Post Issuance Amendment of Allowed Claims

April 20, 2014

Israel Patent No. 122910 to Genentech is directed to a stable isotonic lyophilized protein formulation.

On allowance of the Application under section 17c, Perrigo and Celltrion filed for the mark to be cancelled.

Patentee requested to amend the claims under Section 65 and 66. The Patent Office has decided that the issue of amending claims post allowance requires clarification globally, and the patent and cancellation proceeding are suspended pending a Circular on the matter from the Commissioner of Patents.

COMMENT

Post allowance amendments when a patent is undergoing a cancellation proceeding is indeed something that should be considered globally. With a pending case, it is not clear that this can happen without consideration of the specific case. The Applicant is represented by the alma mater of the commissioner, which doesn’t help things. We suspect that whatever is decided, the case will be appealed to the courts.


Aro

April 20, 2014

Tijuana 96 SL filed Israel trademark application number 235921 for Aro. Ara AG filed an Opposition Proceeding, and Tijuana abandoned the mark. Ara requested real costs of 3,245.6 Euros and provided affidavits and other evidence to support this amount. In light of the relatively little amount of work in the file, Ms Shoshani Caspi considered this too much and awarded 2000 Shekels costs.


INFINITY

April 20, 2014

Israel Trademark Application No. 232574 for “INFINITY” was filed by a Mr Amir Eyal and covers Insurance, financing, namely, portfolio asset management, investment house services, providing funds, special education funds; investment; monetary affairs; pensionary saving; all the aforesaid services, not with respect to rental, leasing purchase or use of automobiles; all included in class 36.

Due to an earlier mark, No 116478, for INFINITE, covering all goods in the same class, the mark was refused under Sections 11(9) and 29 of the Trademark Ordinance.

Eyal (through the good services of Eyal Bressler) argued that his Infinity Group, founded in 1997, was one of the six largest financial management companies in Israel according to Dun’s 100 Guide 2012. He further argued that both in appearance and phonetically, the two marks were not identical; that the consumer of the type of services offered was very discerning so there was no likelihood of confusion; that due to publicity and usage, the mark was well known, and since the issued mark was for an adjective and the requested mark was for a noun, there was no likelihood of confusion.

In her ruling, Ms Yaara Shoshani Caspi noted that applicant had failed to provide any evidence to support his claims and had not made an affidavit to support his statements.

She went on to apply the triple test.

Taking the mark in its entirety and without evidence that the suffix was sufficiently different to avoid confusion, Ms Caspi ruled that the marks were confusingly similar in appearance and sound. Since the existing mark covers class 36 in its entirety, without any evidence to the contrary, the goods may be considered as being similar.

With applicant failing to provide evidence that the consumers were too sophisticated to be confused, and with services such as pensions being available to all, she refused to accept that the target group was different.

Perhaps surprisingly, Ms Caspi ruled that the mark INFINITE is arbitrary and imaginative, since financial services are never without end, and so concluded that the original mark owner was entitled to wide protection.

She dismissed the adjective – noun argument under the ‘anything else’ clause, and thus concluded that the mark INFINITY was similar enough to INFINITE (owned by VISA) to be confusing, noted that VISA had not agreed to coexistence, and went on to reject the application.

COMMENT

I don’t think the term Infinite or infinity is so random and arbitrary. I note that Bank Mizrachi uses an infinity sign. Applicant should have provided affidavits and surveys to argue that the mark was well known and didn’t. The decision is a correct one.


April 20, 2014

Machsanei Electric

Bet Electric Elite Mehandesim LTD applied for the above trademark no. 232670 covering wholesale and retail of electric, electronic, communication home appliances and computers; all included in class 35.

Electra Consumer Goods (1951) LTD opposed the mark. Their behavior was not found to be equitable, and ruled 2000 Shekels costs against them, and Ms Shoshani Caspi gave opposer 14 days to file a statement in response to applicant’s statement.

Since Electra Consumer Goods (1951) LTD failed to respond, so Ms Shoshani Caspi allowed the mark to be registered, but noted that opposer could file cancellation proceedings.


Clip Fresh and Click & Fresh – Confusingly Similar or Not?

April 7, 2014

Farm Chalk Investment LTD filed Israel trademark application no. 234114 for “Clip Fresh by Farm Chalk” on 7 December 2010. The stylized mark is for vessels and container for food storage, from glass, porcelain and pottery in class 21.

Clip fresh

The mark is shown above.

