Israel Trademark 249163 for E-go – Costs Reduced Dramatically on Appeal

November 11, 2015


Seven 23 S.R.L. filed Israel Trademark Number 249163 for Ego, covering:

Eau de Cologne; cosmetic creams; cosmetic preparations for skin care; eau de toilette; hair spray; cleansing milk for toilet purposes; lotions for cosmetic purposes; lip glosses; mascara; cosmetic pencils; oils for cosmetic purposes; lipsticks; cakes of toilet soap; shampoos; nail varnish; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices in class 3; Eyeglasses; lenses for eyeglasses; contact lenses; sunglasses; cases for eyeglasses; eyeglasses frames; eyeglass chains; eyeglass cords; containers for contact lenses in class 9; Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments in class 14; Leather and imitations of leather and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas, parasols and walking sticks in class 18, and Clothing, footwear, headgear in class 25.

After an Opposition was filed by Michael Shokorola Muthada, Seven 23 S.R.L. decided to abandon the mark and thus costs were ruled against them. Michael Shokorola Muthada requested costs of 20,000 Shekels. Adv. Aharon Factor who  handled the case appealed this sum noting that Muthada’s attorneys did not detail or attempt to justify these costs. Under Section 69, Ms Yaara Shoshani Caspi came up with what she considered a more reasonable figure and reduced the costs to 6000 Shekels.


We represented the Applicant in this case.

A decision to read over coffee

October 26, 2015

In February 2008 Alon Intrade LTD filed a number of coffee related trademark applications that issued between December 2008 and August 2009. The marks include Si Caffé as text in Hebrew and English and a stylized application, and Si Espresso as text in Hebrew and English and as a stylized application.

Si Cafe  Si Espresso
The class 30 registration was for cold and hot drinks including tea and coffee, cocoa, rice, tapioca, sago, ersatz coffee, flour, baking foods and cereal grain products particularly bread, cakes and baked goods, pizza and frozen pizza, flat cakes cooked cakes (pancakes?) and frozen cakes, sweets, confectionery for baking, honey, honey like syrup (molasses?) yeast, baking powder, salt, mustard, vinegar, spicy sauces, sauces, spices, and ice for drinks.

The class 43 registration were for food and drink vending services including the sale of sandwiches, salads, cakes, hot and cold meat and milk products, sale and serving of all types of coffee, hot , cold and alcoholic beverages, all in class 43.
In December 2013, S.A.M. Coffee services LTD requested the cancellation of the marks. , S.A.M. Coffee services LTD has the following mark: The marks owned by S.A.M. Coffee services LTD ‘s marks were filed in December 2001, in classes 30 and 42 for coffee, ersatz coffee, flour and grain based products and baked goods and for providing food and drink.

S.A.M. Coffee services LTD claimed that they run an established chain of coffee shops called Sicaffe that is known in Israel and abroad for its high quality products and service. The chain roasts the coffee beans and bakes bread in house and has proprietary blends of coffee beans.

This is S.A.M.’s mark.


S.A.M. Coffee services LTD claims that Alon Intrade LTD’s marks are confusingly similar to theirs, and that the word marks Si Café and Si Espresso lacked distinctiveness and create unfair competition and should therefore be canceled under Section 39a on the grounds that under sections 8(a), 11(6) and 11(9) they should never have been registered in the first place.

Furthermore, S.A.M. Coffee services LTD claim that they first learned about Alon Intrade LTD’s marks Si Café and Si Espresso when a consumer affairs program investigated Si Café and Si Espresso and concluded that they recycled their products to the customers, and that people wrongly attributed this behaviour to Sicaffe due to the similarity of the marks.

Sicaffe submitted an affidavit that supported their allegations nd that explained that the first Sicaffe shop opened in Ramat haChayal in 1998 and in 2011, a second shop opened in Tel Aviv. The chain opened two coffee shops in New York in 2003 and 2004 and two more in Russia in 2013.

Sicaffe further noted that Alon Intrade LTD used the two trademarks interchangeably. For example, in Netanya, workers in Si Caffé wore uniforms with Si Espresso printed on them, and the payment receipts used Si Espresso as well. In Si Espresso the name Si Caffé appears on the cups, sertviettes and take-away bags.

