Alpha Dent Implants

April 26, 2015

Alpha Dent Implants        caps

Background

Boris Simnovsky attempted to file Israel Trademark Application Number 243663 for “Alpha Dent Implants”.

Alpha Bio-Tech LTD successfully opposed the registration, presumably on grounds of Alpha being laudatory, Dent Implants being descriptive, and the combined mark being  providing a likelihood of confusion with Alpha Biotech as to the origin of the goods.

The Opposer requested costs of $5694 so The Commissioner, Asa Kling, related to the items in the list for costs in dollars as well, whilst noting his disapproval that the costs were not submitted in Shekels which is the currency that they should be billed and settled in Israel.

Alpha Bio-Tech LTD opposed the mark On 25 December 2013, the sides filed their statements and counter-statements and on 9 July 2014, after the period for filing evidence had passed, The Applicant, Boris Simnovsky, requested to withdraw the mark without a decision on costs, as he had “lost special interest in the Israel market”, and was no longer interested in the mark.

On 14 July 2014, Commissioner Kling ordered the mark withdrawn and the proceedings closed, but gave both sides the opportunity to file for costs, and on 14 September 2014, Alpha Bio-Tech LTD applied for costs.

 

Ruling

A party that gives up during contentious proceedings such as an opposition is considered as losing, see Israel TM 171160 “Pine” in KT&G Corporation vs. Dunhill Tobacco of London LTD, and Israel TM 156955 Avon Products vs. Dean L. Rhoades. The Arbitrator of TM proceedings has the authority to rule costs from Section 69 of the Trademark Ordinance 1972. When ruling on actual costs, the adjudicator is required to determine if the costs claimed are reasonable, proportional and were incurred by necessity, See Basgatz 891/05 Tnuva vs. Input Authority P.D. 60(1) p. 600-615, Nevo 30 June 2005. The relevant considerations are the legal and factual complexity of the file, the amount of work done, especially in filings to the court, the behavior of the parties with respect to each other and to the patent office, equitable behaviour, etc.

As ruled in Tnuva Section 25, the parties must detail the basis of charges and the work done, and whether these were actually collected, and then the onus moves to the loser to explain why such costs should not be paid.

The Opposer’s costs of $5694 consisted of $1298 for preparing and filing the statement of opposition including official fees, $2926 for preparing evidence and $1500 for preparing the petition of costs.

The first two actions were supported by an affidavit and receipts but the charges were the charges were global and not itemized. There was no support for the final charge, and there was not even a framework agreement with the client to do this work.

The Opposer claimed that the applicant did not submit papers in a proper manner which resulted in additional work being incurred. Furthermore, the applicant requested that the opposer withdraw the last submission and the applicant would pay $4000, but this attempt to reduce expenses was unsuccessful.

The Commissioner accepted the Applicant’s allegations that the request for costs was laconic, but did not consider that the Opposer was therefore not entitled to reasonable costs and therefore decided to rule by thumb estimation based on the actual submissions.

After relating to all the relevant considerations (but at least as laconically as the Opposer) the Commissioner ruled total costs of 18000 Shekels ($4500).

Ruling of costs awarded to Alpha Bio-Tech LTD for successfully opposing Israel Trademark 243663 “Alpha Dent Implants” to Boris Simnovsky, costs awarded by Asa Kling 15 March 2015.


The German Federal Supreme Court Refuses Parody Trademark

April 21, 2015

Pudel

In the past, I have criticized an Israel Patent Office decision relating to Tigris, to treat all big cats the same – see here.

Now, the IPKAT has reported that the German German Federal Supreme Court (Bundesgerichtshof) has refused to allow a parody of Puma’s famous mark shown below.

PUMA

I note that the USPTO had the good sense to allow South Butt which is a parody of North Face, and think that parodies are fun and where there is o likelihood of confusion, should be allowed on grounds of free speech. It seems that the German judiciary has a less well developed sense of humour.


So Israel took his journey with all that he had, and came to Beersheba (Genesis 46)

April 14, 2015

park Carusso

Yesterday I enjoyed a pleasant trip down South to attend the WIPO Roving Seminar in Beer Sheva. The drive was pleasant. Negev is very verdant and the ornithology was good, with a lot of storks and black kites and the odd short-toed eagle in evidence. The event started at 9:30, and, with considerably less congestion getting into Beer Sheva than into Tel Aviv, I arrived at 9:15 am at the Carusso Science Park.

