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.

Leave a Comment » | Israel, Israel Court Ruling, Israel IP, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Israel Related, trademarks | 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

Philanthropical Giving – the fight of the non-profits

January 1, 2012

David Zilberslag is a well-known, public-spirited, Ultra-Orthodox leader who raises funds for helping those in need. He filed a trademark application (No. 205341) for כח לתת – Koach l’tet, literally, “the power to give”.

The organization L’tet - Humanitarian Aid In Israel, (ארגון לתת) filed an opposition to the mark, but after the applicant, represented by well-known attorney, Dr Yaakov Weinrot, his statement of case with a request for costs, L’tet withdrew their opposition, stating that although they believe the opposition was legally justified, they did not think it was correct use of public funds.

The Commissioner for Patents and Trademarks, Dr Assa Kling, accepted that both the applicant and the opposer did important humanitarian work, but felt that it was more appropriate for such organizations to find other ways to settle their differences than to fight opposition proceedings and generate legal costs. Nevertheless, he could not deny the parties’ right to fight through  the system.

Commissioner Kling ruled that in principle, the applicant was entitled to recover legal costs, but the awarding of such was discretionary on the Patent and Trademark Authority. No details of actual costs incurred were given, and generally actual costs are rarely given, but rather an estimate of fair costs. In light of the circumstances and the fairly early stage at which the dispute was terminated, he decided to use his discretion and not award costs at all.

COMMENT

This is, unfortunately, not the first time (and probably not the last time either) that two humanitarian organizations have been involved in trademark disputes.

Unlike the case of Johnson & Johnson vs. the American Red Cross, regarding the continued use of the red cross symbol by the ambulance service, this case has some merit, in that charities should choose distinguishable names so that donors are not confused who they are supporting.

There are a number of cases where different charities have confusingly similar names. Then again, “to give” is rather generic, and one wonders why anyone should have rights to a word like that for philanthropic purposes.

I can understand the Commissioner’s position regarding philanthropic organizations wasting public money on legal fees. It is, however, a moral – ethical position, not a legal one. From a purely legal standpoint, one wonders if it would not have been appropriate to have awarded the usual costs awarded to an applicant for a trademark, where the opposition is dropped after the applicant files his statement of case. Commissioner Kling is well within the scope of his discretion, and value based judgements have been in vogue since Former Chief Justice Aharon Barak abandoned formalism and instigated more value-centric judgements.

Although I have no strong feelings regarding this decision not to award costs, personally, I am a formalist who prefers the “law is an ass” approach to Law. I note that judges and commissioners are not democratically elected, and often the reasons and methods of selection for such judicial personnel are somewhat murkily concealed.  In such a system, I would prefer judges and commissioners to judge and to award costs in a manner that neither favours plaintiff nor defendant and which is actually neutral to the type of goods or service that a trademark applicant provides. 

I note that we do not know if the Attorneys were actually charging for their time or if they were working pro bono. If one organization that helps the needy opposes a mark filed by another organization, is it wrong that the losing organization should transfer funds to the organization that wins?

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

Judy Dvora Simchi of the Trademark Department of the Israel Patent Office Passes Away

November 28, 2011

The Israel Patent Office has notified the profession that Yehudit (Judy) of th trademark department has passed away. The funeral was on Sunday in Jerusalem, and the family will be observing the seven-day mourning period in the family home in Maale Adumim.

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

Filing Evidence in English In Oppositions Proceedings at the Israel Patent Office

November 21, 2011

Jonathan Schreiber filed Israel trademark Number 222275 for Metabolin, a product to assist in dieting by slowing the metabolic rate, which, when it was allowed, published for opposition purposes and Merk KGaA, represented by Gilat Bereket & Partners of the Reinhold Cohen group, filed an opposition.

The evidentiary Declaration submitted by Merk, ran to over 150 pages, all in English. The applicant, Mr Schreiber, who apparently is acting without representation, requested that this be translated into Hebrew and Ms Yaara Shoshani Caspi ordered that Merk do this, based on applicant’s claim that he didn’t understand English.

