Bio Spa… Is it registerable as a trademark?

February 5, 2015

biospa 1biospa 2

Sea Of Spa Laboratories LTD. filed Israel trademark application no. 260443 for the words “Bio Spa” in Class 3 for:

Mineral bath salts and mud masques (not for medical purposes), body butter, body peeling aromatherapy cream, body cream, Aloe Vera cream, Cosmetic creams and lotions, moisturizing cream for the face and baldpate, shampoo, soap, liquid toilet soap, shower gel, toothpaste, deodorant, perfumes, after shave balm (not for medical purposes), all being produced from or enriched with minerals from the Dead Sea; dead sea water; cosmetic soaps; cream soaps; liquid soaps; perfumed soaps; soaps for body care; soaps for personal use; essential oils; Cosmetic creams for skin care; Hair care creams; Hair care preparations; Hair care lotions; Lotions for face and body care; Nail care preparations; Body and beauty care cosmetics; Cosmetic creams; Cosmetic preparations; Cosmetics; Body oils; Hair coloring preparations; Hair styling preparations; Hair shampoos and conditioners; Baby oils; Shampoos for babies; Bath and shower gels and salts not for medical purposes; Bath oils; Bath soaps; Bath foam; Massage oils; Cosmetic massage creams; Sun screen preparations; Sunscreen creams; Sun-tanning oils and lotions; Sun block preparations; Tanning and after-sun milks, gels and oils; Beauty gels; Beauty creams; Body creams; Face creams for cosmetic use; Beauty lotions; Body lotions; Skin lotions; Make-up; Cosmetics and make-up; Make-up for the face and body; Make-up removing preparations.

And in Class 35 for:

On line advertising on a computer network; on-line retail store services for the sale of cosmetics, body care products, soaps, perfumery, essential oil, hair lotions, dentifrices and deodorants; direct mail advertising.

The application was filed on 11 Nov. 2013 and was rejected by the trademark department as being wholly generic and lacking any distinctive features as far as cosmetics is concerned.

The Applicant countered that the word Bio Spa is not descriptive, but at worse, hints at the products, and also asserted that the mark had acquired distinctiveness through use and thus could be registered under Section 8(b) of the Trademark Ordinance 1972. To show the reputation acquired through use, the applicant appended a catalogue and an affidavit from the CEO attending to the scale of use.

On re-examination, the mark was again refused and the Applicant requested a hearing before the Registrar of Trademarks under Regulation 26 of the Trademark Regulations 1940. The Applicant claimed, that like magazines names Family or Good Family which were successfully registered on appeal to the courts, the mark merely hinted at the product and was not fairly rejected as being descriptive. Furthermore, the words ‘bio’ and ‘spa’  do not go together naturally, and supported this assertion with a Google print-out that showed that the combination was unique with them.

In his ruling, Deputy Commissioner Jacqueline Bracha held that the words Bio and Spa have equal weight.

Applicant argued that the word SPA does not describe cosmetic products but rather a place where one can obtain health treatments. Whilst acknowledging that this is true, the Commissioner noted that there were a plethora of cosmetic products that included the word spa and that the word was, in fact, generic to the cosmetic product industry.

The Applicant further claimed that the word BIO was used for food products in general and yoghurt in particular. The Deputy Commissioner accepted that this was true, but asserted that the word really meant natural and not genetically engineered or the result of agrichemicals.

The Deputy Commissioner was not sure that the combination was truly distinctive, but was prepared to accept the evidence that no other party had combined the words and that the phrase was borderline descriptive – indicative, and therefore was prepared to allow it to be registered on the basis of acquired distinctiveness since he product had been in continuous use since 2011, and referred to various decisions to support this reasoning. A Google image search also predominantly turned up the applicant’s products.

Ex Partes Ruling by Ms J Bracha on Israel Trademark Application No. 260443 “Bio Spa” to Sea of Spa LTD.  20 January 2015


Chinese Copycat Products not illegal and down will come baby, cradle and all…

January 25, 2015

rockabye

Dvaron Import-Export sell a baby rocker.  The products were manufactured and imported from China. Fisher Price Inc. and Mattel Inc. sued claiming copyright infringement, passing off, trademark infringement and Unjust Enrichment. They alleged that their intellectual property was infringed by the product, it’s upholstery and instruction manual which they claimed were accurately copied. Both Dvaron Import-Export and directors Aharon Stein and David Ben Shushan were sued.

The Nazareth District Court threw out the charges noting that there was no patent or design registration and that the defendants had not infringed any trademark registered by Fisher Price or Mattel. Claims for reputation and confusing the public as required for a finding of “passing off” were also rejected.