Moshe Lemberg, the Senior Program Officer at WIPO who organized the event introduced himself to me and hoped that I would blog about the refreshments. I thought this was a little surprising as the rogelach and burekas were fairly standard fayre but did make a welcome breakfast. Unfortunately however, the 3 litre hot water urn was inadequate to the task and I was unable to make myself a coffee. That had an adverse affect on my concentration during the first part of the program, and I noted that after Dr Daniel Ben Oliel presented the prize for Excelling Academic thesis in various fields of IP [sic] there were three or four competitors who presented brief talks on their papers for the Israel Patent Office Competition, but have no idea what they talked about. The chairs were too comfortable, I’d left home at 7 am and I was too far away from the screen. My neighbor kept nudging me. I suspect I was snoring a little. I went to the bathroom, washed my face and had a coffee (botz, using water from the now refilled urn), and went back in sitting closer to the front. This was a great improvement and I found the sessions interesting, stimulating and enjoyable.

Those wanting a review of the early sessions are respectfully referred to the IPKAT where the Doyen of IP Bloggers, Professor Jeremy Phillips has some insightful and relevant comments. See here.  For inciteful and irrelevant ones, read on!

Professor Phillips notes that there were 98 registrants. He was sitting in the back corner and was better situated to count heads than I was. I do try to keep tally on these events however, and did a head count on three occasions throughout the day. I noted 60 in the audience. With 5 rovers from WIPO and a large contingent from the patent office, this was less than impressive. I hope that the Haifa event on Tuesday is better attended, and as the program is largely the same, can highly recommend it.

PCT

PC Tea

PC Tea

Mr Matthew Bryan, the director of the PCT Legal Division gave a brief review of the PCT system and recent developments, and the amicable and helpful Dr Michael Bart who heads up the Israel Receiving Office spke about recent changes there. The local Beer Sheva (actually Omer – but who’se counting?) Mukhtar Patent Attorney, Dr Kfir Luzzatto joined Matthew and Michael, and gave some thoughts on the PCT, how Israel joining the system had affected the profession, and how he views International Search Reports from the Israel Patent Office.

Trademarks and Designs

Ms Debbie Roenning, Director of the Legal Division Madrid Register, Brands and Designs Section (BDS) spoke on Madrid system for trademark registration and then on the Hague system for Design Registration.  As well as showing which countries had signed up, she showed which countries were in the process of signing up which was useful. She also had some tips regarding tailoring goods for different jurisdictions, translating the list of goods into Hebrew, adding countries to an existing application and varying classes per country that were very informative.

Ms Anat Levi Sofer spoke briefly about trademarks and Madrid from the perspective of the Israel Patent Office and considered Israel joining Madrid a great success. Ms Ronit Bazik Sofer, head of trademarks at Reinhold Cohn represented the private sector and noted that she had been apprehensive of Israel joining Madrid and indeed, there had been a drop off in work since Israel joined, but with increased prosecution, things had evened out.

Knowing the official figures regarding trademarks filed directly into Israel and via Madrid, and Madrid marks originating in Israel, I think that both Ms Anat Levi Sofer and Ms Ronit Bazik Sofer were being less than objective. (Reinhold Cohn has too large a market segment for their practice not to follow the official statistics). Israel is very good at creating technology, but is less successful at launching international brands. Madrid has not been widely used by Israeli companies. It is possible that with additional prosecution resulting from more trademark applications designating Israel, workers in the trademark office and in private practice feel that they are busy. However, without the lucrative filing and with renewals handled centrally or by bucket shops, the revenues generated are lower that revenues once were. This is true of both patent office revenue and income to IP firms.

There was an opportunity to ask questions. In her first slide, Ms Roenning had shown various recent Israel trademarks filed by Israelis. The slide also included WIPO’s logo. It was tempting to ask why they had chosen what look’s like a roll of toilet paper, but I decided that it would unnecessarily cheapen the event.

Wipe-o

WIPE-O !

WIPO’s Arbitration and Mediation Center

Mr Matthew Bryan gave a presentation regarding WIPO’s arbitration and mediation services.  It was certainly worthwhile reminding those present that there are alternative methods of dispute resolution, and that going to court is not the only option.

Databases

Mr. Yoshiyuki Takagi spoke about WIPO’s databases such as WIPO Green and WIPO Re:Search. This brought some useful online tools to the attention of participants.

