Nanobiotix – requesting the posting of a bond to cover Opposition expenses is standard and not exceptional

October 14, 2014
It is actually a graphic mark and not merely the word!

(It is actually a graphic mark and not merely the word!)

Nanobiotix filed Israel trademark Application Number 243678 “Nanobiotix” via the Madrid Protocol in classes 10 for Surgical and medical apparatus and instruments especially for the diagnosis and treatment of tumors using radiation treatment; radiotherapy apparatus; apparatus for use in medical analysis; diagnostic apparatus for medical use; radiology screens for medical use; X-ray photographs; radiological apparatus for medical use; X-ray tubes for medical use; filters and lamps for ultraviolet rays for medical use; apparatus and installations for the production of X-rays, for medical use; X-ray protection devices for medical use; roentgen apparatus for medical use; devices for protection against X-rays, for medical use; receptacles for applying medicines; special furniture for medical use; X-ray bulbs for medical use., in class 42 for Scientific and technological services as well as research and design particularly in the field of nanomedicine (nanotechnology applied to medicine); biological research; bacteriological research; scientific and technological evaluations, estimates and investigations provided by engineers, researchers; design and development of new products (for third parties); technical project studies; industrial analysis and research services; chemical analysis; chemical research; chemistry services; research and development of new products for third parties; technical research; research in radiobiology; research in nanoscience and nanotechnology, particularly applied to medicine; and in class 44 for Health services particularly in the field of nanomedicine; medical services particularly in the field of nanomedicine; hospital services; medical assistance; physical therapy.

Super Medic (Medic Light LTD) and Diateti Col LTD, represented by owner Tzion Yadid, opposed the mark.

The Applicant requested that the Opposers post a bond of 80000 Shekels to the courts to cover costs should the opposition fail, and submitted an affidavit to support this request.

The basis of the Opposition was that the mark in question is confusingly similar to their issued marks 241083, 229880 (and to their pending mark 246664), and therefore cannot be registered under Section 9(11) of the trademark ordinance 1972.

The Applicants argued that the allegedly similar marks Actibiotica and Acti-pearl were substantially different. The pending mark 246664 – Nanobiotica is more similar, but being descriptive should not be allowed. Furthermore, the nature of the goods and the distribution channels of Israel trademark Application Number 243678 “Nanobiotix” and Israel trademark Application Number 246664 “Nanobiotica” are significant enough to allow coexistence.  Nanobiotix requires a prescription whereas Nanobiotica does not.

Section 353a of the Company Law 1999 is the basis of the request for a bond. Applicants noted that the Opposers were working out of a private house and had liens on their product which was apparently their only asset. The fact that they were represented by their CEO and did not have legal representation was submitted as further indication of lack of financial assets.

The Opposers considered that the request for them to post bail was inequitable behaviour as it could prejudice them being able to fight their case and have the opposition considered on its merits. They claimed that their financial status was steady and that there were no liens on their assets. Hey considered their case a strong one, and argued that this also strengthened their position against needing to post bail.

Class 5 was deleted from the mark under Opposition, resulting in Israel trademark Application Number 243678 “Nanobiotix” and Israel trademark Application Number 246664 “Nanobiotica” no longer covering a common class of goods.

THE RULING

Deputy Commissioner Ms Jacqueline Bracha held that she had the authority to require a deposit of likely costs and where a plaintiff is a limited company the assumption is that such a deposit is required unless it is clear that the plaintiff has sufficient assets. If the Opposer wishes to be considered an exception to the rule that a deposit be made, they have to provide positive evidence to this effect.

The Opposer did provide evidence of not owing income tax for the years 2009 to 2013. The Deputy Commissioner did not consider that the applicant had successfully showed that the company did not have other assets or that the marks and products were being used as a security. However, the Opposer had not provided sufficient evidence that they did have financial resources to pay costs should they lose. The company is a private one and apart from not owing money to the income tax authority, there was no indication of resources.

As to the chances of the Opposition being successful, the Deputy Commissioner considered it too early to come to a conclusion on the issue as no evidence had been brought.

