Transferring A Contested Trademark to a Limited Company

November 19, 2014

pama

Abad Elrazak Abido is the owner of a registered trademark number 244831 for Pama, for shoes. He wishes to transfer ownership to a limited company: Pama Shoe Manufacturers LTD and to a partnership called Pama Porza, and submitted a request for transfer of ownership signed by him and the company.

This is actually the second attempt to transfer ownership, where the first attempt was dismissed on procedural grounds. Following that first attempt, an appeal was filed to the District Court. This appeal is pending, but meanwhile the owner has again submitted a request to transfer the mark and the present ruling relates to this request.

Section 48a of the Trademark Ordinance 1972 allows both pending and issued marks to be transferred from one owner to another, but gives the commissioner the right to refuse to register the transfer of ownership if it appears to be likely to confuse the public as to the origin of the goods or apparently contravenes the common good.

Puma S.E. opposed the transferring, arguing that the request had procedural flaws. In addition, they claim that the request is designed to create anonymity regarding the source of the shoes. The logic presumably being that the mark is being used to sell counterfeit shoes and Puma prefer to litigate against a person than a company as it is easier to collect if they win.

The Applicant submitted a Palestinian Authority trademark decision concerning a similar opposition, where registration of the mark Pama was allowed, and also submitted a certificate of incorporation, showing that the company to which the mark is to be transferred is properly incorporated in the Palestinian Authority (West Bank). The Applicant further claimed that there was a mediated settlement between him and Puma that allowed him to sell shoes under the PAMA brand in Israel and in the West Bank. The existence of the partnership remains a little cloudy.

Ms Shoshani Caspi ruled that the parties should submit affidavits and then attend a hearing where the relationship between Abad Elrazak Abido, the company and the ‘partnership’ could be clarified by cross-examination of the parties by the parties. Until such a hearing, she felt unable to address the issue of the public good. She noted that Mr Abido rights were not being compromised, as he would have the opportunity to provide additional documentation to substantiate his case. In the meantime, the request for transfer of ownership is suspended and no costs were-ruled.

COMMENT

Those with an interest in trademarks that are inspired by and somewhat similar to the marks of leading brands will note the four striped sneaker opposed by Adidas that was appealed to and upheld by the Supreme Court. Also of note is the Tigris decision which I am somewhat critical of, as it doesn’t relate to sports goods.

I have a working relationship with a Shechem (Nablus) based trademark lawyer which may help clients registering and enforcing in both the West Bank as well as in Israel. I suspect that proceedings are very different before the two regimes.


Requests for Costs Must be Timely Filed

November 19, 2014

missed

Back in June 2014, I reported on a decision by the Israel Commissioner of Patents and Trademarks that the Chinese brand Lovol and the older and more established Swedish brand Volvo are not confusingly similar. Having persuaded the Israel Patent Office that their mark was registered in good faith and was not confusing, Hebei Aulion Heavy Industries LTD, who own the Lovol mark, were entitled to file a request for costs.

The request for costs should have been filed within two months, as per Patent Office Circular M.N. 80. Hebei missed this deadline and, three and a half months after the hearing, they filed a late request for an extension to file costs.

Volvo opposed this request.

Hebei argued that the delay was caused because they waited to see whether the ruling would be appealed. The Commissioner did not see that connection between a possible Appeal and the right to file, and the right to costs for one proceeding is quite independent of whether the ruling may eventually be appealed or overturned. Furthermore, appeals should be filed within one month of a trademark ruling, whereas a request for costs may be filed within two months of a ruling. Where an extension is requested in an ex-partes proceeding it should be requested in advance and not retroactively.

A further consideration submitted by Hebei’s agent-of-record (Wolf Bregman Goler) was that they were unaware of the Circular and their client should not be penalized for their ignorance in this manner.  The Commissioner noted that the Circular issued back in February 2010 and that the agent-of-record was experienced and regularly appeared before the patent office in hearings and the like.

Citing A. Goren on Civil Procedure, the Commissioner noted that ignorance of the Law may be an excuse if objectively the Law is unclear and there hasn’t been any case-law, or, if subjectively, the legal representative had made efforts to avoid the mistake. In this instance, no evidence or arguments were submitted to establish objective or subjective grounds for clemency.