Lunch

ravioli

We were pleasantly surprised that WIPO / Patent Office had laid on a sumptuous buffet of ravioli, pizza, macaroni, cheese rolls, garlic bread, quiches, cheeses and salads. Had this been a couple of days after Shavuot (Pentacost) this may have seemed more of the same, but after a week of Pesach, noone passed over the opportunity to dine on hametz.

Copyright 

real life

Mr. Paolo Lanteri, the Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO spoke about the gaming industry. It seems that I was far from the only participant who wasn’t a gamer. I put this down to a combination of the audience being middle aged nerds.

It was fascinating to learn that the gaming industry is more significant financially than feature films and music combined. Happily people still read.

It seems that protecting IP in games is a complicated issue. The talk was very informative.

Questions were solicited and I made a case for moving over to registration of copyright and shorter periods of protection since I consider the system as broken. Jeremy Phillips took issue with my position and argued that most people in practice can do most of what they want and that the system does give redress for abuses. We continued arguing in the car back to Jerusalem.

Closing session

men in suits

The WIPO representatives and the Commissioner got on stage together as a panel. It was reassuring with INTA coming up, to note that my charcoal suit is apparently in fashion for IP events.

Dr Luzzatto took the opportunity to ask about Arab countries boycotting Israel, giving the example of Jordan that, despite a peace agreement, in practice the legal profession there won’t represent Israelis.

Mr Matthew Bryan first dodged the question by noting that Jordan was not a signatory to the PCT. As Kfir would not let things go at that, he rather sensibly pointed out that WIPO strongly condemns Arab countries discriminating against Israel, and writes strongly worded letters noting that such countries are not living up to their international obligations. He did, however, point out WIPO does not have enforcement police and their influence is very limited.

The Commissioner noted that Israel could theoretically refuse to allow applications originating from countries that don’t accept Israeli trademark or patent applications, but that the Israel Patent Office decided not to adopt this policy.

Retired US patent attorney Bruce Lilling noted that Taiwan, an important industrial nation was kicked out of the PCT mechanism at China’s request.

Recommendation

For those who missed the Beer Sheva event yesterday, I recommend trying to attend the largely parallel but slightly shorter program in Haifa tomorrow. See here.

Gratuitous Political Rambling Digression (its my blog so I can do what I like)

I note that Ms Debbie Roenning (who also wore a trouser suit, but not a tie) is the head of the Brands and Designs Section which shares the unfortunate acronym of BDS, the ‘Boycott, Divestment and Sanctions’ Movement, the allegedly pro Palestinian, but actually notoriously hypocritical and anti-Semitic international movement.

On the way to the conference, I noted Sodastream’s new factory in Beer Sheva. They moved from the Industrial Area by Maale Adumim (a satellite town of Jerusalem on the road towards Jericho) in response to vicious propaganda abroad. In the Maale Adumim factory, Sodastream provided jobs to West Bank Arabs and was a model of co-existence. Forced to relocate, the primary sufferers are the West Bank Arabs.
WIPO is one of the least anti-Israel organs of the UN. I think it might have been very worthwhile for them to have invited Jordanian, Palestinian and Egyptian IP professionals, both government and private, to the event. I am on good terms with professional colleagues in all these jurisdictions, and with others in Lebanon, Saudi Arabia and elsewhere, who read this blog, and chat amicably with me at INTA, AIPPI and other international conferences. Peace is made by trade.

Of course, Israel is not the only country to have been boycotted. To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the “U.S. Sanctions Program”).  31 C.F.R. § 501 et seq.  The Office of Foreign Asset Control (“OFAC”) at the Department of the Treasury manages the U.S. Sanctions Program.  The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations.  At various times, the US has forbidden their nationals to register trademarks in Cuba and has also failed to uphold Cuban trademarks. Whether or not human rights are more mistreated by Castro’s regime in Cuba or by the US in the Guantanamo Bay prison camp is not clear.


Israel Patent Office Circular on 3D Trademarks

March 18, 2015

The Israel Patent Law 1967 is unequivocal in that three dimensional trademarks are registerable.

In the past, attempts to register the shape of objects and containers as trademarks was frowned upon by the Israel Patent and Trademark Office. Then, in 11487/03 August Storck KG vs. Alfa Intuit Food Products LTD, the Supreme Court ruled that the shape of the distinctive Toffiffee toffee and chocolate coated hazelnut snack could be registered as a design.

