European and Israel Patent Offices Sign a Bilateral PPH

December 10, 2014

pph

The European Patent Office (EPO) and the Israel Patent Office (IPO) have agreed a patent deal set to speed up examinations at both offices. Starting next month, the Patent Prosecution Highway (PPH) will allow applicants to request accelerated examination of a patent at either office provided the claims have been previously deemed acceptable by the other. The agreement was signed on December 4 by heads of both offices in Brussels, Belgium.

Apparently Asa Kling, director of the IPO, said the programme would “enhance co-operation between the offices” and further strengthen the economic and technological relations between Israel and Europe.

COMMENT
We see this as a great development, not least because Israel Applications may be accelerated fairly easily under a variety of routes including Section 17c of the Israel Patent Law 1967 and relevant patent office circulars. European Applications can linger in the queue for examination for quite a while, and incur annual maintenance fees. Then again, once allowed, a European patent has to be ratified and is then subject to renewal fees in the countries where it is ratified. The main thing is that this gives applicants choice and flexibility.


Orbotech Challenges Cost Ruling, but too Late

December 8, 2014

missed opportunity

Back on 9th November 2014, I reported that after finally ruling on the Camtek – Orbotech patent Opposition, the Israel Patent Office ruled very large costs to Adi Levit, mostly because he’d detailed his cost calculation and it was unchallenged by Orbotech who’d lost the case.

Camtek requested 302,895 Shekels costs (including VAT).  The request for costs were supported by an affidavit from Camtek’s IP manager Michael Lev. The sum includes legal fees of 288,687 Shekels to outside counsel, Adi Levit, 8208 Shekels to the witness Mr Golan, and 6000 Shekels for intermediate costs awarded. All cost requests were supported by documentary evidence such as invoices from outside counsel and salary slips from the witness. Orbotech, represented by Reuven Borchowski, did not counter the request for costs.

In her ruling, Ms Jacqueline Bracha reviewed the intermediate costs to see whether they were affected by the final decision and came to the conclusion that where she had ruled that the costs were incurred by Opposer unnecessarily, they should be discounted.  The costs awarded were 296,895 Shekels.

Apparently, on the day that the cost ruling issued, Orbotech requested that the ruling be canceled, arguing that because of industrial action in the courts, they were unable to respond on the last day as they had intended.

Camtek responded that they could have filed a notice of intent to challenge, the court strike was actually the day after, and a response could have been submitted despite the strike. They requested that Orbotech’s lawyer file an affidavit testifying to why he was unable to respond, and to be prepared to be cross-examined on it.

Ms Bracha decided that the ruling was given fairly and there was no reason to cancel it. The issue was not whether Reuven Borchovsky, attorney for Orbotech had intended filing a response, but whether there were counter-arguments on file when she made her ruling. As there weren’t, she was entitled to simply check the calculation submitted by Adv. Levit. Consequently, she saw no reason to cancel her decision to award the actual legal costs + witness fee – intermediate costs that were unnecessary.


Requests for Costs Must be Timely Filed

November 19, 2014

missed

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

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

Volvo opposed this request.

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

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

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

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


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

November 19, 2014

Courage under fire

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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


Combining Similar Proceedings

November 19, 2014

combining hearings

C.T.S. LTD filed Israel trademark application numbers 2253382 and 253359 “Lactofil” and לקטופיל. The Mark covers Cosmetic preparations namely lotions, creams, mousses and soaps for nourishment and cleaning of the skin and face all in Class 3. “” Laboratorios Genesse, S.L. opposes the marks

Meanwhile, Laboratorios Genesse, SL. has filed Israel trademark application number 249389 for Lactivit for Soaps, gels, perfumery, essential oils, cosmetics, lotions for hair and skin care, creams for hair and skin care, and dentifrices also in Class 3. C.T. S. LTD are opposing this registration.

Both parties propose combining the hearings. The Lactofil hearing was scheduled for 29 October 2014.

The legal issue in both cases is likelihood of confusion with the similar product of the other party. The parties and the issues in both cases is the same. Combining the cases saves the parties time and expense, and saves judicial resources. In one case there are additional claims of inequitable behavior, but this is not seen as sufficient justification to hear the cases separately.

As both parties have equal rights, Ms Yaara Shoshani, Adjudicator at the Israel Patent and Trademark Office ruled the cases are to be combined, however in each case, at the combined hearing, the Opposer has the right to cross-examine the applicant’s witnesses and only then may the Opposer’s witnesses be cross-examined.

In the circumstances, no costs were awarded.

Decision to Combine Similar Trademark Proceedings, Yaara Shoshani Caspi 6 October 2014. 

COMMENT

Apart from the parties in question, there is a third party of importance, i.e. the public. It seems to me that combining the proceedings is not only economical for the parties and for the public purse in terms of judicial expense, but also is most likely to result in a sensible ruling.


Royal Clothing – A Hassidic Trademark Spat

November 11, 2014

royal clothing

Royal – the Great Center for American Clothing, LTD filed Israel trademark application no. 236655 for Royal Clothing. the mark covers clothing, shoes and head coverings in class 25.

Broadway Hassidic Clothing LTD opposed the registration claiming to have exclusive rights in the term Royal, and that the mark should be refused as lacking distinctiveness when compared to their (non-registered) mark. The mark could confuse the public and support unfair trade, and was filed in bad faith.

Broadway Hassidic Clothing LTD  claimed to be the leading purveyors of Hassidic garb, including trouser suits, shirts, study gowns and Shabbat cloaks, with multi-million dollar sales in Israel and abroad, and stores in Hassidic-Hareidi centers including Jerusalem, Bnei Barak, Ashdod, Beitar, Bet Shemesh and New York. In addition to their stores, they held seasonal sales. Although not having registered the brand, Broadway Hassidic Clothing LTD  claimed to have used the brand name Royal since 2009. The Applicant, Royal – the Great Center for American Clothing, LTD, has a couple of shops in Ultra-Orthodox population centers Israel and claim to have exclusive rights from the brand owners in the US, who also failed to register their mark. Back in 2011, Royal – the Great Center for American Clothing, LTD opposed Israel Trademark  Application No. 235810 for Royal Clothing, opposed a registration by Broadway Hassidic Clothing for a stylized mark. That application was abandoned.  Meanwhile, Broadway Hassidic Clothing LTD now has a pending trademark application no. 244009 for the word “Royal”.

The applicants and opposers submitted various affidavits and statements and a hearing was heard. The problem was that neither side could show that they had registered rights in the US, or, indeed, had unregistered rights there. Both statements of case left gaps in the chain of ownership.

The opposer didn’t claim rights to the mark in question, but claimed rights to the word Royal, which is only part of the mark in question.

The Commissioner ruled that the Opposer had not succeeded in proving rights to the word Royal, and even less so to the mark in question which was sufficiently distinctive to be registerable. Even were the Opposer to demonstrate rights in the word Royal, that He ruled that the mark could be registered and both parties could submit requests for costs.

COMMENT

The Commissioner seems to have done a reasonable job applying trademark law to a case where neither side had paid attention to trademark issues in a timely manner and where the underlying facts are obscured.  It doesn’t seem that either party has royal connections or fabricates clothing by royal appointment. It is difficult to imagine any member of the UK Royal Family wearing Hassidic style clothing.

 

 

 

 


Kerem Ben-Zimra – Competing Marks

November 10, 2014

competing wine

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

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

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

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

COMMENT

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

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


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