MiPAD and iPAD

February 10, 2016
ipad

i-PAD

Mi Pad

MI PAD

Apple Inc. filed Israel Trademark Application Numbers 261449 and 261500 for IPAD MINI and IPAD AIR in November 2015. The marks cover Handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data in class 9.

Xiaomi Singapore Pte LTD filed Israel Trademark Application Numbers 270078 for
MI PAD in May 2015 for Portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks; tablet computers, electronic book readers, periodical readers, digital audio and video players, digital camera, electronic personal organizers, personal digital assistants, electronic calendars, mapping and global positioning system (GPS) devices; computer peripheral devices; computer and portable and handheld electronic device accessories, namely, monitors, displays, keyboards, mouse, wires, cables, modems, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, charging stations, drivers, battery chargers, battery packs, memory cards and memory card readers, headphones and earphones, speakers, microphones, and headsets, cases, covers, and stands for portable and handheld electronic devices and computers; computer software for the development of content and service delivery across global computer networks, wireless networks, and electronic communications networks; downloadable audio works, visual works, audiovisual works and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; computer software for transmitting, sharing, receiving, downloading, displaying, transferring, formatting, and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via portable electronic devices and computers; computer game programs; downloadable music files; downloadable image files; video telephones; navigational instruments; screens [photoengraving] in class 9, and for Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services, namely, providing users access to communication networks for the transfer of music, video and audio recordings; teleconferencing services; providing Internet chatrooms; voice mail services; transmission of digital files in class 38.

Since Apple’s marks had not yet issued, and due to the apparent similarity between the marks and the goods, a competing marks procedure under section 30 of the Trademark Ordinance ensued.

In competing marks procedures some weight is given to the first to file, but the extent of use and equitable behavior are generally more important.

In this instance, Apple also has issued trademark numbers 226418, 226421, 226419 for IPAD and the Examiner considered that Xiaomi Singapore Pte LTD.’s application was confusingly similar to these as well.

Both sides were invited to produce evidence supporting their claims, and oddly, Apple submitted an affidavit from Thomas R. La Perle, the legal counsel of Xiaomi! Xiaomi did not submit evidence at this stage.

A hearing was scheduled for 1 February 2016, and then cancelled. The Israel Trademark Office therefore has ruled on which mark should proceed to examination, based on the evidence submitted and the response to the office action from Xiaomi against the issued Apple marks.

Apple claims that the IPAD was launched in 2010. The smaller IPAD MINI and IPAD AIR models were launched in 2012 and 2013 and the marks were widely registered. Apple spent over a billion dollars in promoting the devices in 2014 and had sales exceeding 70 billion dollars. Apple further claims that MIPAD is confusingly similar to IPAD, with the difference between IPAD and MIPAD being one letter. The products are confusingly similar. In Israel there is no Apple Store, so the distribution channels are similar.

Xiaomi claims that MI means rice in Chinese and virtually all Xiaomi’s products include the term MI since rice is part of the corporation’s family [I don’t understand what this means, either, and suspect that they are trying to claim that they started as a rice distributor and branched out into other areas. The point of the argument is that they are not trying to free ride on Apple’s reputation and are arguing that any similarity is coincidental and not evidence of bad faith – MF].

Oddly, at the evidence stage, Apple submitted an affidavit from Thomas R. La Perle, the CEO of Xiaomi. Xiaomi did not submit evidence and a scheduled hearing was cancelled, and the Deputy Commissioner ruled based on the evidence including Xiaomi’s argument in response to the office action claiming similarity to issued Apple marks for IPAD.

Xiaomi argued that IPADs marks were combinations of descriptive elements. They submitted evidence of advertising and sales in Asia and elsewhere but this did not focus on tablets and so was given little evidentiary weight.

Xiaomi also showed that their MI mark was registered, but this was considered as not addressing the similarity issue between MIPAD and IPAD.