In light of these considerations, the Deputy Commissioner considered the request for a bond to be posted normative and appropriate. However, after consideration of typical costs of oppositions of this type, even where the applicant is a foreign entity, she considered 20,000 Shekels adequate costs to be posted.

Intermediate ruling re posting bond for future costs concerning opposition to filed Israel trademark Application Number 243678 “Nanobiotix”, Deputy Commissioner Ms Jacqueline Bracha, 11 September 2014.

COMMENT

Nanobiotrix is represented by Adin Liss. Eran Liss, one of the partners, is a grandmaster. The request for a bond to be posted was merely an opening gambit. Whereas there is nothing wrong with an Opposer fighting a trademark without legal representation, one suspects that he might find himself out of his league. We urge Opposer to seek legal advice and representation to avoid a quick check-mate.


Arcos and Arcosteel Cross Kitchen Knives Again

October 6, 2014
Arcos knife

Arcos knife

Arcosteel knife

Arcosteel knife

Millenium Marketing Intertrade (1999) LTD. filed Israel Trademark No. 239054 for the word mark  “Arcosteel”.

Not surprising, considering their earlier opposition for a stylized mark, Arcos Hermano S.A. filed an opposition to this mark.

The Opposers requested that a hearing be delayed since there were four parallel proceedings which should be amalgamated and heard in one go. They claimed that their witness, a Mr Rosenfeld could not be able for the hearing as scheduled due to prior commitments.

The other three cases concern TM 241329 “Arcos” in class 21 and 247988 “Arcos” in classes 8, 21 and 35, opposed in class 21, and TM 248994 for Arcosteel in classes 7 and 11.

The present word mark for Arcosteel was filed in classes 8, 21 and 35, but after cutlery in class 8 was amended to recite cutlery excluding Chef’s knives and professional knives, the opposition to class 8 was dropped.

Since Opposer has no longer objections re classes 8 and 35, the Deputy Commissioner, Ms Jacqueline Bracha has ruled that the mark be allowed to register in those classes.

As to combining the cases, since there are a further two applications – 252214 and 256226 that have not been opposed yet, she did not see fit to combine those cases.

Regulation 520 authorizes the courts to combine similar actions so long as there are similar legal questions. Since the oppositions concerning TMs 239054 and 241329 relate to similar questions of interpretation of the trademark agreement between the parties, she ruled that these should be combined.

TM 247988 also relates to the interpretation of the agreement but additionally relates to likelihood of confusion. Nevertheless, she saw fit to combine that case as well.   However, TM 248994 concerns classes 7 and 11 and is beyond the scope of the agreement, so she did not see fit to combine that case in the current proceedings.

As the request to combine the cases was filed late and the opposing party had consequently incurred expenses, she ruled costs of 600 Shekels + 6000 Shekels legal fees against Arcos Hermanos.


Is Leapfrog trying to jump ahead at Sony’s expense?

September 18, 2014

Sonicgear

Leapfrog Distribution PTE LTD filed Israel trademark application No. 240389 for SONICGEAR.

The application covers “Audio devices, including but not limited to: speakers, multimedia sound systems, docking stations, radios, radio clocks, portable multimedia devices, headphones, headsets, microphones, earphones, audio cables and accessories; all in class 9.

On the mark being published for opposition purposes on 31 October 2012, the Sony Corporation filed an opposition.

Sony frog

Sony’s claims

Sony claimed to be a world leading brand of electronic goods including video game consoles and telecommunication equipment with worldwide reputation, including Israel, with a range of branded products that are identified with Sony. Since the company name Sony is well established, it may considered a Well Known Brand and is entitled to wide protection.

According to the Opposer, there is a similarity between the Applicant’s mark and their name, both phonetically and visually, and so the mark lacks distinctiveness in contradistinction to Section 8a of the Trademark Ordinance.

The Opposer (Sony) claims that a connection between the Applicant’s mark and their own will damage the reputation of years and cause a dilution of Sony’s name. Sony accused Leapfrog of trying to free ride on Sony’s long established reputation which is the result of years of cultivation, and so claims that the registration of the mark is inequitable behaviour and contrary to the public good.

Leapfrog’s claims

Leapfrog was established in 1999 and has sold electronics under the name SONICGEAR for more than a decade. SONICGEAR’s goods have been sold in Israel since 2006. The requested mark has been in use in Israel since 2008 and has developed its own reputation.

