Coveri (Caveri?)

July 1, 2015

Enrico Coveri

On 3 May 2011, Enrico Coveri s.r.l. filed Israel trademark application 237,567 for ‘COVERI’ coveri(ng) clothing, footwear and headgear, all in class 25. The mark was eventually allowed and published for opposition purposes on 30 April 2012. On 23 July 2012, Sar-Go Investment LTD opposed the mark. The opposition related both to Israel TM 237,567 ‘COVERI’ and to Israel TM 237566 ‘ENRICO COVERI’ in Class 35, however, Sar-Go Investment LTD retracted their opposition to TM 237566 ‘ENRICO COVERI’ which was subsequently granted. In parallel with the Opposition before the Israel Patent Office, Enrico Coveri s.r.l. sued Sar-Go Investment LTD for infringing their (pending) mark. [– this is possible under common law rights, albeit not a good idea to sue before the mark issues].

Sar-Go Investment LTD asked the court to require that Enrico Coveri s.r.l. post a bond [which is common practice where a plaintiff is not domiciled in Israel] and, on failure by Enrico Coveri s.r.l. to do so, closed the case. On 31 December 2012, Sar-Go Investment LTD filed two trademarks, Israel TM 252378 “Coveri Kids” for wholesale of clothing and shoes for children and youth, for “COVERI HOME” for wholesale furniture and children’s domestic accessories both in class 35, but both applications were suspended at Opposer’s request until after the present Opposition is concluded.

Opposer’s Arguments

The Oposer claimed that they have used the (unregistered) marks Coveri Kids and Coveri Home for 15 years and had a reputation among their clients for these marks. The Opposer is a wholesaler whereas the Applicant is a manufacturer [this argument, together with the competing marks scenario created seems to be setting the scene for a request for co-existence]. In consequence of their longer usage in Israel, the Opposer claims that they should take precedence over Enrico Coveri s.r.l. in Israel under Section 24(a1)(2) of the Trademark Ordinance 1972, and, under sections 5(11) and 6(11) argued that allowing Enrico Coveri s.r.l.’s application to register would be unfair trade, would mislead the public and be contrary to the public good. In an alternative strategy, the Opposers argued that if Enrico Coveri s.r.l.’s was not canceled, then the two marks should be allowed to coexist due to the difference in sight and sound of the marks, as their desired mark was to be pronounced CAveri whereas the opposed mark was to be pronounced COveri. [I find this argument a little tenuous. The mark does not come with pronunciation instructions, and Israelis include Bedouin, Russian immigrants, American immigrants, Ethiopians, Thai foreign workers and Sudanese illegal immigrants. I doubt that there is a common pronunciation of vowels].

Applicant’s Counter Arguments

The Applicant claims a worldwide reputation in the word Coveri that goes back to the Seventies. [“When The Levee Breaks” — Led Zeppelin (1971) was a coveri song from the Seventies. It was originally recorded by Kansas Joe Mccoy and Memphis Minnie in 1929!]

The Applicant denied the allegations of misleading the public as they claimed to have the reputation and also argued that the Trademark Ordinance only protects registered marks, which the Opposer had not (then) registered.

Furthermore, the Applicant claimed that they were the first owner of the Coveri mark and back in 1986 had applied for ENRICO COVERI in claims 3 and 18, for soap and leather goods, and this the Opposer’s claims should be rejected. The Opposer was acting in bad faith as it was not conceivable that he was unaware of the Applicant who had marketed goods in Israel that were branded as COVERI.

Discussion

In the District Court proceedings, the current Applicant accused the Opposer of willful infringement and of ignoring requests from the Applicant to cease and desist from using the term Coveri. Furthermore, the Applicant argued that the Opposer’s us eof the term Coveri would lead to misleading the public as the Opposer’s goods were sold by the Applicant. The Applicant further claimed dilution of their mark and enrichment at their expense.