In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that following the Appeal 5454/02 Tiv Tam vs Abrosia ruling, it was proper to consider the marks in their entirety rather than the separate elements thereof since customers consider marks in their entirety. Consequently, the fact that the words MINI and AIR may be descriptive and generic did not render IPAD AIR or IPAD MINI as descriptive or generic, by virtue of the IPAD which was descriptive, whether inherently so or by acquiring distinctiveness [due to the advertising, sales, etc.].

That MI means rice is unlikely to be known by most Israelis. Citing “Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011) p. 301:
“The perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion.”

Since MIPAD has I next to Pad, the similarities between MIPAD and IPAD are compelling.

Regardless of whether the visual similarities between the MIPAD and the IPAD are due to functional reasons or design, they are very similar and this further increases the likelihood of confusion. See 4250-07-14 Gewiss S.P.A. vs. Timnah Electricity LTD
Both sides accept that the distribution channels and consumer base is identical, therefore it is concluded that there is a real likelihood of confusion.

In a competing marks procedure the three considerations are who filed first, scope of use and equitable behavior. Apple filed first. They have additional products in the IPAD line which indicates that their choice of mark was not an attempt to copy MIPAD. They also have other marks including AIR, such as MACBOOK AIR.

Furthermore, Apple has produced compelling evidence of greater use.

As Xiaomi has successfully registered its logo MI logo in Israel and elsewhere, one cannot rule out that their pending mark was chosen in good faith. Furthermore, had they attempted to register the mi logo together with PAD, this may have helped their case.
The similarity between the marks rules out coexistence. After weighing up everything, Apple’s marks are considered as preferable to continue to examination and Xiaomi’s mark for MIPAD is refused.

Since there was no hearing and Xiaomi did not take an active part, but also did not inform the Israel Patent and Trademark Office that they would not be attending, Xiaomi were ordered to pay costs of 6000 Shekels to Apple.

Ruling in competing marks procedure concerning pending trademark numbers 2610449, 261500 and 270078 (Xiaomi vs. Apple) by Deputy Commissioner Ms Jacqueline Bracha, 26 January 2016.


Large Consignment of Fake Plumbing Components Destroyed at Importer’s Cost

February 10, 2016

huliot

When one thinks of fake goods, luxury items such as Rolex watches and perfumes spring to mind. Software and music is also copied and distributed easily, but one doesn’t think that anyone would fake plumbing materials.

Actually, fake light switches, plasterboard, aluminium profiles and plumbing materials are made.  Huliot Have now managed to have a large consignment of 88,000 fake plastic plumbing components destined for Gaza destroyed in Ashdod Port at the importer’s cost.

Huliot a long established manufacturer of pipes and plumbing components based at Kibbutz Sde-Nehemiya.

A few months ago, the Customs Office at Ashdod port compounded a large consignment of counterfeit plastic plumbing components imported from China and destined for Gaza.  The plastic components had the registered trademarks of Huliot A.C.S. Ltd embossed on each component and were also packaged in packaging bearing Huliot’s name and distinctive green diamond logo.

The Customs Office were suspicious of the large consignment because the goods appeared to be of low quality so IP Factor who is the registered Agent of Huliot trademarks was contacted by the Customs Office. We take this opportunity to complement the Ashdod Customs for their vigilance in this matter.

Adv. Aharon Factor of our firm, IP Factor, filed a petition at the Tel Aviv District Court for a restraining order and for an order for the destruction of the goods.  The parties subsequently negotiated an out-of-court settlement further to which the goods were destroyed at the importer’s expense and some legal costs were paid by the importer to Huliot.

Huliot’s CEO Mr. Paul Steiner believes that the large consignment has a retail value of about 400,000 Shekels and would have tarnished Huliot’s reputation for high quality products.  Although destined for Gaza, Mr Steiner believes that some of the goods would have found their way back to Israel which would have caused even more damage to Huliot’s reputation.

