Another Tobacco Trademark War in Israel – this time regarding Cooper Brand

February 17, 2012

The Greek Cooperative Cigarette Manufacturing Company S.A. filed a couple of Israel trademark applications 175808 and 175809 for cigarettes.  The marks are shown above. The protection requested was restricted to the combination of the wording and colours.

Gizeh Raucherberdarf GmbH who has been marketing tobacco products for rolling cigarettes since 1920, has had a registered trademark in Israel for the Cooper brand, dating back to 1997.  Their mark, No 96528 is a slightly graphic image, but the actual word, Cooper, was disclaimed.

Gizeh Raucherberdarf opposed the Greek Cooperative Cigarette Manufacturing Company’s applications on the grounds of it being confusingly similar to their earlier mark. The Greek Cooperative Cigarette Manufacturing Company argued that they had selected the name in good faith, since Cooper was short for Cooperative.

In a ruling published 6 February 2012 by Israel Patent and Trademark Commissioner Assa Kling, the appearance and, more importantly, the  sound of the Greek marks was considered as confusingly similar to the German brand.

Since marks serve to protect the public from confusion and there was a likelihood of confusion, the opposition was allowed and the Greek marks were cancelled.

No costs were awarded.

2 Comments | Intellectual Property, Israel Trademark, opposition, trademarks | Permalink
Posted by Dr Michael Factor

Requesting Reconsideration of an Israel Patent Office Decision

November 21, 2011

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

What is required to obtain actual and not estimated costs in a Patent Opposition?

November 20, 2011

Oval Magofim LTD, represented by Mati Barzam, successfully opposed Israel patent application No. 165760 to Alberto Lodolo.

After requesting and receiving one extension to file a response and counter-claims, the applicant filed for a second extension and was refused, and the application was thus dismissed.

The opposer filed for costs, and claimed NIS 50,000, arguing that the legal costs incurred were NIS 35,763.60, to which should be added a further NIS 15,000 for direct costs to the opposer who had to use their own staff to prepare evidence for the Statement of Case.

The lawyer’s invoices were appended to the request for costs, as was an affidavit from the CEO of the opposer who claimed that he or another worker had spent 100 hours in getting material together and in reviewing the opposition statement.

In ruling, Ms Y. Shoshani Caspi considered lawyer’s invoices labeled ‘for patent work’ insufficiently detailed to be clearly linked to this specific case and to explain how the sums reached were justified. Furthermore, the affidavit was also considered insufficiently detailed. One specific point Ms Y. Shoshani Caspi queried was that the CEO detailed reviewing the statement of case. Ms Y. Shoshani Caspi considered this as an additional safeguard but not strictly neccessary. She rejected the actual costs and estimated that NIS 15,000 were appropriate for the amount of work performed.

Costs in opposition to IL 165760 to Alberto Lodolo, opposed by Oval Magofim LTD., 19 September 2011.

COMMENT

Without seeing how much material was filed, it is difficult to estimate how much work went into it, but at a reasonable  IP lawyer’s rate of NIS 1000 an hour, one can assume that the cost of filing an opposition, which requires analyzing the application, reviewing prior art and writing an opposition will take time.

I suspect that the patent office simply weighs the material submitted, and am not sure that the estimated costs are fairer than the requested costs.  That said, the patent office is in the best position to directly compare different cases.

 

Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, opposition | Permalink
Posted by Dr Michael Factor

How many lawyers does it take to cross examine a witness?

November 20, 2011

This isn’t a joke. Rafa Laboratories LTD. opposed patent number 129724 to Takeda Chemical Industries.

The then Deputy Commissioner allowed the applicant to cross-examine someone in Slovenia at the opposer’s expense.

The applicant, represented by S. T. Colb, presented the opposer with an itemized bill for NIS 76,449.70, for first class flights for two attorneys from Israel, Takeda’s Head of IP from the UK, and a further representative from Japan. In addition to the four first class tickets, the applicant incurred three night’s stay in Ljubljana and hired the services of a local lawyer.

The opposer thought that three representatives was quite adequate, and that they could fly tourist class. They considered both the Japanese representative and the local lawyer to be unnecessary, also the first night in Ljubljana, which was a full day before the evidence taking, to be excessive. They redid the maths assuming that business class travel was twice as expensive as tourist class, and paid NIS 25,398.41.

In response, Colb argued that the lawyers always travels first class and the first day was required to hold a meeting between the various lawyers, and doing this in Ljubljana was the cheapest option.

The present decision examines the claims of both sides and rules on what are reasonable costs.

