Ella Moss, are there grounds for Judicial Estoppel?

August 18, 2014

Ella Moss

Israel Trademark Number 241679 “Ella Moss” (the word mark, not the mark with butterfly, but it is a nice illustration, and this isn’t the sort of blog where we feature models in swim-wear) was filed by Mo Industries LLC. the mark covers clothing, namely, tops, bottoms, pants, skirts, jackets, coats, sweaters, cardigans, dresses, vests, ties, sleepwear, lingerie, undergarments, swimwear, rompers, baby bodysuits, layettes, activewear, namely, tops, bottoms, athletic clothing, sweatshirts, sweatpants, sweatshirts and jerseys, outerwear, namely, coats, jackets, parkas, vests and fleecewear, belts, footwear and headwear; all included in class 25 and retail store services featuring clothing and accessories, belts, footwear, headwear, purses, jewelery; all included in class 35.

Shimon Bodakov filed an opposition to the mark.

The interesting wrinkle in this case is that there is a corresponding case, Israel trademark no. 242680 “Ella יופי שנוח לך” (literally Ella, comfortable beauty) covering Clothing, footwear , headgear in class 25, that was filed by Shimon Bodakov and is being opposed by Hachette Filipacchi Presse. Shimon Bodakov is represented by Gabriel Kramer, and both Mo Industries LLC and Hachette Filipacchi Presse are represented by Dr Shlomo Cohen Law Offices.

The “Ella יופי שנוח לך mark is reproduced below.

Ella

In this case, Mo Industries requested that the trademark opposition be thrown out since in the 242680 case Bodakov / Kramer argued that there was no similarity between Ella Moss and  the graphical mark Ella יופי שנוח לך, whereas in the current case they are arguing a confusing similarity between the marks. Due to the contradictory arguments, the opposition should be thrown out.

Bodakov / Kramer responded that there is no estoppel. The other, ongoing opposition was indeed filed first, but has not been ruled on, and it is the job of the Commissioner of Patents and Trademarks to decide whether or not there is confusing similarity or a likelihood of confusion. In the meantime, there is no reason why they have to be consistent.

The Ruling

The principle of Judicial estoppel is that a party claiming one thing in one case, once that claim is accepted, cannot deny that claim or make a contrary claim in a later case, even against a different party. A guiding principle of the Judicial estoppel is that the party succeeded in the earlier case. See 513/89 Interlego A/S vs. Exin-Lines Bros. S. A. and 6753/96 MM. Ch. T. vs. Friedman. The rationale against requiring success in the first ruled case is to prevent contradictory rulings by the courts.

In more recent rulings, the principle that the first case has to be successful is left open,  and it appears that there is no definite ruling on the issue. See 4224/04 Bet Sasson vs. Shickun Ovdim v’Hashkaot LTD. and 6181/08 Vinoker vs. The Head of VAT in Acre. The current trend is to look at the issue of equitable behaviour of the parties.

In this instance, there are two parallel opposition proceedings concerning Ella Moss and Ella יופי שנוח לך. In the 242680 case, Bodakov / Kramer argued that the two marks are not confusingly similar, and in the current case, which was filed later, Bodakov / Kramer filed an opposition on the grounds that the two marks were confusingly similar.

Nevertheless, it is not clear that there is a judicial estoppel in this case, since there has not been a decision. Furthermore, it is difficult to claim inequitable behaviour on the part of Bodakov / Kramer since they are simply interested, that should the Commissioner of Patents and Trademarks decide that the two marks are indeed confusingly similar, that their mark should be preferred. Furthermore, should the opposition to 241679 be cancelled, then the mark would automatically be allowed and this would hobble Bodakov / Kramer since they would have to fight an issued mark and not a pending one.

Due to the seriousness of throwing the case out based on the estoppel and inequitable behaviour construction, which would deprive the Opposer of his day in court, and noting that the case-law does not consider arguments in pending cases as estoppeling, Ms Shoshani Caspi (the adjudicator of the case) rejected the request to throw the case out.