On 7 December 2011 the mark was allowed and it published for opposition purposes in the patent office journal of 29 December 2011. On 29 March 2012, Millennium Marketing Intertrade LTD filed a notice of opposition, and the applicant submitted counter claims on 17 May 2012. Both sides submitted evidence, some of which was cancelled in a minor skirmish, and on 19 June 2013, a hearing was held after which both sides submitted more claims and counter claims and their summing up statements were submitted on 5 December 2013.

The opposer has a registered Israel trademark no. 204165 for a  stylized  logo Click & Fresh as shown below.

click and fresh

The Opposer has been importing quality household items for about 12 years and claims that their click & fresh logo is well-known. When comparing the sight and sound of the two marks, they are confusingly similar and likely to confuse the public since the words ‘clip’ and ‘click’ start with the same sound and the rest of the mark ‘fresh’ is identical. Furthermore, both marks embody the same message of closing to keep produce fresh. The opposer opposed the mark under Sections 11(6), 11(9) and 11(13) of the trademark ordinance.

The applicant responded that they have been using the requested mark since 2011, had a reputation in the container field and had invested in publicizing the mark, including via their website www.clip-fresh.co.il, and thus had no need to free ride on anyone elses reputation. Furthermore, not only are click and clip different, but there is an ampersand & in the mark and this and makes the marks both look and sound different.

Finally, the applicant noted that the opposer had no exclusive rights to the word fresh or click., and had disclaimed rights to these words in the process of registering the mark.

Both sides prevented their evidence.

In the ruling, the Commissioner, Asa Kling, noted that the grounds for the opposition was likelihood of confusion with a previously registered mark, and the legal question was whether the marks are confusingly similar to the extent that the public could purchase goods from one source, believing it to be from the other.

The test to be applied is the triple test, where the main feature is the sight and sound of the mark. Since the products are acquired off-the-shelf, the appearance of the mark was given more weight than its sound. Because of the ellipse, the ampersand and the additional word farm chalk, the likelihood of confusion was not seen as being too great, despite the similar customers being target.

Since there were a large number of similar marks being used by third parties, including “keep it fresh-click” ,”Click plastic design”, “Food container with quick click”, “Lock & Fresh” ,”Keep fresh food containers” and the like, Millennium Marketing Intertrade LTD’s earlier Click Fresh mark was considered insufficiently distinct in and of itself to prevent similar marks from registering. Since the applicant’s mark included the branding Farm Chalk, the allegations of free riding and passing off were rejected.

In conclusion, the mark was not considered sufficiently confusingly similar to opposer’s mark to prevent its registration, and the mark was allowed to register.


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.


Striking Evidence in a Trademark Opposition

April 6, 2014

Al Shurkah Alwataneya Lisenael Al-Alamenyom Walfrofilat – otherwise known as the National Aluminium & Profile Co. or NAPCO, filed Israel trademark No. 240139 for aluminium profiles. On it publishing for opposition purposes, Exstel filed an opposition. The mark in question is a simple line in a profile extrusion, whether an indentation or a protrusion.

NAPCO’s mark is shown here.

Al shurkah indentation

Exstel uses such indentations/protrusions at an angle of 120, and claims that their mark is very well known. The Exstel mark is reproduced below.

Exstel's mark

Unfortunately, Exstel’s mark had not been renewed and had thus lapsed, allegedly due to a clerical error.

Marking extrusions with one or more parallel indentations or protrusions is the only practical way to mark them. The  single 120 indentation does seem to be rather similar.

Since the Exstel had been allowed to lapse, they have to claim that their mark is well known. It may be well known among building contractors, but it certainly is less well known than, say, the Adidas three striped mark.

Applicant argued that the Opponent was using the protruding mark, and not the indented mark. Both sides supplied evidence including various statements.

Applicant has requested that various statements should be deleted since they were submitted as responses to applicant’s statement but are, in fact, new evidence.

One such statement is that Exstel has been using both protrusions and indentations for years. Another related to the likelihood of confusion when purchasing profiles from a store that stocks both NAPCO and Exstel is NAPCO continued to mark their profiles with V indentations.

A third piece of evidence relates to a recording of a conversation with a stockist, that NAPCO wanted dismissed on grounds of it being heresay,  also on grounds that the private investigators did not present this evidence which was slipped in as an appendix, and thus could not be cross-examined.

Opposer argued that all these statements relate to the issue of the mark being new and distinctive.

