Nespresso sues Espresso Club for using Clooney look-alike in advertisement

January 21, 2015

david siegal

Espresso Club aired an advertisement in December 2014 that uses a George Clooney look-alike actor called David Siegal. The actor leaves a shop selling coffee machines with a paper bag in hand.

Nespresso, who has an international campaign for their coffee capsules that features George Clooney sued to obtain a preliminary injunction against Espresso Club. The charges included well-known and egistered trademark infringement, unjust enrichment, encroachment, copyright infringement, passing off, interfering with fair trade and unreasonable behavior.

The judge, Magen Oltavia threw out the request, arguing that the chances of Nespresso eventually prevailing were slight. At worse, this was a strong hint and parody against the competitor with the intent of producing a more popular low brow competing product. There was neither copyright nor trademark infringement.

In the advertisement the graying actor wears a suit and sunglasses and makes purchases in a shop selling coffee machines, but during most of the advertisement, the words “The actor is not George Clooney” appear in the top left hand corner fo the screen.

Clooney is not a brand. Real people are not protected characters and are not copyright protected. None of Nespresso’s marks include a likeness to Clooney. The judge did not consider that the actor had even a resemblance to Clooney, a man in an white open necked shirt, suit and sunglasses would not necessarily be associated with Clooney and the words “the actor is not George Clooney” is sufficient to avoid any possibility of confusion. Clooney promotes different goods over time and the CEO of Nespresso in Israel concurred the brand is Nespresso and not Clooney.

The Judge accepted that the actor was intended to recall Clooney and was providing a broad hint parodying Nespresso’s campaign, but this was far from copyright infringement or trademark infringement. The defendant claimed to be parodying Nesspresso by offering a cheaper less elitist alternative where the machine is provided for free and one only buys the capsules. The advertising campaign was designed to promote a legitimate competing product.

The grounds of passing off and copyright infringement were also rejected. Judge Oltavia stressed that Clooney plays himself in the advertisement, not a character created by Nespresso and protectable under copyright.  Clooney would be unlikely to transfer rights in himself to Nespresso giving them lifetime +70 years rights to himself.

The advertisement was not based on a specific Nespresso advertisement. Using attractive looking people for product branding is standard practice in advertising and not the monopoly of Nespresso.

Nesspresso does not have rights in this case that override the right to free speech and creativity of Espresso Club.

Civil case: 451922-12-14 Nespresso vs. Espresso Club, before Judge Magen Oltavia, 19 Jan 2015 

COMMENTS

Selling machines cheaply or giving them away and then charging through the nose for consumerables such as ink or toner cartridges or coffee capsules is an established business model.

Courts do not necessarily enforce registered designs for the compatible cartridges as there is a retrofit clause that prevents machine manufacturers from forcing customers to purchase original replacement parts at any price. This is a matter of public policy. In general, Israel is pro-competition so this ruling is not surprising.

 


January 15, 2015

חלית

The Center for Actualizing Medical Rights LTD extensively use a radio advertisement that starts “חלית? נפצעת?” i.e. “You’ve become ill? You’ve been wounded?”. It then goes on to offer advice that is not legal advice and gives a phone number.

The Israel Bar is less than happy with this and similar organizations offering ‘non legal advice’.  That as may be, On 2 January 2102, the Center  filed Israel trademark no. 243620 for “You’ve become ill? You’ve been wounded?” in classes 36 and 45.

The trademark department refused to register the mark as lacking distinctiveness and as being descriptive of the services provided and thus not registerable under Section 11(10) of the trademark ordinance 1972.  The Center claimed that the mark had acquired distinctiveness through use and submitted affidavits from MS Gitit Shlomi, Head of Foreign Connections and from an expert. The trademark department remained unconvinced, however.  Representatives of the Center requested an oral hearing, submitted a further affidavit from Ms Shlomi and also requested that sections of their evidence remain confidential from third parties.

