“Scarless” Refused Trademark Registration

January 19, 2015

Medicure Technologies LTD applied for ISrael Tademark No. 248551 for the work ‘Scarless’ in class 5, for a gel that prevents tissue scarring.

The Israel Trademark Department refused to register the mark, ruling that it is descriptive and cannot be registered due to Section 8a of the Trademark Ordinance since the mark is lacking in characteristics required for the term to be used for branding purposes.

The Applicant argued that the product they were selling was a gel and the word Scarless does not imply a gel. Someone hearing the name Scarless, would, at best, consider it as hinting at the product, and noted that there were marks such as “Follow Up Postage” and New Look, which are far more descriptive. The Applicant requested judicial review of the Examiner’s decision, based on the submissions in the file forgoing the right to a hearing.

The Deputy Commissioner, Ms Jacqueline Bracha noted that since the Applicant had not raised the issue of acquired distinctiveness, this was an issue that she need not address. She further noted that the mark scarless was a word mark.

As to marks that hint, Ms Bracha gave the example of magazines with titles such as Family, as being such marks. Quoting Seligsohn 1972 (The Israel Trademark Bible), she noted that a makr that indicates the purpose of a product or the results of use of the product are considered descriptive.

Citing Kerly’s Law of Tradmarkas and Tradenames:

“The situations specifically covered by [arts 3(1)(c)/7(1)(c)] are those in which the sign is capable of designating a “characteristic” of the goods or services referred to in the application….

The provision extends to any characteristic whatsoever of goods or services, irrespective of how significant the characteristic may be commercially.”

Whilst acknowledging that the desired mark does not include the word gel, she considered this irrelevant in asserting that the mark is descriptive.

She went on to examine the ‘New Look’ mark cited by the applicant, and also the slogan ‘Free Your Skin’ and came to the conclusion that the mark “Scarless” was indeed descriptive and, upheld the Examiner’s decision not to allow it to be registered.

COMMENT

The Deputy Commissioner is correct. Whilst the product sold is a gel with alleged scar preventing properties, the customer purchases a way of preventing scarring and couldn’t care two hoots if he product is a gel, a roll-on preparation or an aerosol spray. The term scarless is descriptive of the main property of the product and it would be wrong to allow one manufacturer a monopoly on this descriptive term.

Furthermore, a quick Internet search shows that there a plethora of products and plastic surgeries that use the term scarless.


Narrowing Claims During Oppositions

January 18, 2015

narrowing

IL 188066 to Elta “Gunshot Detection System and Method” is being opposed by Rafael.

During opposition proceedings, the Applicant is allowed to narrow the scope of protection by deleting claims or by adding restrictive features.

In addition to claim amendments that were specficially authorized, Elta deleted some additional claims and made further amendments. These amendments were clearly restricting the scope of the claims but Elta exceeded the amendments that were agreed between the parties and did not flag that they were making further amendments.

In the circumstances, the Commissioner Asa Kling accepted the amendments, gave Rafael two months to correct their statement of case and awarded costs of 7000 Shekels costs to Rafael.

 


Reviving Lapsed Patents in Israel

January 18, 2015

revival

The December crop of patent office decisions included a number of attempts to revive lapsed patents. The requirements for revival, broadly speaking, are that the patent lapsed unintentionally and that the patentee acted promptly to restore the lapsed patent. Three out of five requests for reinstatement were allowed. Two requests were refused due to tardiness in filing the request for revival.

IL 152965 to Shlomo Lavel unintentionally lapsed. Patentee claims to have paid the renewal fee on-line but could produce no evidence of this. He further claims to have made steps to commercialize the technology. When trying to pay the second renewal he discovered that the patent had lapsed. As Deputy Commissioner Ms Jacqueline Bracha was convinced that the patent lapsed unintentionally and that the patentee took steps to rectify the situation promptly on learning that the patent had lapsed, she has ruled that it may be revived and the decision will publish for opposition purposes.

IL 168588 to Sharine Polishing technologies LTD unintentionally lapsed. Patentee paid the renewal fee on-line but did not send the proof of payment to the patent office. Following a random check he discovered that the patent had lapsed. As Deputy Commissioner Ms Jacqueline Bracha was convinced that the patent lapsed unintentionally and that the patentee took steps to rectify the situation promptly on learning that the patent had lapsed, she has ruled that it may be revived and the decision will publish for opposition purposes.