At the focus of both cases is the question of the confusing similarity between the two marks, however the parties are not identical so Ms Shoshani Caspi considered that it would not be fair to combine the two cases. the request for throwing out the opposition was rejected, but in the circumstances, no costs were awarded.

Ruling in Ella Moss, 22 July 2014.

Comments

As the marks are identical and the lawyers are identical, despite the different parties represented by Dr Shlomo Cohen Law Offices in the two cases, it could be argued that there are good grounds to combine the cases, or at least to offer the parties the opportunity to fight the two cases together. Such a development would save valuable time for the arbitrators at the patent office. It is,  however, correct for Ms Shoshani Caspi to overcome the temptation. Hachette Filipacchi Presse could conceivably want to challenge Ella Moss, for the same reasons that they have challenged Ella יופי שנוח לך. One assumes that the issue involves the word Ella for women’s fashion. Combining the cases could therefore result in Dr Shlomo Cohen Law Offices representing both Hachette Filipacchi Presse and Mo Industries LLC and  having to argue that Ella is both distinctive and generic, and that would seem to raise judicial estoppel. It would seem unlikely that in a combined action they could fairly represent the two parties to the best of their ability. Also, working out how to charge two parties sharing a combined case could be complicated.

The ruling provides insights into the concept of Judicial Estoppel and is a valuable intermediate ruling.

 

 


Under What Grounds Can A Mark Owner Require A Party Filing to Cancel a Mark to Post a Bond for Expenses?

August 17, 2014

bond lighterfelix lighter!

Briko Burns You More LTD has a registered trademark for HN covering lighters in class 34.

Tranmirian Hamias M’yeri LTD filed a cancellation proceedings and Briko responded to a cancellation request from Tranmirian Hamias M’yeri LTD.  to post 70,000 Shekels to cover legal expenses should their attempt to have Israel TM 245007 cancelled fail.

At the time the request was made, the parties had both files statements of case and Tranmirian had already filed evidence.

The request to post costs was based on legal precedent. Briko argued that as a rule, companies should post bail, and the onus is on the company to persuade the courts that this is not necessary. The Company Register lists  Tranmirian as not keeping the law since for 6 years they haven’t paid their company fees. Briko argued that this is sufficient to show that  Tranmirian is not on a sound financial footing.  Briko further argued that  Tranmirian have been using a wrong address which further complicates collecting should Briko win.

Tranmirian countered that none of the above was supported by an affidavit and this alone should be sufficient to have the request thrown out.  Tranmirian claims to be a law abiding company that pays its debts and that the missing fee to the company register was an oversight that has no been attended to.  Furthermore Briko themselves have a similar debt to the companies register!

The wrong address was a typographical error. The correct street was identified, but in the wrong city (Haifa instead of Nahariya). This has also been corrected. The firm denies any liens or mortgages and submitted an accountants letter to the effect that it could settle any bills if it lost. Furthermore, the requested 70,000 deposit was disproportionate to expent costs.

In her decision,  Ms Yaara Shoshani Caspi ruled that requesting a bond was legitimate if there were reasoanble grounds to conclude that an opposing party would not be able to pay their bill. A debt to the company register is not sufficient, and certainly where it is settled on being brought to the attention of the party in question. She concluded that there were insufficient grounds to require Tranmirian to post a 70,000 Shekel bond and she therefore rejected the request and ordered 1000 Shekels costs against Briko.


Voyager, It’s a Decision Jim, But Not as We Know It

August 17, 2014

voyager

Accel Telecom Ltd. filed Israel Trademark Application Number 251612 for Voyager”.

The mark was filed for the following goods: Fixed car phones and connected smart car phones; all included in class 9, and for telecommunication services, namely, providing electronic telecommunication connections, namely, providing voice and data wireless communications connections to enable users to transmit, reproduce, receive, access, search, index and retrieve data namely, images, sounds, text, movies and animations between mobile communication devices and computer communication networks, the Internet, information services networks and data networks; Telecommunication services, namely, telecommunication access services, communication by means of mobile phones, cellular telephone communication, mobile telephone services; all included in class 38.