Finally, the file wrappers concerning the 240081 and 240082 marks to Sharmer were submitted as evidence only at the stage of responding to the  applicant’s evidence, since they were unavailable earlier. (For details of these marks see here).

As far as the Affidavit’s went, the Deputy Commissioner accepted that a protrusion was better than an indentation since indentations created a point of weakness. The Deputy Commissioner was prepared to delete a statement in an expert opinion that a single store might carry profiles from more than one source, since this was beyond his expertise. Since the private investigators had been available for cross-examination, the Deputy Commissioner did not see reason to strike this evidence.

Ms Bracha could not see any reason to cancel the submission of the file wrappers of 240081 and 240082 marks to Sharmer. However, she didn’t think they provided much support to either side, and clearly the opposer could not be cross-examined on the accuracy of their content.

In summary, Ms Bracha struck the statement of Mr Sagi Sgian from the record and ordered 1000 shekels be paid to the applicant

COMMENT

There is always a conflict over whether to favour procedure or substance. The issue here should be whether or not the relevant public, i. e. builders and glazers, would be confused. I think that this is more significant than whether data is submitted in a timely fashion. Having allowed their mark to lapse certainly doesn’t help the opposer. If they do, however, widley use the same mark, i.e. an indentation, then there is a likelihood of confusion. If, for reasons of weakening profile, or other reasons, they only use protrusion, there is probably no likelihood of confusion.


Opposition to Israel trademark No. 238704 Lapidor – לפידאור

April 3, 2014

hanukia   lapidor   ptilor

Lapidor means “torch light” – torch as in a hand held flaming article, not an electronic pocket torch.

Polack Steinberg LTC filed Israel trademark application number 238704 for Lapidor for illumination equipment and accessories in Class 11 on 21 June 2011, and the mark was accepted and published for opposition purposes on 30 April 2012.

On 30 July 2012, Shalhevet Mifal l’Yitzur Nerot LTD (literally Flame Factory for Manufacturing Candles LTD) opposed the mark.

Opposer’s Claims

The Opposer manufacturers oil lamps and religious paraphernalia from various raw materials including plastic, glass and various metals. They have a registered trademark number 231561 for “Ptilor – פתילאור” literally, “light wick”. They also have a registered design for a glass oil lamp, and they claim to have exerted a lot of effort in designing an oil lamp that is easy to install and use, and where the consumerables may be safely replaced.

Originally, Opposer claimed that their mark was well-known in Israel and abroad, but this claim was later dropped.

Opposer alleged that applicant was selling his products as Ptilor – lapidor, and the New Ptilor – Lapidor. On discovering this, the Opposer filed a court proceedings in the District Court (3864-11-11) claiming passing off and unjust enrichment, resulting in a ruling against the applicant using Opposer’s marks.

Finally, Opposer argued that the applicant’s marks are confusingly similar and in the same class, and thus contravene sections 11(6) and 11(9) of the trademark ordinance.

Applicant’s Claims

Applicant manufactures oil lamps in the form of a torch which is packages in a package that converts into a Hanukkah lamp. The mark was chosen due to the shape of the lamp.

Applicant also has registered designs for the box (51251) and for the individual lamps (51252). Applicant claims to have its own reputation and client base and does not need to ride on Opposer’s reputation.

Applicant claims that the advertising campaign was without their knowledge and consent. Finally, the term “or” means light and no one company deserves a monopoly on this generic, descriptive word.

Both sides provides affidavits and supporting evidence and were cross examined on 9 December 2013.

The Ruling

The District Court only enjoined the defendants from using the word Ptilor and not from the word Lapidor (or from the suffix Or).

With regards to the claim that the marks were confusingly similar, the Deputy Commissioner applied the Triple Test. With regard to the appearance & sound of the mark, she ruled that the mark has to be considered in its entirety, and the little weight given to the suffix –or meaning light. Although the clients and distribution channels are similar, with no indication of inequitable behavior in choice of mark and with the marks looking and sounding different, the similarity in clients and distribution channels could not in and of itself create a likelihood of confusion.

The Deputy Commissioner argued that the claim that Lapidor was using the term Ptilor in comparative advertising is problematic since the word was associated with the product and arguably became generic and recognized as the product, i.e. a glass container of olive oil with a wick that made lighting Shabbat and Hanukkah candles with olive oil less fiddly. In other words, the Opposer’s mark is problematic, not the Applicant’s!

The charges of passing off and inequitable behavior was not proven and the Deputy Commissioner did not consider it necessary to address the other claims regarding Unfair Competion.

