Housing crisis? A call for stiletto heels? The end of punctures? Read on to find out! On 27 May 2013, Yaara Shoshani Caspi suspended the cancelation proceedings concerning Israel Trademark No. 235764 “No Flats”, pending decisions in Magistrate Court hearing T.A. 1269-05-13 and Appeal to Supreme Court No. 3011/12 of District Court Ruling 1854-02-11 by judge A Yaakov. On 24 January 2014 the Supreme Court referred the case back to the District Court, authorizing it to rule on the rights and reputation of the parties in the mark as part of the Company Disbanding Case 23707-04-10. Ms Shoshani Caspi of the Israel Patent Office noted that the issues before her regarding the scope of the mark were identical to those before the court. Neither side informed the court regarding costs incurred in the case before the magistrate’s court. The Mark owner petitioned the court to throw out the case due to a lack of response, despite the fact that there was a response, albeit a late one, before Ms Shoshani Caspi. In light of the circumstances, Ms Caspi ruled that the ongoing case should remain suspended pending rulings in the remaining courts. The mark covers oil industrial, lubricating oil, Dust absorbing compounds, Wetling compounds, Interconnecting compounds, Fuel materials as well as Gasoline engines and lighting, candles and Lighting kerosene stoves. All included in class 4. The Applicant, Adhestick, is a neighbor of mine in Rosh haAyin.
In per capita terms, Israel is the highest patenting country in the world, despite the previous blog article. China is a big market, and a manufacturing powerhouse with a very large population.
An interesting article describes symbiotic relationships between the countries.
At present, the single client who I’ve done most IP work for in the past three years is a Chinese company part owned by an Israel start-up, that is essentially a joint venture between China and Israel, with an Israeli CEO and president, and Chinese workers. I don’t know how representative this business model is, and suspect that it is a unique phenomenon, but it is a highly successful one.
I hope there will be more cooperation in future years.
China and Israel are both ancient civilisations. The classic overland trading route to China via India starts in Israel’s Negev Desert. Columbus was actually looking for a Westward way to India when he stumbled on the New World, which he called the West Indies, and the populations Indians.
Indus TechInnovations sent me the following “informatic” for publication: Patent trends – Israel. It is very gung-ho and positive. The problem is that last year’s statistics have published and are less positive. See my article from February. Since the 2013 statistics have been published, ignoring them does a disservice. Particularly where they buck the trend.
There was anArticle from Idiot Achronot last Friday, by Sever Plotzker (טור ששי) that claimed to provide the true facts behind the propaganda in various areas, one of which was patents and innovation. Dr Esther Luzzatto, managing partner of the Luzzatto Group, one of the big five accountancy firms [sic] specializing in technology and IP was quoted. Now, we can argue whether or not the Luzzatto group is one of the largest patent attorney and law firms in Israel, but it is not a large accountancy firm and I am sure that Drs Kfir and Etty Luzzatto would be the first to acknowledge that.
The article included a number of interesting statistics and theories.
Briefly, the points raised were:
- A drop in PCT filings of 30%
- Significant drop in investment in start-ups
- Privatization of technology incubators
- International companies opening R&D facilities in Israel
- In 2013, there were 780 start-up companies registered, where the general average is about 650 a year.
The drop in PCT filings was considered a reliable indicator of innovation in general, and patent activity in particular. It was linked to the drop in funding, which was linked to the privatization of incubators and venture capitalists wanting a quick exit and to international companies creaming off talent by opening R&D facilities, where the patents were registered in name of international holding company.
I would not be surprised if the original research by the Luzzatto group resulted in a coherent report. What was clear was that the journalist who extracted the data and summarized it in a column and a half didn’t have much of an idea about the subject matter.
Nevertheless, the article made a few points worth considering. The first one was that there is apparently a drop in PCT filings by Israelis of 30%. This statistic is worrying, but I am not convinced that Dr Luzzatto is correct that this is a representative marker of innovation or even of patenting activity. The underlying assumption that this statistic clearly shows a drop in patenting, but it actually only shows a drop in PCT filings. There is an inherent assumption that patent filing is always reflected by use of the PCT mechanism. I suspect, however, that a lot of activity is going on in telecommunications and software, particularly in developing mobile phone applications. In these fields, many start-up companies have filed PCT applications only to run out of money 18 months later. With the speed at which these fields change, it is a reasonable to file in US only. The calculation of the company’s value may be based on US market only.