Since then, there have been a number of rulings (for and against) concerning trademark applications for  distinctive packaging, particularly for liquor and perfume bottles, and for various other objects such as Rubik’s cube.

The Israel Patent Office has now published a Commissioner’s Circular (no 032/2015) that attempts to provide clarity to this issue.

Essentially, three dimensional packaging or product shape should be protected with design registrations.

Consequently, inherent distinctiveness is insufficient grounds for registration.  However:

  1. if the three dimensional image serves as a trademark,
  2. is not significantly aesthetic or functional, and,
  3. through use, has acquired distinctiveness, it may be registered.

Since trademark registration does not provide protection to different elements of a composite mark, if a three dimensional representation includes the company’s name prominently, this may be used to enable registration without consideration of the three requirements above.

If allowable, the fact that the image is three dimensional will be stated.

The Circular comes into immediate effect and cancels previous circular MN 61, from 29 April 2008.

COMMENT

As guidelines, these are very sensible. However, one imagines there will be lots of arguments as to whether in specific cases, a three dimensional image serves as a trademark or not. Whether something is ‘significantly aesthetic or functional’ leaves a lot of grey areas, and the concept of acquired distinctiveness is also a difficult issue to quantify.

Substantially functional marks are related to in a decision concerning rifle sights. In a controversial ruling, the Rubik Cube was registered. In another ruling that I was less than happy with, the Crocs beach clog was registered.

Many rulings relate to bottle designs. For example the Kremlyovskaya vodka bottleEnergy Brands, Contreau, Fanta and Absolut Vodka. Also see here. Rulings for other containers include one for a cigarette box.

I suspect that we haven’t heard the last word on this subject.


B144.co.il vs New 144 on Competing Marks, distinctiveness of a number and cybersquatting

March 12, 2015

Directory Inquiries for Bezeq, Israel’s historic telephone service was reached by dialing 144. Since the mobile phone and fiber-optic cable revolution, there are now lots of competing cellular and satellite phone providers and cable entertainment networks also provide phone services. Each supplier has its own directory inquiries, and dedicated websites.

On 3 April 2012, Mr Yossi Lotem filed a trademark for New144, for advertising, business administration business services, office services and shops in Class 35.

On 22 July 2012, Bezeq Israel Telecommunications LTD submitted a number of trademarks for stylized logos for b144.co.il, which is the Internet address of their online telephone directory website. The marks were submitted for Computer applications, electronic indexes, Mobile phone applications, Internet Applications, digital databases, directories and different services in Class 9, for managing databases, publicity, providing business services, business consultancy, office services and business databases in class 35, for telecommunications, communications, providing communication services,

The various logos included different slogans “all businesses in one website”, “helps you to chose”, and “All business and all people in one website”

b144.co.il   b144.co.il1  b144.co.il2

The patent office considered the marks as confusingly similar and as the parties were unable to come to an understanding, a competing marks proceeding was initiated.

In addition to competing marks, this ruling relates to procedural issues, fighting trademark battles without legal representation, inequitable behavior and cybersquatting. It also touches on whether numbers alone are registerable.

Lotem submitted his affidavit requesting examination on the merits. Bezeq submitted a statement from their Head of Information Marketing and Databases. It transpired that both parties have been providing internet publicity services, creating mini-websites for companies together with contact details.

Originally Lotem was represented, but his counsel requested to be released from his obligations with client’s consent, and so Lotem was cross-examined without representation.

The parties filed summaries and responses to the summary. Before ruling on the main competing marks issue, the Deputy Commissioner, Ms Jacqueline Bracha addressed a request by Bezeq for various parts of Lotem’s summary to be struck from the record as being an inadmissible widening of issues under discussion.

The admissibility of evidence and new claims in summations 

Bezeq claimed that the material related to new issues raised without submitting evidence and so should be considered invalid. Some was hearsay, and some was irrelevant. Lotem claimed that the material was with his counsel and he only learned about them late in the proceedings, but the material related directly to whether Bezeq had rights in 144. The legal issue was essentially whether in a competing marks ruling, evidence regarding the cancellation of a mark could be submitted.

Lotem did not accept that this was new material that went beyond issues discussed in his statement and that of Bezeq’s witness. Bezeq argued that they could not relate to the issues as they weren’t submitted at the proper time and in the proper manner. The information that Lotem wished to submit related to regulatory rulings concerning Bezeq’s activities that were designed to limit their monopoly and Lotem further noted that attempts by Bezeq to obtain a trademark for the number 144 alone were rejected. Lotem’s case wasn’t helped by him submitting statements headed as “affidavit” and ‘legalized’ by his nephew rather than by a lawyer.