Alon Intrade LTD responded that they had set up a chain called Sigafreido Espresso Bar that, over the course of time was shortened to either Si Caffé or Si Espresso, depending on the character of the individual coffee shop.

The chain(s) include 16 shops along Route 6 and at Ben Gurion Airport and serve thousands of customers each year. The annual turnover is millions of Shekels and there was never a confusion with the Opposer’s chain. Furthermore, the marks were examined and allowed despite Sicaffe’s earlier registrations. Since Sicaffe had not objected over four years, they were estoppeled from so doing.

Alon Intrade LTD also argued that there was no likelihood of confusion between the marks which all comprised common words that no one was entitled to own. Furthermore, they had disclaimed rights in the elements of the marks.
Alon Intrade LTD explained that the Si Caffé and Si Espresso marks were the result of a rebranding in 2008 and that the marks have been in continuous use since then.

The Si Caffé mark is used in restaurants that offer a culinary menu that is a fusion of the Israeli and Italian kitchens, whereas the Si Espresso mark is used for self-service cafeterias. The outlets also use the non-registered mark ‘Si Express’ for the new Grab & Go concept.

Due to the location of the coffee shops and the cooperation between the chain and their customer club the registered marks are seen by 1.5 million customers a year. In addition the company invests millions of shekels in marketing and promoting the chain via advertising and managing the customer club, relationships with other customer clubs, works organizations in different sectors and the like. Because of cooperation with the popular navigation program WAYZ, drivers are alerted when they are near branches of the chain.

The witnesses were cross-examined on their statements on 12 January 2015.


Section 39 of the Trademark Ordinance defines a 5 year period beyond when a mark is registered during which a mark that should not have registered due to one of the provisions of sections 7 to 11 can be canceled.

There is no argument that the cancellation procedure was initiated within this period, however the mark owner claims that the Applicant for cancellation is estopelled from so doing. This, is, however, not the case. Failure to oppose a mark does not deprive third parties from initiating cancellation procedures. The claim has no legal support and is also unreasonable. Not all players follow the trademark register avidly and so there are provisions for correcting the register, including cancellation of marks. Indeed, as is clear from the Versace case even unsuccessfully opposing a mark does not prevent the opposer from later initiating and winning cancellation proceedings – See here, here and here.

As the Ordinance itself gives 5 years from issuance for a mark to be cancelled for the grounds in Sections 7 to 11, there is no room to claim that a four year delay is covered by a statute of limitations. The defense of tardiness is inadequate. It would however be reasonable to rely on a specific surrendering of the right to challenge. In general, cancellation proceedings and oppositions by third parties are a way of ensuring the integrity of the trademark register, including uncovering and correcting mistakes made by the Israel Patent and Trademark Office. The cancellation procedure does not only serve the competitor who initiates it, but also serves the public good. The costs involved and the burden of proof are sufficient to limit third parties from filing frivolous cancelation proceedings.

In this regard, Ms Bracha refers to Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011), p. 345 by James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkley which shows that UK and European law also have a similar five year period. She does, however note that a significant period of coexistence may indicate that consumers are aware of the subtle differences between similar brands. However the Applicant for cancelation’s statement of case concentrates on the similarity between marks which allegedly has resulted in consumer confusion and unfair competition.

Ms Bracha therefore applied the (five part) triple test and considered:

  • the appearance of the marks
  • the sound of the marks
  • the distribution channels
  • the customers
  • everything else of interest

and cited the relevant case law (pro-pro biscuits, Bak Igud vs. Bank Agudat Israel, HaMishpacha, Tam Teva and Ambrosia.

As to the appearance of the mark, the challenger’s mark is for Sicaffe with a white coffee bean within a black triangle. The challenged marks include graphic marks Si Café against a red background and Si espresso against a grey background and the word marks Si Caffé and Si espresso with disclaimers for the words café and espresso.

The challenger’s mark includes the words Si Caffe in common with the challenged mark. The Deputy Commissioner does not consider the extra f in caffe as having a major effect on the average consumer.

The word Si is the extra element where café and espresso are generic words. Si means yes in Italian and may be considered as being a laudatory word that indicates an Italian connection [which is considered as indicating quality and style as far as coffee is concerned].

Although in marks of this nature it is common to analyze the mark into its elements, really similarities of the marks as a whole should be considered when assessing the likelihood of confusion.