IL 192499 to S. M. B. T. technologies issued on 25 June 2013. The first renewal should have been paid within three months, i.e. by 29 September 2013, and, when it was not paid within the subsequent six months, was deemed to have lapsed as of 29 September 2013. The current owners took possession on 3 September 2013 and responsibility was transferred to Zvi Ben Ari, Patent Attorney. Mr Ben Ari attempted to pay the next renewal on 3 June 2014 and learned that the patent had lapsed. He contacted the previous representatives for an explanation but was unsuccessful in this attempt. It seems that the patent was abandoned due to human error. The problem was that the request to reinstate was only submitted some four months later. In the circumstances, Deputy Commissioner Ms Jacqueline Bracha could not find that the patentee or his representative had acted promptly to reinstate as required by Section 60 of the Law, so reinstatement was not allowed. The patentee is entitled to a hearing under regulation 90.

IL 196017 to Microsoft lapsed due to failure to pay the second renewal which lapsed at the end of June 2013, and the fact that it had lapsed published in the February 2014 patent office journal. Microsoft filed for reinstatement, claiming that their foreign renewal service provider unintentionally noted the filing date as June 2008 instead of June 2007 and so docketed the renewal for 28 June 20014 instead of 28 June 2013. In April 2014 the local agents (Colb) were contacted and on 15 July 2014 they filed for revival with affidavits from the service provider. Although the reasons for the patent lapsing were explained, no explanation was provided for the nearly four months that passed before the reinstatement request was filed. In the circumstance, reinstatement was not allowed. The patentee is entitled to a hearing under regulation 90.


January 15, 2015

חלית

The Center for Actualizing Medical Rights LTD extensively use a radio advertisement that starts “חלית? נפצעת?” i.e. “You’ve become ill? You’ve been wounded?”. It then goes on to offer advice that is not legal advice and gives a phone number.

The Israel Bar is less than happy with this and similar organizations offering ‘non legal advice’.  That as may be, On 2 January 2102, the Center  filed Israel trademark no. 243620 for “You’ve become ill? You’ve been wounded?” in classes 36 and 45.

The trademark department refused to register the mark as lacking distinctiveness and as being descriptive of the services provided and thus not registerable under Section 11(10) of the trademark ordinance 1972.  The Center claimed that the mark had acquired distinctiveness through use and submitted affidavits from MS Gitit Shlomi, Head of Foreign Connections and from an expert. The trademark department remained unconvinced, however.  Representatives of the Center requested an oral hearing, submitted a further affidavit from Ms Shlomi and also requested that sections of their evidence remain confidential from third parties.

During the examination period, Zchuti (My Rights), a competing non-legal advice company that also advertises extensively on the radio, filed a statement to the effect that the desired mark was generic and that allowing one service provider to monopolize it would provide that party with an unfair advantage. They also submitted four examples of how they were also using the phrase. This letter was not forwarded to the applicants, but was shown to them at the hearing and they were allowed to respond in any way they desired.

Ms Jacqueline Bracha analyzed the case and concluded that there were  three legal   issues to address:

  1. the status of the third-party submission
  2. the request for confidentiality of applicants submissions
  3. whether the mark was registerable, particularly whether or not it had acquired distinctiveness.

She went on to analyze these considerations in turn.

The status of the third-party submission

Applicant considered Zchuti’s submission should be ignored as they are not a party in the trademark registration procedure and can choose to submit their objections to the mark being registered in an opposition proceedings. Furthermore, their submission was not submitted as an affidavit and should be ignored for that reason as well.

In her Ruling, Ms Bracha noted that unlike the Israel Patent Law 1967 which specifically allows third-party submissions prior to examination proceeding, the trademark ordinance is silent on the matter. To the extent that such submissions are relevant to the registration process, examiners may take the submitted material into account but should inform the applicant to give the applicant a chance to respond. Support for this position was based on Christopher Morcom, Ashley Roughton & James Graham, The Modern Law of Trade Marks 164 (1999) and Judge Zamir’s comments in 987/94 Euronet golden Lines (1992) vs. Minister of telecommunications P.D. 48(5) 412, 423. She therefore rejected the Applicant’s position in this regard. As the submission was a factual one, there was no obligation for it to be backed up by an affidavit either.

The Applicant requested that some of their evidence remain confidential as it relates to trade secrets. The confidentiality request relies on Circular 028/2014 which opens up trademark examination files to third parties.