The agent of record argued that his client had a basic right to costs, that the Trademark Ordinance and regulations doesn’t establish a deadline, and so the Circular should not be considered binding. The Commissioner rejected this argument, considering that the Circular filled a lacuna and gave certainty as to whether costs would be requested or not. He considered that different practitioners should be held to the same standards. Costs should be requested at the end of a proceeding and not any time thereafter. There were no good reasons to consider the two month period insufficient, so the request was thrown out.


Forcing Foreign Witnesses to Attend Hearings In Jerusalem When There is a Difficult Security Situation

November 19, 2014

Courage under fire

It is very unfortunate that Israel in general and Jerusalem in particular suffers from terrorist attacks. The situation is not, of course, limited to Israel.

EBay Inc. is opposing Israel trademark application No. 243223 that was filed by Dotcom Retail LTD for the mark BEAUTYBAY.

Arguing that the US Government has warned its citizens not to travel to Israel, e-Bay Inc has asked to postpone a hearing that was scheduled for 3 November 2014 since it is a US company and one of their witnesses is prevented from coming to Israel because of the security situation. They requested a postponement until January 2015 and were willing to pay any costs caused by the delay. Alternatively, they suggested allowing the witness to testify by video-conference.

Dotcom Retail LTD objects to both requests. They claim that the current warning regarding the security situation in Israel has remained the same for decades, and submitted copies of the US Government’s warnings from 2010 – 2012. They claim that the decision against travel to Israel is an internal policy of eBay and is not an acceptable reason for delaying the hearing, as, say, the state of health of a witness might be. They supported their opposition to the request with reference to 2668/03 Etrade Group vs. Karden technologies LTD.

EBay noted that following the Protective Edge Campaign (War with Hamastan – Gaza) earlier this year, the situation in Israel is not normal and that they have forbidden their employees to travel to Israel. They suggested that the hearing could be held by video conference and noted that the Israel Supreme Court had upheld the possibility of conducting a hearing by video conferencing.

REGARDING DELAYING THE HEARING
In her ruling, the Deputy Commissioner, Ms Jacqueline Bracha, noted that the opposer had already postponed the hearing once and had tried to find someone willing to attend a hearing in November. Not being able to, they were requesting a second postponement.

She noted that in an Opposition to patent application number IL 107741 Unipharm vs. Merck & Co., the then Commissioner ruled that parties wishing to obtain IP rights in Israel or to oppose such rights should be willing to testify and to be cross-examined in Israel.

M Bracha accepted eBay was willing to participate in legal proceedings in Israel, but merely felt that the current time was too dangerous. However, she noted that there is no state of war at present that prevents hearings from taking place in Jerusalem. She noted that in 2006, then Commissioner Noam rejected ‘security considerations’ when there was no actual war taking place, and pointed out that a witness can arrive in an Israel Airport, travel to the Patent Office, give evidence and return on the same day. EBay cannot know from day to day or from month to month what the security situation is and therefore cannot guarantee that any postponement will suffice to reschedule a hearing under better circumstances.

The restriction was an internal decision of the eBay and was not a decision by the US government. It had no legal significance and one cannot simply create travel restrictions and expect the Israel Courts to uphold them.

VIDEO-CONFERENCING
Regarding the Supreme Court precedent regarding video conferencing, Ms Bracha noted that in extreme circumstances where a hearing was postponed four times due to a party being in ill-health, hearings have been held outside of a court room. Where the court sits in a court room but a witness testifies or is cross-examined by video conference, the situation is less than ideal in that the testimony is indirect when compared to a witness in the court room. It may be permitted in some circumstances, but use should be limited, particularly if the other party does not willingly consent.

In 3005/02 SmithKline vs. Unipharm testimony over a video link was allowed since the party could not force the witness to travel to Israel. The current case is different in that eBay is the source of the travel restriction, and can lift it as easily as they imposed it.

Referring back to 2668/03 Etrade Group vs. Karden technologies LTD, Ms Bracha ruled that there is a difference between a minor witness and a major one. The courts have rejected ‘security considerations’ as justification for a witness not turning up in court. Both the request for postponement and the request for video conferencing were both rejected.

COMMENT
I think this decision is correct. Formally, Israel is in an ongoing state of War with various Arab neighbours and has been since 1948. Hamas certainly see themselves as in a perpetual state of war, and at best, accept temporary cease-fires as restraint. The case-law that deals with this issue shows that security problems are ongoing and may be considered a fact of life in Israel.

