Perhaps so that my brother and other trademark attorneys don’t feel left out, Adv. Assa Kling, the Israel Commissioner of Patents and Trademarks has kindly issued a circular for them as well!

In Circular 12/2012, the commissioner notes that Israel trademark applications under the Madrid Protocol may be filed in colour (that’s color for American readers).  In such cases, the colour may provide a distinguishing feature, but  is a limitation on the scope of coverage.  henceforth, the Pantone number won’t be listed in the registration, but the colour will be a feature of the mark and may therefore be limiting. Applicants wanting wider coverage should therefore file their marks in black and white.

The additional frivolous comment:

When first posted, I wrote:

“Strangely, the circular comes into force from when it was published, i.e. 31 January 2012, but it carries the date of 6 February 2012 and I received it along with everyone else only today. Still, in comparison with the retroactive amendment of the patent law last year, see here this is a minor problem.”

I suspect that at least one person in the Israel Patent Agency follows my musings. Today, 7th February, an amended Circular issued, correcting the coming into effect to 6 February 2012. This will be a relief for any applicants who responded in the week prior to publication of the Circular, who didn’t have the foresight  to anticipate this development!

The marks cover: Entertainment and culture activities including live entertainment and musical entertainment; nightclubs, sport clubs, providing recreational facilities; arranging and conducting of functions, conferences, conventions, exhibitions, seminars and meetings; theatre, opera, concert, ticket reservations; all included in class 41, and
Rental of temporary accommodation; reservation; hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings in class 43.

Ganor opposed these registrations, since the marks were confusingly similar to mark number 136149 (Alma Beach) that she owned.

The two sides came to a co-existence arrangement under which MusicArt would have rights to the wordmark Alma in the North of Israel, North of Caesaria, whereas MS Ganor would have rights to the Alma Beach mark as illustrated, South of Caesaria. However, withdrawal of the opposition was conditional on the coexistence agreement being accepted by the Patent and Trademark Authority.

 Ms Yaara Shoshani Caspi, the adjudicator of intellectual property in the Israel Patent and Trademark Authority refused to accept the coexistence agreement. Since the word marks were distinguishable from the graphic image, she was prepared to allow the registration of the marks, and the opposition to continue.

Her position is that although two parties can decide to coexist, the Trademark Office is obliged to consider other issues, such as protecting the public from confusion. Geographical limitations are particularly problematic bearing in mind the small dimensions of the country.

The parties have been given 20 days to inform the Israel Patent & Trademark Authority how they wish to continue.

The organization L’tet - Humanitarian Aid In Israel, (ארגון לתת) filed an opposition to the mark, but after the applicant, represented by well-known attorney, Dr Yaakov Weinrot, his statement of case with a request for costs, L’tet withdrew their opposition, stating that although they believe the opposition was legally justified, they did not think it was correct use of public funds.

The Commissioner for Patents and Trademarks, Dr Assa Kling, accepted that both the applicant and the opposer did important humanitarian work, but felt that it was more appropriate for such organizations to find other ways to settle their differences than to fight opposition proceedings and generate legal costs. Nevertheless, he could not deny the parties’ right to fight through  the system.

Commissioner Kling ruled that in principle, the applicant was entitled to recover legal costs, but the awarding of such was discretionary on the Patent and Trademark Authority. No details of actual costs incurred were given, and generally actual costs are rarely given, but rather an estimate of fair costs. In light of the circumstances and the fairly early stage at which the dispute was terminated, he decided to use his discretion and not award costs at all.

COMMENT

This is, unfortunately, not the first time (and probably not the last time either) that two humanitarian organizations have been involved in trademark disputes.

Unlike the case of Johnson & Johnson vs. the American Red Cross, regarding the continued use of the red cross symbol by the ambulance service, this case has some merit, in that charities should choose distinguishable names so that donors are not confused who they are supporting.

There are a number of cases where different charities have confusingly similar names. Then again, “to give” is rather generic, and one wonders why anyone should have rights to a word like that for philanthropic purposes.

I can understand the Commissioner’s position regarding philanthropic organizations wasting public money on legal fees. It is, however, a moral – ethical position, not a legal one. From a purely legal standpoint, one wonders if it would not have been appropriate to have awarded the usual costs awarded to an applicant for a trademark, where the opposition is dropped after the applicant files his statement of case. Commissioner Kling is well within the scope of his discretion, and value based judgements have been in vogue since Former Chief Justice Aharon Barak abandoned formalism and instigated more value-centric judgements.

