The Israel Patent Office has notified the profession that Yehudit (Judy) of th trademark department has passed away. The funeral was on Sunday in Jerusalem, and the family will be observing the seven-day mourning period in the family home in Maale Adumim.
Judy Dvora Simchi of the Trademark Department of the Israel Patent Office Passes Away
November 28, 2011
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Posted by Dr Michael Factor
Filing Evidence in English In Oppositions Proceedings at the Israel Patent Office
November 21, 2011
Jonathan Schreiber filed Israel trademark Number 222275 for Metabolin, a product to assist in dieting by slowing the metabolic rate, which, when it was allowed, published for opposition purposes and Merk KGaA, represented by Gilat Bereket & Partners of the Reinhold Cohen group, filed an opposition.
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.
2 Comments | Israel IP, Israel Patent Office Rulings, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor
Requesting Reconsideration of an Israel Patent Office Decision
November 21, 2011-
- Berik’s Mark
-
- No Fear’s Mark
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.
Leave a Comment » | Intellectual Property, Israel Patent Office Rulings, Israel Trademark, opposition, trademarks | Permalink
Posted by Dr Michael Factor
November 20, 2011
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
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Posted by Dr Michael Factor
In Israel Trademarks, should the list of goods in English prevail?
November 14, 2011
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.
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Posted by Dr Michael Factor
Israel Commissioner Meets Representatives of the Professional Organizations
October 27, 2011
Following a practice initiated by his predecessor, Commissioner of Patents and Trademarks, Assa Kling, met with representatives of the Israel Association of Patent Attorneys, the Israel Branch of the AIPPI, the IP group of the Israel Bar, the Licensing Executive Society (LES) and the International Federation of Intellectual Property Attorneys (FICPI) in a round table discussion.
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.
2 Comments | Intellectual Property, IPO, Israel IP, Israel Patent, Israel Patent Office, Israel Trademark, Uncategorized | Permalink
Posted by Dr Michael Factor
Cheap Versions of Bakugan Game Imported From Far East
October 10, 2011
Spinmaster have a popular game called Bakugan that is apparently not just popular with the kids, but also with importers and judges – see here and here.
The authorized distributors and trademark rights holders have been back in court. This time against a Mr Chai Omra who imported some 40,512 sets of Bakugan from China. The sets were impounded by Customs and the rights owner sued for their destruction and NIS 100,000 for copyright infringement. He also claimed trademark infringement, passing off and unjust enrichment.
Mr Omra claimed that these were legitimate sets and was parallel importing, so there was no copyright infringement or at least that he had a defense of not knowing that these were not authorized sets.
The rights owner noted that the ball was a different size, that there were Chinese instruction cards in the box, which are not provided in original sets intended for the Western market, and the bar codes were wrong, thereby proving that the sets did not originate with an authorized manufacturer.
In his ruling, Judge Zerankin dismissed the ignorance defense, noting that Omra had bee in court before for importing toys manufactured in the Far East, and had previously shipped 15,000 Bakuga sets as well.
The Judge ruled to rule NIS 20,000 for trademark infringement, NIS 40,000 for copyright infringement and NIS 40,000 for passing off. As there was no enrichment from this shipment, he rejected the unjust enrichment claim. In addition, he ruled a further NIS 40,000 legal fees.
The Case: T.A. 43006-08/10 Spinmaster vs. Hai Omra LTD and Israel Customs Authority, Judge Adi Zerankin, Haifa District Court, 22 September 2011
COMMENT
The applicant requested statutory damages of NIS 100,000 for copyright infringement. Importing copyright material is indeed copyright infringement. He is entitled to statutory damages for passing off or for copyright infringement, but I don’t believe is entitled to additive statutory damages for both. Once the total damage is NIS 100,000, it hardly matters. Still I would have expected damages of NIS 100,000 for copyright infringement and NIS 100,000 for passing off, then capped at NIS 100,000 as one cannot receive more than NIS 100,000 for a single infringing event.
I am also not sure where the statutory damages for trademark infringement come from.
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Posted by Dr Michael Factor
Israel is in “Law & Practice: Middle East & Africa” but should it be?
September 27, 2011
I’ve just been appointed to the Law & Practice: Middle East & Africa of the INTA Bulletin Committee for the 2012 – 2013 Committee Term. I am honoured that the International Trademark Association (INTA) has appointed me to the committee and will try to keep the INTA Bulletin updated regarding trademark developments in Israel.
It occurs to me that though Israel is geographically clearly in the Middle East, apart from the hummous wars, the Israel domestic market, manufacturing capabilities and other business considerations make putting Israel into this geographical area a little odd. One hopes for normalization with other Middle Eastern countries, but apart from visionaries like Shimon Peres, few see it happening in the short-term.