The mark was accepted on 26 February 2012 and an opposition was filed by Plantronix Inc. on 28 May 2013,

On 27 March 2014 the list of goods was changed to Electronic apparatus, namely communication apparatus, telephones, mobiles, modems, and routers for communication apparatus; all included in class 9.

Somewhat confusingly, the decision states that a decision issued on 9 December 2014. At the time of writing, we consider this date that is in nearly four months time, a little suspect. In that decision, the Patent Office refused to allow the mark to coexist with Plantronics trademark 255989 which is an identical word mark. Our write up of that decision, by Ms Shoshani Caspi, may be found here.

Beyond the requirements of the Law, Ms Shoshani Caspi gave the parties an opportunity to provide evidence for allowing a coexistence agreement, provided the evidence would be submitted at least 30 days before a hearing on the issue.

On 19 December 2013 the parties informed the Israel Patent and Trademark Office that they did, indeed, desire to submit such evidence, but failed to do so. Despite this, a hearing was scheduled for 5 March 2014. During that hearing an agreement was reached that was acceptable to the parties and to the patent office.

However, on 22 June 2014, the parties merely submitted legal arguments without addressing the issue of confusing similarity.

Citing section 30 of the Trademark Ordinance, Ms Shoshani Caspi noted that in extreme circumstances, the Commissioner could allow two mark owners to use the same mark for the same good, and referenced a number of relevant decisions.

The parties argued that each was using the mark for different goods, sold to different customers via different channels and consequently there was not, in fact, any likelihood of confusion.

In this case, Ms Caspi could not accept the argument since the general case, as stated in section 11(9) is that confusingly similar marks cannot be allowed, and in this case the two marks are identical word marks for the same word “Voyager”.

One mark lists the foods as car phones and smart phones in vehicles, and the other as telecommunication equipment, such as earphones, computers and telephony communication equipment, adapters and battery rechargers, so both marks cover car phones. Indeed, the mark in question also covers remote telephony equipment under Class 38.

Ms Shoshani Caspi rejected the argument that in practice, Accel makes car phones and Plantronix makes ear-phones, since she considers these goods complimentary and thus still confusing to the public as to the source thereof.

The parties argued that whereas allowing Aroma to be used by more than one vendor of coffee and cake, was confusing, the current situation was more similar to Great Shape and referred to the 2003 decision concerning marks 107479 and 105968. Ms Shoshani Caspi rejected this argument. She also rejected the argument that since the distribution channels were different, there was no likelihood of confusion as the same customer could conceivably purchase both products.

Citing the Eshel – Yotvata Eshel Supreme court decision (which quoted Friedman p. 431) , she went on to rule that as defender of the public interest she could not allow coexistence, and she referred the case back to the parties to submit evidence in the ongoing opposition.

Decision re Voyager coexistence, Accel Telecom vs. Plantronix, ruling by Y. Shoshani Caspi, 20 July 2014.


AXXON Trademark Cancelled Despite Shoddy Research, But Serves Brimag Right

August 17, 2014

Axxon

Brimag Digital Age LTD own Israel Trademark No. 154869 in Class 9. Taser International LTD filed a cancellation proceedings on 12 September 2013. The owners of the mark did not respond and so Taser was given an opportunity to substantiate their request. On 19 March 2014, Taser  submitted their evidence, including an affidavit from Daniel Ben-Yishai, a trainee attorney at PCZL, the legal representatives of the Applicant for Cancellation. Notice of the submission of evidence was sent to the mark owner on 23 March 2014.

According to the Affidavit, on-line searches at the mark owners web sites http://www.brimag.co.il and http://www.brimag-systems.co.il on 11 September 2014 and 4 March 2013 failed to uncover any mention of the mark in question. Computer print-outs of the searches were attached. Ben Yishai testified to having phoned Brimag’s information center and their Customer Service and Replacement Parts line and they were unable to provide details of any part carrying the AXXON name.