Mr Steiner is a great believer in IP development and enforcement and engages veteran Israel Patent Attorney Simon Kay as part-time in-house IP Manager. Simon has developed a vigorous strategy to protect the company’s intellectual property and reputation, including patenting developments, registering the designs of new components, marking components and their packaging with Huliot’s logos and trademarks.  IP Factor handles the trademark portfolio for Huliot and for some of Simon’s other clients.

COMMENT

In a recent post we noted that suppliers of fake Viagra pills had received prison sentences since the product posed a danger to the public. We noted that most fake Viagra pills are merely ineffective rather than dangerous. Fake building materials can cause tremendous damage. Sewage and grey water piping that cracks can contaminate drinking water supplies. Whilst untreated individual erectile dysfunction can adversely affect reproduction, cholera can kill millions. One of my clients has developed and is launching a child safety device for adjusting car seatbelts to children. The device has undergone very extensive safety testing. Fake devices are now being advertised on Chinese wholesale websites. Quite possibly, these are inferior and unreliable products. Perhaps the courts and police should reconsider what types of fake goods are dangerous and what importers and distributors should be sent incarcerated?


361

February 8, 2016

361

Dalitex LTD own Israel Trademark Numbers 192322, 102323 and 192324 all for stylized marks for “361” as shown. The mark covers Protecting clothes (vests) and bullet proof vests; all included in class 9; Bags, including rucksacks, backpacks, carrier bags, suitcases and pouches; all included in class 18, and Clothing and footwear, including shoes and socks, coats, storm suits made of cloth and synthetic materials such as nylon and polyester; headgear; all included in class 25.

Sanliuyidu (Fujian) Sports Goods Co LTD filed a cancellation proceedings on 26 October 2015, using the address of record in the register.

The period for responding as per regulations 37 and 71 of the 1940 Trademark regulations passed and the mark owners did not respond.

Consequently, Sanliuyidu (Fujian) Sports Goods Co LTD have two months to file their evidence and then are entitled to a hearing, and are requested to inform the Patent and Trademark Office if they intend having such a hearing.

Interim Decision re Israel Trademark Numbers 192322, 102323 and 192324 “361”, Ms Jacqueline Bracha, 14 January 2016.

 


Israel Supreme Court Refuses to Soften Stiff Sentences for Counterfeit Viagra Dealers

February 8, 2016

Fake Viagra

On appeal, the Central Region District Court in Lod ruled a ten month gaol sentence and fine for Roi Peer who had distributed counterfeit Viagra pills. Roi Peer appealed the ruling to the Supreme Court, where Justice Jubrahn ruled as follows:

The crimes that the appellant were convicted of are serious and the weight of evidence required to show a likelihood of rehabilitation is consequently significant. The fine and the gaol sentence are separate punishments that should be considered separately as is the ruling that the convict be detained in an appropriate secure installation.

The Appelant was convicted on the basis of his admission, of selling and marketing pills allegedly for treating impotence, without a Dr’s prescription, not in original packaging, infringing the trademarks and without meeting the patients or gaining medical information about them.

The Court of First Instance ruled six months community service and a 150,000 Shekel fine. The District Court rejected the appeal concerning the size of the fine but accepted the State’s Appeal regarding the rest of the sentence and changed it to 10 months actual prison time. This is the basis of the appeal to the Supreme Court.

Whereas a first Appeal is a matter of right, a second Appeal is granted only in cases having a significant public interest, an important legal question requiring clarification or where there are specific issues concerning the fairness of the punishment. In this instance, there is no such justification for further judicial review. The stiffness of a punishment is only grounds for review if it is significantly disproportionate to other sentences for similar crimes. In this instance, the punishment is reasonable and balances the various considerations.

In this instance, there is insufficient indication that the Appellant will be restored to being a productive member of society to justify not sentencing him to prison. The psychological evaluation was inconclusive. The crimes were serious and the financial greed could have adversely affected the public health. The evidence of likely rehabilitation required in this case is significant and not available.