Leapfrog denies a likelihood of confusion since both Sony and Sonicgear have developed their reputations over years. Leapfrog claims that Sony has lived with their use of the SONICGEAR branding for years and are thus estoppeled from opposing it, and their opposing it now is itself inequitable behaviour.

Evidence

Leapfrog further claims that the marks look and sound different and that there are very many marks that start with the prefix SON in Class 9 of the Trademark Ordinance.

SONY submitted an affidavit of the Head of Trademarks at SONY that shows the rating of the SONY mark in Japan, examples of branding publicity for Sony in Israel and lists of SONY’s trademark registrations around the world.

Leapfrog filed an affidavit of their CEO showing sales of the SONICGEAR brand over the previous five years and examples of their trademark registrations.

Both sides gave up on the right to cross-examine.

Ruling

Citing Supreme Court precedents, Deputy Commissioner Jacqueline Bracha ruled that where the parties agree to accept testimony without cross-examination this adversely affects their rights to challenge the facts presented in the testimony but this does not bind the court to accept the affidavits at face value.

In this instance, the two affidavits may be used to build a picture of the relative usages but the court has to bear in mind that the affidavits were not challenged.

As to the Opposer’s challenge to the distinctive nature of the mark, Section 8a states that a mark cannot be registered unless it may be used to distinguish between the goods of the registrant and those of competitors. Ms Bracha ruled that the purpose of the Section is to prevent parties from monopolizing generic words. She considers that the distinguishing features of a mark have to be considered by looking at the mark in isolation, without considering competing marks. The issue is whether the mark is descriptive or laudatory, not whether it is confusingly similar to other marks.

Consequently, Ms Bracha ruled that better grounds of opposition might be 11(9) or 11(13) as Sony’s marks are registered and they are claiming a likelihood of confusion.

She went on to apply the triple test and ruled that the as far as the appearance and sound of the mark were concerned, the marks should be considered in their entirety and not broken down into syllables or parts. SONICGEAR does not look or sound like SONY. The mark is also stylized with distinctive graphic elements.

The prefix sonic implies audio and is thus generic descriptive, and not fairly monopolizable by Sony. She noted that it was true that many other firms were actively using marks starting with or including ‘son’, but did not consider this as being grounds for registration per se. Nevertheless, since other players were using the syllable / sound, it weakened Sony’s argument that there was a likelihood of confusion.

The hard G in the middle of Gear is audibly dominant. Furthermore, as a stylized ON-OFF button, it is graphically distinct. She then went on to cite the Appeal of the Killy – Killa decision (considered by former Commissioner Dr Noam as confusingly similar, but overturned by Judge Ginat of the Tel Aviv District Court).

As far as the clientele is concerned, there is certainly overlap but Ms Bracha did not consider that there was a likelihood of confusion, and certainly no evidence of their being a likelihood of confusion was submitted.

Under other considerations and common sense, MS Bracha accepted that the prefix Son was not distinctive and noted that Leapfrog also had a second stylized mark Powerlogic where the Os were jack-plugs similar to the C of Sonicgear, and this strengthened the identity of the mark with Leapfrog’s.

As to Sony being a well-known mark, Ms Bracha accepted this, but explained that the significance of this is covered by Section 11(14) of the Trademark Ordinance, i.e. that an identical or confusingly similar mark could not be registered in a different class if this could create a likelihood of confusion. In this case, since she had concluded that the marks were not confusingly similar, the issue was moot.

In terms of unfair competition, Ms Bracha ruled that merely establishing that a competing mark is wel known is insufficient. A likelihood of confusion is also required and no evidence of this was submitted.

The grounds of Public Interest were considered not relevant, since these were limited to marks that were widely considered offensive, and that wasn’t the case here. As to inequitable behaviour, Ms Bracha referred to the Pioneer decision instead of repeating it again, and also noted that although alleged, no evidence was submitted.

The Opposition was refused and Ms Bracha awarded the Applicant 2000 Shekels costs and 13,000 Shekels + VAT in legal fees.