I suspect that when considering whether or not to file and prosecute trademarks in Israel, most businesses would consider Israel as perhaps more similar to Singapore, Hong Kong or New Zealand than to any of the African or Middle East countries.
Anyway, will try to keep tabs on trademarks developments with our neighbours.
Leave a Comment » | Israel, Israel Trademark, trademarks | Tagged: INTA, International Trademark Association | Permalink
Posted by Dr Michael Factor
Parrallel importing of Lego into Israel – IP infringement or fair trading?
September 8, 2011
Despite being made in Denmark, Lego is much more expensive – two or three times the price – in Israel than in the US. It’s not taxes that are at fault. Retail toyshops compete with each other and they are not the problem either. The problem is apparently, at least according to the retailers, the greedy authorized importer.
Riding on the wave of campaigners for social justice, the Israel franchise of Toys R US have threatened to bypass the authorized importer and to import Lego in parallel, thereby driving the prices down so that, as they put it, everyone can afford Lego, not just rich children.
I have some sympathy with the exploited classes. As a parent of an eight year old boy, I had to buy and bring back to Israel a Lego castle from INTA in San Francisco last year. None of the exhibitors were giving out Lego, so I actually went to a toy shop and bought the damn thing. I would have preferred Hogwarts but Matan had other ideas and thought that the toy was primarily for him.
I therefore would tend to see parallel imports of staple products like Lego as being in the public interest, and would see attempts of an importer licensee to attack parallel imports of trademarked goods with a jaundiced eye. I am not sure how the Israel courts will view the issue, but suspect that we will learn shortly.
Leave a Comment » | design, famous marks, Intellectual Property, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor
Mobileye Obtains injunction for AWACS
August 21, 2011
Awacs Safety Systems, General partnership is an Israel company that was set up by Morgan (Capital) Israel Ltd. and L .D. Israel Auto Equipment investments Ltd. that distributes systems for installation in automobiles, to provide warning of nearby vehicles, pedestrians, deviations from traffic lanes and the like.
Awacs Safety Systems has a trademark for Awacs.
Mobileye Technology Ltd. is a developer of automobile mounted systems and Awacs had an exclusive licensing arrangement to distribute systems manufactured by Mobileye in Israel. Over time, there were a number of disagreements between Mobileye and Awacs Safety Systems and Mobileye gave Awacs Safety Systems notice that they would no longer give them exclusive distribution rights in March 2007, and in January of this year, they terminated the relationship completely.
Just before a trade fair in Israel where Awacs Safety Systems launched a system manufactured by Safe Drive Systems that was to have been sold under the name Awacs Radar 140 RD, Mobileye filed and obtained a temporary injunction against Awacs Safety System selling Safe Drive System‘s equipment under the name Awacs.
The grounds for the injunction were passing off. The judge justified this since the name Awacs was chosen for marketing Mobileye’s system and had only ever been used for marketing Mobileye’s products. In his opinion, sales under the name Awacs could adversely affect Mobileye, but since Awacs Safety Systems had not sold the new products under this name and could still distribute under another name, Awacs Safety Systems would hardly be harmed by the interim ruling. Mobileye were also required to post NIS 100,000 to cover Awacs Safety Systems legal fees and loss of income in the event that they would lose the main case.
COMMENTS
By way of full and candid disclosure: Although not handling their trademark issues and not involved in this case, JMB, Factor & Co. does handle Mobileye‘s patent portfolio so I am declining to comment substantively on this development.
We note that the court issue here may be at least partly in the contractual relationship between the parties and these were not published in the interim decision.
We note that AWACS is an acronym for Airborne Warning and Control System, and may refer to:
- E-3 Sentry, the aircraft developed under the USAF’s “Airborne Warning and Control System” program
- Airborne Early Warning and Control (AEW&C), a more modern term for the general type of aircraft used in this role
We also note that Israel Defence Forces are deploying the phalcon AWACs system, see http://www.ocnus.net/cgi-bin/exec/view.cgi?archive=102&num=26121,
It appears that the choice of name is somewhat misleading, whether deliberate or otherwise, and implies a connection with a vastly more sophisticated system used in national defense systems.
We await developments with interest.
The Case: T. A. 44802-03-11 Mobileye Technology Ltd. vs. L. D. Israel Auto Equipment Investments Ltd. et al., interim judgement given on 28 March 2011.
Leave a Comment » | infringement, Intellectual Property, Israel, Israel Court Ruling, Israel Trademark, Uncategorized | Permalink
Posted by Dr Michael Factor