Both marks have graphic elements and use fonts that are somewhat different.

Citing Kerly page 313:

“It follows that if the respective marks are similar in respects which are distinctive and origin specific then this will tend to increase the likelihood of confusion. Conversely, if the marks are only similar in respects which are descriptive or origin neutral then this will tend to decrease the likelihood of confusion; indeed it may result in a finding that the marks are not even similar.
The public will not generally consider a descriptive element forming part of a complex (or composite) mark as the dominant element of the overall impression created by the mark; it is the dominant elements of the marks that are critical in the overall evaluation, although it is only if all the other components are negligible that the assessment can be carried out solely on the basis of the dominant element”.

Thus where the words selected are generic or common place and laudatory a greater emphasis may be given to the graphic elements. See the decision concerning Israel Trademark 223957 Chic Design.

In conclusion, the graphic marks are sufficiently different visually to coexist but the word marks, including Si Espresso are too similar to be valid. Sicaffe and Si café sound the same. Si espresso sounds rather different.

When comparing the relative importance of the appearance and the sound, the case law in 5066/10 Appeal Angel vs. Berman (30 July 2012) – specifically Section 27 explains that there is a difference between goods ordered over the counter, where the sound is more important, and goods selected from a shelf in a supermarket or the like, where the appearance is more significant in deciding whether or not there is a likelihood of confusion.

According to Deputy Commissioner Bracha, the mark holder himself notes that consumers select sandwiches and prepared portions from the shelves, apart from one branch which offers a full waiter service. Each package bears the logo and so, reasoned Ms Bracha, the visual aspects are more significant than the sound.

As to customers and distribution channels, the challenger has regular customers and the marks holder primarily serves passing traffic on route . That said, the challenger does serve passers-by and the mark holder may have regular customers. The customer base overlaps although is not identical.

The mark holder’s chains generally sell bars of chocolate, ice-cream and sometimes burgers and chips, chicken wings and the like, whereas the Applicant for cancellation makes salads and bakes bread, and even their thousand island dressing is prepared on premises and not poured from a bottle or dispensed in sachets [MF – I bet they don’t blend anywhere near a thousand islands together though].

Ms Bracha notes these differences but does not consider them significant enough to render the likelihood of confusion impossible as they are in the same class and are substitutes for each other to a large extent.

Other Considerations – Under this heading other relevant factors that might confuse the public or reduce sales are considered.

From the evidence it is clear that the two marks have coexisted since 2008 and since the challenged marks were the result of a rebranding exercise they were in wide-scale use from the beginning. The cancellation proceeding was initiated four years after the mark was registered. The failure of the initiator of cancellation proceedings to warn the mark holder or to otherwise express dissatisfaction does not prejudice his rights to initiate these proceedings.

Nevertheless, failure to act more promptly does to some extent indicate a lack of confusion The initiator of the cancellation proceedings alleges that the proceedings were initiated due to consumer comments and the Kolbotek consumer affairs program investigation.

It is not inconceivable that customers of the initiator of the cancellation proceedings believe that their shops are strewn along Route 6, but they haven’t supplied evidence that this is the case, and since this is a cancellation proceeding and not an opposition, the onus of proof is on the initiator of the proceedings.

The Deputy Commissioner considers that the word marks should never have been allowed to register in the first place and the passage of time is insufficient to remedy this.

Whilst the word marks do appear on receipts and the like, the main use is that of the visual elements in the signs and food markings. As the marks owner uses the logos and word marks almost interchangeably, their claims that the espresso mark is different is undermined.

In conclusion, the word marks 208117, 208121, 208119, 208124, 208128 208130 should not have issued under Section 11(9) of the Ordinance and are canceled.

The graphic marks 208116, 208120, 208127, 208130 are sufficiently distinct that the request for cancellation is rejected based on the analysis above.

Since six out of 10 marks are canceled, the 208116 the initiator of the cancellation proceedings is entitled to costs, but these should be reduced in view of the four marks that weren’t canceled. The initiator of the cancellation proceedings did supply figures but did not provide receipts and invoices to substantiate their claims.

In consequence, an award of 6000 Shekels and legal costs of 20,000 Shekels are appropriate.