The Court ruled that copying products per se. where there are no registered rights, does not, in and of itself, create grounds for an injunction. Each case has to be judged on its merits. There is no copyright in the design of functional articles, including their form, although sometimes articles includes artistic elements that are protectable.  Copyright does not apply to rocking chairs or to their upholstery which should be protected by a design registration.

Copyright does cover instruction manuals however, as these are literary creations. However, the defends are not responsible for the contents of the instruction manual infringing the copyright of Mattel or Fisher Price as they could not know that Mattel or Fisher Price had copyright in this, and they are thus innocent infringers. The Chinese manufacturer had indeed reproduced Fisher Price illustrations but one would not generally notice this or Fisher Price logos in the images, and purchasers would only see the instruction manual after purchase.

As to Unjust Enrichment, in 5768/94 A.Sh.I.R. the Supreme court found that applying this doctrine where there is no infringement of registered IP rights requires an additional element of bad faith which, in the present instance is not found

Fisher Price Inc. and Mattel Inc. could not show a reputation in the product. The mere copying is not in and of itself an additional element of bad faith and the charges were rejected.

As the charges were rejected, the issue of personal liability of the directors was moot.

Costs of 30,000 Shekels were awarded against  Fisher Price Inc. and Mattel Inc. As to goods seized under an Anton Pillar injunction by Tel Aviv Magistrate’s Court, Judge Ben Hamu referred the parties back to that court to rule on the issue.

T.A. 39534-02-12 Fisher Price et al vs. Dvarron et al., Judge Yosef Ben Hamu, 8 January 2015.


Cyber-bullying in the Israel Patent Profession

January 12, 2015

cyber-bullying-poster

There are trends in naming patent firms, as with everything else. Sometimes, the names of the senior partners are used. When this become too long, the firm switches to an acronym. so Pearl Cohen-Zedek Latzer became PCZ”L. When they merged with a firm called Baratz, they switched to Pearl-Cohen as the acronym was a little too long.

There was a trend a while ago when firms switched to acronyms for no apparent reason. Reinhold Cohen started using the acronym RCIP, Jeremy Ben-David started using JMB, and Colb started using STC. (Confusingly, most Korean patent attorneys, and presumably a lot of Koreans who are not patent attorneys, seem to be called Lee or Kim. There is a Canadian firm called Smarter & Biggar which is at least memorable. A US firm called Nutter’s is named after a founding partner. Another founding partner was Louis Brandeis. Why they preferred the name Nutter is anyone’s guess, but I digress).

Using one’s name to trade under and as an email domain is not without the possibility of confusion. In Israel, there is a patent attorney with an independent practice called Friedman but there is also a Freiman. There are a number of Cohens practicing IP Law and possibly practicing for their hereditary Priestly duties. These include the current generation of the Reinhhold Cohen dynasty, Dr Shlomo Cohen and several others. There are at least two pairs of divorced patent attorneys where each side is entitled to continue using the name they’ve been working under and they do. There are also mothers and daughters having the same initial and family name, who each provide IP services via different firms. These practices may lead to confusion, but each party is generally considered as acting in good faith and is entitled to continue using their name.

With websites, there seem to be two trends in Israel. One trend is to use one’s own name as the basis of the domain. The other is to use a generic IP website, such as patent, trademarks, IP, and to add Israel, or I, so there is an ipatent, israel-patent, -i-copyright, , etc. or using bezeq, Israel’s phone service as the domain name, an email such as patent@bezeq, etc.

In my opinion, anyone who uses the surname Cohen on a daily basis, is entitled to use the term cohen as part of his email address. I don’t think he needs to prove that he is indeed of the priestly caste. Similarly Dr Gal Ehrlich may use his hereditary surname Ehrlich, which means honest. It is not an indication of honesty. It is merely a hereditary surname.

Terms and letters such as Israel, ‘i’ for Israel, ip, and words such as Israel, patent, trademark, copyright, are all available for any practitioner to use.

As I am interested in people coming to ME for my expertise, and don’t consider myself another flavor of 3% milk or sliced white bread, I use the name factor, although I have added the letters ip to remind people what I do.  I realize that I cannot prevent other Factors from using the name Factor, nor do I have a monopoly on ip. When the UK Patent Office launched a blog called “ipfacto” I was a little put out, as the IP Factor has been around for a decade and logged up hundreds of thousands of hits. However, I didn’t seriously contemplate legal action, despite the fact that it wasn’t just the IP or the Factor, but the combination that was copied, which does create a likelihood of confusion. There is a US patent agent active in Israel called Haim Factor. As far as we know, he is not related to me. It would be nice to stop him calling himself Factor as it might confuse clients, but he is as entitled to the name as I am. I suppose this is why we have both personal names and family names.