The argument that the District Court acting as an Appeal Court exceeded its mandate thereby justifying a further appeal is rejected since the sentence was in the same category as that issued by the Court of First Instance and is reasonable in the circumstances. The fact that the District Court did not detail how the punishment was reached is insufficient to justify a further appeal. The Supreme Court does not consider that time equivalent to paying the fine can used to determine the appropriate additional gaol sentence since gaol time for not paying fines is different from a gaol sentence per se and these cannot be combined in ascertaining whether a  punishment exceeds that allowed for by law or whether such a punishment is reasonable.

9102/15 Dismissal of Further Appeal of Ruling 3933-09-15, the Dismissal by S Gubrahn, 16 January 2016

COMMENT

We note that there doesn’t seem to be any evidence justifying allegations that the pills were a health risk. Indeed, there doesn’t seem to be any evidence that they don’t work. Erectile dysfunction may be a medical condition that causes stress for the sufferer and his partner but it is not the sort of condition that is life threatening. That is not to say that wilful trademark infringement and passing off fake goods should not deserve serious fines and gaol time. I just don’t see this instance as more serious than other examples of willful trademark infringement and distribution of counterfeit articles.


A Cut Throat Dispute

February 8, 2016

sweeney todd

Razer (Asia Pacific) PTE LTD filed Israel Trademark Application Number 242735 as shown below:

RAZER

The mark as currently registered relates to 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; for gaming use and/or gamers and excluding, phablets and television in class 9; to Bags; messenger bags; travel bags; backpacks; knapsacks; for gaming use and/or gamers in class 18, to Clothing; polo shirts; T-shirts; hoodies; headgear; caps; sweatbands; for gaming use and/or gamers in class 25 and to 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.

Not long afterwards, Razor USA LLC filed Israel Trademark Application Number 242450 for RZER 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.

Since both marks are similar and each cover computer related goods in class 9, following the parties failing to reach any agreement, a competing marks procedure was initiated.  On 26 January 2015 the parties were cross-examined and a date was fixed for submission of summaries from the two parties.

After several joint requests for extensions, the parties jointly asked to be relieved of having to file summaries and announced having reached an agreement in the various jurisdictions where similar competing marks procedures were taking place, however there was still a disagreement regarding implementing the decision in Israel and further extensions were requested.

On 12 October 2015 Razer Asia Pacific PTE LTD informed the Israel Patent and Trademark Office that a coexistence agreement had been reached and requested amendments to Application number 242735 to bring an end to the competing marks procedure.

Israel Application Number 242735 is a national phase of an International Application and the list of goods is in English only.  The requested amendments included limiting class 9 goods to “for gaming use or gamers”. In class 18, sport bags would be deleted and the remaining goods would also be limited to “for gaming use or gamers”. In class 25, the term sweaters would be deleted and the remaining goods would also be limited to”for gaming use or gamers”, and in class 28, reference to “games and playthings; electronic games and playthings other than those adapted for use with television receivers” would be deleted.

RULING
Section 22a(a)(2) of the regulations (1940) allow the Commissioner to authorize amendments to the lists of goods so long as they are by nature of clarifications or narrow the scope of goods, and so long that they are in no way widening.

There is a prima facie case that the amendments are all narrowing the scope of the mark. The Competitor, Razor LLC USA accepts the changes, apart from that to Class 9 where Razor LLLC USA wants the following amendment: “for gaming use and/or gamers and excluding, phablets and television“, and argues that this further differentiates between the goods that the two companies sell under the marks and minimizes still further, the likelihood of confusion. Consequently, both marks would then be acceptable for registration under Section 30 and this amendment better reflects that agreed between the parties.

Razer accepts the Israel Patent Office’s authority to decide on the appropriate limitation but disagrees that the narrower interpretation was agreed.

Neither party provided the Commissioner with a copy of the agreement. Razer even argued that it was secret as were the negotiations leading up to the agreement. Since he did not have access to it, the Commissioner could not interpret the agreement. Consequently this ruling is limited to the Commissioner’s authority to allow coexistence and parallel use.