I disagree with Ms Bracha’s logic as per the sight and sound of the marks. The goods within the shop are not sold side by side. The ambiance within the outlets may be different. The question is whether people arranging to meet at ‘SiCafe’ in, say Tel Aviv, could find themselves in different outlets and whether adverse publicity such as the consumer program report, or, for arguments sake, an incident involving a customer suffering an allergic reaction, a report regarding cockroach or rat infestation or an incident reported in the paper regarding Kashrut infringement in one chain could adversely affect the business of the other chain. I think that there is a real danger of this.

Si Café’ is a rebranding effort from Sigafreido Espresso Bar. Is it unlikely that a different logo might be considered updated packaging? Logos and packaging change over time. This is appreciated by the trademark office since no issue is ever totally put to rest and changing circumstances can result in a previously resolved dispute flaring up again and requiring a further ruling and possibly a different resolution.

In the case of Eden water, the word phrase Nature’s Champagne in an advertising slogan for still mineral water was considered a serious infringement. There was obviously no likelihood of confusion. There was, however, perhaps a case of ‘dilution’. A similar sounding mark can have this affect. An invitation for a business meeting at Sicaffe may sound less attractive to someone who stops for a coffee and a bag of chips at a self service cafeteria with a similar name.

Eden vs. Eden Wineries – Competing Marks

September 21, 2015

Out of Eden

Two wineries have had the same idea, and have each filed trademarks. One is for Eden, and the other for Eden Winery.

The Israel Trademark Office was not prepared to let two such similar marks coexist, and initiated a competing marks proceeding.


One of the parties filed evidence without the help of legal counsel and then sought legal counsel. On advice of said counsel, they requested to correct their submitted evidence ahead of the hearing arguing that under Section 41 of the regulations, the Commissioner can authorize such amendments.

The other party objects to this, and insinuates that it is destroying evidence, and that there is no procedure for ‘correcting’ an affidavit once it has been submitted. The applicant denies trying to hide anything and claims that the Patent Office has wide discretion regarding allowing such amendments.

The first party responded and the second party requested that the first party’s response be struck from the record. The Deputy Commissioner Ms Jacqueline Bracha decided not to relate to all the responses and counter responses, but only to the issue of submitting further evidence and correcting the submission. She noted that the first request understood that it was permissible under Court Procedural Rules adopted by the Patent Office in the relevant Circular (013/2012 v. 1), and that neither side had asked or received permission for subsequent submissions.

On the grounds that the procedure for competing marks is not set out in the regulations and that the hearing has not happened, the Deputy Commissioner Ms Jacqueline Bracha agreed with the request and allowed the submission.  As to the charges of ‘correcting the affidavit’, Ms Bracha considers that the applicant wishes to exchange one set of evidence with another and not correct the affidavit, and considers this allowable, whether as submission of additional evidence or as correcting the statement of case.

The Deputy Commissioner based her ruling on the following considerations:

  1. the Affidavit related to the key issues of when the mark was first used, extent of use and use in good faith. She was prepared to consider discrepancies between the first and second statements in her final ruling, but considered it appropriate to allow the exchange of evidence.
  2. The submission of the additional affidavit does not turn the clock back and result in a lost of opportunity to the competing party who can cross-examine on the apparent discrepancies if he so wishes.
  3. The competing party can relate to the evidence in the second affidavit in writing up until two days before the hearing.

Noting that such procedural irregularities cause additional work, she ruled costs in favour of the competing party, but due to the competing party submitting three rounds of procedural complaints she limited the interim costs to a mere 500 Shekels.


I am not sure that wine is associated with Eden. Wine and its afflictions were first discussed after the Flood. That as may be, there is no place in Israel that is called Eden. We to have an Arab village called Faredis which became corrupted as Paradise, and there is a Gei Ben Hinom, the Hinom Valley below the Old City of Jerusalem whose name as Gehenna become associated with hell.

The name Eden is used for by a natural food supermarket, by L’Oreal and others. Apart from bottled water marketed under Waters of Eden, the mark is already registered by Absolut Vodka in class 33, which is the same class as wine.

