Making a Big Deal out of Contents of Affidavit

October 22, 2014

ynet big-deal

Israel Trademark No. 234855 is a graphic mark for Y-Net Big Deal that was filed by Yidiot Internet. (Yidiot is Israel’s most widely read daily tabloid. Y-Net is their Internet site).

The mark covers promoting the goods of others, namely, providing coupons, rebates and vouchers for the goods of others; included in class 35. H.U.B. Trading LTD opposed the mark.

On 14 August 2014 the Opposer requested the striking from the record of large swathes of an affidavit by a Mr Hochman that was filed by the Applicant. The Opposer claimed that some of the objected to sections of the affidavit included hearsay beyond the knowledge of the applicant and other sections were legal claims that did not belong in an affidavit. The Applicant did not respond.

On consideration, the Adjudicator, Ms Shoshani-Caspi did not consider that the extreme sanction of striking from the record was warranted. At best, there was grounds to give a low significance to certain parts of the affidavit. Furthermore, she was unhappy with damaging the Applicant’s evidence without a careful analysis of what was known by the witness and why certain things found therir way into the affidavit, presumably following legal advice. In conclusion, Ms Shoshani-Caspi rejected the action to strike the parts of the affidavit. She ruled that after an evidentiary hearing and cross-examination of Mr Hochman by opposing counsel and in summing up, the Opposer could make these claims again, and Costs would be awarded in the framework of the main ruling.

Israel Trademark No. 234855 “Y-Net Big Deal” H.U.B. Trading LTD vs. Y-Net, intermediate ruling of 11 September 2014.


PUBA trademark successfully opposed

October 19, 2014

 

A’laa Sanduka filed Israel Trademark Number 257833 “PUBA” for Clothing for youth and womwn (sic), excluding sportwear and footwear.

Puma SE opposed the application. On 3 July 2014, the Applicant for the Opposer requested real costs of 16, 718 Shekels. The Applicant did not respond to the request.

The Applicant did not respond to the Opposition notice at all and so the mark was cancelled. Citing Bagatz 891/05 Tnuva vs. Ministry of Trade and Industry, the Adjudicator of IP at the Israel Patent Office listed the various considerations in awarding costs, but with further reference to Regulation 69 of the Trademark Regulations, noted that she had the authority to award reasonable costs.

In this instance, despite the fact that the Applicant had not responded, the Adjudicator of Intellectual Property did not consider the requested costs of 16,718 Shekels as reasonable, proportional to the amount of work involved and appropriate in the circumstances.

In particular, she noted that the Opposer could have simply filed a notice of Opposition and not filed a strong case, giving the Applicant an opportunity to simply back down. In the circumstances, she awarded 6000 Shekels including VAT.

Opposition to Israel Trademark No. 257833 “PUBA” costs ruling by Yaara Shoshani-Caspi  

COMMENT

As Puma limits itself to sportswear and Puba is specfically NOT for sportswear, I am not sure that the mark would not have registered. In general, and ironically since they are commonlyreferred to as Palestinians, Local Arabs, of whom we assume A’laa Sanduka is one, generally cannot pronounce the P sound, and we assume that the word PUBA is pronounced BUBA which is even less like Puma. Nevertheless, I tend to agree that in all likelihood, a simple notice of opposition would have resulted in the mark being abandoned so the work done was largely superfluous and the reduced costs seem fair.


Calculation of costs re Israel Trademark Number 242574 for “OSIS”

October 19, 2014

OSIS

AG & Co. KGaA applied for Israel Trademark Number 242574 for “OSIS”

The mark was applied for perfumery goods, essential oils, cosmetics, preparations for treating, washing, dyeing, bleaching, styling and perming hair, soaps in Class 3, and for mechanical implements for body and beauty care (included in this class), sponges, brushes (except paint brushes), apparatus and receptacles for applying hair dyes in class 21.

Ein Gedi Cosmetics opposed the registration.  After several extensions, Henkel abandoned the mark. On 13 July 2014 Ein Gedi requested costs of 12,000 Shekels. On 18 August 2014, Henkel responded to the request for costs.

The Adjudicator of IP issues, Ms Shoshani-Caspi, accepted that in general, the party prevailing in a proceeding is entitled to costs. In this instance, the Applicant did not detail his requests for costs which therefore have to be considered as an estimate only.