Recently, Advocate Meir Dahan started offering electronic filing under the name epatent.  Dahan was using epatent.co.il as a website for his services. Ehrlich & Fenster use ipatent.co.il. Dahan’s email to associates gives his name as Meir Dahan very clearly. The source of the services offered was clear. It is not confusing. As an attorney-at-law, he is entitled to provide patent services. His prices are rather low, but he is entitled to set his fees at whatever value he feels is appropriate to his level of service and competence.

Nevertheless Dr Gal Ehrlich of Ehlich & Fenster sent letters to their contacts informing them that there was no connection between Dahan and their firm and announced that they had initiated legal action against him. Dahan was using epatent.co.il as a website for his services. Ehlich & Fenster use ipatent.co.il. It seems that Ehrlich & Fenster consider that ipatent is not a generic name but one that since they’ve appropriated it, they now have rights in this non-registered trademark which has acquired distinctiveness.  I find this development distasteful to the extreme.

Dahan’s letter to associates is reproduced below, as is Ehrlich’s letter.

Dear Sir/Madam

Meir Dahan Patent Law Firm specializes in filing patent applications in ISRAEL as a national phase service for foreign colleagues.

We noticed from WIPO publications that your firm represents applicants of PCT applications.

For your information, we provide you with the costs of filing and prosecuting patent applications in ISRAEL, as follows:

TABLE DELETED

Should you require further information about the detailed cost and services, we will be happy to provide such to you immediately upon request.

If you prefer not to receive similar notices from us in the future, please reply with Unsubscribe in the subject line.

We hope the above information has been helpful and we look forward to serving your intellectual property interests in ISRAEL.

Thank you for your attention.

Best regards,

Olga Lurie, Office manager 

Meir Dahan, Advocate

Ehrlich’s letter is as follows:

Dear Clients and Colleagues, 

Recently, it has been brought to our attention that several of our colleagues may have been contacted via emails from “Meir Dahan Patent Law Firm” with a solicitation offer to file National Phase applications in Israel.  The Dahan firm is using the domain name “epatent.co.il“, which is disturbingly and confusingly similar to our domain name “ipatent. co. il”

Due to complaints received in this regard from several associates around the world, we would like to clarify the following:

The Dahan Law Firm has no connection whatsoever with our firm, and we were unaware of its emails until just recently.

As soon as we became aware of the above, we immediately initiated legal actions to have the Dahan Law Firm cease using the “epatent.co.il” domain name which is confusingly similar to ours.

We regret any inconvenience caused you by these solicitation emails, none of which were initiated by, or related to, our firm.

So as to end this message on a positive note, kindly please find attached our latest newsletter discussing an Israeli judicial decision, entitled Patent Eligibility of Software-Related Inventions in Israel.  This landmark decision was a result of a successful appeal undertaken by our office.

Very truly yours

Dr. Gal Ehrlich, Patent Attorney

I’ve discussed this case with a leading trademark expert who doesn’t think that Dahan’s behavior is actionable in a court of law or under ICANN

Actually, Ehrlich did at one time try to obtain Israel trademark no. 241700 for ipatent. The mark was for Intellectual property software; all included in class 9, for Providing a website featuring information and rendering services in the field of Intellectual Property; information and professional services in the field of intellectual property ; all included in class 42, and for Intellectual property consultancy and services related thereto; all included in class 45.  However, the application was cancelled and abandoned in June 2014.

From official Patent Office figures it appears that the total number of incoming patent cases into Israel appears to be shrinking. I hope that this recent distasteful development is not indicative of what we can expect as ever more competing practitioners fight for larger slices of a smaller cake.


Israel Patent Office Closures Due to Snow

January 6, 2015

snow in Israel

Snow is expected.  Living at 940 m above sea level, we had over half a meter last year, with power cuts, water pipes frozen, etc. I must admit, therefore, that I am rather less excited and enthusiastic about this than my 12-year-old son.

The Israel Patent Office has announced that it will be closed on 7th and 8th January 2014. All deadlines are extended to the next working day.

They say that “It’s an ill wind that does nobody any good.”

The Israel Patent Office is closed on Friday and Saturday anyway. This means that Applicants with a patent, design or trademark deadline of 7th or 8th January can file on Sunday 11th January 2015.

This works for the Paris deadline for filing PCT applications as well, but it should be noted that the USPTO may have a problem with a national phase of a PCT application that claims priority from a US provisional application.