Section 23 of the Trade Law allows the courts to maintain confidential trade secrets submitted in a legal case and to set rules for submitting trade-secrets as evidence. The courts may issue a non-publication order on trade-secrets if the maintaining of something as a trade-secret does not prevent justice from occurring. Judicial personnel such as patent examiners are included in the courts. In the case of 2376/13 Rami-Levi vs. Moshe Dahan the Supreme Court noted that trade-secret confidentiality was ad hoc by its nature.

Ms Bracha ruled that to the extent that data submitted is relied upon to show use of a mark and acquired distinctiveness, the public has a right to know the data. On the other hand, other business related data can and may be kept secret. The number of workers at the Center is not germane to the issue of registration of the mark, nor is the sum spent in advertising. It is sufficient to note that the mark has been used extensively over a period of years. As far as the ex partes registration procedure is concerned, the material could be kept confidential. However, should the mark be allowed and Zchuti or some other third party should file an opposition, the confidentiality request issue would have to be reassessed.

As to the registerability of the mark, both Ms Shlomi’s evidence and the independent expert testimony by Professor Katz show that the public identifies the slogan “You’ve become ill? You’ve been wounded?” with the Center for Actualizing Medical Rights LTD.

The mark is not descriptive. The phrase You’ve become ill? You’ve been wounded?”  does not relate to compensation from national or private insurance. Zchuti’s usage of the mark does not render it generic.  Ms B racha ruled that the mark may be registered as allowed and published for opposition purposes.

Israel trademark no. 243620 for “You’ve become ill? You’ve been wounded?” ex-partes hearing, Ms Bracha, 1 Dec 2014.


Israel Patent Application Number 142789 – The European Patent Wrapper

January 15, 2015

file wrapper

DSM IP Assets owns Israel Patent Application Number 142789.

PMS Armory Factory LTD opposed the patent issuing. The opposer wished to enter the file wrapper of the corresponding European patent application into the evidence, but the Adjudicator of IP, Ms Shoshani Caspi refused to allow this as the request was submitted late in the proceedings. The opposition was rejected on 17 October 2013 and the Opposer appealed to the District Court.

On 12 August 2014 Judge Shitzer ruled that the file-wrapper of corresponding patent application EP 1137828 should be admitted as evidence. See here. The Applicant appealed this to the Supreme Court who ruled that the case was ongoing and so they were not yet prepared to get involved.

The Applicant therefore requested an expedited decision by the Patent Office regarding EP 1137828 so that they would be able to benefit from the application before it finally lapsed in 4 1/2 years. The Opposer rejected this request, claiming that it gave the impression that they were time-wasting. They requested due process including the right to cross-examine the witness. Applicant argued that the file wrapper did not need to be submitted by a witness that would be available for cross-examination. The District Court merely ruled that the evidence was admissible. Submitting via a witness who would be cross-examinable was a mere time-wasting exercise.

The Opposer argued that the European file wrapper raised technical issues that required clarification, and the applicant argued that this was widening the grounds for opposition. The sides each tried to get the other’s case thrown out on technicalities and argued as to who should be cross-examined first to avoid giving one side an advantage over the other.

Ms Yaara Shoshani Caspi ruled that as the European file wrapper was ruled as admissible by the courts, its relevance should be determined and now was not the time to try to stop it being considered by a technicality. She went on to rule that the European file wrapper should be submitted with a statement of its relevance to why the claimed invention is not patentable and the applicant could respond to the statement. There was a need to finish the opposition without further ado to provide legal clarity to the sides and to third parties regarding the validity or otherwise of the patent.

The Opposer should submit the European file wrapper in full within 14 days with no moe than six sides of arguments and the applicant would have 14 days to respond. The opposer would then have 7 days to sum up in three sides. That would be the time to decide whether a witness should be available for cross-examination. Should there be a hearing the sides would be required to sum up orally, and a final ruling would issue soon after the summary / hearing. No costs were awarded at this time.

 


Hearsay in Affidavits

January 15, 2015

hearsay

The Karelia Tobacco Company Inc. owns Israel Trademark No. 103603. Dubak LTD opposed the mark.

Karelia requested that sections of an affidavit by a Mr Gleiberman that was submitted by Dubak should be deleted as being hearsay and beyond that directly known by the Gleiberman.

Ms Yaars Shoshani Caspi, an Adjuicator of IP at the Israel Patent Office ruled that without Mr Gleiberman being cross-examined it was too early to tell with any certainly what parts, if any, were hearsay and what was directly known to him.  She therefore refused to order sections deleted prior to the hearing.