Merk / Gilat Bareket appealed this decision. they argued that they weren’t given an opportunity to oppose Schreiber’s request, in contravention of Circular M.N. 79 and of natural law, and should have had 20 days to respond. Substantively they argued that Schreiber was the sole shareholder of Anderson Medical LTD, whose website included various languages including English, and thus concluded that he understood the language. Furthermore, by providing affidavits in English, the witness would know what he was testifying and third parties would be able to access the material.

Ms Caspi Shoshani rejected the argument that the website indicated that Schreiber knew English, understanding that this merely indicated that he could have material translated at his expense. Substantively however, evidence should be filed in Hebrew or Arabic, but if both sides agreed to English being used, that was acceptable. There was no reason why applicant should bear the costs of translation.

Consequently Schreiber was in his rights to have documents translated into English. She suggested that if Merk were prepared to focus the discussion on relevant passages only, they could have these translated and forgo translating the full 150+ pages.

She noted that were she to come to the understanding that Schreiber did in fact have a good command over English language during the hearing or from his submissions, she would award damages to Merk, regardless of the final ruling.

COMMENT

I have no idea what is in the 150 pages, but can well believe that for an Israeli, this quantity of material in English is tiring. One wonders if it is necessary and it appears that Shoshani Caspi had her doubts as well.

There is an unfortunate practice, sometimes employed by litigants, of burying the opposing party in enormous quantities of material.  Legal Counsel are often not responsible, since if their client provides large quantities of evidence, they would generally file all of it as failing to do so could be construed as malpractice. Consequently costs escalate.

From the way he writes his name in English in the trademark application and from the English description which is clearly a literal word for word translation from Hebrew into English of the goods covered by the mark, I think it is self-evident that Yonatan Shreiber is not able to easily review 150 pages of material in English.

2 Comments | Israel IP, Israel Patent Office Rulings, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Requesting Reconsideration of an Israel Patent Office Decision

November 21, 2011

Berik Design USA Inc. , and Greenstar Hong Kong Ltd.,  (“Opposers”) represented by JMB, Factor & Co. are opposingIsrael pending trademark Nos. 227959 and 227960 by No Fear International LTD, (“Applicant”) represented by Shlomo Cohen & Co.

The following interim ruling relates to a request by Applicant’s counsel to have a decision of the Patent Office Adjudicator reconsidered.

BACKGROUND

Shortly before the deadline for filing a response to the Opposition, the Applicant requested a two month extension to file their response and legal arguments against the Opposition , but the Patent Office granted one additional month only.

Claiming that the Opposers were uncooperative and that obtaining evidence from abroad was problematic, counsel for Applicant requested that this decision be reconsidered.

The Applicant did not provide JMB, Factor & Co. (the Opposers’ Counsel) with a copy of their request, as is customary.

The Adjudicator requested the Opposers’ respond to the Applicant’s request. This was particular difficult for the Opposers’ Counsel, since they had not been provided with a copy of the request. The Opposers’ Counsel spent many days attempting to obtain a copy of the request from the Patent Office, a task which proved to be difficult since the clerk handling the matter was on vacation at the time.

After finally obtaining the details of the request, JMB, Factor & Co., responded to it,  informing the Adjudicator that in principle, the Opposers’ do not oppose the Applicant’s request for an additional month’s extension. However, the Applicant’s counsel  had never contacted them to request such an extension. Furthermore, the Opposers’ Counsel requested the imposition of costs on the Applicant for the time spent in obtaining a copy of the request from the patent office and in responding to it..

The Ruling

According to the Adjudicator for Intellectual Property, Ms Yaara Shoshani Caspi, there is a list of instances where reconsideration of a ruling is legitimate, that is detailed in Appeal No. 1574/11 Strauss Marketing LTD. vs. Moshe Orman, 2011. In her opinion, the current situation does not fall into an appropriate category and thus the decision should not be reconsidered.

Nevertheless, Ms Caspi Shoshani went on to look at the specifics of the case, and noted that the counter-case should have been filed by 30 August 2011, but the request for an extension was only received on 4 September 2011, albeit dated 24 August 2011. The applicant claimed to have relied on a reminder letter from the patent office dated 14 July 2011, but there was a general letter from 31 March 2011 from the trademark department of the patent office to the effect that no reminders would be sent.