During the examination period, Zchuti (My Rights), a competing non-legal advice company that also advertises extensively on the radio, filed a statement to the effect that the desired mark was generic and that allowing one service provider to monopolize it would provide that party with an unfair advantage. They also submitted four examples of how they were also using the phrase. This letter was not forwarded to the applicants, but was shown to them at the hearing and they were allowed to respond in any way they desired.

Ms Jacqueline Bracha analyzed the case and concluded that there were  three legal   issues to address:

  1. the status of the third-party submission
  2. the request for confidentiality of applicants submissions
  3. whether the mark was registerable, particularly whether or not it had acquired distinctiveness.

She went on to analyze these considerations in turn.

The status of the third-party submission

Applicant considered Zchuti’s submission should be ignored as they are not a party in the trademark registration procedure and can choose to submit their objections to the mark being registered in an opposition proceedings. Furthermore, their submission was not submitted as an affidavit and should be ignored for that reason as well.

In her Ruling, Ms Bracha noted that unlike the Israel Patent Law 1967 which specifically allows third-party submissions prior to examination proceeding, the trademark ordinance is silent on the matter. To the extent that such submissions are relevant to the registration process, examiners may take the submitted material into account but should inform the applicant to give the applicant a chance to respond. Support for this position was based on Christopher Morcom, Ashley Roughton & James Graham, The Modern Law of Trade Marks 164 (1999) and Judge Zamir’s comments in 987/94 Euronet golden Lines (1992) vs. Minister of telecommunications P.D. 48(5) 412, 423. She therefore rejected the Applicant’s position in this regard. As the submission was a factual one, there was no obligation for it to be backed up by an affidavit either.

The Applicant requested that some of their evidence remain confidential as it relates to trade secrets. The confidentiality request relies on Circular 028/2014 which opens up trademark examination files to third parties.

Section 23 of the Trade Law allows the courts to maintain confidential trade secrets submitted in a legal case and to set rules for submitting trade-secrets as evidence. The courts may issue a non-publication order on trade-secrets if the maintaining of something as a trade-secret does not prevent justice from occurring. Judicial personnel such as patent examiners are included in the courts. In the case of 2376/13 Rami-Levi vs. Moshe Dahan the Supreme Court noted that trade-secret confidentiality was ad hoc by its nature.

Ms Bracha ruled that to the extent that data submitted is relied upon to show use of a mark and acquired distinctiveness, the public has a right to know the data. On the other hand, other business related data can and may be kept secret. The number of workers at the Center is not germane to the issue of registration of the mark, nor is the sum spent in advertising. It is sufficient to note that the mark has been used extensively over a period of years. As far as the ex partes registration procedure is concerned, the material could be kept confidential. However, should the mark be allowed and Zchuti or some other third party should file an opposition, the confidentiality request issue would have to be reassessed.

As to the registerability of the mark, both Ms Shlomi’s evidence and the independent expert testimony by Professor Katz show that the public identifies the slogan “You’ve become ill? You’ve been wounded?” with the Center for Actualizing Medical Rights LTD.

The mark is not descriptive. The phrase You’ve become ill? You’ve been wounded?”  does not relate to compensation from national or private insurance. Zchuti’s usage of the mark does not render it generic.  Ms B racha ruled that the mark may be registered as allowed and published for opposition purposes.

Israel trademark no. 243620 for “You’ve become ill? You’ve been wounded?” ex-partes hearing, Ms Bracha, 1 Dec 2014.


Hearsay in Affidavits

January 15, 2015

hearsay

The Karelia Tobacco Company Inc. owns Israel Trademark No. 103603. Dubak LTD opposed the mark.

Karelia requested that sections of an affidavit by a Mr Gleiberman that was submitted by Dubak should be deleted as being hearsay and beyond that directly known by the Gleiberman.

Ms Yaars Shoshani Caspi, an Adjuicator of IP at the Israel Patent Office ruled that without Mr Gleiberman being cross-examined it was too early to tell with any certainly what parts, if any, were hearsay and what was directly known to him.  She therefore refused to order sections deleted prior to the hearing.