In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that the alleged inequitable behavior of Bezeq in using the requested trademark was not raised as an issue at the proper time and evidence was submitted after the evidence stage was completed. Furthermore, the additional material was not submitted by requesting late submission with appropriate justification, but was slipped into the conclusions without prior approval from the patent office.

Lotem’s excuse was that he was not represented and was not familiar with procedural issues. Furthermore, the procedural laws for civil procedures 1984 are not actually binding on the patent office. Ms Bracha acknowledged that the laws regarding widening the legal issues at late stages of a proceeding were court procedures, but ruled that they were generally applicable to patent office proceedings with modifications as necessary. Support was given (or at least reference was made to earlier decisions) from 147565 Orbotech vs. Camtek and from TM 158670 ruling concerning deletion of evidence re On line Marketing LTD. vs. Yoval Gorali et al.

In competing marks proceedings, traditionally the parties submit their evidence but do not submit statements of case. In a Circular from commissioner 013/2012 in addition to presenting evidence, the parties are cross-examined and may request permission to file contrary evidence. In this case such a request was not made.

MS Bracha noted that competing marks proceedings are adversarial and so each side should have an opportunity to present evidence and to challenge each other’s evidence. A corollary of this is that one cannot allow one side to submit new evidence late in the proceedings if the other side disagrees. Consequently, she ruled that Lotem cannot submit this new evidence at this stage. Sections 18-32, 24-37 of Lotem’s summary and appendices 5, 6, 7 and 9 are struck from the record as are sections 8, 10 and12 and appendices 1-5 of the response Lotem made to Bezeq’s summary.

Which mark should be preferred? 

Substantively, in competing marks proceedings the issues include who filed first, but more importantly, the issue of extent of use and and equitable behavior is considered.

Lotem filed 3 1/2 months before Bezeq but this is considered insignificant. Indeed, Bezeq has other marks for “b144″ and for “b144.co.il all businesses” that predated Lotem’s filings. Lotem showed that he’s filed a trademark for new144.co.il in 2010, and, between 2019 and 2014 had invested 200,000 Shekels in the project.  By 2014 he’d accumulated 40 clients and was making up to 20000 Shekels a month.

Bezeq started using the b144 and “b144.co.il all people. All professions” marks in question in 2010 and had some use of b144 since 2007 on Bezeq’s website.  Over the period from January 2008to 2013 Bezeq’ website was receiving 203 million hits a month with significant advertising revenue. Furthermore, Bezeq’s marks include b144 as a dominant element.

Ms Bracha ruled that the issue of whether 144 is a well known mark or indeed registerable is irrelevant and concluded that Berzeq had adequately shown more significant usage than Lotem.

As to equitable behavior, Ms Bracha accepted that this was critical in this instance, but did not see how Bezeq, with usage of b144 from 2007 could be accused of aping Lotem.

Lotem had used the website Israeli-business but decided that it was too long and then purchased new 144 after seeking professional advice and learning that the word new was desirable. Lotem originally denied being familiar with Bezeq’s website before filing his domain request in 2009 and only discovered it when Israeli-business appeared on Bezeq’s website. He argued that he did not request the website and that it was opened automatically when he purchased a business line.  However, Bezeq showed that the entry on Bezeq’s directory included a description of his services that Lotem himself had written and then he admitted having some prior knowledge of b144.co.il and of b144.

Additionally, Lotem was using the slogan “all businesses all professions” in a manner that was also more than reminiscent of Bezeq’s website. Bezeeq claimed that this was hardly coincidental. Lotem countered that unlike Bezeq he was not providing personal contact data for individuals but only business data and that the slogan “all businesses all professions” and variations thereof were widely used by other information providers and this was descriptive or his services, and there were only so many ways of describing such services.

Lotem argued that he wanted to use the word “new” and 144 was chosen as it is easily remembered. When asked what the number signified, he responded that it was an integer between 143 and 145.

The Deputy Commissioner accepted that this was a random number between 143 and 145 but noted that Lotem referred to his mark as new one four four and not as new one-hundred-and-forty-four, indicating that the subconscious motivation behind the random selection appeared to be the dial up number of Bezeq, since phone numbers are usually remembered as strings of single digits. Consequently the Deputy Comissioner ruled that in addition to scale of use, in terms of equitable behaviour Bezeq had a stronger case.