Competing Marks

January 15, 2015

sweeney todd

Razer (Asia Pacific) PTE LTD. is a Singapore based company that has filed a Madrid International trademark application no. 1097804, Israel TM No. 242735 for “Razer” in classes 9, 18 25 and 28

The mark covers Computers; laptop computers; notebook computers; handheld computers; personal digital assistants; computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; computer displays; computer monitors; computer hardware; computer sound cards; computer peripherals; computer and video game controllers; computer mice; computer keyboards; computer keypads; computer graphics tablets; computer pens; computer joysticks; computer trackballs; flight yokes for computer and video games; steering wheels for computer and video games; accelerator pedals and brake pedals for computer and video games; guns for computer and video games; motion sensors for computer and video games; audio equipment and apparatus; earphones; headphones; microphones; headsets; loudspeakers; apparatus for cable management for the aforementioned goods; computer and video games; computer mice mats; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 9; Bags; messenger bags; sport bags; travel bags; backpacks; knapsacks in class 18; Clothing; polo shirts; T-shirts; sweatshirts; headgear; caps; sweatbands in class 25, and Games and playthings; electronic games and playthings other than those adapted for use with television receivers; video game apparatus other than those adapted for use with television receivers; handheld video game apparatus other than those adapted for use with television receivers; parts and spare parts of the aforementioned goods as far as included in this class; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 28. The mark was filed on 28 August 2011.

Before this could be examined, on 29 November 2011, Razor USA LLC filed Israel trademark no. 242450 for Razr in class 9 covering Computers, tablet computers, and related accessories, namely, computer docking stations, mounts, stands holders and cradles for holding and charging computers, carrying cases for computers, protective covers for computers, protective or decorative skins, screen protectors, namely, fitted or plastic films known as skins for covering and protecting computers, input and navigation devices, namely, keyboards, mouse, track balls, and stylus for use with computers, computer memory, namely hard drives, portable and removable memory for use with computers, networking equipment, namely modems, routers and gateways for use with computers, batteries, power adaptors, computer cables, cable connectors, remote controls, headsets, speakers, sound systems for use with computers, and microphones and web cameras for use with computers and computer software; telephones; corded and cordless telephones for wireline service (PTT (post, telegraph and telephone) POTS or PSTN service); mobile phones, smartphones, and accessories therefore, namely battery chargers and power adaptors; all included in class 9.                        .

Because of the similarities between the copending marks a competing marks proceedings was instituted.

In such proceedings, the first-to-file is only one consideration. The extent of use of the mark and indications of inequitable behaviour are also considered.

After evidence was submitted and before a hearing was held, Razer (Asia Pacific) PTE LTD. submitted additional evidence showing sales during the years 2006 to 2010, and also Google searches for the term RAZER. The additional evidence was submitted under Section 41 of the Trademark Ordinance and under Circular M.O. 55. Razer claimed that the peculiar nature of competing mark procedures and the importance of the supplementary evidence justified its submission. They also argued that the affidavits of both parties related to these statistics, so their submission was by way of clarification rather than widening the range of issues under debate. Razor USA LLC did not challenge the relevance of this supplementary material, but did consider it should be inadmissible at this stage of the proceedings.

The Commissioner noted that the competing marks procedure is adversarial by nature, but there are no clear binding procedures. He considered that to not allow additional evidence to be submitted which could help clarify which side should prevail, it would be necessary to show that doing so would be particularly burdensome or could create an unfair advantage. Section 41 of the trademark ordinance authorized the Commissioner to request additional information at his discretion. Whilst the general civil procedure may be applied, this should only be done to the extent that it doesn’t interfere with a fair result being reached.

The sales information is considered germane to the issue of which side should prevail. Razer had related to sales and provided details of sales in 2011 and 2013, and the additional evidence simply details sales at an earlier date. The Google search results are less fundamental and require more explanation as to their relevance. Although these may indicate the respective usage of the parties, there was no explanation why they weren’t submitted earlier. Consequently, the sales information was accepted as additional evidence but the Google search data was not. Razor USA was provided a ten-day window to submit their sales data and costs of 8000 Shekels were awarded to Razor US for having to fight this additional submission.

Decision re Competing Israel Trademarks No. 242735 and 242450, by Commissioner Asa Kling, 14 December 2015

 

 

 

 


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