Ruling: Opposition to Israel Trademark 240489 “Sonicgear”, Sony vs. Leapfrog Ms Jaqueline Bracha, 10 August 2014.

Comments

This was a well-reasoned response. That cannot be said of the Opposition as filed.

If the Opposer chooses to oppose a mark based on one legal argument and is unable to prove his case since the legal basis chosen was wrong, why should the Patent Office raise legal issues such as Section 11 which were not raised? After all, an Examiner had already decided that the existence of Sony’s marks were insufficient to prevent registration and Sony (via their Counsel, Dr Shlomo Cohen, Law Offices) did not challenge this under Section 11.

The Chinese do seem to often choose marks that are at least reminiscent of and perhaps inspired by brand-leaders. Sonicgear is somewhat reminiscent of Sony and of Panasonic, and this case reminds me of the Lovol – Volvo decision.


Competing Marks – the extent of Power Of Attorney and submitting summaries in writing

September 9, 2014

The cook store 253157

In my previous post I noted that Gornitzky and Partners, Attorneys-at-Law, seem snowed under and unable to help their client, Surprise Import & Marketing of Gifts Ltd ward off an attack on the validity of their trademark in a timely manner. Well, amongst other time-consuming activities, it seems that they and the client have also got caught up in a competing marks proceedings.

The mark in question, Israel TM No.253157 “The Cook Store” in classes 8 Tools and work hand-operated; cutlery; razors, In respect of devices for lighting, hitting (heating?) extracting streams (steam?), cooking, cooling, drying, airing, supplying water, and sanitarian (sanitation?) purposes in class 11, Tools and Household or kitchen containers, combs and sponges, brushes (except paint brushes detergents), items for cleaning, glassware, porcelain and earthenware not included in other classes, in class 21.

The Cook Store

The mark was filed at around the same time as Israel TM No.  241892 also for the Cook Store in classes 8 and 11, this time filed by TABLE TOP COLLECTION LTD.

Although both marks include styling, the text is identical and the logos are similar. In fact one seems to be a red on white negative of the other in white on red.

An oral hearing was arranged on 28 May 2014, and Ms Helena Kazen, the owner of Surprise Import & Marketing Of Gifts Ltd did not turn up to be cross-examined on her statement, and also failed to inform the adjudicator Table Top Collection LTD. that she would not be coming. The lawyer representing Ms Kazen and Surprise Import, Gornitzky and Partners claimed to have Power of Attorney to represent her, and went outside with the Table Top’s representative who phoned their client. Table Top decided to give up on their mark and also on the expense of cross-examining Ms Kazen.

On 9th July 2014, Surprise Import requested that Table Top, represented by Ehud Porat, Attorney and Notary, put something in writing to the effect that they were dropping their application. On 10 July Surprise Import requested 30 days to update the court. On 14 July Ms Yaara Shoshani Caspi gave Surprise Import until 20 July 2014 to give their decision to Table Top and both parties were to inform the court as to what had transpired and how they intended to continue

On 20 July, Table Top informed the court, and on 29 July Surprise Import informed the court. In their report to the court, Table Top requested legal costs, clarification and an additional hearing on the main dispute or on intended.

In her ruling, Ms Shoshani Caspi noted that giving up on a trademark application is not a trivial matter, particularly in a competing marks procedure where both parties are considered equally entitled to the mark until a ruling is made. In this case, Grodinzky apparently negotiated on behalf of their client but required telephone confirmation for the agreement reached so the extent of their representation was unclear. In the circumstances, they were required to put into writing a specific request and have failed to do so prior to this ruling issuing

In the circumstances, the competing marks procedures is to continue and both sides are to present evidence and to be available for cross-examination.

In this instance Ms Yaara Shoshani Caspi did see fit to compensate the second applicant for Surprise Import’s behaviour and fined Surprise Import & Marketing Of Gifts Ltd 7000 Shekels in legal costs.