Lotem suggested coexistence under Section 30. MS Bracha ruled that coexistence in the same class required equitable behavior of both parties and was not convinced that Lotem had behaved equitably. Furthermore, the differences between clientele were not real differences. Both parties were providing business card type mini-websites to clients which was the same service. Consequently, she ruled that coexistence was inappropriate. Lotem mark was refused and Bezeq’s marks were allowed to continue for examination.

Lotem was ordered to pay 2000 Shekels in legal fees and 12000 Shekels in costs to Bezeq.

COMMENTS

This decision is more than reasonable. Since Bezeq’s monopoly was destroyed other parties can provide telephony services and Lotem can certainly provide a business directory and min-websites. The issue here is one of the choice of name. Lotem is a cybersquatter.

Numbers per se. are not considered distinctive and cannot be registered as trademarks. Intel called their fifth generation processors Pentium since despite the success of 286, 286 an 486 series PCs that revolutionized the personal computer industry, they did not have rights to the number.

In June 1994 Brian Lara scored 501 runs for Warwickshire against Durham setting a new world cricketing record. The clothing company that Lara was contracted to could have celebrated by issuing a celebratory 501 jeans. They didn’t as Levi-Strauss’ 501 design is so well known.

One is generally not advised to fight companies such as Bezeq without legal representation. Lotem’s arguments for the slogan were reasonable. Arguing that 144 was selected randomly from the numbers between 143 and 145 was not such a good idea.

Bezeq should approach ICANN to have the new144 website taken down. One cannot claim distinctiveness for adding the word new.


GHI – Can a mark be cancelled for non-use if the non-use was the result of opposition proceedings?

March 11, 2015
Gemstones...

Gemstones…

Sections 39 of the Israel Trademark Ordinance allows trademarks to be opposed for various grounds. Section 41 of the Israel Trademark Ordinance legislates that trademarks may be cancelled due to lack of use. This decision relates to the issue of whether a mark that is not in use allegedly due to an ongoing opposition to its registration can be cancelled as a result of the lack of use

Gemology Headquarters International LLC registered Israel trademarks 187385 and 187386 for the letters GHI in December 2007. The marks cover gemological services such as identification, authentication and ranking of diamonds, precious stones and for providing certification of precious metals, diamonds, gemstones and pearls in classes 42 and 16.

Under Section 41 of the Trademark Regulations, in December 2011 the Gemology Institute of America Inc. filed cancellation proceedings alleging that the marks weren’t in use.

The cancellation proceeding was filed whilst the same parties were fighting an ongoing opposition proceeding against the marks under Section 39 that claimed unfair competition and that that marks were not-registerable. That proceeding was combined with another opposition relating to stylized trademark numbers 200701 and 200702 for GHI. Those oppositions were eventually rejected and the marks were considered registerable. However, before the ruling, the Opposer filed to cancel the marks on grounds of lack of use, arguing that they could not initiate cancellation proceedings earlier as the minimum period of three years of lack of use hadn’t occurred when the mark was opposition proceedings was filed.

Evidence for and against the alleged lack of use included statements by the management of the two companies and also an affidavit by a private detective.

Section 41 states:

[a] Without prejudice to the generality of the provision of sections 38 to 40, application for the cancellation of the Registration of a trade markregarding some or all of the goods or classes of goods in respect of which a trade mark is registered (hereinafter – goods regarding which the cancellation is requested) may be made by any person interested on the ground that there was no bona fide intention to use the trade mark in connection with the goods for which it is registered in connection with the goods regarding which there is a request to cancel the registration and that there has in fact been no bona fide use of the trade mark in connection with those goods in connection with the goods regarding which there is a request to cancel the registration, or that there had not been any such use during the three years preceding the application for cancellation. 

[b] The provisions of subsection (a) shall not apply where it is proved that the non-use is due to special circumstances in the trade and not to any intention not to use, or to abandon, the mark in respect of the said goods. 

