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!


European and Israel Patent Offices Sign a Bilateral PPH

December 10, 2014

pph

The European Patent Office (EPO) and the Israel Patent Office (IPO) have agreed a patent deal set to speed up examinations at both offices. Starting next month, the Patent Prosecution Highway (PPH) will allow applicants to request accelerated examination of a patent at either office provided the claims have been previously deemed acceptable by the other. The agreement was signed on December 4 by heads of both offices in Brussels, Belgium.

Apparently Asa Kling, director of the IPO, said the programme would “enhance co-operation between the offices” and further strengthen the economic and technological relations between Israel and Europe.

COMMENT
We see this as a great development, not least because Israel Applications may be accelerated fairly easily under a variety of routes including Section 17c of the Israel Patent Law 1967 and relevant patent office circulars. European Applications can linger in the queue for examination for quite a while, and incur annual maintenance fees. Then again, once allowed, a European patent has to be ratified and is then subject to renewal fees in the countries where it is ratified. The main thing is that this gives applicants choice and flexibility.


Israel Patent Office Publishes Summary of the Meeting between Practitioners and Examiners

December 10, 2014

nice to meet you

In an earlier post, I reported on a meeting held between the Examiners of the Trademark Department and practitioners.

The Patent Office has no published their official summary of the meeting. It may be found here: סיכום מפגש בוחנים-עורכי פטנטים בתחום סימני מסחר מיום 25.11.2014.

 

 

 


Voyager again

December 3, 2014

voyager 1

Plantronics opposes Accel Telecom’s request for Israel Trademark No. 251612 for the word “Voyager”.

The mark is directed to Fixed car phones and connected smart car phones; all included in class 9, and to Telecommunication services, namely, providing electronic telecommunication connections, namely, providing voice and data wireless communications connections to enable users to transmit, reproduce, receive, access, search, index and retrieve data namely, images, sounds, text, movies and animations between mobile communication devices and computer communication networks, the Internet, information services networks and data networks; Telecommunication services, namely, telecommunication access services, communication by means of mobile phones, cellular telephone communication, mobile telephone services; all included in class 38.

Plantronics also uses the trademark Voyager for telecommunications equipment, hence the opposition.

As reported earlier, here   and here,   the parties managed to come to an understanding and worked out a coexistence agreement. However, the Israel Patent and Trademark Office were not prepared to accept the coexistence agreement as they considered that the public could still be confused as to the source of goods covered by the mark.

At this stage Accel have to provide evidence, but have asked for the Opposition to be suspended pending hearing of an appeal. Their deadline for filing evidence was originally in September, but has been extended to 27 November 2014.   Now Ms Shoshani Caspi has given them a further six month extension provided the fees are paid within 5 days.


Ethics for Israel Patent Attorneys

November 23, 2014

ethical and legal

In what some may consider a welcome move, the Ministry of Justice has published a first draft version of a law that will govern the behavior of Israel Patent Attorneys.  For the draft, see here.

Perhaps the most significant thing about the draft law is that client-attorney privilege is formally recognized. Henceforth, Patent Attorneys will also be required to keep escrow accounts.

The IP Committee of the Israel Bar considers that the standards required of Patent Attorneys should be equivalent to those required of Attorneys-At-Law, and considers that the current state of affairs allows Patent Attorneys more freedom regarding marketing. They have requested that this be addressed. The attorney signed on their proposed response is Ziv Glasner who is also a patent attorney.

The Association of Patent Attorneys in Israel has submitted their comments to the Justice Ministry as an amended draft. Briefly, the Association of Patent Attorneys in Israel would like the code of ethics of patent attorneys to mirror that of the Israel Bar Law (Professional Ethics) 1988 mutatis mutandis, seeing a correlation between the two professions.  Thus the draft law as proposed by the Ministry of Justice recognizes that a patent attorney who is also an attorney-at-law will be duty-bound by both the Code of Ethics that bind patent attorneys and by the Israel Bar Law (Professional Ethics) 1988, however in case of conflict, the behaviour required of Attorneys-at-Law will prevail. In contradistinction, the Association does not see room for conflict between requirements of an Attorney-at-Law and those of a Patent Attorney as it wants the Code of Ethics for Patent Attorneys to mirror that for Attorneys at Law.

If we were talking about ethics, where the standards required of Patent Attorneys and Attorneys at law differ, one would require the attorney to have the highest standards. However, this proposed Law is not about ethics, it is about behaviour.

The proposed law legislates and formalizes much of the voluntary code adhered to by the Association of Israel Patent Attorneys that Dr Kfir Luzzatto drafted some years ago. However, the amendment proposed by the Association of Israel Patent Attorneys wishes to delete certain sections such as not denigrating competitors and not aggressively poaching clients, as these are not currently binding on Attorneys-at-Law. Instead, the Association’s propose to import a whole bunch of clauses from the Israel Bar Law (professional ethics) relating to where Attorneys can set up office and where they can meet clients and make these binding on Patent Attorneys as well.

I am concerned that these restrictions will create an entry barrier against sole practitioners and new firms, and should not be allowed on constitutional grounds based on the Basic Law, Freedom of Occupation 1992. Clearly restrictions designed to protect the public are legitimate. However, I do not think that Read the rest of this entry »


Israel Supreme Court Rules on Parallel Importing

November 19, 2014

Tommy Hilfiger

The Israel Supreme Court has issued a ruling concerning the rights and wrongs of parallel importing and related marketing and advertising. This is the first time that they have ruled on this issue.