Consequently, the request for an extension was rejected and costs ofNIS1500 were awarded to the Opposers.

Following the ruling, the Applicant’s Counsel requested the Adjudicator to reconsider her decision regarding the extension and the amount of the damages.

The Applicant has since filed his response, a copy of which the Opposers’ have yet to receive. The Adjudicator has since ruled that the since the response has now been filed, the request for an extension is moot. Furthermore, the Arrbitrator has ruled that the level of the costs awarded shall not be amended.

Opposition to Israel TM 227959 and 227960, Berik Design USA INC. V. No Fear International LTD.

COMMENT

My brother Aharon, head of trademark department in our firm won this little skirmish, which is nice. Of more importance of course, is to win the opposition proceedings.

It is quite unreasonable for something to take 10 days to reach the patent office from a law firm that uses couriers, and in the age of faxes. Furthermore, regular mail shouldn’t take that long to arrive, and important documents sent by mail could be sent registered or express mail. I think Ms Shoshani Caspi’s ruling reflects this.

Leave a Comment » | Intellectual Property, Israel Patent Office Rulings, Israel Trademark, opposition, trademarks | Permalink
Posted by Dr Michael Factor

What is required to obtain actual and not estimated costs in a Patent Opposition?

November 20, 2011

Oval Magofim LTD, represented by Mati Barzam, successfully opposed Israel patent application No. 165760 to Alberto Lodolo.

After requesting and receiving one extension to file a response and counter-claims, the applicant filed for a second extension and was refused, and the application was thus dismissed.

The opposer filed for costs, and claimed NIS 50,000, arguing that the legal costs incurred were NIS 35,763.60, to which should be added a further NIS 15,000 for direct costs to the opposer who had to use their own staff to prepare evidence for the Statement of Case.

The lawyer’s invoices were appended to the request for costs, as was an affidavit from the CEO of the opposer who claimed that he or another worker had spent 100 hours in getting material together and in reviewing the opposition statement.

In ruling, Ms Y. Shoshani Caspi considered lawyer’s invoices labeled ‘for patent work’ insufficiently detailed to be clearly linked to this specific case and to explain how the sums reached were justified. Furthermore, the affidavit was also considered insufficiently detailed. One specific point Ms Y. Shoshani Caspi queried was that the CEO detailed reviewing the statement of case. Ms Y. Shoshani Caspi considered this as an additional safeguard but not strictly neccessary. She rejected the actual costs and estimated that NIS 15,000 were appropriate for the amount of work performed.

Costs in opposition to IL 165760 to Alberto Lodolo, opposed by Oval Magofim LTD., 19 September 2011.

COMMENT

Without seeing how much material was filed, it is difficult to estimate how much work went into it, but at a reasonable  IP lawyer’s rate of NIS 1000 an hour, one can assume that the cost of filing an opposition, which requires analyzing the application, reviewing prior art and writing an opposition will take time.

I suspect that the patent office simply weighs the material submitted, and am not sure that the estimated costs are fairer than the requested costs.  That said, the patent office is in the best position to directly compare different cases.

 

Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, opposition | Permalink
Posted by Dr Michael Factor

How many lawyers does it take to cross examine a witness?

November 20, 2011

This isn’t a joke. Rafa Laboratories LTD. opposed patent number 129724 to Takeda Chemical Industries.

The then Deputy Commissioner allowed the applicant to cross-examine someone in Slovenia at the opposer’s expense.

The applicant, represented by S. T. Colb, presented the opposer with an itemized bill for NIS 76,449.70, for first class flights for two attorneys from Israel, Takeda’s Head of IP from the UK, and a further representative from Japan. In addition to the four first class tickets, the applicant incurred three night’s stay in Ljubljana and hired the services of a local lawyer.

The opposer thought that three representatives was quite adequate, and that they could fly tourist class. They considered both the Japanese representative and the local lawyer to be unnecessary, also the first night in Ljubljana, which was a full day before the evidence taking, to be excessive. They redid the maths assuming that business class travel was twice as expensive as tourist class, and paid NIS 25,398.41.