Although I have no strong feelings regarding this decision not to award costs, personally, I am a formalist who prefers the “law is an ass” approach to Law. I note that judges and commissioners are not democratically elected, and often the reasons and methods of selection for such judicial personnel are somewhat murkily concealed.  In such a system, I would prefer judges and commissioners to judge and to award costs in a manner that neither favours plaintiff nor defendant and which is actually neutral to the type of goods or service that a trademark applicant provides. 

I note that we do not know if the Attorneys were actually charging for their time or if they were working pro bono. If one organization that helps the needy opposes a mark filed by another organization, is it wrong that the losing organization should transfer funds to the organization that wins?

Working in the field of intellectual property – as in many other disciplines – is dynamic. Partnerships and alliances have a beginning and an end.

After 3½ years of working together, Jeremy Ben-David and I have decided to end our partnership on December 31, 2011. We have both decided to pursue different directions within the IP field.

This is an amicable parting of the ways based on mutual respect.

Jeremy Ben-David will continue in the existing Jerusalem premises, as JMB Davis Ben-David – Patents, Designs & Trademarks. He may be contacted here: jmb@israel-patents.co.il

I will provide full details of my plans in January, but in the meantime, can be reached at mfactor@ipfactor.co.il

Wishing all clients, associates and blog followers a Successful 2012!

Michael

The evidentiary Declaration submitted by Merk, ran to over 150 pages, all in English. The applicant, Mr Schreiber, who apparently is acting without representation, requested that this be translated into Hebrew and Ms Yaara Shoshani Caspi ordered that Merk do this, based on applicant’s claim that he didn’t understand English.

Merk / Gilat Bareket appealed this decision. they argued that they weren’t given an opportunity to oppose Schreiber’s request, in contravention of Circular M.N. 79 and of natural law, and should have had 20 days to respond. Substantively they argued that Schreiber was the sole shareholder of Anderson Medical LTD, whose website included various languages including English, and thus concluded that he understood the language. Furthermore, by providing affidavits in English, the witness would know what he was testifying and third parties would be able to access the material.

Ms Caspi Shoshani rejected the argument that the website indicated that Schreiber knew English, understanding that this merely indicated that he could have material translated at his expense. Substantively however, evidence should be filed in Hebrew or Arabic, but if both sides agreed to English being used, that was acceptable. There was no reason why applicant should bear the costs of translation.

Consequently Schreiber was in his rights to have documents translated into English. She suggested that if Merk were prepared to focus the discussion on relevant passages only, they could have these translated and forgo translating the full 150+ pages.

She noted that were she to come to the understanding that Schreiber did in fact have a good command over English language during the hearing or from his submissions, she would award damages to Merk, regardless of the final ruling.

COMMENT

I have no idea what is in the 150 pages, but can well believe that for an Israeli, this quantity of material in English is tiring. One wonders if it is necessary and it appears that Shoshani Caspi had her doubts as well.

There is an unfortunate practice, sometimes employed by litigants, of burying the opposing party in enormous quantities of material.  Legal Counsel are often not responsible, since if their client provides large quantities of evidence, they would generally file all of it as failing to do so could be construed as malpractice. Consequently costs escalate.

From the way he writes his name in English in the trademark application and from the English description which is clearly a literal word for word translation from Hebrew into English of the goods covered by the mark, I think it is self-evident that Yonatan Shreiber is not able to easily review 150 pages of material in English.

Berik Design USA Inc. , and Greenstar Hong Kong Ltd.,  (“Opposers”) represented by JMB, Factor & Co. are opposingIsrael pending trademark Nos. 227959 and 227960 by No Fear International LTD, (“Applicant”) represented by Shlomo Cohen & Co.

The following interim ruling relates to a request by Applicant’s counsel to have a decision of the Patent Office Adjudicator reconsidered.

BACKGROUND

Shortly before the deadline for filing a response to the Opposition, the Applicant requested a two month extension to file their response and legal arguments against the Opposition , but the Patent Office granted one additional month only.

Claiming that the Opposers were uncooperative and that obtaining evidence from abroad was problematic, counsel for Applicant requested that this decision be reconsidered.

The Applicant did not provide JMB, Factor & Co. (the Opposers’ Counsel) with a copy of their request, as is customary.