The Decision

Ms Yaara Caspi Shoshani considers it the prerogative of the applicant to decide how many lawyers to send and whether the best person is to come from Japan or elsewhere, so found four representatives acceptable. Furthermore, she had no problem with the applicant engaging a local attorney as the examination had to be performed in accordance with local civil procedure. However, regardless of whether the attorneys in question generally travel business or tourist class, she did not see why the opposer should pay for the luxury of business class. As to the first night in the hotel, she accepted that meeting in Ljubljana was cost-effective for the applicant but did not see why the opposer should pay for the expenses incurred by the applicant in preliminary meetings.

She halved the fee asked for on behalf of the Japanese representative, added a taxi fare and a night in Paris for him (no direct flights), converted everything into New Israel Shekels at the exchange rate at the time of the hearing and came to the conclusion that a further NIS 29,935.35 was in order.

The main case-law she based her reasoning on, was Bagatz 891/05 Tnuva vs. Israel Department of trade and Industry,  P. D.  S(1) 600.

The Ruling: Costs re Takeda Chemical Industries vs. Rafa Laboratories Concerning Israel Patent No. 129724, 20 September 2011.

Comments

IL 129724 relates to crystaline structures of Indazole.

I would recomend any attorney having reason to go to Ljubliana to visit Bled. It’s stunningly beautiful and seems a pefect backdrop for a business picnic. I can understand why Rafa feel bled by this, but quite frankly the sums of money to be made if a commercially significant pharmaceutical patent is successfully opposed are very significant.

Unfortunately, when I went with wife and kids for a week’s self catering holiday in Slovenia, we went tourist class and I couldn’t write it off as a business expense. Still it’s nice to know that one day I may need to go there on IP related business.

Leave a Comment » | drugs, Intellectual Property, IPO, Israel, Israel IP, Israel Patent Office, Israel Patent Office Rulings, opposition, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Dr Michael Factor

Israel Patent Office Publishes Report on 2010 Activity

July 29, 2011

The Israel Patent Office has just published a report covering its activity in 2010.

The report, in Hebrew, is available from here: http://www.justice.gov.il/NR/rdonlyres/C6ACFC67-FFF0-4D16-A8C3-DCFD0154D82E/0/2010.pdf

There are 45 pages of statistical data that contains few surprises, bound in a blue cover with a slightly corny lightbulb image.

Much of the comparative material, showing how the IPO compares with patent offices in other jurisdictions, and the number of patents filed per GDP and per population are found in the OECD report, on WIPO’s website, and in a paper I wrote together with Jeremy Ben David and which was published in WIPR a couple of months ago. Nevertheless, the report is comprehensive and compares favorably to the odd table or graph that the patent office has traditionally published.

There is some data on oppositions that has never been presented before and also comprehensive ranking tables showing where incoming filings originate.

The document carries two introductions, one from newly installed commissioner, Adv. Asa Kling, and one from his predecessor Dr Meir Noam. We weren’t surprised to see that each commissioner has lauded his predecessor / successor. However, since the document relates to the end of Dr Noam’s tenure, and before Adv. Kling took over as commissioner, this seems appropriate, if a little tiresome. Actually to be fair, 2010 was a good year for Dr Noam, whose achievements were many.

Of note, there is apparently on going consultation between the patent office and the Ministry of Justice regarding a Design Law to replace the 1924 Ordinance inherited from the British mandate, which is still in force.

We were surprised to learn that Brazil is a major filer or design registrations in Israel. Indeed 109 of the 423 design registrations originating from abroad came from Brazil, ahead of everywhere else including the US. Apparently, this is due almost exclusively to H Stern, a Brazilian jewelry firm with many outlets in Israel. Apart from jewelry, Israel design registrations were filed mostly for clothing, building materials, ornaments and food containers. In total, 1622 design applications were filed, which is, however, less than in any of the years 2005-2009.

There were a total of 8017 trademark applications filed into Israel in 2010, which is less than any of the years 2005-2009 and nearly 2500 less than 2008.

Protocol Madrid for the multi-national registration of trademarks came into force in Israel in September 2010, and in the last quarter of the year, some 463 filings were made into Israel via the protocol, and 37 international applications originating in Israel were filed.

In total, some 7266 patent applications were filed in Israel in 2010, which is up from 6780 in 2009, but still below the 2006-2008 levels which peaked, in 20o7, at 8064.  Most of these applications were Paris/PCT filings or divisional applications, claiming priority from earlier applications. The number of new applications first filed in Israel was 1044, which is the smallest number for a decade. It seems that more and more Israeli applicants are first filing in the US, either as regular applications, or are filing US provisional applications.

There was a lot of patents examined and allowed, but problems in publication delayed them issuing and probably contributed to the low number of oppositions filed, which, at 22, is up from 2009 when only 20 were filed, and from 2001 when 21 were filed, but much lower than the other years of this millennium.  We suspect however, that a number of cases examined in 2010 only published in 2011 and there will be some additional oppositions (indeed, I am handling one such case together with Adv Lewin from our office).