RULING

Section 41 of the Trademark Ordinance allows any party to initiate cancellation proceedings against any mark not in bona fide use over three years prior to the request for cancellation. It is, of course, difficult to prove that something has not happened, but the mark owners were informed of the cancellation request and did not respond. Although the burden of proof is with the party requesting the cancellation of the mark, this burden of proof moves from side to side as the proceedings progress.

The Arbitrator of IP, Ms Yaara Shoshani Caspi criticized PCZL for using a trainee to look into usage and not a private investigator with some training, and considered the evidence as having low value. Nevertheless, in view of the lack of response from Brimag, she ruled that the mark be cancelled and also ruled 2000 Shekels costs against Brimag.

COMMENTS

Ms Yaara Shoshani Caspi’s criticism of PCZL’s sloppiness is correct. A simple Google search of the Internet for AXXON and BRIMAG proves that the mark is actually in use.  It is related to in the 2012 financial reports for Brimag: http://lxsrv1.bizportal.co.il/bizportalnew/bursamess/gif/e05310.pdf (see page 23 for example. this came up in a very simple Internet Google search.

There are various special offers for AXXON steam irons where Brimag is apparently the importer and service provider. See for example:

here, here and here.

The mark in question is actually for electromechanic and electronic apparatus included in class 9; apparatus for recording, transmission or reproduction of sound or images; measuring, signalling, checking (supervision) apparatus; magnetic data carriers; videocassette recorders; televisions; projectors; video cameras; facsimiles; amplifiers; loud speakers; compact disc players and recorders; laser disk players; receivers; digital versatile disk (DVD) players; stereo systems; minidisk players and recorders; discmans; radios; telephones; headphones; microphones; parts and accessories for the above mentioned goods; all included in class 9.

Arguably, steam irons are not covered by the class. That as may be, trainee lawyers do not have the training to provide evidence of non-use. Their supervisors should indeed be aware of this, and should provide guidance. Nevertheless, Brimag (and their representatives Wolf Goller Bregman) did not respond to the request for cancellation and so whether or not the mark was not in use over the past three years, they cannot really complain against this decision.

Although the search I did took two minutes, I don’t think that arbitrators at the Israel Patent and Trademark Office are required to do their own inquisitorial inquiries and can generally be expected to simply weigh up the evidence provided. If Taser now files their own mark, Brimag can show prior use, but that would require them to be trademark savvy and this does not seem to be the case.


Israel Trademark Arbitrator Cheesed Off with Cancellation Proceedings

August 13, 2014

pizza

Israel Trademark no. IL TM 236375 “פיצרלה” (Pizarella) to Yitzchak Hazot covers Cheese and dairy products; all included in class 29, Pizzas and pizza’s dough; included in class 30, and Restaurants and pizza restaurants; included in class 43.

The mark, issued on 11 June 2011, and Messers Yoel Lavi and Assaf Revach filed a cancellation proceedings on 18 October 2013 through Naomi Assia Law Offices.  On 19 March 2014, withn the framework of the opposition proceedings, the complainants should have filed evidence but failed to do so. On 25 May 2014, the Trademark Office sent a notice that failure to comply would result in the case being closed within 7 days.

On 5 June 2014, the complainants requested an extension to allow further negotiations between the parties, and on 8 June 2014, the Court of the Patent and Trademark Office gave an extension but requested an update from the parties by 22 June 2014. This was not received.  Ruling that the complainant was apparently handling the issue themselves, the arbitrator of the case, Ms Yaara Shoshani Caspi, closed the file and the mark remains valid.

 


Costs for Trademark Opposition

July 14, 2014

visco gel 1visco gel 2

Aminach LTD filed Israel trademark application No. 233949 Visco-gel for Mattresses, beds, sofa beds, armchairs and furniture for bedrooms; all included in Class 20.

The Health Center D. A. LTD. opposed the mark. On 12 January 2014, the opposition was refused and the trademark was registered.

Aminach now filed a costs request for 81,391 Shekels. This included 78,739,45 shekels  for 52.7 hours work of lead counsel, 3.6 hours work of a junior lawyer, and 1.93 hours work of a trainee.  The difference of 2652 Shekels covered courier expenses, printing costs, fax costs and recording the hearing.