In Bagatz 891/05 Tnuva vs. Department of Industry it is stated that to obtain real costs, the applicant should detail the basis of calculating legal fees, the amount of work, and whether it was actually paid. After this is done, the opposing party should explain why the requested costs are inappropriate.

furthermore, Section 69 of the Trademark Ordinance gives the Commissioner (or whoever rules on the case on his behalf) discretion to award costs considered realistic.

In this case, since there was no basis to award actual costs, the adjudicator considered the complexity of the case, the amount of work, the professionalism of the parties, equitable behavior of the parties and with reference to Regulation 46 of the Trademark Regulations 1940, whether the case could be avoided were the Opposer to provide the applicant with sufficient notice.

Apparently the Opposer had not contacted the Applicant before filing the Opposition, but the Applicant had filed three extensions, indicating that they were originally considering and intending to respond. This was not considered as sufficient indication of inequitable behavior though.

Taking into account the amount of work done and that the opposer had to request costs,the Arbitrator of intellectual Property Ms Shoshani-Caspi ruled costs of 3000 Shekels including VAT.

Ein Gedi vs. Henkel re Israel Trademark Number 242574, ruling on costs by Ms Yaara Shoshani -, 17 September 2014

 


Matrix fun and games

October 17, 2014

matrix games

Israel Trademark Number 247341 for the word-mark Matrix covers Tablet PC, electronic frames and digital cameras; all included in class 9. It was filed by a private individual called David Alon.

The mark was allowed and on publishing for Opposition purposes, Iscar (an Israeli company that is a major manufacturer of cemented carbide cutting tools) filed an opposition.

Iscar requested that Alon file 100,000 Shekels bond to cover costs in the event that he fails to win the opposition. Furthermore, until a ruling issues on the bond issue, the opposition should be considered as in suspense, and finally, due to a response from the applicant on 17 August 2014, the application to file the trademark should be considered as voided.

It turns out that Alon is handling a bankruptcy proceedings and he agreed to suspend the opposition proceedings until he can come to an understanding with his creditors in the bankruptcy hearing scheduled in December 2014.

At this stage of the proceedings, Iscar have until 24 October 2014 to file their evidence.

REGARDING THE BOND

Regulation 519a enables someone sued to request that the plaintiff post a bond. In this instance Iscar is opposing Alon’s registration and so the regulation does not apply. Furthermore, in the current instance, even were Alon the plaintiff, the Adjudicator of Intellectual Propoerty, Ms Shoshani Caspi , does not consider that the circumstances justify requiring a bond. A private individual (as opposed to a limited company) is generally not required to post bond merely because of poverty, because this would limit his right of access to the courts.

Forcing Alon to post a bond would effectively close the proceedings (probably the point), and should only be allowed if he has no chance of succeeding on the merits. The request was refused.

REGARDING THE REQUEST TO CONSIDER THE TRADEMARK WITHDRAWN

The case for withdrawing the mark is that Iscar considers it confusingly similar to their mark 195919 also in Class 9.

Iscar’s mark covers Automatic machine tools and accessories; vending machines; computer hardware and software used to control machine tools and accessories use, supply, purchase and inventory for the manufacturing industry; all included in class 9, and is shown here:

Matrix

Iscar claims that Alon’s mark is confusingly similar as their earlier mark and is in the same class. They consider that Alon should have informed the Patent Office that he was bankrupt and being in the status should refrain from legal actions. Forcing him to withdraw the applicant was preferable than an opposition proceeding.

Ms Shoshani Caspi, the arbitrator assigned to the case ruled that she could not decide to have the mark thrown out in a preliminary action without hearing arguments from both sides. It was premature to accept that the marks were confusingly similar and that Alon’s mark should not be allowed. The fact that he was bankrupt was not sufficient justification to prevent him from trying to defend his rights before the Israel Patent and Trademark Office. She therefore rejected having the application simply thrown out.

In conclusion, Ms Shoshani Caspi gave Alon until 31 December 2014 to submit the ruling of the Tel Aviv District Court regarding the bankruptcy, to decide on the application and the opposition and suspended the proceedings until then. Following the District Court’s ruling, she would decide on a timetable for filing evidence. Finally she decided that both sides should cover their own costs.

Preliminary Motions regarding Opposition to Israel Trademark Number 247341, Iscar vs. David Alon ruling by Ms Shoshani Caspi, 22 September 2014.

COMMENTS

Iscar makes metal matrix cutting tools. The term matrix has a plethora of meanings in different contexts but does not mean anything particular with regards to tablets, electronic frames and digital cameras. I don’t see that Iscar has a very strong case in opposing this. There is probably room for coexistence of the two marks. In the circumstances, they could probably buy the mark from Alon for less than the cost of opposing it, which they would be unlikely to recover anyway.