The State of the Union Address

September 16, 2015

state of the union

On Thursday 1o September, the Union of European Practitioners in Intellectual Property held their Union Dinner at the Royal Overseas League. The State Taste of the Union Address was given by IP Hall of Fame Inductee, Professor Jeremy Phillips, and the cost for the dinner and talk was 69 pounds a head, with discounts to 44 quid for members. That’s a 420 NIS cover charge discounted to 250 NIS. I reckon that this was extraordinary value for money for dinner and a chance to hear Professor Jeremy Phillips, who is the founder of Managing Intellectual Property (MIP), the IPKAT and much more besides.

The dinner was a last chance to hear Professor Phillips who is planning on full retirement from all IP interests, including lecturing, his editorship of Marques and of the Oxford Journal of Intellectual Property Law & Practice.

Jeremy’s talk was titled “IP in 2015 – Where we are and where I thought we’d be”.

Cinema CityAt great expense, I have managed to persuade Professor Phillips to give a repeat performance in Israel on 7th October 2015 at Sin City, Jerusalem.

The event, including buffet style refreshments, wines and beer, is fully subsidized to IP practitioners of all kinds, legal and cowboy, examiners, judges, clients, patent attorneys, lawyers, paralegals and the like. Places are limited however, and are filling up fast. If you’d like to attend, please register here.

When: 7 October 2015; 5 PM to 7 PM  Add to Calendar

Where:   Cinema City, Itzhak Rabin 10, (Opposite the Supreme Court),Jerusalem

To register,
Contact us here

“Intellectual Property exclusions – who decides and how?”

September 10, 2015

After the coffee break, the conference took on a more traditional IP feel, with a session chaired by Dr Roman Cholij on “Intellectual Property exclusions – who decides and how?”

 Judge Arnold and Dr Factor

Judge Arnold and Dr Factor

The Hon. Mr Justice Richard Arnold, Judge of the High Court of England and Wales spoke on “Trade marks which are contrary to public policy or accepted principles of morality”.

After apologizing for referring to branding that some might find offensive, Judge Arnold referred to various marks that were considered offensive and others, such as Dick and Fanny for contraceptives, though crude, were considered acceptable. Of course, in a Catholic country, contraceptives might be considered as against ordre public. Old favorites, such as FCUK standing for French Connection United Kingdom were discussed. The final case mentioned was Fucking Hell, a brand of beer which was allowed since hell is German for pale and signified that this was a pale ale, and Fucking is a village in Austria where it is made.
(Interestingly, in the conference I organized back in 2011, my brother Aharon (ne Jeremy) spoke about similar Israel trademarks. One such Israel trademark to be refused was Jesus Boat. I trademark for a company offering cruises in the sea of Galilee. Is it offensive? I think not. Then again, I am not a Christian.

I have seen many of Judge Arnold’s IP rulings over the years, and recent Israeli decisions such as Waters of Eden and finding ISPs responsible for not patrolling the Internet for copyright infringement cite his rulings. His ruling re Mylan infringing Copaxone’s patent was favorably received in Israel, whereas his ruling re patent term extensions for Neurim was appealed, and Lord Robin Jacobs referred it to the European Court of Justice ECJ.  It was a pleasure meeting such an erudite member of the judiciary.

Dr Kathleen Liddell, Faculty of Law, University of Cambridge and Director, Centre for Law, Medicine and Life Sciences spoke on “Immorality and patents: the exclusion of inventions contrary to ordre public and morality”. I wondered if she was related to Alice Liddell, the daughter of Henry Liddell, Dean of Christ Church  and inspiration of the Wonderland stories, in what is referred to in Cambridge as ‘the other place’.

Professor Joshua D. Sarnoff, who was clearly a member of the Tribe, spoke on “Religious, Moral, and Philosophical Origins of the Exclusions from Patents for Science, Nature, and Abstract Ideas, How They Should Be Applied, and Why It Matters”. He covered a tremendous amount of history in a short time and gave the most convincing explanation of why the isolation of materials such as insulin or genes could be considered as inventing rather than discovery, and thus be patentable.

For lunch, I was given a tray with a Halla and a range of sealed packages of delicatessen style Kosher food. Oddly, there was both cream cheese and sliced turkey, with poultry being considered meat and thus not servable with milk products for about two millenia when the dissenting Rabbi Yossi the Galilean, buckled under.
I ate the sliced turkey with hummus and a packet of ginger biscuits. I later put the chopped herring and smoked salmon in the fridge and flew them back to Israel. I put the Halla to one side, expecting a second one for supper, two loaves, representing the double portion of manna, being required for Friday night’s meal. What struck me most about the conference, with its wide eclectic audience, was how very friendly everyone was.