[c] For the purpose of this section, there shall be deemed not to have been bona fide use of the trade mark in the event of any of the following: (1) use of the trade mark in Israel in advertising only whether in the local press or in foreign newspapers reaching Israel unless there are special circumstances which in the opinion of the Court or the Register justify the non-use of the mark on goods manufactured or sold in Israel. (2) cancellation of an authorisation to use the mark given to a manufacturer in Israel under section 50 unless the authorisation is cancelled following an infringement of conditions or because the person who gave the authorisation intends himself to manufacture the goods for which the mark is to be used or to grant the authorisation to another manufacturer in Israel. 

[d] Application for cancellation may be made in the prescribed manner either to the Supreme Court or, at the option of the applicant, may be made in the first instance to the Registrar. 

[e] The Registrar may at any stage of the proceedings refer the application to the Supreme Court, or he may, after hearing the parties, determine the question between them subject to appeal to the Supreme Court.

[f] in this section, “use” of a trade mark shall include [1] use of a registered trade mark by its proprietor or by an authorized person under section 50 in a manner that differs from that noted on the register in such a way as not to change the distinct character of the mark as it is registered; [2] use by an authorized person under section 50 on condition that such use is subject to the control of the proprietor of the mark.

 The Mark holder first tried to get the proceedings dismissed on grounds that cancellation due to lack of use can only be initiated by an “interested party” and that the Opposer does not fall into this category. The Commissioner of Patents and Trademarks ruled against throwing the request out and decided that the issue would be judged on its merits. Then, based on a close reading of Section 41a and 41b and the case law, the Commissioner ruled that a mark not in use should be cancelled unless extraordinary justification for lack of use is given, and that such extraordinary justification should be more than simply the business considerations of the parties concerned. Accepting such an extraordinary justification was the prerogative of the commissioner who did not feel that it was warranted in this case.

Legal Arguments for not throwing the case out due to lack of standing

In an Appeal to the Supreme Court from 1971, (67/71 “Pharmo LTD vs. the Commissioner of Patents and Trademarks P.D. 28(1) 802, 8/6/71, Judge Vitcon addressed the issue of interested parties by contrasting with the term “injured party” as it appears in Section 38. The Israel Law does not relate to injured parties, but to ‘interested parties” and even the more limited term “injured parties” has been interpreted broadly in the English rulings, such that one can generally assume that parties requesting cancellation of a mark have standing. Even if one disputes the general applicability of Pharmo, in 144/85 Klil vs. Commissioner of Patents and Trademarks PD 42 (1) 309 a similar conclusion was reached, i.e. that interested parties are not just aggrieved parties.

In the present case, the requester for cancellation is anyway an aggrieved party, in that he opposed registration on grounds of unfair competition. Consequently, even if one holds that the term interested party should be considered narrowly, the requester for cancellation fulfils the requirements and has standing. Even though the Requester for cancellation is at a disadvantage having lost the opposition, he nevertheless has standing which is considered in Klil to be a basic constitutional right and has the right to request cancellation. Thus, even if not considered an injured party, he may be considered an interested party, and the change of terminology indicates that the two groups are different and the interested party is wider than an injured party.

Anyway, in Appeal 2209/08 Gigiesse Confezioni S.P.A. vs. Amphom, it was stated that Section 41 is to prevent defensive registrations and to keep the maintain the integrity of the register. Where the claim is lack of use, this is precisely what Section 41 is for. Furthermore, the Commissioner should take into account public interest and clearly the Requester for cancellation has at least the standing of disinterested parties. In this regard, even were the request to be filed and then dropped, the Commissioner would have a duty to examine the evidence and to consider canceling the mark due to lack of use.

 

Legal arguments on the merits for not considering this instance as an exception justifying lack of use.

From Bagatz 302/84 Nicholas it is clear that 41a states that lack of actual use is a basis for cancellation and under certain circumstances 41b allows intent to use to be considered as a defense against cancellation. In other words, the first thing to be considered is whether there is use, and if not, the mark should be considered voidable unless a good reason for lack of actual use is brought, in which case the mark may be maintained at the Commissioner’s discretion.

In this instance there is consensus that the mark was not in use, and the question is simply whether the Commissioner is persuaded that the lack of use is justified in the circumstances.

Citing 95/54 Chanel vs. Commissioner, the term extenuating circumstances is understood to be something general and not company specific.

Nicholas and Mig both give guidelines for extenuating circumstances.

GHI claim an intent to use the mark as their world wide branding apart from in US where EGL is used. GHI further claim actual use in India and the fact that they are fighting for the TM in China, Canada, Israel and Hong Kong is, itself proof of intent to use. That as may be, apart from in India, GHI have postponed launching the mark.