In their defense, the Opposer denied knowing about the Coveri brand when they chose their own branding. As wholesalers of clothing brands and not manufacturers, they were unaware of the Applicant’s brand. Furthermore, the Opposer denied infringing the Coveri mark as their marks was Coveri Kids and Coveri Home.

However, as noted abover, the District Court Proceedings were thrown out due to Applicant’s failure to post a bond.

The Applicant here, Enrico Coveri s.r.l., argued that the position taken by Sar-Go Investment LTD in the District Court estoppled them from claiming that the current proceeding be dismissed as the parties are the same in both proceedings. Support for this argument was given in Civil Appeal 246/66 Klausner vs. Shimoni.

The Trademark Office considered that the current situation was different as in the previous (court) proceeding, there was no substantive ruling as the case was thrown out, and the identities of the parties (and the marks in question) has switched, thus there is no estopple against bringing the case to trial. Furthermore, the legal arguments are different. For additional analysis, see TM 245411 Orez Gamalim Hahav Pninim (graphic logo) Yoram Sassa vs. Yehudit Matck, as published on the patent office website in April.

In conclusion, Deputy Commissioner MS Jaqueline Bracha saw no reason not to rule on the merits of the case.

Inequitable Behavior and the Common Good.

The Opposer claimed that the applications should be canceled as they were filed in bad faith, since the filing occurred 15 years after the opposer was using the mark and gaining a reputation in it. Furthermore, since the Court had thrown the case out, dealing with it on its merits now would be contrary to the public good under Section 11(5). The Applicant also accuses the Opposer of inequitable behavior since the choice of the term Coveri by the Opposer was itself an attempt to cash in on Henrico Coveri’s reputation. Arguments that Coveri means Cover Israeli Kids as the Opposer had claimed were dismissed as fanciful and unconvincing, and the alleged correct pronunciation as CAveri and not Coveri as written was further indication of inequitable behavior.

The Opposer considered the marks could not be registered under Sections 11(5) and 39(1a) of the Ordinance  due to inequitable behavior, but the Deputy Commissioner considered that this was not grounds for Opposition per se, only, for cancellation of an issued mark. Support for this argument was given in the Pioneer decision.

[I am less than happy with the Deputy Commissioner’s ruling that inequitable behavior can be grounds for cancellation of a mark once issued, but not for opposing the mark. I know it is considered a dirty word, but I am relatively formalistic in my approach to the Law and have little time for interpretation of what the law meant to say. However, I can see no logic in allowing grounds of inequitable behaviour to be sufficient to have an issued mark canceled, but not sufficient grounds to have a pending mark opposed. This seems senseless. I note that I disagreed with Ms Bracha in the Pioneer case as well  so at least I am consistent. Perhaps consistently wrong, but consistent.]

According to Ms Bracha, Section 11(5) was to cover cases such as to prevent an opponent to prevent an applicants from using opponents copyright protected artwork as trademarks.

Misleading the Public and Unfair Competition

As far as misleading the public is concerned, Ms Bracha considers that the mark has to be at least widely known if not formally ” a well known mark”. She goes on to apply the triple test to examine the similarities between the marks. As far as the sound of the mark is concerned, Ms Bracha noted that the Opposer claims that Coveri Kids has a patah sound (“a” as in cow – i.e. Cah-ver), whereas in on Henrico Coveri’s Coveri, the Sound is a holum “Oh” as in Copper. Noting that they are written the same way, Ms Bracha considers it unlikely that one can ensure that the marks are correctly pronounced and doesn’t think that anyone other than the Opposer’s who would be aware of the difference. [here I disagree. The word Coveri has a Kamatz Qatan and is pronounced Oh as in Copper by Yemenites and Ashkenazim but as Ah by Spanish and Portuguese and in the Standardized Hebrew pronunciation. Nevertheless, the word, written in English letterings, could certainly be pronounced either way. This reminds me of the road sign conveniently placed near Heathrow Airport to confuse tourists. It points to Slough. Is the ough an oo as as in through? Is it an uf as in rough, an ‘or’ as in bought? No, it’s an ow as in bough!]