Conclusion

The opposition was rejected and the Opposer was ordered to pay 1500 Shekels costs and 17,000 Shekels in legal fees.

Israel Patent Office Ruling Concerning Israel trademark application number 238704 “Lapidor”, Jacqueline Bracha, 27 March 2014. 

COMMENT

The issue here is competition, pure and simple. Whatever applicant did or didn’t authorize regarding combining the marks, the term ‘or’ means light and Lapidor and Ptilor are not confusingly similar.

Marketing a similar product to one successful on the market is legitimate so long as the packaging is dissimilar, the branding is dissimilar, where a design is registered, (or under A.Sh.I.R. also unregistered designs), so long as the design appears different. That is the case here.

There was a case some years back where a Turkish company making paint called Dewilux had their mark canceled by ICI, owners of Dulux. The term lux means light, but not many people know that. The Turks mark was confusingly similar. The two marks in this case simply aren’t. Whether either name is particularly distinctive is another issue.\

 


Chic Design

April 3, 2014

chic design
Chic Design Industries LTD filed Israel Trademark Application Number 223957 as shown above, for vending, distributing, importing and exporting furniture and for managing furniture showrooms in Class 35.

The application was submitted on 1 October 2009 and allowed on 9 January 2011, and published for opposition purposes on 31 January 2011. On 14 April 2011, Mr David Azriel filed an opposition, and subsequently the applicant filed a second mark in Class 20 for furniture including sofas, lounge suits, tables, chairs, sideboards, beds and mattresses. The mark was filed on 19 May 2011.

The opposer has a couple of long standing marks filed in 2004 for furniture and domestic ornaments, textiles, carpets, rugs and clothing in section 35.

The marks are shown below.

chic design 2

Opposer’s claims

The opposer claims to have used the marks for 17 years, to have invested in marketing and to have built up a reputation. The opposer claimed that the attempted registration is inequitable behavior, confuses the public and is unfair competition. Since the mark is similar to his earlier marks, it is ineligible for registration.

The Hebrew word עיצובים means designs, and so the word design דיזיין is not distinctive.

Applicant’s claims

The applicant claims to have used his logo since 2002, and to have invested some 100,000 Shekels a year in marketing. He claims to have sales of 12 million shekels a year, to be one of the leading three furniture distributors in Israel and to have developed a reputation.

Applicant claims to be a leading manufacturer of leather furniture, whereas the opposer is an importer of smaller household goods. He further argued that the client base was different. Applicant expressed surprise that opposer was opposing the furniture showrooms but not the mark for selling goods through other outlets.

The applicant argued that opposer had had to disclaim the word Chic to register his mark in the first place, and didn’t have rights in this generic term. Since the marks look and sound different, there was no reason to not allow his mark to be registered. Since he’d acted in good faith, the commissioner could allow coexistence. Applicant further accused opposer of inequitable behavior for waiting three years before commencing proceedings.

Both sides provided affidavits and documentary evidence to support their claims.

The ruling

Since the Opposer dropped charges of confusing public and unfair competition, the patent office ruled on the narrow question of registration in light of confusing similarities.

Under section 11(9), a mark that is identical or confusingly similar to one registered may not be registered. The purpose of the law is to protect the public from confusion and to protect the rights of a party whose mark is already registered.

Applying the triple test, Ms Bracha ruled that although the word ‘design’ is the English equivalent of ‘itzuvim’, the marks nevertheless sound different and look different, even though the word Chic is common to both. She went on to rule that the marks were not confusingly similar.

The goods are dissimilar, in that the applicant sells leather suites and the opposer sells carved legs and the like to carpenters and home designers, rather than full suites of furniture. The deputy commissioner went on to rule that the clients and distribution channels were different.

As to other considerations, Ms Bracha did not think that the public would be confused in that purchasers of leather suites would not think that there was a connection to the opposers mark. Both parties had coexisted for other a decade without any clients being confused, and it was only when one party discovered the other in the yellow pages, that he was aware of him. Similarly, the second company only learned of the first on receiving a Cease & Desist letter.

The Deputy Commissioner noted that the opposer had argued that the applicants marks were widely registered across the class, but only more narrowly used. She ruled that oposer could challenge the scope of the mark in cancellation proceedings at a later date.

In conclusion, the opposition was refused and Opposer was ordered to pay 15000 Shekels in costs.