That said, we note that Operation Protective Edge was not declared as being a war, probably since Hamas are not recognized as being a State. It is not clear, therefore, that when there were rockets hitting the country, and occasionally hitting Jerusalem, that the Patent Office would have recognized a state of war. Security fears may be real and not merely a delaying tactic. On a daily basis there are terrorist attacks and many of these are in Jerusalem. I don’t have enough experience of testimony and cross-examination by video conferencing to know if it is a reasonable alternative to standard cross-examination conditions.

As an Israel citizen working and living here it is difficult for me to put myself in the position of an American. I am sure that things are better here than in Syria, Iraq and Iran. I suspect that they are safer than in Egypt, Lebanon and Jordan as well. Let us hope and pray that the security situation in Israel approves.


Another Israel Patent Lapses Despite Timely Payment of Fees

November 11, 2014

Online payment

Israel patent number 213651 relates to a method of saving water. The patent issued on 31 August 2013, and the deadline for paying the renewal fee was 30 November 2013. Due to failure to pay the fee in a timely manner, once the grace period passed, it was considered as having lapsed from November 2013 and a notice that the patent had lapsed was subsequently published in the Israel Patent Office Journal of July 2014.

In October 2014 the patentee filed a request for reinstatement. The agent of record argued that the patentee had paid the renewal fee in a timely manner, however proof of payment was not sent to the Israel Patent Office. On discovering the error in June 2014, the agent of record contacted the patent office to discover what had happened, believing that proof of payment had been submitted. On discovering that proof of payment had not been received at the patent office, he took steps to revive the patent.

From the chain of events, the Deputy Commissioner, Ms Jacqueline Bracha, was assured that the patentee had not intended the patent to lapse and the fact that the patent had been paid but only the proof of payment had not been submitted was considered further evidence that the patentee had intended to renew the patent. There was a lack of explanation as to why so much time had passed from when the fact that the patent had lapsed was known to the patentee to when a reinstatement request was filed. Nevertheless, noting that the Israel Patent Office was closed for festivals, Ms Bracha allowed the request for reinstatement, and  this has published for opposition purposes.


Cofix and Cofizz, Lawyer Requests to Relinquish Representation

November 11, 2014

withdrawal

Israel trademark applications 261549 and 256612 for Cofizz and Cofix are considered competing marks.

Guy Ophir  is the agent of record for Mizrach and Amsalem, the applicants for Israel Trademark application number 261549 for Cofizz. On 21 September 2014 Adv Ophir requested to relinquish representation of his clients. The Deputy Commissioner, Ms Jacqueline Bracha asked Adv. Ophir how relinquishing him of his responsibilities would not adversely affect his client’s rights and cause the scheduled hearing to be delayed.

On 5 October 2014, Adv. Ophir submitted an affidavit to support his request. He detailed the steps he’d made to contact his clients, including proof that registered mail to his clients had been delivered.

Section 13 of the Israel Bar Law 1986 details professional ethical requirements for lawyers.  It requires that the lawyer acts promptly if he wishes to withdraw his representation and that the attorney receives dispensation from the court that is hearing the case. More details are set up in Appeal 15/05 Adv. Blatter et al. vs. Amitai Yigaeli 2005.  As stated by Judge Gronis, a central consideration is that hearings should not be postponed, leaving the court with empty slots. and that the opposing side may not want the hearing postponed and their wishes should be considered. As mentioned by Kling (the Commissioner’s father, Judge Kling) in Legal Ethics pages 344 and 345 (2001), a further consideration is the stage at which a proceeding has reached.

In this instance, a hearing has been set for 28 December 2014. The Deputy Commissioner has ruled that she is prepared to allow Adv. Ophir to withdraw from the case provided that the parties are contacted regarding the scheduled hearing at their registered address.

COMMENT

Details of why Adv. Ophir wishes to withdraw his representation is not clear. It does seem, however, that his clients are aware that he wishes to withdraw and are not responding to him.

I once had a client on Big Brother, where we had a contentious issue at the patent office, and a corresponding case (handled by a different firm) in the Jerusalem District Court. We could see the client on TV but couldn’t get instructions from him. Other clients have moved without updating addresses, etc. I can certainly sympathize with an attorney whose client is unresponsive. Here is seems that the client is aware that representation is being withdrawn, so it does seem fair.

 


Kerem Ben-Zimra – Competing Marks

November 10, 2014

competing wine

David Nachmias filed Israel TM Application no. 258163 for “Kerem Ben Zimra Winery” The Hebrew word kerem means vineyard). Not long afterwards, Yekev Ben Zimra LTD filed Israel trademark application number IL 258562 for יקב בן זמרה (transliterates as Yekev Ben Zimra and means Ben Zimra Winery) and IL 258563 for Ben Zimra Winery. All the marks cover wines in class 33.