In response, Colb argued that the lawyers always travels first class and the first day was required to hold a meeting between the various lawyers, and doing this in Ljubljana was the cheapest option.

The present decision examines the claims of both sides and rules on what are reasonable costs.

The Decision

Ms Yaara Caspi Shoshani considers it the prerogative of the applicant to decide how many lawyers to send and whether the best person is to come from Japan or elsewhere, so found four representatives acceptable. Furthermore, she had no problem with the applicant engaging a local attorney as the examination had to be performed in accordance with local civil procedure. However, regardless of whether the attorneys in question generally travel business or tourist class, she did not see why the opposer should pay for the luxury of business class. As to the first night in the hotel, she accepted that meeting in Ljubljana was cost-effective for the applicant but did not see why the opposer should pay for the expenses incurred by the applicant in preliminary meetings.

She halved the fee asked for on behalf of the Japanese representative, added a taxi fare and a night in Paris for him (no direct flights), converted everything into New Israel Shekels at the exchange rate at the time of the hearing and came to the conclusion that a further NIS 29,935.35 was in order.

The main case-law she based her reasoning on, was Bagatz 891/05 Tnuva vs. Israel Department of trade and Industry,  P. D.  S(1) 600.

The Ruling: Costs re Takeda Chemical Industries vs. Rafa Laboratories Concerning Israel Patent No. 129724, 20 September 2011.

Comments

IL 129724 relates to crystaline structures of Indazole.

I would recomend any attorney having reason to go to Ljubliana to visit Bled. It’s stunningly beautiful and seems a pefect backdrop for a business picnic. I can understand why Rafa feel bled by this, but quite frankly the sums of money to be made if a commercially significant pharmaceutical patent is successfully opposed are very significant.

Unfortunately, when I went with wife and kids for a week’s self catering holiday in Slovenia, we went tourist class and I couldn’t write it off as a business expense. Still it’s nice to know that one day I may need to go there on IP related business.

Leave a Comment » | drugs, Intellectual Property, IPO, Israel, Israel IP, Israel Patent Office, Israel Patent Office Rulings, opposition, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Dr Michael Factor

A slew of interim judgements and other minor rulings

November 20, 2011

There have been a slew of minor judgements recently published by the Israel Patent Office. None are big headline decisions, but to the extent that the Israel Patent Office is consistent, they do indicate what is likely to happen in analogous circumstances, which is probably why they are published in the first place.

Currently, Ms Yaara Shoshani Caspi is the only adjudicator at the Israel Patent Office who is issuing rulings, so understanding how she sees things, is of value for those engaged in contentious proceedings before her.

Finally, as this blog tries to be comprehensive concerning Israel IP developments, it seems that these should be covered like everything else.

The following articles are thus interim decisions reported in the interim, until something substantive happens.

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

Israel Patent Office denies authority to retroactively restore the priority period for design registration

October 16, 2011

If an Israel design application is filed within six months of an identical application filed abroad in a Paris Convention country, the Israel application is entitled to the effective filing date of the foreign application.

In Design Application No. 51361 to Serti, the application was filed more than six months after the corresponding foreign application was filed and the applicant petitioned for a retroactive extension of time. Yaara Shoshani Kaspi, the adjudicator at the Israel Patent Office refused the request ruling that the Israel Patent Office had no authority to consider such requests. Consequently, she didn’t relate to the grounds brought.

COMMENT

Shoshani Kaspi is correct. In this instance, there is no indication what the design is, whether the attorney was at fault for missing the date, or if there was an oversight due to something attributable to an Act of God, like an earthquake, or something more mundane like technology failure. Was this a last-minute mistake wrongly assuming the Israel Patent Office was closed on a Sunday, or something similar?

There is no indication what the design in question is, so it is not clear if all is lost or whether the design could be protected by copyright, trademark law or unjust enrichment.

 

Leave a Comment » | design, Intellectual Property, Israel, israel design ruling, Israel Patent Office, Israel Patent Office Rulings | Permalink
Posted by Dr Michael Factor

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