Accelerating Patent Examination when Inventor is Aged

April 3, 2014

old inventor

Background

In Israel, applications are sorted into tentative technology groups on filing and then, within each technology group, are examined approximately in order of priority date. Periodically, when the ratio of examiners to applications under examination drops sufficiently, the Israel Patent Office sends out Notices Prior to Examination for another batch of applications. There is no need to request examination and no special fee for so doing.

Under Section 19a of the Israel Patent Law, the applicant may pay a fee and request accelerated examination. If there are sufficient grounds for so doing, the patent office will allow the examination of a pending case to proceed, and the examiner should prioritize examination of that case on receiving a response to office actions.

This model has been confused somewhat by the various bilateral and multilateral patent prosecution highway agreements, where positive examination results from the country of first filing may be used as the basis of accelerating examination elsewhere.

The case

On 9 December 2012, Cimas Limited requested accelerated examination of Israel Patent Application No. 216870 on the grounds that the inventor, Professor Shimon Slavin, was born in 1941. Examiner Itay Katz noted that section 19aa1 allowed acceleration based on the age of the applicant, but not of the inventor. Since the applicant was a company, he rejected the request.

Applicant responded that Section 19aa6 allows acceleration in special cases where it is warranted. Whilst section 19aa1 does indeed relate to applicants, the fact that a company may be formed and a patent assigned to it for economic reasons was not supposed to shut the door in the face of elderly inventors who might benefit from acknowledgement of their inventive contributions.

The ruling

The amendment to Section 19 in 2012 was an attempt to codify patent office practice.

Within the discipline covered, Applications should generally be examined in order of filing. Not only is this fair, but otherwise a later filed patent could become a bar to practicing an earlier filed invention. Section 19 is an open list. As of 15 January 2014, requests for accelerating examination should be brought to the Commissioner’s attention.

There is no doubt that 70-year-old applicants are entitled to accelerated examination. Sections 39-43 of the Law states that inventors are entitled to recognition as such, but not to be entitled to anything else. The Commissioner was skeptical that this throws light on the issue in question. Citing Dr Shlomit Yanitzky Ravid, the Commissioner argued that being recognized as an inventor has indirect financial ramifications. Noting government decision 431 from 2006 to address the needs of the elderly which eventually resulted in a ministry for the elderly, and concerns for them to be able to remain in the workforce, the Commissioner ruled that there was a public interest in allowing elderly inventors to enjoy the fruit of their creation. He also went on to rule that the mere fact that the patent is assigned only partially negates the rights of the elderly inventor, for example, forfeiting the discount in filing fees.

Conclusion

The commissioner ruled that the application could proceed to Examination.

Comments

Age of inventor is certainly grounds for acceleration in the US, even now, after the America Invents Act, when the applicant may be a company.

However, arguably the Ministry for the Elderly and the Pensioner’s Party had plenty of opportunity to create an age of inventor clause in this amendment and didn’t. Age of Applicant is a general consideration not an exceptional circumstance and in absence of clear legislation, I am not sure that this interpretation is fair. If we accept age of inventor as being relevant, then what is the cut off age? Retirement age? 70? 80?   Then again, since the Law clearly states that age of applicant is grounds for acceleration, presumably companies such as IBM, Kodak, Coca Cola and the like, should have an advantage over start-up companies! The ruling opens the door to fraud by grandfathering in the inventor, i.e. adding grand-dad as an inventor to skip the queue.

Commissioner Kling has noted that advancing the interests of senior citizens is on the government agenda and used this as the basis for accelerating examination when the inventor is a senior citizen. What about other groups that the government wishes to advance? Former Chief Justice Barak ruled in favour of preferential treatment to rectify this situation. If women and men apply for a senior position and a woman candidate is as qualified as a man, the Supreme Court under Barak would have the woman chosen. Women are certainly under-represented as inventors. Very few applications list women as inventors. Possibly women inventors could request accelerated examination on grounds of their gender? Similar arguments could be proposed to accelerate examination for minorities (Caucasians, Beduin, Israeli Arabs, or for people living in the periphery, or settlers. There is a difference in that the aged are less likely to be around in 2 or 3 years when their application comes around for examination, but that may be true of citizens living on the Gazan border or actively serving in the army or doing reserve duty, minorities such as lifeguards and frequent flyers. I think this may be what the courts refer to as a slippery slope…

 

Over all, I think the decision is wiser than the wording of the amendment.


Follow

Get every new post delivered to your Inbox.

Join 256 other followers