Competing Marks

January 15, 2015

sweeney todd

Razer (Asia Pacific) PTE LTD. is a Singapore based company that has filed a Madrid International trademark application no. 1097804, Israel TM No. 242735 for “Razer” in classes 9, 18 25 and 28

The mark covers Computers; laptop computers; notebook computers; handheld computers; personal digital assistants; computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; computer displays; computer monitors; computer hardware; computer sound cards; computer peripherals; computer and video game controllers; computer mice; computer keyboards; computer keypads; computer graphics tablets; computer pens; computer joysticks; computer trackballs; flight yokes for computer and video games; steering wheels for computer and video games; accelerator pedals and brake pedals for computer and video games; guns for computer and video games; motion sensors for computer and video games; audio equipment and apparatus; earphones; headphones; microphones; headsets; loudspeakers; apparatus for cable management for the aforementioned goods; computer and video games; computer mice mats; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 9; Bags; messenger bags; sport bags; travel bags; backpacks; knapsacks in class 18; Clothing; polo shirts; T-shirts; sweatshirts; headgear; caps; sweatbands in class 25, and Games and playthings; electronic games and playthings other than those adapted for use with television receivers; video game apparatus other than those adapted for use with television receivers; handheld video game apparatus other than those adapted for use with television receivers; parts and spare parts of the aforementioned goods as far as included in this class; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 28. The mark was filed on 28 August 2011.

Before this could be examined, on 29 November 2011, Razor USA LLC filed Israel trademark no. 242450 for Razr in class 9 covering Computers, tablet computers, and related accessories, namely, computer docking stations, mounts, stands holders and cradles for holding and charging computers, carrying cases for computers, protective covers for computers, protective or decorative skins, screen protectors, namely, fitted or plastic films known as skins for covering and protecting computers, input and navigation devices, namely, keyboards, mouse, track balls, and stylus for use with computers, computer memory, namely hard drives, portable and removable memory for use with computers, networking equipment, namely modems, routers and gateways for use with computers, batteries, power adaptors, computer cables, cable connectors, remote controls, headsets, speakers, sound systems for use with computers, and microphones and web cameras for use with computers and computer software; telephones; corded and cordless telephones for wireline service (PTT (post, telegraph and telephone) POTS or PSTN service); mobile phones, smartphones, and accessories therefore, namely battery chargers and power adaptors; all included in class 9.                        .

Because of the similarities between the copending marks a competing marks proceedings was instituted.

In such proceedings, the first-to-file is only one consideration. The extent of use of the mark and indications of inequitable behaviour are also considered.

After evidence was submitted and before a hearing was held, Razer (Asia Pacific) PTE LTD. submitted additional evidence showing sales during the years 2006 to 2010, and also Google searches for the term RAZER. The additional evidence was submitted under Section 41 of the Trademark Ordinance and under Circular M.O. 55. Razer claimed that the peculiar nature of competing mark procedures and the importance of the supplementary evidence justified its submission. They also argued that the affidavits of both parties related to these statistics, so their submission was by way of clarification rather than widening the range of issues under debate. Razor USA LLC did not challenge the relevance of this supplementary material, but did consider it should be inadmissible at this stage of the proceedings.

The Commissioner noted that the competing marks procedure is adversarial by nature, but there are no clear binding procedures. He considered that to not allow additional evidence to be submitted which could help clarify which side should prevail, it would be necessary to show that doing so would be particularly burdensome or could create an unfair advantage. Section 41 of the trademark ordinance authorized the Commissioner to request additional information at his discretion. Whilst the general civil procedure may be applied, this should only be done to the extent that it doesn’t interfere with a fair result being reached.

The sales information is considered germane to the issue of which side should prevail. Razer had related to sales and provided details of sales in 2011 and 2013, and the additional evidence simply details sales at an earlier date. The Google search results are less fundamental and require more explanation as to their relevance. Although these may indicate the respective usage of the parties, there was no explanation why they weren’t submitted earlier. Consequently, the sales information was accepted as additional evidence but the Google search data was not. Razor USA was provided a ten-day window to submit their sales data and costs of 8000 Shekels were awarded to Razor US for having to fight this additional submission.