Nanobiotix – requesting the posting of a bond to cover Opposition expenses is standard and not exceptional

October 14, 2014
It is actually a graphic mark and not merely the word!

(It is actually a graphic mark and not merely the word!)

Nanobiotix filed Israel trademark Application Number 243678 “Nanobiotix” via the Madrid Protocol in classes 10 for Surgical and medical apparatus and instruments especially for the diagnosis and treatment of tumors using radiation treatment; radiotherapy apparatus; apparatus for use in medical analysis; diagnostic apparatus for medical use; radiology screens for medical use; X-ray photographs; radiological apparatus for medical use; X-ray tubes for medical use; filters and lamps for ultraviolet rays for medical use; apparatus and installations for the production of X-rays, for medical use; X-ray protection devices for medical use; roentgen apparatus for medical use; devices for protection against X-rays, for medical use; receptacles for applying medicines; special furniture for medical use; X-ray bulbs for medical use., in class 42 for Scientific and technological services as well as research and design particularly in the field of nanomedicine (nanotechnology applied to medicine); biological research; bacteriological research; scientific and technological evaluations, estimates and investigations provided by engineers, researchers; design and development of new products (for third parties); technical project studies; industrial analysis and research services; chemical analysis; chemical research; chemistry services; research and development of new products for third parties; technical research; research in radiobiology; research in nanoscience and nanotechnology, particularly applied to medicine; and in class 44 for Health services particularly in the field of nanomedicine; medical services particularly in the field of nanomedicine; hospital services; medical assistance; physical therapy.

Super Medic (Medic Light LTD) and Diateti Col LTD, represented by owner Tzion Yadid, opposed the mark.

The Applicant requested that the Opposers post a bond of 80000 Shekels to the courts to cover costs should the opposition fail, and submitted an affidavit to support this request.

The basis of the Opposition was that the mark in question is confusingly similar to their issued marks 241083, 229880 (and to their pending mark 246664), and therefore cannot be registered under Section 9(11) of the trademark ordinance 1972.

The Applicants argued that the allegedly similar marks Actibiotica and Acti-pearl were substantially different. The pending mark 246664 – Nanobiotica is more similar, but being descriptive should not be allowed. Furthermore, the nature of the goods and the distribution channels of Israel trademark Application Number 243678 “Nanobiotix” and Israel trademark Application Number 246664 “Nanobiotica” are significant enough to allow coexistence.  Nanobiotix requires a prescription whereas Nanobiotica does not.

Section 353a of the Company Law 1999 is the basis of the request for a bond. Applicants noted that the Opposers were working out of a private house and had liens on their product which was apparently their only asset. The fact that they were represented by their CEO and did not have legal representation was submitted as further indication of lack of financial assets.

The Opposers considered that the request for them to post bail was inequitable behaviour as it could prejudice them being able to fight their case and have the opposition considered on its merits. They claimed that their financial status was steady and that there were no liens on their assets. Hey considered their case a strong one, and argued that this also strengthened their position against needing to post bail.

Class 5 was deleted from the mark under Opposition, resulting in Israel trademark Application Number 243678 “Nanobiotix” and Israel trademark Application Number 246664 “Nanobiotica” no longer covering a common class of goods.

THE RULING

Deputy Commissioner Ms Jacqueline Bracha held that she had the authority to require a deposit of likely costs and where a plaintiff is a limited company the assumption is that such a deposit is required unless it is clear that the plaintiff has sufficient assets. If the Opposer wishes to be considered an exception to the rule that a deposit be made, they have to provide positive evidence to this effect.

The Opposer did provide evidence of not owing income tax for the years 2009 to 2013. The Deputy Commissioner did not consider that the applicant had successfully showed that the company did not have other assets or that the marks and products were being used as a security. However, the Opposer had not provided sufficient evidence that they did have financial resources to pay costs should they lose. The company is a private one and apart from not owing money to the income tax authority, there was no indication of resources.

As to the chances of the Opposition being successful, the Deputy Commissioner considered it too early to come to a conclusion on the issue as no evidence had been brought.

In light of these considerations, the Deputy Commissioner considered the request for a bond to be posted normative and appropriate. However, after consideration of typical costs of oppositions of this type, even where the applicant is a foreign entity, she considered 20,000 Shekels adequate costs to be posted.