In the Coveri mark and in Coveri Kids and Coveri Home, the dominant word is Coveri. Furthermore, the other words are descriptive and lacking in independent distinctive character. Consequently, the marks are visually and audibly very similar. Both Opposer and Applicant sell clothing and children’s goods, one wholesale and the other retail. The client base is thus different, but it still overlaps and one could imagine a purchaser of Coveri clothing could go into a COveri Home shop to buy furniture or accessories. Whilst, it is certainly possible that Henrico Coveri is using his name for branding purposes and Coveri Kids means Cover Israeli Kids so there is no intent to confuse, however, it is unlikely that the public would be aware of this. The Opposer has stores in the upscale Kikar Hamedina of Tel Aviv. The Applicant’s witness was more circumspect as to where they were using their trademark.

Reputation

Reputation in a specific market sector is judged by the time period the brand has been in use and the amount of publicity and marketing invested in linking the product to the brand name.

Coveri kids have shown 15 years history of the mark. However, Mina Tzemach’s market research has shown low brand penetration, nevertheless, Ms Bracha agreed with the Applicant that the onus is on the Opposer to show that they have a reputation in the mark and not that the Applicant does not.  Ms Tzemach’s affidavit was an appendix to another one and not a freestanding document. However, the The Opposer did not choose to cross-examine her on her findings which rather strengthens them.

Coveri admitted that they had never opened a shop, but claimed that their neckties and other things were sold in boutique stalls. Consequently, it appears that Coveri Kids and Coveri Home have a larger footprint in the market.

Equitable Behavior

It seems that Enrico Coveri acted after discovering that Coveri Home and Coveri Kids were strong marks in Israel. They first sent cease & desist letters and only subsequently filed their own marks, and later still , filed in the District Court. Under cross-examination from Adv. Tony Greenman, Enrico Coveri’s witness spoke about design shows abroad abut did not answer questions about their local advertising. Despite prompting by both Adv. Tony Greenman and by the Deputy Commissioner, the witness failed to show that the mark had been used in Israel prior 2011 and had local reputation. This lead her to suspect that the Applicant’s registration was merely to prevent being sued by the Opposer and was not indicative of actual use or intent to use.

Although in Israel one can apply for a mark not in use if there is intent to use, however the intent should be genuine. The Israel courts view defensive trademark practices with a jaundiced eye.

Such an approach is true in the US:

A lack of bona fide intent to use is a ground for an inter partes opposition proceeding to an application before the Trademark Board. Aktieselskabet, 525 F.3d at 21; McCarthy § 20:21, at 20-65,66. Lack of bona fide intent to support an intent-to-use application also may render an application void ab initio upon challenge in federal district court.” (W. Brand Bobosky v. Adidas AG, 843 F. Supp. 2d 1134, 1140 (D. Or. 2011).

The long and real usage by the Opposer and lack of cooperation by the Applicant’s witness lead Ms Bracha to consider that the mark should be refused under Section (6)11 of the Trademark Ordinance.

Previous Rights to the Mark

The Opposer claims prior rights to the mark under Section 24(ia)(2) of the Regulation. As far as distinctive marks is concerned, this is a relevant issue.

As cited in ITT. vs. Ratfone Import LTD, 23 June 2009:

“Furthermore, it is important to note that when a mark is canceled from the register or even if it was never registered, this does not indicate a lack of proprietary rights of the owner. There is a right of reputation which is protected as unregistered marks.

In this instance, however, the Opposer did not register their mark. They did not act to have the mark registered, and the present instance and the previous Court case were superfluous. Having ruled that the Opposition should be accepted under Section 11(6) the ownership of the marks is superfluous, particularly as the Opposer has long established usage and the Applicant has not shown usage in Israel. However, the lack of registration by the Opposer should be taken into account when ruling costs.

Conclusion

The mark is refused without a ruling of costs to the Opposer. The Opposer’s marks (Coveri Kids and Koveri Home) can continue to examination following this ruling.