 

 

 


Karelia Royal, Deleting Parts of the Evidence

January 5, 2015

Karelia Tobacco Company LTD has an Israel trademark no.103603 for “Karelia Royal”. Dubak LTD opposed the mark.

On 20 October 2014 Karelia requested that parts of the affidavit of Mr Gleiberman, witness for Dubak, was hearsay and should be deleted from the affidavit due to the trend in Israel law to narrow the range of acceptable evidence and to relate to what is substantiated.

The Adjudicator at the Israel Patent Office Ms Shoshani Caspi felt that establishing what is hearsay and what is known by the witness requires cross-examining the witness and can’t be decided up front with any degree of certainty.

The request was rejected but no costs were awarded.


Likud Party fined for Copyright Infringement

December 29, 2014

Rchmani railway lines

No, you haven’t missed the campaign broadcasts. Mercifully those haven’t started yet. This decision relates to propaganda a Party Political Broadcast from the last election campaign.

Shmuel Rachmani a veteran photo-journalist has sued the Likud – the National Liberal Party for infringing his moral rights by not attributing him as the photographer of a couple of still photos of the double-decker train and the new train lines. The images were shown in campaign broadcasts showing how the Likud (like Mussolini?) had managed to get trains running on time.

After weighing up the fact that the copyright use was not contested, and dismissing as irrelevant the argument that in the heat of the election, corners were cut, but noting that the images were broadcast only briefly, the Tel Aviv District Court eventually ruled 20,000 NIS in statutory damages.

תא (י-ם) 40707-04-13  שמואל רחמני נ’ מפלגת הליכוד-תנועה לאומית ליברלית

Civil Case 40707-04-13, Shmuel Rachmani vs. Likud – Nationalist Liberal Party, Jerusalem District Court Ruling by Rafael Jacobi, 14 December 2014

COMMENTS

This is not the first time that copyright issues have come up in party political broadcasts. In the 2009 election, an Israeli photographer sued SHAS, the Sephardi Torah Guardians party for using a copyright photograph.

 

Chabad successfully obtained an injunction against a parody of their weekly Parsha sheet being used in a Tel Aviv Municipality election.

bob the builder

The problem is not restricted to Israel.  Obama was sued for copyright infringement in his election campaign. However, Rumours that Bob the Builder is suing Obama for trademark dilution regarding illicit usage of Bob’s famous catch phrase “Can we fix it? Yes we can”, are apparently unfounded.

Also in 2009, French president Sarkozy’s UMP party (Union pour un Mouvement Populaire) was sued for using Indie group MGMT’s  song ‘Kids’ at party rallies without  permission.

We realize that copyright infringements are of minor relevance when choosing leaders. Currently the head of one party is a released felon who served time for corruption. We have a would be Prime Minister running at the Head of the Labour party who invoked the right to stay silence to avoid being prosecuted for fictitious non-profit organizations that made contributions to Labour Party’s election campaign and to direct Election of Labour Leader Barak. Their parties see no reason not to allow these to lead their parties. And, Israel Beteinu seems to be have a bunch of members under suspicion of corruption.

salah shabati

In the past I have criticized our Association of Israel Patent Attorneys for their undemocratic election practices. I am wondering if I expect too much of my colleagues? Why should they conform to the best of Western democratic tradition if they are used to Israel style elections, where every reform since the system went wrong in 1977 (by the people erring in their choice of leader), was adopted by incumbents if it was seen likely to further the chances of their preferred candidates. Ironically, and somewhat typically, such changes generally backfired.


LLM in Patent Law at Haifa finally on its way

December 11, 2014

haifa university law school

Back in June 2009, I reported on the ceremonial launch of Haifa University’s Masters in Law program in Patent Law – see here.

Recently fired Minister of Justice, Tzippy Livni, authorized the Commissioner of Patents to rule on whether such programs would provide a dispensation from patent office exams for would-be patent attorneys. In September of this year, I reported about the standards for obtaining dispensation from the theory exam for patent attorneys. See here and here. Essentially, so long as the degree covers all subject matter, such as trademarks, designs, basic foreign requirements, international treaties and procedural issues, the top 20% graduating will be entitled to a dispensation from the theory exam.

The long awaited Master’s Degree in Patent Law at Haifa University is finally on the Patent Prosecution Highway on its way. The first intake is this January. Some candidates have already signed up, but there are apparently places available.

It occurs to me, that someone interested back when the program was launched has had time to do the prerequisite science or engineering degree, and to have then done two years on the job training (hitmachut). No doubt however, there are some additional wannabe patent attorneys out there who think that this degree is the key to fame and fortune.

We wish the faculty and students every success with this endeavour!


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