Intermediate ruling re posting bond for future costs concerning opposition to filed Israel trademark Application Number 243678 “Nanobiotix”, Deputy Commissioner Ms Jacqueline Bracha, 11 September 2014.

COMMENT

Nanobiotrix is represented by Adin Liss. Eran Liss, one of the partners, is a grandmaster. The request for a bond to be posted was merely an opening gambit. Whereas there is nothing wrong with an Opposer fighting a trademark without legal representation, one suspects that he might find himself out of his league. We urge Opposer to seek legal advice and representation to avoid a quick check-mate.


Arcos and Arcosteel Cross Kitchen Knives Again

October 6, 2014
Arcos knife

Arcos knife

Arcosteel knife

Arcosteel knife

Millenium Marketing Intertrade (1999) LTD. filed Israel Trademark No. 239054 for the word mark  “Arcosteel”.

Not surprising, considering their earlier opposition for a stylized mark, Arcos Hermano S.A. filed an opposition to this mark.

The Opposers requested that a hearing be delayed since there were four parallel proceedings which should be amalgamated and heard in one go. They claimed that their witness, a Mr Rosenfeld could not be able for the hearing as scheduled due to prior commitments.

The other three cases concern TM 241329 “Arcos” in class 21 and 247988 “Arcos” in classes 8, 21 and 35, opposed in class 21, and TM 248994 for Arcosteel in classes 7 and 11.

The present word mark for Arcosteel was filed in classes 8, 21 and 35, but after cutlery in class 8 was amended to recite cutlery excluding Chef’s knives and professional knives, the opposition to class 8 was dropped.

Since Opposer has no longer objections re classes 8 and 35, the Deputy Commissioner, Ms Jacqueline Bracha has ruled that the mark be allowed to register in those classes.

As to combining the cases, since there are a further two applications – 252214 and 256226 that have not been opposed yet, she did not see fit to combine those cases.

Regulation 520 authorizes the courts to combine similar actions so long as there are similar legal questions. Since the oppositions concerning TMs 239054 and 241329 relate to similar questions of interpretation of the trademark agreement between the parties, she ruled that these should be combined.

TM 247988 also relates to the interpretation of the agreement but additionally relates to likelihood of confusion. Nevertheless, she saw fit to combine that case as well.   However, TM 248994 concerns classes 7 and 11 and is beyond the scope of the agreement, so she did not see fit to combine that case in the current proceedings.

As the request to combine the cases was filed late and the opposing party had consequently incurred expenses, she ruled costs of 600 Shekels + 6000 Shekels legal fees against Arcos Hermanos.


Is Leapfrog trying to jump ahead at Sony’s expense?

September 18, 2014

Sonicgear

Leapfrog Distribution PTE LTD filed Israel trademark application No. 240389 for SONICGEAR.

The application covers “Audio devices, including but not limited to: speakers, multimedia sound systems, docking stations, radios, radio clocks, portable multimedia devices, headphones, headsets, microphones, earphones, audio cables and accessories; all in class 9.

On the mark being published for opposition purposes on 31 October 2012, the Sony Corporation filed an opposition.

Sony frog

Sony’s claims

Sony claimed to be a world leading brand of electronic goods including video game consoles and telecommunication equipment with worldwide reputation, including Israel, with a range of branded products that are identified with Sony. Since the company name Sony is well established, it may considered a Well Known Brand and is entitled to wide protection.

According to the Opposer, there is a similarity between the Applicant’s mark and their name, both phonetically and visually, and so the mark lacks distinctiveness in contradistinction to Section 8a of the Trademark Ordinance.

The Opposer (Sony) claims that a connection between the Applicant’s mark and their own will damage the reputation of years and cause a dilution of Sony’s name. Sony accused Leapfrog of trying to free ride on Sony’s long established reputation which is the result of years of cultivation, and so claims that the registration of the mark is inequitable behaviour and contrary to the public good.

Leapfrog’s claims

Leapfrog was established in 1999 and has sold electronics under the name SONICGEAR for more than a decade. SONICGEAR’s goods have been sold in Israel since 2006. The requested mark has been in use in Israel since 2008 and has developed its own reputation.

Leapfrog denies a likelihood of confusion since both Sony and Sonicgear have developed their reputations over years. Leapfrog claims that Sony has lived with their use of the SONICGEAR branding for years and are thus estoppeled from opposing it, and their opposing it now is itself inequitable behaviour.

Evidence

Leapfrog further claims that the marks look and sound different and that there are very many marks that start with the prefix SON in Class 9 of the Trademark Ordinance.