Israel TM 237567 “Coveri” to Enrico Coveri, Trademark Opposition by Sar-Go Investment LTD, Ruling by Deputy Commissioner, Ms Jaqueline Bracha, 27 May 2015

COMMENT

Potahto or Poteitoe?

Gefen or Gafen?

Pronunciation aside, this case bears more than a passing resemblance to the Versace case, since we have a well know international design house and a couple of Israeli stores using the name in ambivalent faith. I therefore suspect we haven’t heard the last of this.

 

 


Connectivity, Buck Passing and those Damn Marks

June 21, 2015

dont-pass-the-buck-300x214

We have connectivity issues getting into the Israel Patent Office Secure Trademark Database. Where does one start?

Well there are some very nice people in the trademark department who after making other inane suggestions pass the buck to the Govt. Internet Access Helpline.

The Govt. Internet Access Helpline wants to know why do we want access to a govt. website? Are we government employees? Are we subcontractors working on a program?

After explaining the concept of professional legal representation opposite the patent office, the Helper-on-line asked if we can access the services without the smart-card. We explain that this is a new website and this is the only way to do things now. Paper filings are no longer acceptable. Logging in with an email and password is good for filing new applications, but for oppositions, etc. we need internet access using the smart-card.

Q. “Is the website up and running?”

Q. “I provide Internet support for government websites and I can’t get in either.”

A. Well, it’s supposed to be up and running. The nice people in the trademark department think its up and running.

Q. “The problem is your smart card. You have a lawyer’s smart card. Contact Comsign.”

So I contacted Comsign. Turns out that the card is NOT a lawyer’s card. It is a card issued by the Israel Patent Office for accessing the website and for filing documents with the Israel Patent Office. Does the card work? Well it did until the new site went up. Have you registered for the new site? Well we haven’t been asked to. We’ve been talking to people in the trademark office. If they thought we needed to register, they would presumably have registered us, no?

So the buck was passed from trademark office to computer support to connect card connector, to administrator and round and round we go!

Caucus Race

With apologies to Ezekiel, to James Weldon Johnson (1871–1938) and possibly to his brother, J Rosomond Johnson, to be sung to the tune of Dem Bones:

dem bones

Damn Marks!  

Reshut Patentim Connected the Damn Trademarks
Reshut Patentim in Department of Trademarks
Reshut Patentim  Connected Damn Trademarks
Now Hear the Commissioner’s Circular! 

Smart card connected to card reader
Card Reader connected to USB port
USB port recognized by Mother#$%^&
Computer’s connected to the WiFi
The WiFi’s connected to the server
The Servers’ connected to the Internet
Internet’s Connected to Patent Office Portal
Patent Office Portal is connected to Trademarks-on-line
Trademarks on line is connected to the database
Now Hear the Commissioner’s Circular!

Damn Marks, Damn Marks Gonna Walk Around
Damn Marks, Damn Marks Gonna Rise Again
Damn Marks Damn Marks Gonna be Paperless
Now Hear the Commissioner’s Circular! 

Damn Marks, Damn Marks, Damn Trademarks
Damn Marks Damn Marks Damn Trademarks
Damn Marks Damn Marks Damn Trademarks
Now Hear the Commissioner’s Circular! 


California Dreamin – INTA San Diego

May 12, 2015

Calefornia Dreamin

INTA San Diego was my favorite INTA Conference yet. Unlike Hong Kong (see INTA washout) which was a sort of three day shower-cum-sauna whilst fully dressed, San Diego was dry and mild, if a little chilly at night.

I usually look at INTA as a vacation from the family. This time around, I brought my wife Miri with me to San Diego, and discovered that a vacation with the missus is just as good.

We flew in on Wednesday and went to San Diego’s famous zoo on Thursday. Some of the exhibits were temporarily unavailable and others lay there without moving, suspiciously as if they were stuffed. The collection is, nevertheless, very impressive, and zoos are a great place to people watch.