The Supreme Court ruled that parallel importing is legitimate, as is marking the goods with the trademarks. The licensed importer or franchisee cannot prevent parallel importing, but it is important that the name of the company doing the parallel importing does not imply that the parallel importer has a relationship with the mark holder and has to actively take steps to make clear that they are not the licensed importer. The licensed importer does not have to guarantee or provide a service for the parallel imported goods and the parallel importer that the public are made aware that the parallel imported goods are not covered by the importer’s warranty and servicing obligations.

The Israel Supreme Court partially upheld the ruling of the Court of First Instance that the parallel importers had infringed the registered licensee’s trademark and were also guilty of passing off. This was due to the name of their business, not the parallel importing itself. The Supreme Court decreased both the damages award and the restrictions imposed by the Court of First Instance.

The Appellants, Elad Suissa and Importer Warehouse 42 LTD. imported clothing carrying the Tommy Hilfiger brand, despite not being the licensed importer registered in the Trademark Register and also not having any contractual relationship with the licensee. The Appellants purchased the goods abroad from legitimate suppliers in countries where the prices were lower than in Israel. They traded under the name ‘Importer’s Warehouse – Tommy Hilfiger’ and advertised themselves as selling premium bands at discounted prices. They operated a website www.tomm4less.co.il.

The licensed importer Sea & Shells LTD, together with Tommy Hilfiger Licensing LLC. Tommy Hilfiger USA INC. and Tommy Hilfiger Europe BV sued Elad Suissa and Importer Warehouse 42 LTD on  various grounds of unfair trade and trademark issues.

The Court of First Instance ruled that the parallel importers should pay 457,000 NIS in damages and issued a permanent injunction against them. The Appellants argued that they should not be restricted from parallel importing in circumstances where this is legal.

The Supreme Court partially accepted Appeal 7629/12 by the parallel importer, and rejected the appeal 8848/12 by Tommy Hilfiger.

The Ruling

The starting position is that parallel importing is legal. Parallel Importing is not trademark infringement and is not Unjust Enrichment by the Parallel Importer. However this does not mean to say that there are no restrictions on the parallel importer. The parallel importer is subject to trademark law, fair trading laws and the Law Against Unjust Enrichment.

In Pezachim, using the registered trademark in connection with legitimate goods carrying the mark was considered “True Use” under Section 47 of the Trademark Ordinance. In Toto Zahav, it was ruled that such a use of original goods is an infringement. The case-law of the District Court adopted tests from US case law: If the items cannot be identified without using the trademark it is legitimate to use the trademark. However, usage must be limited to that which is necessary to identify the goods as being genuine and no more, and there should be no indication that the retail outlet is sponsored by or affiliated to the mark holder. Toto Zahav did not relate to parallel importing and, in cases of parallel importing, the Toto Zahav ruling should be modified.

Parallel Imported genuine items do not fall under the guidelines of Toto Zahav. Their sale is not trademark infringement and the goods do not have to have been purchased directly from the rights owner. However, marketing activity relating to such goods may be considered trademark infringement. Servicing and maintenance services have to be recognized for the servicing laboratory to be able to use the registered trademark. Parallel imported goods are not subject to warranties and guarantees of the registered importer and parallel importer has to take care that it is clear that his parallel imported goods are not covered by such warrantees.

Passing Off requires a reputation of the rights holder, and, in addition to the mark owner, the legitimate importer or licensee may have rights in the brand and may be able to sue for passing off. The concept of ‘dilution’ does not apply to parallel importing and cannot be claimed by either the mark owner or the licensed importer. However, where the reputation is built on service and the like, sale of the goods by a parallel importer such that the service agreement does not apply, may be considered passing off.

In the present case, sale and publicity of the goods themselves and the website www.tomm4less.co.il are considered as being truthful. Using the company’s colours is also unlikely, in and of itself to cause confusion.

Trading under the name ‘Importer’s Warehouse – Tommy Hilfinger’ is considered trademark infringement of the rights of Tommy Hilfiger Licensing LLC. Tommy Hilfiger USA INC. and Tommy Hilfiger Europe BV.  This is not infringement of the rights of the licensed importer Sea & Shells LTD however, since they themselves do not have a reputation.

There is no additional element such as bad faith to warrant granting damages under the Law of Unjust Enrichment.

The Parallel Importer must cease to use the name ‘Importer’s Warehouse – Tommy Hilfinger’ and have to pay 100,000 Shekels as estimated damages for their infringing use and have to mention in their advertising that they are not a franchise or otherwise acting under the supervision of Tommy Hilfiger.

The costs awarded by the District Court are canceled and Tommy Hilfiger et al. have to pay 25,000 Shekels costs to the parallel importer.

7629/12 Appeal to Israel Supreme Court (ruling by Dalia Barak-Erez et al): Elad Suissa and Importer Warehouse 42 LTD vs. Sea & Shells LTD, Tommy Hilfiger Licensing LLC. Tommy Hilfiger USA INC. and Tommy Hilfiger Europe BV, 16 November 2014

 


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