shoshani Caspi noted that giving up on a trademark application is not a trivial matter, particularly in a competing marks procedure where both parties are considered equally entitled to the mark until a ruling is made. In this case, Grodinzky apparently negotiated on behalf of their client but required telephone confirmation for the agreement reached so the extent of their representation was unclear. In the circumstances, they were required to put into writing a specific request and have failed to do so prior to this ruling issuing

In the circumstances, the competing marks procedures is to continue and both sides are to present evidence and to be available for cross-examination.

In this instance Ms Yaara Shoshani Caspi did see fit to compensate the second applicant for Surprise Import’s behaviour and fined Surprise Import & Marketing Of Gifts Ltd 7000 Shekels in legal costs.

Cook and Bake – Tempering Strict Interpretation of the Law with Mercy

September 9, 2014


259564 - The registered mark

259564 – The registered mark

Israel Trademark No. 259564 for the logo “Cook and Bake” was filed by “Surprise Import & Marketing Of Gifts Ltd”. It covers cutlery and razors in class 8, devices for hitting, cooking in class 11 (from the Hebrew, it seems beating heating was intended) and for tools and Household or kitchen containers, glassware, porcelain and earthenware not included in other classes in class 21.The mark was registered and for obvious reasons Cook n’ Bake LTD. filed to cancel the mark on 27 May 2014. On 7 August 2014, the mark owner requested an extension to respond to the request. A change of personnel at the legal representative (Gornitzky and Partners, Attorneys-at-Law) was given as grounds for the extension request.

The legal representative claimed that the deadline for filing evidence was 1 August 2014, but the patent office calculated that it was actually two months from the date of the submission of the cancellation request of 27 July 2014, and had already passed.

Gornitzky and Partners, Attorneys-at-Law were and remained the agent of record. A change of personnel within the firm, or moving a case from one attorney’s responsibility to another is not considered a change of representation. The argument that the lawyer had not got around to reviewing the case was not considered a legal basis for a time extension. Ms Shoshani Caspi who ruled on the request, felt that by Law the request should have been thrown out. Nevertheless, since trademarks are property, Ms Shoshani Caspi ruled beyond the strict letter of the law, and granted the attorneys until 31 August 2014, on condition that they paid the requisite extension.



לפנים משורת הדין” or clemency, is a legal principle well established in Jewish Law. See, for example, Babylonian Talmud: Baba Mezia 30b.

Specifically in monetary matters, strict interpretation of the Law is considered the behavior of the men of Sodom. On the other hand, lawyers should be encouraged to take their dockets seriously. In addition to requesting the extension fee, this is a classic case for ruling costs to the opposers, who could claim that their rights are ignored.

As we enter the period leading up to the Day of Judgement when we petition the Almighty to judge us mercifully and not in accordance with the strict letter of the Law, this ruling seems singularly appropriate if perhaps unfair to Cook n’ Bake LTD.

One way to compensate Cook n’ Bake LTD. would be to award them costs.


September 9, 2014

Israel Trademark No. 258113 to Gree Inc was allowed under the Madrid Protocol. In 27 categories.

Parfums Gres SA opposed the mark in class 3. Gree Inc did not respond and the mark has been restricted do as not to include coverage of class 3.

Reinstatement of IL 190702 to Go Science LTD.

September 9, 2014

In this case, the three-month opposition period passed so the patent was granted, however, due to a technical error in the Israel Patent Office (apparently now addressed) the patent office never issued the certificate and the agent for patentee did not pay the renewal within three months. In the circumstances, it was accepted that the patentee did not intend abandonment and the request for reinstatement has been accepted and has published for opposition purposes.

Kambrook Trademark Cancelled due to Lack of Use

September 9, 2014

electrical kitchen gadgets

Distributing Pty. LTD own Israel Trademark no. 97166 “Kambrook” for Electrical kitchen appliances; electrical cooking utensils including toasters, grillers, kettles, coffee makers and frying pans; all included in class 11.

In March 2014, Breville Pty. LTD, represented by JMB, Davis Ben-David filed a request to cancel the mark on the grounds that it hadn’t been in use in Israel over the three years prior to the request for cancellation being filed and was thus invalid under Section 41(a) of the Trademark Ordinance.

Evidence of lack of use included affidavits from John Sergeant, the CEO of Breville, and from Yehuda Golan, a private investigator.

John Sergeant claimed that Breville had bought Kambrook out and had marketed products under the name Kambrook in various countries including Australia, New Zealand, and elsewhere and had attempted to file the mark in Israel. Yehuda Golan checked the High Street chain stores selling electrical equipment and also retailers in Tel Aviv and didn’t find anyone who had heard of the brand.

Despite contacting the Agent of Record, no response was forthcoming from the mark owners. In the circumstances, Ms Yaar Shoshani Caspi felt that Breville had presented sufficient evidence to conclude that the mark was not in use and she ruled that it was thus canceled.

Since Breville themselves claimed that Kambrook no longer existed, she did not award costs as there would not be anyone to collect these from.


Kambrook seems to be in use in Australia and New Zealand. See

This ruling explains the standards required to prove non-use. It may be compared with the Axxon ruling where the same adjudicator was (rightly) critical of a cancellation request filed by PCZL who did not use a private investigator but rather filed the affidavit of a trainee lawyer who was not qualified to determine use. There the mark was cancelled since the mark holder failed to respond.However as it turns out, the contested mark is actually in use, as I discovered with a basic Internet search


Get every new post delivered to your Inbox.

Join 283 other followers