The Adjudicator requested the Opposers’ respond to the Applicant’s request. This was particular difficult for the Opposers’ Counsel, since they had not been provided with a copy of the request. The Opposers’ Counsel spent many days attempting to obtain a copy of the request from the Patent Office, a task which proved to be difficult since the clerk handling the matter was on vacation at the time.

After finally obtaining the details of the request, JMB, Factor & Co., responded to it,  informing the Adjudicator that in principle, the Opposers’ do not oppose the Applicant’s request for an additional month’s extension. However, the Applicant’s counsel  had never contacted them to request such an extension. Furthermore, the Opposers’ Counsel requested the imposition of costs on the Applicant for the time spent in obtaining a copy of the request from the patent office and in responding to it..

The Ruling

According to the Adjudicator for Intellectual Property, Ms Yaara Shoshani Caspi, there is a list of instances where reconsideration of a ruling is legitimate, that is detailed in Appeal No. 1574/11 Strauss Marketing LTD. vs. Moshe Orman, 2011. In her opinion, the current situation does not fall into an appropriate category and thus the decision should not be reconsidered.

Nevertheless, Ms Caspi Shoshani went on to look at the specifics of the case, and noted that the counter-case should have been filed by 30 August 2011, but the request for an extension was only received on 4 September 2011, albeit dated 24 August 2011. The applicant claimed to have relied on a reminder letter from the patent office dated 14 July 2011, but there was a general letter from 31 March 2011 from the trademark department of the patent office to the effect that no reminders would be sent.

Consequently, the request for an extension was rejected and costs ofNIS1500 were awarded to the Opposers.

Following the ruling, the Applicant’s Counsel requested the Adjudicator to reconsider her decision regarding the extension and the amount of the damages.

The Applicant has since filed his response, a copy of which the Opposers’ have yet to receive. The Adjudicator has since ruled that the since the response has now been filed, the request for an extension is moot. Furthermore, the Arrbitrator has ruled that the level of the costs awarded shall not be amended.

Opposition to Israel TM 227959 and 227960, Berik Design USA INC. V. No Fear International LTD.

COMMENT

My brother Aharon, head of trademark department in our firm won this little skirmish, which is nice. Of more importance of course, is to win the opposition proceedings.

It is quite unreasonable for something to take 10 days to reach the patent office from a law firm that uses couriers, and in the age of faxes. Furthermore, regular mail shouldn’t take that long to arrive, and important documents sent by mail could be sent registered or express mail. I think Ms Shoshani Caspi’s ruling reflects this.

Adv. Doron Neuman represents Toolbox Design. Their trademark application number 224994 was refused, and the applicant requested and was granted a hearing. the day before the hearing, it was noted that he had not paid the request fee and the staff of the patent office made efforts to reach him, apparently beyond that required of them. On the day of the hearing itself, the Patent Office managed to make contact with the legal representative who informed them that his client had decided to forfeit his right to the hearing. In view of the costs incurred in preparation, costs of NIS 800 were awarded to the State for wasting judgement time, unproductively used due to applicant’s behavior.

The Case: TM 224994 to Toolbox design, 7 November 2011, by Adjudicator Ms Y. S Caspi

When filing trademark applications in Israel, it is necessary to specify the class of goods and lists of articles covered in Hebrew and English.

For trademarks filed by applicants from abroad, the list fo goods provided by the applicant is typically in English, and the Israel representative has to find suitable translations.

For example, I remember helping to translate a trademark for a list of goods that included, anoraks, parkas and duffel coats. All these are hooded coats. Anoraks are generally fabricated from waterproof synthetic material and have quilted linings and are zippered. Parkas are generally dark blue with orange linings and stiffer hood, and tend to have both zippers and buttons or press studs. Duffle coats are typically made from wool, have toggles instead of conventional round buttons and are best described as the type of hooded coat that Paddington Bear wore.

One of my Turkish clients makes paper goods and among the list of disposable articles for one of their marks, was the word napkin. Now in the UK, a paper napkin is also referred to as a serviette, and is placed on the dining table and used to wipe one’s fingers and mouth. I understand that in the US, a napkin would not be put on the dining table. Not knowing what the company manufactured or might manufacture in future, I suggested that we included in the list of goods: disposable paper diapers, sanitary napkins and serviettes, and the client concurred. In that instance, there were no similar marks in the class, so wide protection was possible.