Ketchup Wars

August 20, 2015

Heinz has removed the Hebrew transliteration of Ketchup from bottles of their iconic sauce. The reason? Israel has a standard for Ketchup that Heinz doesn’t come up to. Specifically, Israeli Ketchup contains a higher percentage of tomato extracts than Heinz’ tomato flavored condiment.

I read about this development in Yesterday’s Idiot Acharonot (Israel’s largest circulation fish & chips wrapper newspaper) whilst enjoying a leisurely breakfast on holiday in the Galilee.  The topic is a hot sweet & sour issue among fellow Anglo-American Immigrants who I am in contact with on Facebook.

To those of us who grew up in the UK or the US, Ketchup meant Heinz. Heinz launched its first Tomato Ketchup in 1876, Heinz was at the forefront of exploring natural preservation, and in 1906 was first to launch a Ketchup free from artificial preservatives. To prevent it growing a beard without fungicides, it includes enormous amounts of sugar and vinegar.



There never were 57 varieties of ketchup or indeed of anything else. Nevertheless, worldwide, Heinz is the #1 ketchup.

In the 17th century, the Chinese mixed a concoction of pickled fish and spices and called it (in the Amoy dialect) kôe-chiap or kê-chiap (鮭汁. By the early 18th century, the table sauce had made it to what is now Malaysia and Singapore, where it was discovered by English explorers. The Indonesian-Malay word for the sauce was kecap (pronounced “kay-chap”). That word evolved into the English word “ketchup”, and English settlers took ketchup with them to the American colonies.

In the United Kingdom, preparations of ketchup were historically and originally prepared with mushroom as a primary ingredient, rather than tomato. Ketchup recipes begin to appear in British and then American cookbooks in the 18th century. 

So the term Ketchup doesn’t imply containing tomatoes at all. It really simply means a savoury sauce. Nevertheless, to most of the world, the term relates to the thick dark red sauce that Heinz manufactures and distributes.

In Israel, a variety of condiments are sold as tomato ketchup. The most widely distributed and probably the best of them is Osem’s ketchup, which also comes in a distinctive container that is perhaps as well recognized in Israel as Heinz’ is elsewhere. I prefer Heinz’ Ketchup as it the taste I grew up on. My Israeli kids prefer Osem’s.

To put the argument into some kind of perspective, I’d like to use the analogy of mustard. I am sure that for British ex-patriots like me, mustard is a very strong condiment prepared from a powder. Coleman’s mustard has a long and distinguished history.

Jeremiah Colman founded Colman’s of Norwich in 1814. To create a tangy flavour, he blended brown mustard (Brassica juncea) with white mustard (Sinapis alba). From 1855 the firm introduced its distinctive yellow packaging and bull’s head logo, and in 1866 was granted Royal Warrant as manufacturers of mustard to Queen Victoria. The royal household still uses Colman’s today.

colmans mustard

Now the French make an entirely different condiment called Dijon mustard, that is rather milder. Americans have a sort of yellow ketchup that they call mustard, but which has no similarity to English mustard. One could envisage the UK banning American mustard from being sold as ‘mustard’ without a qualifier, such as ‘American style’ mustard. Similarly, one could imagine Americans requiring Colman’s Mustard to be sold with a government health warning that it should be consumed in small quantities only, and that it is rather different than what Americans are used to.

Israeli bottles of Heinz Ketchup will still have the word Ketchup on their labels in English, just not in Hebrew. Presumably English and American immigrants will see that the sauce is what they are looking for, and Israelis will appreciate that the condiment is something different. It is not a bad compromise. However, as the term ketchup doesn’t actually imply tomatoes and the average consumer is aware that condiments from different companies taste slightly different, and since both Heinz and Osem’s ketchup bottles feature the name of the manufacturer clearly and each comes in a distinctive bottle, I am not convinced that this is really necessary.

namesred mug

There are, of course, Israeli precedents for this type of thing. Nestle’s Nescafe Original was marketed in Israel as Red Mug. They couldn’t call it Nescafe as the term was generic. The Hebrew word Nes means miracle, and, where Elite’s Cafe Namess (soluble coffee) was known as Nescafe (miracle coffee), there was no way for Nestle to obtain a trademark for Nescafe.