Decision re Competing Israel Trademarks No. 242735 and 242450, by Commissioner Asa Kling, 14 December 2015

 

 

 

 


Trademark Trolling? Proctor & Gamble’s Actipearls Mark Opposed

January 12, 2015

actipearls

The Proctor & Gamble Company submitted Israel trademark application No. 250720 “Actipearls”. The mark covers feminine hygiene and menstruation products, including sanitary napkins and tampons, panty-liners, internal absorbents and pads for feminine protection; all goods included in class 5. They are used as a deodorizing additive to Always products.

Super Medic (Medic Lite) LTD who apparently use the mark for toothpaste, opposed the mark. Proctor & Gamble have asked that Super Medic post a bond of 100,000 Shekels to cover costs should they lose their opposition.

The request for this sum was backed by the fact that in another proceeding, an expert witness for the defendant testified that Super Medic (Medic Lite) LTD is a straw company held for fighting legal battles only. The request related to an earlier decision concerning 243678 and was supported by an affidavit from a Ms Ben Naftali, a pre-article clerk (I suppose this is more interesting than photocopying and collating documents).

Super Medic (Medic Lite) LTD counter claimed that the timing of the bond request, which is after the filing of evidence by the opposer is indicative of inequitable behavior. The affidavit has been held by Applicants for over a year and only now is it being pulled out. Super Medic (Medic Lite) LTD also asserted that the request was not properly supported by an opinion regarding the likelihood of success, since the pre-article clerk was unqualified to opine on the subject. Super Medic consider that their chances of prevailing in this instance are high and therefore the request for bond should be rejected. Super Medic further noted that they had only recently deposited 400,000 NIS in the court’s coffers in another case where they were suing for 42,000,000 NIS. In that case they claimed that there was a ruling of over 8 million shekels in their favour. They further provided an accountant statement that their annual tax returns were regularly filed and taxes were paid, and a bank statement that they settled their debts. Finally, they filed an affidavit of the opposer to support their claim of liquidity.

Applicants countered that Super Medic has not yet lost a case and the financial status was based on an assumption of winning, and that anyway, the likelihood of success was only of relevance in the proportionality of the bond if it were to be considered excessive.

Ruling

The starting point is that limited companies initiating legal proceedings are required (if requested) to place a bond to cover expenses should they fail, see Section 353a of the company Law 199, and Supreme Appeals 10376/07 L.N. Engineering vs. Bank HaPoalim LTD, and 857/11 Beer Tuvia Municipality vs. Noris Development and Haulage LTD.

For a company to be exempt having to post a bond, the onus is on them to show financial resources or other reasons that might justify not requiring a bond. In this instance, Super Medic claims that such other reasons exist, i.e. a very high likelihood of success, proven liquidity and inequitable behaviour on the part of the Applicant.

Proctor & Gamble consider that Super Medic’s mark is not sufficiently close for there to be a case to answer to. Super Medic have submitted their evidence, but Proctor & Gamble are yet to do so. In the circumstances, Deputy Commissioner Ms Bracha considered it too early to ascertain the likelihood of success.

Ms Bracha rejected the argument that Super Medic are suffering loses from Proctor & Gamble’s use of the mark and therefore should not have to post a bond, noting that in another case Super Medic bankrupted an opposer.

As to the 8 million expected in the other case, Ms Bracha noted that there was no such ruling yet. Furthermore, she accepted P&G’s contention that the 400,000 Shekels bond in that case may have been a loan and does not indicate that Super Medic has resources. Documents provided by Super Medic did show other financial activity but did not indicate liquidity of a solid financial footing. Furthermore, their own witness had, in another case, indicated a lack of seizable assets.

The arguments of inequitable behaviour were also rejected.