Since the marks are similar and were co-pending, in January 2014, the Israel Trademark Office initiated a competing marks procedure under Section 29 of the Trademark Ordinance 1972.

In competing rights procedures, the first to file (in this case Nachmias) does not necessarily prevail. Other factors to be considered are the extent of use of the marks and whether there is inequitable behaviour of either or both parties. The parties are given an opportunity to file evidence to support their rights to the mark.

In this instance, the parties did not file evidence and in August 2014 the Trademark Office gave one month’s notice to the parties to file evidence or the marks would be considered withdrawn. This was ignored, so Ms Yaara Shoshani Caspi closed the files but noted that the parties could refile their applications.

COMMENT

Kerem Ben Zimra is a village near Tzfat that was founded in 1949. It takes its name from the Rabbi from the period of the Mishna, Rav Yossi Ben Zimra haCohen, whose grave is found in the village. David Nachmias and Yekev Ben Zimra both have addresses in the village.

There are other wineries in Kerem Ben Zimra. The Adir Winery has a range called Ben Zimra. The wines produced in Kerem Ben Zimra have a good reputation. As always with competing use for a place-name, it is not clear whether either or both parties should be able to register their marks. In this instance, the parties seem to have backed off a legal battle. It could, however, be a case of both sides losing. What is clear is that there is a likelihood of confusion if two or more wineries call their produce Ben-Zimra.


Wyeth’s Patent Term Extension for Bazedoxifene Cancelled Prior to ReExamination

November 10, 2014
Rocking the boat...

Rocking the boat…

There was an amendment to the Israel Patent Law earlier this year. This amendment (11th amendment) relates to patent term extensions. The amendment was announced, but did not go into immediate effect.

Wyeth filed a request to correct a mistake in the Patent Extension Order concerning Israel Patent Number 120701. The extension Order was given on 23 February 2014, and extends the basic patent for Bazedoxifene which, without the extension, would have lapsed on 18 April 2017.  The intention to grant an extension until 26 August 2019 was given in October 2013 and published back then. The calculation was based on the Law prior to the eleventh amendment.

On 18 September 2014, Wyeth submitted a request to correct the Extension Order to provide protection according to the regime after the eleventh amendment.

Section 16 of the Amendment states:

16(a) this Law will apply to Extension Order requests that are pending before the Commissioner of Patents on the day that this Law comes into effect, and for future requests for patent term extension.

Wyeth’s contention is that the amendment to the Law came into effect on 27 January 2014 and due to the publication for opposition purposes, the period for opposition finished on 31 January 2014, so, at the time the Law came into affect no Patent Term Extension had been granted and the request for patent term extension for IL 120701 must, therefore, be considered as pending at the time the amendment came into effect.

The amendment narrowed down the list of countries that could be relied upon for Israel to grant a corresponding extension. Instead of anywhere in Europe that grants an extension, only Italy, UK, Germany, Spain and France could be taken into account. Significantly, Japan was no longer considered a relevant country in regards to patent term extensions. Wyeth’s patent was extended on the basis of the extension of the corresponding Japanese patent. By ignoring Japan, a longer term could be requested.

There is an interesting twist here. In October 2013, the FDA issued approval for Bazedoxifene together with conjugated estrogens as Duavee. This fact was not taken into account in calculating the Patent term Extension and could act against Wyeth. The Commissioner ruled that it would be improper to apply some sections of the amendment and not others, and that the Israel Patent Office should consider the ramifications of this FDA approval as well. In consequence, the Commissioner did not amend the ruling, but rather canceled it as a wrongfully given bureaucratic decision. He ruled that the published patent term extension was null and void and that the Application would be subjected to accelerated re-examination under the amended Law with the ramifications, if any, of the FDA approval of Duavee also considered.

Various legal precedents were given to support this contention and the solution it offered. The Commissioner noted that Patent Term Extensions are not final and could be reconsidered, even previous to the eleventh amendment.  He related to previous rulings concerning Teva vs. Abbott, Neurim, Lundbeck vs. Unipharm and Roche.

In addition to being able to oppose any subsequent patent term extension, the cancellation of the existing patent term extension may also be opposed by third parties.

Ruling Concerning Patent term extension to IL 120701 to Wyeth, 3 November 2014.


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