Pips Cola

Prior to the Oslo accords, Pepsi Cola was not available in Israel, as Pepsi decided to kowtow to the Arab boycott. A Galilean Arab sold a locally produced cola as Pips Cola. When Pepsi entered the Israel market they tried to get an injunction against the Arab manufacturer. The Israel courts correctly noted that they had abandoned the local market. They ended up having to buy him out.

For British readers of my generation, I refer to classic Goodies Episode “The Bunfight at the OK Tearooms“, where ketchup as a metaphor for movie blood and gore was taken to its logical conclusion.


J-Date swipes at J-Swipe

August 11, 2015

There are well-defined groups of Jewish singles looking for partners. In traditional society, the match-maker paired up potential partners, and made his/her living from so-doing. In the wider society, friends and acquaintances suggested that people who seemed compatible should meet. Depending on the perceptiveness of the match-maker, the date could be very successful or very tedious for both parties.
In 1997 J-Date offered a computerized match-making service to Jews. Apparently their questionnaires enable people to provide more details of who they are and what they are looking for. J-Date quickly grew to become a leading service provider.
If 1997 was the beginning of the Internet revolution, nearly 20 years later things have changed. J-Swipe is an application that lets those interested in dating discover the proximity of potentially suitable partners, to find out a little more about them, and to contact those of interest. It is apparently a circumcised ritually immersed version of Tinder, a similar application that is less tribal. Apparently J-Swipe is the #1 Jewish dating app with users in over 70 countries. They also claim 375,000+ JSwipe users from across the world (which compares nicely with the number of times this blog has been accessed, but my statistic includes repeat views, and the blog has been going for longer).
Both J-Date and J-Swipe target the same audience, i.e. single Jews, and offer similar services. So J-Date sued J-Swipe and also connected hosting sites and the like, threatening to sue them.
J-Date claims patent infringement and trademark infringement.
Their patent is US 5,950,200 to Sudai and Blumberg titled ” Method and apparatus for detection of reciprocal interests or feelings and subsequent notification”
The independent method claim is

1. A method that notifies people that they feel reciprocal interest for each other, comprising the steps, performed by a processor of a data processing system having a memory, of:
receiving input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
receiving input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
determining whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
determining whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
if and only if a match occurs in both of the determining steps, notifying the first user and the second user that a match has occurred.

There is an independent apparatus claim as well:

28. An apparatus that notifies people that they feel reciprocal interest for each other, comprising:
a first input portion, configured to receive input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
a second input portion, configured to receive input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
a notifying portion, coupled to the first and second determining portions, configured to notify the first user and the second user if and only if the first and second determining portions have detected a match.

There is also a means claim and a software claim.

Back in 1999 such patents issued. Nowadays they don’t.

The trouble is, as VOX put it, JDate claims to own the concept of connecting 2 people based on mutual attraction.

Now, J-Date denies that it against market competition:
“This is not about us discouraging market competition,” Michael Egan, CEO of the company behind JDate, wrote to the New York Observer’s Brady Dale. “Our case against JSwipe is about their theft of our technology.” I am not convinced.
Having an issued patent, there is a rebuttable assumption of validity and they cannot be accused of bad faith in attempting to assert their patent against infringers. However, I doubt that the patent would be upheld in court.

When considering validity, US courts are governed by current case law in their interpretation of concepts such as patentable subject matter, novelty and obviousness. Many patents issued at the turn of the millenium will not stand up in court.

In addition to patents, J-Date also claims trademark infringement. J-Date argues that J-Swipe infringes their mark. Back when I was a student in England, college Jewish Societies were known as J-Socs and presumably still are. The left leaning America-Israel pressure group J-Street uses a J for the same reason. The J indicates Jewish. It seems unlikely that the courts would recognize an individual company having rights in the letter J for dating services.
I doubt that the patent would stand up in court as most of the computerized service patents are voidable in light of recent decisions, and the patent in question doesn’t seem very exciting. I also doubt that the argument of trademark infringement will stand up. The thing is that J-Date have deep pockets and see a threat to their market dominance. They are suing because they can.

Yentl is using behavior more appropriate to a troll. Still all is fair in the business of love.

Matchmaker – Fiddler on the Roof (1971)


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