Section 30 authorizes the Commissioner to allow parallel registration in cases where they were applied for in good faith and where the Commissioner sees fit.

Since the parties agree with coexistence in 4 classes, and only disagree about a selection of the goods in class 9, there is no evidence of inequitable behaviour or a will to deceive.

Although, Section 30 does not include the term to mislead, the case-law, such as Appeal 8778/04 Yotvata vs. Tenuva, 30 April 2007 page 30 makes clear that only amendments that are not likely to mislead the public regarding the source of goods may be registered.

The two marks in question are word marks for Razer and Rzer and whilst not identical, do look and sound similar. Coexistence has been deemed allowable in cases where there is a difference in the protected goods or in the customers for a product. For example, in  a 2001 decision concerning TM 206317, TM 207981 and 108389, Naaleh Itzik and Nimrod Manufacturing LTD 1979 could both register the brand Sahara since the Commissioner was persuaded that there was no likelihood of confusion between shoe and sandals. Where marks are similar but not identical, such as in the TM No. 174521 “Cosabella”, 178831 “Cocabella” case, it is even easier for the Commissioner to allow two marks to coexist in the same class.

In this instance, the Commissioner has enough evidence regarding the goods and usage of the mark to decide whether or not to allow coexistence and the appropriate descriptions of the goods, and such a ruling is final as per Section 10c of the Ordinance.

Razer (Asia Pacific) PTE LTD does not see it necessary to explicitly exclude phablets and television which anyway weren’t listed in the goods description for Trademark application no. 242735 Class 9.

The full list of goods available under Section 9 includes computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; …. computer graphics tablets;….

The term phablet is some sort of mobile phone / tablet device. The Commissioner gave the parties the opportunity to explain why the additional disclaimer was or wasn’t required.   Razer (Asia Pacific) PTE LTD relied on the fact that TVs and computer graphic tablets weren’t listed. However, in the Afidavit of Mr Kornbrot that was submitted by them, the term tablet did appear and by considered as included in the term “other external display screens or monitors”. Furthermore, in the corresponding Argentinian, Canadian and Indian registrations, the terms Handheld computers, Personal Digital Assistants and Television sets were included.  Consequently, in this instance, the commissioner did not consider these goods as implicitly disclaimed, but would allow both marks to be registered if the mututally agreed disclaimers  and the disclaimer in  class 9 specifying “for gaming use and/or gamers and excluding, phablets and television “.

Ruling by Asa Kling Concerning IL TM 242735 “Razer” and IL TM 242450 “Razr”, allowing coexistence with appropriate restriction of goods covered. 11 January 2016.

COMMENT

The marks are very similar. The companies reaching a coexistence agreement is not necessary sufficient for the Patent Office to conclude that there is no likelihood of confusion.  However, it is not clear to me what the companies actually sell. I therefore cannot comment on whether it is likely that customers might be confused into thinking that products of one company originated with the other.

 

 

 


Angel’s Bread

February 8, 2016

Angelbread

No, this decision has nothing about Bread of Heaven which is more formally known as Cwm Rhondda, or even about Manna, the fabled bread eaten by the Israelites after the Exodus from Egypt on the way to the Holy Land.

Shlomo A. Angel LTD in Jerusalem is Israel’s largest bakery, and is also the largest bakery in the Middle East. It supplies 275,000 loaves of bread and 275,000 bread rolls a day. The bakery also carries a range of 250 cakes and biscuits, including roggeluch, of course.

There is a smaller bakery called Engel Y. Pattisserie and Baking Goods LTD.
The two bakeries each submitted trademark applications that included the word angel or engel in Hebrew  (אנגל) where vowels are not written, and whether a g is a soft g as in giraffe or a hard g as in gamma is generally indicated by a dagesh or dot in the letter but also not shown in words printed without vowels. Actually, Yemenites are the only group that pronounce the jalet sound in regular Hebrew. Angel writes their name with an apostrophe indicating that it is a foreign word, pronounced Anjel.