Some 41% of patent filings into Israel are computer/electronics related. 31% are chemistry (mostly pharmaceuticals), 17% biotech and 11% mechanical or telecommunications related. (I am not sure why telecommunications is related to mechanical and not to computer/electronics. I suspect it is an anomaly dating back to the mechanical telegraph or to the telephone made of two cups connected by a taut string). The Israel Patent Office receives a disproportionate amount of high-tech and pharmaceutical patent filings compared to those in traditional industries. This seems to reflect the fields where Israeli industries are perceived by competitors as being a threat.

In the end of 2009, Dr Noam initiated a fast track for ‘green’ patent applications. Some 22 attempts to have applications recognized as green were made during the year, and of these, 16 were accepted for the fast track, and 6 were refused. In the pie-chart summarizing this information, the 262 degree slice was coloured green, and the remaining 98 degrees was coloured orange. The significance of this colour was not apparent.Israel is a noticeable user of the PCT system in absolute terms, and is the largest user in terms of population. I suspect that this is because of the small local market, and Israel’s favorable trade relations with the US, Europe and the far East.

It seems that IP activity in Israel, both from local entities and from foreign applicants was down in 2010 in patents, designs and trademarks. This does not come as a surprise,  as we’ve felt the drop in work. It is little comfort to know that Israel weathered the recession better than many other economies, and that patent, design and trademark filings are down everywhere, except for China.

However, we note that the patent office has been aggressively attacking backlogs and examination pendencies are down as well.

We hope that the 2011 data will be more positive!

Leave a Comment » | Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, opposition, Patent trivia, Patents, PCT, pharmaceuticals, pharmaceuticals and Biotechnology, Provisional patents, telecommunications, trademarks | Permalink
Posted by Dr Michael Factor

Tigris Trademark Considered as Infringing Puma – Cat fight in Israel

May 10, 2011

Israel Trademark Number 197349 to City Wash LTD is for a combination word-image mark consisting of a silhouette of a Tiger and the word Tigris which is tiger in Hebrew.

Their mark is reproduced below:

PUMA, AG Rudoph Dassler Sport, a German clothing company filed an opposition proceedings claiming that the tiger was confusingly similar to their puma logo.

Both companies make hats and shoes.

Puma claimed that the mark was non-distinctive, was confusingly similar to Puma’s marks and diluted the Puma mark.

According to Puma, the similarity lies in the combination of an image and a word, in the word being in capitals, and in bold. Both cats had the head, tail and claws in the same places. (This is a translation of the basis for the claims of ‘confusing similarity’ )  

The Deputy Commissioner, Noach Shalev Shlomovits accepted the opposition and refused the mark. To add insult to injury, he also awarded NIS 30,000 damages.

COMMENT

I don’t think the fact that one manufacturer uses a combination mark including an image and a word gives a monopoly for marks of this sort. Nor does the choice of writing the brand name in capital letters or in a bold typeface.

Although it is true that both big cats have the head and tail at different ends, and depict claws on the feet, I am not sure that this fact is particularly confusing.    

Both tigers and pumas are big cats, but tigers are bigger and fiercer than pumas.  Although shown in silhouette, I think many people will have little trouble telling the felines apart. For those less familiar with feline anatomy, the opposed mark includes the word Tigris, which is something of a give-away.

Puma are not the only company using silhouettes of a big cat for branding purposes. So does Slazenger and Jaguar, also in Class 25. Interestingly, Slazenger has a mark for the silhouette not including a word. Their cat, which is rather more like a puma than a tiger is also facing to the left. So is Jaguar’s jaguar – which is also registered in Class 25.

With the word Tigris, which is very different from Puma, it is difficult to see the two marks as confusingly similar. This is particularly the case since Puma does not have anything like a monopoly on silhouettes of big cats, I therefore can’t see much logic in this decision.

I am not even sure that Puma is better known than Jaguar or Slazenger. District Court Judge Michal Agmon Gonen ruled that 4 stripe training shoes did not infringe Adidas’ three stripe mark, and that there was room for a cheaper, less exclusive brand. See West Bank Arab Prevails Against Adidas – Four Stripe Cheap Training Shoes Do not Infringe. That decision is on appeal to the Supreme Court but in general I would expect this to guide the arbitrators at the patent office.

2 Comments | Israel Trademark, opposition, trademarks | Permalink
Posted by Dr Michael Factor

Amending Claims after an Opposition is filed in Israel

November 29, 2010

Teva Pharmaceuticals filed an Opposition proceeding to Schwartz’ Pharma’s patent number 149567 titled “Stable salts of novel derivatives of 3-3 diphenylpropylamines”. In response, Schwartz cancelled a dependent claim and filed a new dependent claim.