SONY submitted an affidavit of the Head of Trademarks at SONY that shows the rating of the SONY mark in Japan, examples of branding publicity for Sony in Israel and lists of SONY’s trademark registrations around the world.

Leapfrog filed an affidavit of their CEO showing sales of the SONICGEAR brand over the previous five years and examples of their trademark registrations.

Both sides gave up on the right to cross-examine.

Ruling

Citing Supreme Court precedents, Deputy Commissioner Jacqueline Bracha ruled that where the parties agree to accept testimony without cross-examination this adversely affects their rights to challenge the facts presented in the testimony but this does not bind the court to accept the affidavits at face value.

In this instance, the two affidavits may be used to build a picture of the relative usages but the court has to bear in mind that the affidavits were not challenged.

As to the Opposer’s challenge to the distinctive nature of the mark, Section 8a states that a mark cannot be registered unless it may be used to distinguish between the goods of the registrant and those of competitors. Ms Bracha ruled that the purpose of the Section is to prevent parties from monopolizing generic words. She considers that the distinguishing features of a mark have to be considered by looking at the mark in isolation, without considering competing marks. The issue is whether the mark is descriptive or laudatory, not whether it is confusingly similar to other marks.

Consequently, Ms Bracha ruled that better grounds of opposition might be 11(9) or 11(13) as Sony’s marks are registered and they are claiming a likelihood of confusion.

She went on to apply the triple test and ruled that the as far as the appearance and sound of the mark were concerned, the marks should be considered in their entirety and not broken down into syllables or parts. SONICGEAR does not look or sound like SONY. The mark is also stylized with distinctive graphic elements.

The prefix sonic implies audio and is thus generic descriptive, and not fairly monopolizable by Sony. She noted that it was true that many other firms were actively using marks starting with or including ‘son’, but did not consider this as being grounds for registration per se. Nevertheless, since other players were using the syllable / sound, it weakened Sony’s argument that there was a likelihood of confusion.

The hard G in the middle of Gear is audibly dominant. Furthermore, as a stylized ON-OFF button, it is graphically distinct. She then went on to cite the Appeal of the Killy – Killa decision (considered by former Commissioner Dr Noam as confusingly similar, but overturned by Judge Ginat of the Tel Aviv District Court).

As far as the clientele is concerned, there is certainly overlap but Ms Bracha did not consider that there was a likelihood of confusion, and certainly no evidence of their being a likelihood of confusion was submitted.

Under other considerations and common sense, MS Bracha accepted that the prefix Son was not distinctive and noted that Leapfrog also had a second stylized mark Powerlogic where the Os were jack-plugs similar to the C of Sonicgear, and this strengthened the identity of the mark with Leapfrog’s.

As to Sony being a well-known mark, Ms Bracha accepted this, but explained that the significance of this is covered by Section 11(14) of the Trademark Ordinance, i.e. that an identical or confusingly similar mark could not be registered in a different class if this could create a likelihood of confusion. In this case, since she had concluded that the marks were not confusingly similar, the issue was moot.

In terms of unfair competition, Ms Bracha ruled that merely establishing that a competing mark is wel known is insufficient. A likelihood of confusion is also required and no evidence of this was submitted.

The grounds of Public Interest were considered not relevant, since these were limited to marks that were widely considered offensive, and that wasn’t the case here. As to inequitable behaviour, Ms Bracha referred to the Pioneer decision instead of repeating it again, and also noted that although alleged, no evidence was submitted.

The Opposition was refused and Ms Bracha awarded the Applicant 2000 Shekels costs and 13,000 Shekels + VAT in legal fees.

Ruling: Opposition to Israel Trademark 240489 “Sonicgear”, Sony vs. Leapfrog Ms Jaqueline Bracha, 10 August 2014.

Comments

This was a well-reasoned response. That cannot be said of the Opposition as filed.

If the Opposer chooses to oppose a mark based on one legal argument and is unable to prove his case since the legal basis chosen was wrong, why should the Patent Office raise legal issues such as Section 11 which were not raised? After all, an Examiner had already decided that the existence of Sony’s marks were insufficient to prevent registration and Sony (via their Counsel, Dr Shlomo Cohen, Law Offices) did not challenge this under Section 11.

The Chinese do seem to often choose marks that are at least reminiscent of and perhaps inspired by brand-leaders. Sonicgear is somewhat reminiscent of Sony and of Panasonic, and this case reminds me of the Lovol – Volvo decision.


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