Due to possible likelihood of confusion regarding the origin of good thus marked, a competing marks procedure under Section 29 of the Israel Trademark Ordinance is called for. Under Section 29, the Israel Patent Office considers the application dates, the extent of usage and the equability or otherwise of the behaviour of the applicants in order to determine whose rights are stronger and which marks should be examined first. Only then, is the eligibility of the mark under Section 11 considered.

In this instance for some reason, probably a mistake on the part of the Trademark Division, b0th competing mark objections and substantive objections based on previously registered marks were raised against the applications submitted by Angel Y. Pattisserie and Baking Goods LTD.

Shlomo A. Angel LTD’s representatives suggested that it would be more efficient to consider the eligibility of the marks first, and only then, if both marks are considered eligible, to have the competing marks procedure to consider which applicants pending marks should be registered first.

The advantage of first looking at basic eligibility is to avoid wasting time and resources on a competing mark decision only to have the prevailing mark then refused. However, the problem with this approach is two-fold. Firstly, even if one or both pending marks are considered eligible sans consideration of the other competing mark, once the competing mark procedure is initiated, the mark that wins that procedure can then be cited against the other mark, so the substantive examination occurs twice. Secondly, having a hearing to decide whether to follow or deviate from procedure is itself time-confusing. Nevertheless, if both parties agree, it may make sense.

In this instance there was no consensus between the parties, to suspend the competing marks procedure and to first examine the marks themselves. This leads to the question of whether it is ever legitimate to deviate from the procedure set out in the relevant Patent Office Commissioner’s Circular, and to decide on registerability first, and competing marks issues afterwards.

In this instance, both bakeries filed a number of trademark applications which were copending.  On 26 May 2014, Shlomo A. Angel LTD filed Israel TM Application Number 265729 for Conditoriat Angel (A conditoria קונדיטוריה is a patisserie in Hebrew, so this means Angel’s Patisserie). The mark covers flour, grain products, bread, baked goods, sweets, yeast and baking powder in class 29. On 19 October 2014, Shlomo A. Angel LTD filed Israel TM Application Number 269159 and 269160 for Angeli and Angelino for the same list of goods.

On 24 November 2014, Conditoriat Engel Y. Baked Goods LTD. Filed Israel TM Application Number 269996 for Engel Cookies in class 29, also covering flour, and grain based goods, baked goods and sweets and Israel TM Application Number 269997 for the same goods.
In addition to the competing goods procedure, Section 11(9) objections were raised against Conditoriat Engel Y. Baked Goods LTD. on account of earlier marks to Shlomo A. Angel LTD that included Angel’s Bakery Jerusalem, Angel Oranim, Women’s light bread, phyto bread, Angel’s bread in the French style and Angel 100. So if Conditoriat Engel Y. Baked Goods LTD.’s marks were to win the competing marks procedure and be examined first, they could subsequently be refused on grounds relating to previously registered marks owned by Shlomo A. Angel LTD.

The competing marks procedure is thus arguably flawed in that it relates to co-pending marks without taking into account previously issued marks.

Shlomo A. Angel LTD requested that the applications filed by Conditoriat Engel Y. Baked Goods LTD should be first examined on their merits, possibly rendering the competing marks procedure moot.