Without wishing to nail the lid down, the Commissioner was not convinced that legal battles constitutes proof of intent to use. The investment in a laboratory is not considered evidence of proof to use the mark, only of investment to provide services, which could be provided under a different mark. In addition to not using the GHI mark, there is a further mark GIH, also not in use. When this was opposed, the mark owner did not show actual use.

Whatever the reason, the mark owner has not actually used the mark and the Supreme Court has already ruled that not using the mark for defensive reasons is not sufficient to maintain the registration.

The mark owner is entitled to weigh up the pros and cons of using a challenged mark, but if he decides not to use it, he cannot then object to cancellation due to lack of use. There are insufficient grounds to justify an exception under 41b and the Commissioner therefore declined to use his prerogative to maintain the mark under 41b.

The commissioner considered the case to be analogous to Amphom and, like Judge Danziger, held that the mark was void through lack of use.

Cancellation Ruling re GHI, Asa Kling 2 February 2015


Dagesh – The emphasis on coexistence

March 10, 2015

Dagesh assistive technologies
The word ‘dagesh’ means emphasis. It is used particularly to denote a dot that is added to letters of printed Hebrew text to add stress. The letter Bet with a dagesh is pronounced Buh and without a dagesh as Vuh. The letter kaf is a kuh sound, and a gutteral chu sound as in Chanuka without a dagesh. Yemenite Jews differentiate between hard and soft Gimels and have a j sound as in giraffe. (An early multilingual Windows based word-processor was developed in Israel some years ago and sold under the brand Accent. The Hebrew-English version was marketed as Dagesh).

In 2012, Israel trademark application number 243617 was filed for “Dagesh Assistive Technologies”. The mark is shown above.
The application covers accessories or equipment intended to improve the functioning and the ability of people with disabilities, namely, computers; arms and mountings; peripheral equipment for computers such as keyboards, keyboard replacements, mice, mouse replacement, joysticks, switches and trackballs; teaching aids; augmentative and alternative communication and computerized communication system, namely, devices intended to improve communication of people with speech disabilities and other disabilities; devices for recording, transmission or restoration of voice; accessible toys and accessible leisure facilities; accessories or equipment intended to improve the functioning and the ability of people with disabilities; all for people with special needs and the population of special education, including people with physical disabilities( e,g with impaired vision or hearing) and/or mental disabilities and/or learning disabilities or developmental difficulties; all included in class 9, sale of computers , peripheral equipment, communication systems and augmentative and alternative communication system (AAC); all included in class 35. Lending of communication systems and augmentative and alternative communication systems (AAC); all included in class 38; training and services for special education students. consulting and adjusting accessibility to population with special needs; all included in class 41 and Lending of computers and peripheral equipment for computes; technical support provided to population with special needs with regard to technical aids and special instrument designated to such population; design and development of computer software in collaboration with para-medical experts for population with special needs; all included in class 42.
A second Israel trademark application number 260864 for the same mark covers adapted toys for children with special needs and recreation adapted facilities for population with special needs.in class 28, and for Providing treatment and solutions for populations with special needs with motor disabilities with the assistance of measures and paramedical experts: speech therapists; occupational therapists; Physiotherapists; art therapists in class 44.

Dagesh Hadracha
Meanwhile, Rivka Zadick filed Israel trademark application number 243484 for “Dagesh the center for therapy and training” which provides Diagnosis, and treatment of diseases and disorders of physical or cognitive disabilities for children; occupational therapy services; speech therapy, music therapy; art therapy; physical therapy; sport therapy; all included in class 44.
The dominant word element in each mark is the word Dagesh. The services provided are somewhat related which results in a similar customer base.
Because of the similarities between these co-pending marks, the Israel Trademark Office instituted a competing marks proceeding. However, the parties agreed to co-existence with minor amendments to the list of goods, and requested that the Israel Trademark Office ratify the agreement.
Since the marks are stylized and the logos are very different, the adjudicator of Intellectual Property, Ms Shoshani Caspi was happy to allow both marks to register as she did not think that this would create a likelihood of confusion among the public. The three marks have thus progressed to publication for opposition purposes and, unless there are third party oppositions, will be allowed to coexist.

In the circumstances, no costs were awarded.

RE Israel Trademarks 243617, 260864 and 243484 for Dagesh, coexistence ruling by Ms Shoshani Caspi, 8 February 2015.


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