Some medical device companies also only file in US. Here it is less easy to justify, but with a limited budget some companies are perhaps more careful where and how widely they file, but are, nevertheless, innovative and may be able to bring a product to market. of course, sometimes the invention is only patentable in the US. I’ve had that with medical methods, for example.
One of my clients makes industrial digital printers. The company’s market is world-wide, but competing products are manufactured by companies based in Israel, the US and recently Italy. The company has traditionally filed in Israel and then in US under the Paris Convention, and recently also files in Europe. There is little justification for them to file PCT applications. One of my client makes game changing computer hardware. The company files in the US and immediately afterwards in the Far East under the Paris Convention since their competitors are all in Asia. It may make sense or them to consider filing a PCT application for the more critical applications to keep their options open, or to file in India and Europe just in case competing factories open up there. Client considers the $100 million required to set up a fab rules out this possibility. So there you have it, start-ups, small Israel manufacturers and a large company all actively patenting, but not using the PCT mechanism.There may indeed be a drop in inventing, but it is less severe than the 30% discussed in the article.
There is a drop in venture capital. However, in the past there have been bubbles where venture capital invested has been out of all proportion to real worth. This is a world-wide phenomenon, not one exclusive to Israel. With low-interest on safe investments and now some govt. intervention in the property market, one imagines that venture capital will grow again. Recently investors have been looking to buy existing patents in order to sue infringers. This model is diverting funding from research, but won’t last.
Privatization of technology incubators may result in investors being short-sighted and focused on a quick return for investment. However, it is doubtful that this is related to the drop in PCT filings. One needs a first filing, maybe a provisional application, to solicit funding in the first place since investors want to see that there is something allegedly patentable. The Paris Convention Deadline, or PCT filing date, comes around a year after the provisional is filed. Private investors may want a quick return, but it won’t be that quick that the money’s run out before a PCT application can be filed. The preference for private vs. govt. funding models are more tied up with political ideology than with anything else. Generally capitalist economics assume that the private market will do a better job than the government in creating new industries. Whether or not this us true, State funding of basic research in universities makes sense, but I am not sure that the tech transfers should be funded by the government. Certainly some government-funded start-ups should never have received funding since the basic concept was obviously wrong.
As to International companies opening R&D facilities in Israel, this as generally positive. It is preferably for Israelis to work for large corporations such as Intel, Microsoft, Google, GM, etc. in Israel, than that they go to Silicon Valley to work for them. The large companies offer a reasonable salary and conditions, but the entrepreneur willing and able to try to establish a start-up will forgo the salary and conditions to take the risk of starting up something of his own, if he can obtain funding. It is unlikely that the existence of R&D centers makes obtaining funding for a new venture less likely.
The drop in start-up companies from 960 In 2013, there were 780 start-up companies registered, where one would expect 650 when taking a longer perspective.
Many patent firms are keen on clients filing PCT applications. It generates income. Perhaps the hesitancy by inventors reflects a greater sophistication and realization that funding is difficult to come by, and companies are filing less widely but not necessarily less first filings?
My problem is with the article in Idiot Achronot. It is unclear to what extent it reflects the views of the Luzzatto group in general, or of Etty in particular.
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.
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.
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
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.
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.
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.
The Israel Patent Office will be closed for Pesach (Passover) from Monday 14th April 2014 to Monday 21 April 2014, and will reopen on Tuesday 22 April 2014. Any deadlines are extended until Tuesday 22 April 2014.
NOTE – PCT applications based on a Paris Convention deadline falling over the closure period may be filed on 22 April 2014. However, the USPTO does not accept US national phase entries of such PCTs as timely filed when the priority application is a US Provisional application.
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.
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 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.
The commissioner ruled that the application could proceed to Examination.
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.
Although perhaps not all my avid readers will concur, I do try to blog comprehensively on all Israel Patent Office decisions and court rulings concerning IP. One of the generally less entertaining type of decision that I wade through relates to reinstatement of lapsed patents.
In IL 205893, the patent issued on 1 April 2013 and the renewal payment was timely made on 22 April 2013. It was a case I handle. I must admit, it is more fun writing up cases where other firms missed the deadline or something else went wrong rather than reviewing my mistakes.
Recently, having a couple of quiet days, I went through all my cases comparing my files with the status on the patent office website and realized that this patent was listed as having lapsed. In this case I have proof of timely payment and a copy of the covering letter to the patent office. What I don’t have is proof that the payment and letter were submitted.
In the circumstances, I had to file a request for reinstatement which was promptly accepted.