Conditoriat Engel Y. Baked Goods LTD disagreed. They requested that the competing marks procedure should occur first, as per the relevant circular, since the competing marks procedure started by the commissioner indicates an assumption of validity on the merits, citing BAGATZ 228/65 Fromein and sons vs. Pro Pro Biscuits from 1965, which was based on Section 17 of the old ordinance which corresponds to section 29 of the current version. There is was stated:

“the question of which of the competing marks takes precedence for examination, is a court ruling that is final, whereas the question of registerability, is one that at that stage, the Commissioner neither made or was able to make. Deciding which mark is preferable in the competing marks proceeding is “subject to other requirements of the law”. Thus a section 17 (now 29) proceeding does not determine which mark is registered, it is based on a working assumption that marks are registerable…”

The Commissioner did not consider that Fromein was relevant to the current case. In Fromein, the side prevailing in the competing marks procedure was examined first, allowed for publication and then successfully opposed. The issue was whether the proceeding marks ruling was to be understood as indicating that the mark was otherwise allowable and the answer was that it was not. In Fromein, the Commissioner’s competing mark decision was not based on consideration of the mark on its merits and does not indicate that the mark was otherwise allowable. Furthermore, citing BAGATZ 450/80 EL Khadaer, “there is nothing to prevent the Examiner preferring one mark to be examined first under a Section 29 proceeding when, based on the evidence, he does not consider either mark may be registered on its merits. This indicates that the Examiner CAN choose to examine the marks on their merits within the Section 29 procedure. This also indicates that despite a question regarding registerability on the merits of one of the marks having been raised, the Commissioner may choose to continue to discuss which mark takes precedence.”

Nevertheless, the Commissioner was not happy about allowing one mark to take precedence in a competing marks procedure to have the other mark refused, if subsequently the mark taking precedence were to be refused on its merits requiring the other party to resubmit and cited the competing marks ruling regarding 1667390 and 166845 Ilan Danino vs. Keshet Transmissions LTD from 26 December 2005 which came to a similar conclusion.

Clearly, it is inefficient to hold a competing marks ruling only to subsequently refuse on its merits the mark that takes precedence. The Circular allows the parties the opportunity to agree for a preliminary ruling on the registerability of the marks, and this assumes that where the parties do not have strong contrary feelings, such an eventuality will occur, and where there are earlier registrations, the issue of distinguishing features will be considered.

However, as occurred in this case, where one party’s earlier marks were cited against the pending mark and a Section 29 proceeding were initiated together, the parties have different interests regarding the order of proceedings and may not agree.
Reserving the right to raise registerability issues before himself, instead of before trademark examiners, the Commissioner ruled that the section 29 proceeding should take place but before other issues are addressed, Conditoriat Engel Y. Baked Goods LTD were given 30 days to respond to the registerability objection based on the earlier Angel’s marks. Furthermore, to avoid things being dragged out, no extensions to the substantive examination would be allowed apart from in exceptional cases.
Ruling by Asa Kling, Angel vs. Engel, 24 January 2016.

COMMENT

This is not a bad decision from a procedural point of view, but it does not really address any of the questions. The issue is efficiency for all concerned, so why not revise the Circular to give the patent office authority to initiate a competing marks procedure earlier or later in the examination depending on previously registered marks?

Alternatively, why not decide whether or not a proceeding marks procedure is warranted BEFORE issuing objections on other grounds?


Soulstar

January 20, 2016

S & P Casuals LTD filed Israel Trademark Application No. 262293 for “Soul Star”. The mark covers Clothing, footwear, headgear; designer clothing; clothing, namely, shirts, T-shirts, trousers, jeans, pants, shorts, tank tops, skirts, blouses, dresses, jackets, coats, sweaters, sweatshirts, jogging suits, rainwear, hats, caps, sun visors, belts, scarves, sleepwear, pyjamas, lingerie, underwear, boots, shoes, sneakers, sandals, booties, slipper socks and swimwear all in class 25 and is a national entry of an International trademark filing under the Madrid Protocol.

The mark published as allowed on 30 June 2015, and on 6 October 2015, Soul Cycle Inc.  opposed the mark. S & P Casuals LTD do not have local representation, but details of the opposition was sent to them by the International Office of WIPO. The period for responding has passed and the Applicants did not respond. They are therefore considered as having abandoned their mark and in view of the material in SoulCycle Inc.’s statement of case, costs of 3000 Shekels are awarded to them.


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