Where the trademark is for engineering components or technical goods, the problem is compounded since many lawyers who handle trademark matters have little technical competence.

To overcome this sort of confusion, the practice of adding a notice has developed, that in case of discrepancy between the English and Hebrew list of goods, the English list of goods prevails.

In Circular 2011/07, the Israel Commissioner of Patents and Trademarks, Adv. Asa Kling, has put an end to this practice. Such notices will no longer be allowed.

It makes perfect sense that in Israel, the Hebrew list of goods prevails. Israel judges are expected to know Hebrew, and may have less than adequate English. On the other hand, why should trademark owners lose their rights due to mistakes by attorneys that may be difficult to avoid, since some nouns that represent articles in English simply don’t have accurate translations?

In practice, since Israel ascended to the Madrid Protocol last year, most applications originating abroad are filed under the protocol and the list of goods is filed in English only. This avoids the need to translate the list of goods into Hebrew altogether.

On a positive note, the issuance of this circular may indicate that the trademark department is now running normally after the tragic loss of Ms Nurit Maoz, who was brutally murdered.

We note that in the Wrangler case, the court decided that there was trademark protection for a W on the back pocket of jeans, where Wrangler had registered the mark for shirts and overalls only, and not for trousers/pants/jeans . Go figure.

Time will tell if as a result of this circular, there will be more or less ambiguity regarding the list of goods protected by a mark.

Several issues were dealt with and minutes of the meeting  were made available by Adv. Tal Band, the head of the AIPPI. This reprot is based on those minutes.

Appropriately, the tragic and sudden loss  of the Head of the Trademark Department, the late Ms Nurit Maoz was the first issue raised. Her achievements were acknowledged and patience was requested from the profession for the invitable delays that have and will occur until the department is able to reorganize itself and move forward.

I discovered that the Israel Association of Patent Attorneys is no longer headed by Ms Michal Hackmey alone, but now has a co-chairperson, Ronny Shutrut. Despite being a member of good standing in the organization, I didn’t hear about this decision from the organization itself. His appointment doesn’t seem to have been an election. At the last general election, several of the large firms voted on behalf of all workers by proxy, despite there being nothing in the constitution to allow this, and despite those voting in absentia not knowing who would be standing for office. There was, however, a facade of democracy. this appointment seems to have been made without even directly informing the members, which is less than satisfactory.

Another unsatisfactory aspect of this is that both co-chairpeople work for the same firm. Funnily enough, the chairperson of the FICPI (Ina Pugasch) is a further employee of the Reinhold Cohn IP group.

We assume that RCIP, as Israel’s largest IP practice (excluding the patent office and TEVA) is big enough to take care of its interests. Since the Commissioner himself, worked there until his appointment earlier this year, I suspect that the firm is reasonably capable of getting his ear if necessary.

The question is whether the present set up serves the interests of practitioners not working for RCIP, including the very large number of sole-practitioners whose needs and perhaps that of their client base may be very different to that of the Reinhold Cohen group.

Ms Michal Hackmey did request that members submit issues to her, for raising at these important meetings. Unfortunately, however, her priorities in deciding which issues to raise, will invariably reflect her perspective and practice.  I raised two issues with her and asked them to be brought up. I requested that the current practice of examination of independent claims only be raised as it extends prosecution and incurs unneccessary expense to clients. I also raised the issue of apparent illegality of the committees that orally examine candidate patent attorneys.  The first issue was apparently not raised but the second issue was discussed, but after the furore raised in responses to this blog and the like, presumably could not be ignored.

If all the people representing the private sector at these round tables come from 2 or 3 large firms, does this promote the interests of the profession as a whole? Not sure.  We wonder, therefore, whether the roundtable really serves its purpose to provide a channel of communication between the profession (as a whole), and the Patent Office.

One interesting insight was that the Commissioner of Patents noted that various issues including amending the law regarding examining patent attorneys was not within his bailiwick and he had no authority in such matters. We note that this more humble approach contrasts to that taken by his predecessor, who sometimes exceeded his authority when trying to straighten out archaic practices. Substantively, if not formally, Dr Noam’s reforms were generally both correct and filled needs, despite the rap he took from the Knesset committee for exceeding his authority and ignoring the letter of the law.

It seems from the sentiments reported in the summary of this first round table, that Commissioner Kling will be conservative in how he pursues his reforms.