During opposition proceedings the applicant is allowed to delete claims and to narrow the scope of the claim set, but is filing a new dependent claim permissible narrowing, is it prohibited?

This question is addressed by the Adjudicator of Intellectual Property, Ms Shoshani Caspi, in an interim decision.

Background

During patent examination in Israel, the applicant has a lot of leeway in amending the claims. Providing the amendments are fairly supported by the specification, the applicant can widen the claim set and can change their focus. Prior to publication for opposition purposes, divisional applications may be filed for inventive material supported by the specification but not otherwise claimed.

During the opposition period, when, after allowance, the patent publishes and, for three months, third parties may file oppositions, in response to an opposition, the applicant may narrow the scope of the claimed invention. 

According to section 65, after issuance, the applicant may file amendments to clarify or to correct a mistake may be made, or the claims may be narrowed. Section 66 requires the Commissioner to ascertain that the amendment does not add new material not supported by the specification and does not widen the scope of protection.

The applicant narrowed claims 1-5, 8-11 and 16, by specifying the preparation in more detail, narrowed claims 1,3 8 and 10 by defining a group R as being specifically isopropyl,  and deleted claim 17. These changes are certainly narrowing individual claims, or deleting them and were allowed.

The applicant also wished to delete allowed claim 6 and file a new claim 6 claiming the salts of the preparations of the independent claim.

The question addressed by Shoshani Caspi is whether the new claim 6, that adds a limiting feature to independent claim 1 is considered permissible as it does not widen the scope of protection of the patent, but merely adds a limitation to that claimed in the main claim, or is it considered inadmissible as it is not clearly a restriction to the scope of any claim – since claim 1 is still on record, and this is a dependent claim?

Essentially the issue is whether adding additional claims that could be opposed on their merits and could create new fallback positions, but don’t necessarily widen the scope of protection requested, can be filed during opposition proceedings, or whether the only amendments allowed are those designed to narrow the argument and are to be allowed if they are giving up of monopoly rights without a fight.

Judicial review Officer Shoshani Caspi framed the question as to whether Sections 65 an 66 should be considered together, or whether the applicant could file an amendment claiming that the scope of the claim set was not widened and the Commissioner should then check that this is the case.

The opposer’s position was that stepwise analysis of section 65 followed by section 66 was required, and each amendment should be classified as a correction, clarification or narrowing of a specific claim, whereas the applicant considered this overly formalistic and the question to be addressed was whether the scope of the claim-set was widened – which would not be allowed.

Despite noting precedents for such amendments, Shoshani Caspi ruled that the amendment was inadmissible and that henceforth amendments during oppositions should clearly fall into one or other category and any narrowing of the claim set should be clearly narrowing the scope of a specific claim.

The allowed amendments were restricting the range of species listed in Markush type claims. The Claim 6 amendment was not allowed.  Costs of NIS 8000 were awarded to Teva.

Leave a Comment » | Intellectual Property, Israel, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, opposition, Patents, pharmaceuticals, pharmaceuticals and Biotechnology, Teva, Uncategorized | Permalink
Posted by Dr Michael Factor

Cancelled Israel Opposition Recancelled

November 14, 2010

When Sazka’s patent application number 163671 was opposed by Partner, Cellcom, Pelephone (Israel’s three mobile phone carriers) and by Mifal HaPayis (the Israel National Lottery), the attorneys for Sazka, S.T. Colb & Partners, successfully managed to persuade the Israel Patent Office to relieve them of their representation and fudicial duty, since the applicant was unresponsive and contact was lost. A byproduct of lack of local representation is that there is no local address of record and so the case was closed.

Sazka did however, come out of the woodwork and requested that the case be reopened, and that they be allowed to respond tot he opposition. Since Israel Law prefers issues to be resolved substantively rather than bureaucratically, the Deputy Commissioner of Patents allowed the case to be reopened on condition that the applicant post NIS 150,000 bond for each of the four opposers, to guarantee awarded legal costs if any, since there was a proven problem with finding the applicant, and the opposers, if successful,  deserved to receive costs.  A more modest NIS 5000 costs were awarded to each opposer for the reinstatement.

Comment

This seems a neat decision. However, in the past, the Israel Patent Office has generally refrained from awarding legal costs of this magnitude. It is not clear whether, if bond is posted and the case continues, costs of this magnitude can be expected by the victor. We wait to see.

Leave a Comment » | Israel IP, Israel Patent, Israel Patent Office, opposition | Permalink
Posted by Dr Michael Factor

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