Ms Bracha concluded that requiring a bond was reasonable in the circumstances as there was insufficient reason to deviate from the norm. Noting, however, that such bonds have to be reasonable, and in view of the fact that in a different pending case she had ruled that a bond of 20,000 Shekels was appropriate she ordered Super Medic to deposit a bond of 15000 Shekels to cover legal costs, if ruled against them within 30 days a s a prerequisite of continuing the proceeding. The Applicant will have two months to file their evidence from the payment of the bond.

Interim ruling on posting a bond in opposition to TM 250720 to Proctor & Gamble, opposer Super Medic, Ms Jacqueline Bracha, 21 December 2014.

Comment

Pearls are created by shellfish such as oysters to isolate and coat over natural irritants. It seems that Active Pearls is a trademark used by Fa’s Deo Stick Deodorant which is owned by Henkel. It is used by a company called Physioderm as a brand for high-performance skin cleanser with dirt-binding castor-oil wax pearls for the removal of heavy dirt, e.g. oil, soot, metallic dust and graphite. Dr Tim sells active pearls as an additive to aquariums.

There seem to be many women who object to the actipearls marketing exercise of Proctor & Gamble, and consider it misogynistic. They find the concept of artificially perfumed sanitary pads offensive and likely to increase risk of infection or late detection of same. One example is here .

Getting back on subject, if Super Medic is indeed a legal entity without assets, posting a bond seems reasonable. In general, there has to be some consequences of losing law suits and against filing frivolous law suits. If the US courts adopted this position, much of the problem of trolling would disappear.

On the other hand, the story of Naboth’s Vineyard, and indeed, that of Bat Sheva amply demonstrate the problem of power players riding roughshod over smaller parties. If a company like P&G should decide to use a trademark registered to a small company or in owned by the small company by virtue of the Common Law, the smaller parties should have access to the courts and shouldn’t have unnecessary barriers put in their way, such as having to pay inflated bonds.


Russian Standard Revisited

January 12, 2015

200px-russian_standard_vodka-1

Roust Incorporated and Russian Standard Intellectual Property Holding A.G. attempted to file the English term ‘Russian Standard’ and the equivalent Russian term ‘Русский Стандарт’ as registered trademarks in seven categories.

In September 2013, Ms Jacqueline Bracha refused to allow the marks to be registered. See here. Application numbers  227464 and  227465 in class 33 for alcoholic drinks were not allowed to the existence of identical marks to the second applicant only. The other marks were rejected as lacking minimal distinctiveness.

Applicants appealed to the Tel Aviv District Court in 13652-10-13. The District Court addressed two issues. Firstly, could registration of a mark to one applicant in and of itself prevent registration of an identical mark to that applicant together with a second party? Secondly, was Russian Standard a mark able to indicate a specific supplier, or was it simply generic? The Court suggested that a third legal entity be created and that the registered and the new marks be assigned to that entity. The applicants set up this legal entity, assigned the pending and the issued marks and the pending cases were referred back to the patent office to rule on their merits.

The Deputy Commissioner surmised that the Court had apparently considered that this would solve the double registration issue and the patent office could then examine the marks on their merit.  Ms Bracha noted that although the assignment had yet to be registered so the present ruling is based on the assignment being registered. She went on to rule that the marks in Class 33 (alcoholic beverages) lacked distinctiveness. However, as to the other classes, Section 16 allows marks having minimal distinctiveness to be registered based on corresponding foreign registrations. Once the marks were assigned to a common party, section 16 could thus be invoked. What was important was that customers could identify the source of the goods, not that the mark owner.

The Applicant claimed that the Court had intentionally not related to the double registration issue implicitly out of respect to the patent office decision, and in the circumstances, without the court forbidding it, the marks could be registered. Ms Bracha considered that the marks were returned to her to reconsider. She was willing to allow registration of the marks in other classes based on the foreign registration, but as far as class 33 was concerned, she upheld her decision that Russian standard is laudatory and the marks cannot be registered.


Karelia Royal, Deleting Parts of the Evidence

January 5, 2015

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

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

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

The request was rejected but no costs were awarded.


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