There have been a number of similar cases in recent times. Sometimes the patentee pays on-line and assumes that he does not need to print out the receipt of payment and hand file it. Perhaps partially due to this blog, the patent office now has a large reminder notice that this is the required procedure. It doesn’t help me as I know that is the procedure. I simply can’t prove that I actually followed the rule.
What did surprise me was that along with the decision to allow the case to publish for opposition purposes, I received a request to pay the first renewal fee. This was odd as I had attached a dated payment slip to show that the renewal was timely paid together with the fee for reinstatement and a covering letter. I queried this and it turns out that since we are in a different calendar year, the paid fee cannot now be processed and I need to pay again (now an additional 15 shekels), and can request a refund for the fee paid. This seems a lot of unnecessary aggravation all round, as it creates work for the patent office as well as for me.
What seems like a useful development would be for the patent office to link the on-line payment with an online reporting mechanism. Maybe this will happen one day. I know that the Israel Patent Office is able to see at a glance which cases each firm handles. If we could see the same interface together with an action list and deadline, i.e. a patent office generated docket, that would be grand. I suspect US attorneys have this in private PAIR. I know that there are plans to allow online filing and we are getting there. It will just take time.
In another decision, re 206874, the renewal fee was not paid despite client’s instructions for it to be paid. Since it was not paid by mistake, and the firm was able to provide evidence of reasonable docketing procedures, just something went wrong due to human error, the case was allowed to be reinstated.
Israel Trademark Number 192334 “Moi” is owned by Mewah Brands (S) Pte Ltd. the mark issued on 6 April 2008. On 17 July 2011, Densher (1963) Ltd. filed a request for cancellation of the mark on the grounds that it hadn’t been in use for at least three years.
The parties filed their evidence. The mark owner agreed to forgo a hearing, and on 12 June 2013, Ms Jaqueline Bracha requested that the parties file their summation statements.
Densher (1963) Ltd. filed their summary statement but the mark owner neither filed a statement nor even requested an extension.
Since the mark owner failed to defend the mark and also failed to respond to the challenge of non-use without providing reasons for failing to act, Ms Bracha ruled that the challenge of non-use was not disputed and she could issue a ruling. Although the challenger to the mark has to prove his case, since the mark owner did not defend the mark, the claim of non-use and no intention to use was accepted as being factually correct on the basis of the submission of Densher (1963). No extenuating circumstances were claimed by the mark owner and so the mark was cancelled, allowing others to use the mark. Furthermore, since the mark owner could have given up on the mark when it was challenged, but decided to allow the challenger to incur costs in proving lack of use, Ms Bracha agreed to legal costs of 2000 Shekels and legal fees of 20,000 Shekels.
Delta Galil Industries is a leading Israel underwear manufacturer. The company has filed trademark applications 244662 and 244663 for Bravo and for Machotonim Q.
Note: The word Machotonim should be read Macho with a ch sound, as in chair or chu-chu train. this sound is not actually a Hebrew sound at all. It is also not in Arabic. Funnily enough, nor is the P sound. Arabs can’t say pants or Palestinian. they say B instead of P. The ‘tonim part is the suffix of the word tachtonim meaning underpants, where the ch sound is the guttural het as in Chanuka – a sound not found in the English language. I am going into these pronunciation details, since the word machotonim with the guttural het means in-laws, and is probably not the association that the underwear is intended to convey. Associations are funny things. The company name delta is, of course, the general shape of underpants or briefs, i.e. an inverted triangle. this is clever. I suspect the Q relates to the shape of the fly, as in Y-fronts, but it may be like G as in g-string, since apparently the product has less rear end coverage than conventional male underwear.
Zarmon DDV LTD and Zarmon Goldman LTD filed an opposition to the marks claiming to have worked on the advertising campaign and never having been recompensed. Further, they requested that the opposition proceedings be stayed whilst their claims for compensation be heard by the District Court.
Selgisohn & Gabrieli representing Delta Galil argued that the District Court proceedings were against an advertising agency and Delta Galilee wasn’t a side in the proceedings. Furthermore, it was proper to stay a patent office hearing only if the court hearing was likely to bear on the result, but in this case, the issues were separate.
Ms Jaqueline Bracha accepted Delta Galil’s arguments and awarded costs of 350 Shekels and a further 3500 Shekels legal expenses to Delta Galil.
I think this decision is correct. I suspect that since the Zarmon companies were not working for Delta Galilee directly, they can’t even record a lien on the registrations.