The Health Center D. A. LTD. considered the costs charged as exorbitant and referred to the minimum recommended fee established by the Israel Bar for oppositions, which, in 2014 stood at 1859 Shekels, which is rather less.

The Health Center D. A. LTD. also noted that there was no contract provided that set out a fee scale or tax invoices showing that the fees were indeed paid. Finally, the respondent also noted that costs were awarded in the original decision and there was no justification to charge this twice.

THE RULING

The Commissioner reiterated that an applicant who overcomes an opposition is entitled to payment of legal costs. He did not consider that the amount of time spent was unreasonable for the amount of work done, nor did he consider that there was a difference between pro forma invoices and actual tax invoices.

The Commissioner did not find the minimum charges established by the Israel Bar were binding on attorneys, nor on the Patent Office when deciding fair costs.

Since costs of 7000 Shekels were awarded for a specific action in the original decision, the costs of 13,480 Shekels that were calculated for the same action at this stage was considered as double billing.  Furthermore, costs of 1440 Shekels for postponing the hearing were considered unnecessary since the opposer didn’t have a problem with this, so this fee was canceled.

The Commissioner ruled that the remainder of 66, 400 Shekels (nearly $20,000) should be settled within 30 days, or the sum would be index linked and would accumulate interest.

COMMENT

The term visco-gel relates to material properties and is descriptive. I don’t believe that mark should have been allowed. The costs are high, but not unreasonably so.


Sahara

July 10, 2014

sahara

Tambour and Nirlit are both Israeli paint manufacturers.

Tambour filed a trademark for Sahara as a shade of paint. They filed for accelerated examination, and three weeks later the mark issued for opposition purposes.

The opposition period is three months, and on the final day, an examiner published a decision to allow the mark.

Nirlit submitted a mark for Sahara themselves on the final day of the opposition period and then requested that Tambour’s notice of allowance be cancelled, and the marks be considered as competing marks. The Examiner cancelled the mark and both sides have been fighting as to whether the cancellation was correct, whether it should be considered as void, and whether the court of the Israel Trademark Office is the correct jurisdiction or whether Tambour should have to appeal to the District Court to have the allowance reinstated.

The wording of the ordinance refers to “a competing mark being filed before a pending mark is allowed”. The legal issues boil down to whether decisions can be cancelled and what the word before means.

Other issues raised included whether Nirlit should have informed Tambour of their filing and of the cancellation of the Notice of Allowance. Did Tambour have rights to request amendments to Nirlit’s application?

THE RULING

The Adjudicator of Patents and Trademarks, Ms Yaara Shoshani Caspi did a fine piece of analysis and more or less sorted out the mess.

According to the ruling, trademark decisions are administrative decisions that can be withdrawn. The term “earlier” should be interpreted as meaning up until midnight of the previous day.

According to the ruling, the Examiner was not incorrect to allow Tambour’s mark, but was wrong to cancel the decision to allow it once it had issued. This decision is an administrative decision that can be withdrawn.

Once the marks are not co-pending, there is no competing marks scenario. All interim rulings are ex-parte. There is no obligation to inform the other party who has absolutely no standing.

The mark is retro-actively considered as published and Nirlit had two days left to file an opposition.

No costs were awarded to either side.

COMMENT

I think this ruling is the best of a bad job.  I don’t think we need to interpret earlier as the previous day. the notice of allowance for Tambour’s had issued before Nirlit’s was entered into the system. One hand does not need to now what the other is doing. All Examiners need to check what has been done.

Since there  was no pending mark for Nirlit at the time that Tambour’s mark was allowed, the notice of allowance was correct. It can happen that one department is more efficient than an other.

Retroactive publication for opposition purposes is problematic since in addition to Nirlit, it is not inconceivable that a third party may have a problem with the name.

Western Sahara is a disputed territory and most of the players involved do not recognize Israel. I am not sure that that will necessarily stop them from complaining about the place name being used to denote a shade of paint.


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