Cook and Bake – Tempering Strict Interpretation of the Law with Mercy

September 9, 2014

 

259564 - The registered mark

259564 – The registered mark

Israel Trademark No. 259564 for the logo “Cook and Bake” was filed by “Surprise Import & Marketing Of Gifts Ltd”. It covers cutlery and razors in class 8, devices for hitting, cooking in class 11 (from the Hebrew, it seems beating heating was intended) and for tools and Household or kitchen containers, glassware, porcelain and earthenware not included in other classes in class 21.The mark was registered and for obvious reasons Cook n’ Bake LTD. filed to cancel the mark on 27 May 2014. On 7 August 2014, the mark owner requested an extension to respond to the request. A change of personnel at the legal representative (Gornitzky and Partners, Attorneys-at-Law) was given as grounds for the extension request.

The legal representative claimed that the deadline for filing evidence was 1 August 2014, but the patent office calculated that it was actually two months from the date of the submission of the cancellation request of 27 July 2014, and had already passed.

Gornitzky and Partners, Attorneys-at-Law were and remained the agent of record. A change of personnel within the firm, or moving a case from one attorney’s responsibility to another is not considered a change of representation. The argument that the lawyer had not got around to reviewing the case was not considered a legal basis for a time extension. Ms Shoshani Caspi who ruled on the request, felt that by Law the request should have been thrown out. Nevertheless, since trademarks are property, Ms Shoshani Caspi ruled beyond the strict letter of the law, and granted the attorneys until 31 August 2014, on condition that they paid the requisite extension.

 

Comments

לפנים משורת הדין” or clemency, is a legal principle well established in Jewish Law. See, for example, Babylonian Talmud: Baba Mezia 30b.

Specifically in monetary matters, strict interpretation of the Law is considered the behavior of the men of Sodom. On the other hand, lawyers should be encouraged to take their dockets seriously. In addition to requesting the extension fee, this is a classic case for ruling costs to the opposers, who could claim that their rights are ignored.

As we enter the period leading up to the Day of Judgement when we petition the Almighty to judge us mercifully and not in accordance with the strict letter of the Law, this ruling seems singularly appropriate if perhaps unfair to Cook n’ Bake LTD.

One way to compensate Cook n’ Bake LTD. would be to award them costs.


Gree

September 9, 2014

Israel Trademark No. 258113 to Gree Inc was allowed under the Madrid Protocol. In 27 categories.

Parfums Gres SA opposed the mark in class 3. Gree Inc did not respond and the mark has been restricted do as not to include coverage of class 3.


Kambrook Trademark Cancelled due to Lack of Use

September 9, 2014

electrical kitchen gadgets

Distributing Pty. LTD own Israel Trademark no. 97166 “Kambrook” for Electrical kitchen appliances; electrical cooking utensils including toasters, grillers, kettles, coffee makers and frying pans; all included in class 11.

In March 2014, Breville Pty. LTD, represented by JMB, Davis Ben-David filed a request to cancel the mark on the grounds that it hadn’t been in use in Israel over the three years prior to the request for cancellation being filed and was thus invalid under Section 41(a) of the Trademark Ordinance.

Evidence of lack of use included affidavits from John Sergeant, the CEO of Breville, and from Yehuda Golan, a private investigator.

John Sergeant claimed that Breville had bought Kambrook out and had marketed products under the name Kambrook in various countries including Australia, New Zealand, and elsewhere and had attempted to file the mark in Israel. Yehuda Golan checked the High Street chain stores selling electrical equipment and also retailers in Tel Aviv and didn’t find anyone who had heard of the brand.

Despite contacting the Agent of Record, no response was forthcoming from the mark owners. In the circumstances, Ms Yaar Shoshani Caspi felt that Breville had presented sufficient evidence to conclude that the mark was not in use and she ruled that it was thus canceled.

Since Breville themselves claimed that Kambrook no longer existed, she did not award costs as there would not be anyone to collect these from.

COMMENTS

Kambrook seems to be in use in Australia and New Zealand. See http://www.kambrook.com.au/

This ruling explains the standards required to prove non-use. It may be compared with the Axxon ruling where the same adjudicator was (rightly) critical of a cancellation request filed by PCZL who did not use a private investigator but rather filed the affidavit of a trainee lawyer who was not qualified to determine use. There the mark was cancelled since the mark holder failed to respond.However as it turns out, the contested mark is actually in use, as I discovered with a basic Internet search


Follow

Get every new post delivered to your Inbox.

Join 290 other followers