Jet-lagged Australian practitioner

Jet-lagged Australian practitioner

The koalas were somewhat sedentary, but from the way that they were tree-hugging, seem to have acclimatized to California.

A gazelle on its way to becoming a zebra

A gazelle on its way to becoming a zebra

There was an Okapi that had started life as a striped gazelle and was well on its way to becoming a zebra. This was like the Irish accented US patent attorneys, Janet de Penning who pretends to be Indian but whose Australian accent gives here away, and other relocated practitioners including me, an Israeli patent and trademark attorney with a somewhat heavy North-West Suburban London accent.

Urangutan

I tried networking with another alpha male Sumatran trademark attorney. I suspect that it won’t lead to masses of work, but was nonetheless, very enjoyable.

panda

I also met a Chinese trademark professional taking it easy whilst contemplating the week ahead.

On Friday we took a boat trip around the harbor and saw a lot of US naval vessels including a submarine in dry dock and a helicopter carrier. The trade-dress was a dismal battleship grey. We had wanted to take a whale spotting trip, but apparently had missed the season. This seemed to be an appropriate metaphor for INTA, where one goes for the promise of landing a whale of a direct client with an enormous trademark portfolio, but the in-house counsels, were, as usual, keeping a low profile. It wasn’t all doom and gloom though. We did see sea lions and pelicans.

Walking down to the conference center, it was pleasant to be recognized by attorneys from around the world, despite not having a conference name tag yet. The receptions, hotels and meeting places were all close to the conference center, but San Diego is on a hill, and with 10,000 conventioneers marching up the hill to their hotels, down again to the conference center, up the hill to their meeting and down the hill to the reception, I couldn’t help recalling the Grand Old Duke of York. One shop we past sold basic survival garments and had a deal for “two tees, one pant and one shoe”. I would have though one tee and a pair of each of the other garments would be more useful.

Shabbat was spent with Lubavitch (Chabad). There was a small core of Jewish practitioners present. As the Torah scroll was put back into the Holy Ark, everyone sang Psalm 26 with gusto, but to different tunes, and the result was like the school song back at Hogwarts. Despite being a Carlebach, the Rabbi’s singing was as bad as mine. Nevertheless, the welcoming atmosphere and pluralistic congregation did have something of the holy hippilech of the House of Love and Prayer about it. Miami based IP Attorney Michael Chesal  lead the morning service and Israel trademark attorney, Marc Bodner, read the Torah portion in the afternoon.

In some ways, the Rabbi reminded me of Gene Wilder in the Frisco Kid. The Rabbi’s daugher (Mushka -what else?) told me that she had a waggly tooth. I managed to refrain from suggesting that when it fell out, she could put it under her pillow and the Rebbe would come and leave a dollar.

The Kosher food at the opening reception was well wrapped in polyethylene and consisted of bits of Pretzel bagel and mushrooms which were also very well wrapped. There was a second box containing a sort of apple turnover and little containers of some sort of pickled fish, that may have been herring. The regular tables had a wide range of food that looked delicious but less than Kosher. There were some strawberries that were drizzled in chocolate that were quite delicious and also a greenish sludge called Whack-a-Mole, that turned out not to be made of mole at all, but was actually an avocado paste.

whack a mole

I suspect that the accompanying crackers may well have had an OU Kosher certification, but couldn’t be sure, so gave them a miss. Not much of a return for the $100 guest ticket I got my wife. It was an opportunity to introduce her to Irish colleagues, Richard and Mary-Rose O’Conner. Their firm is called Cruikshanks, but from what I could see, their legs looked straight enough.  After a couple of the obligatory beers we went to the Ben & Jerry’s ice-cream parlor in the ‘village’ by the conference center. I missed the Kosher Supper on the Tuesday, but understand from Jeremy “Harley” Ben-David, that it was a mostly schnitzel and chips affair at the JCC. According to the IPKAT, Sandy’s Ego Colb’s Kiddush was well attended and there was little in the way of left-overs.

I arranged back to back meetings from 10 AM to 4 PM. Unfortunately however, not all meetings met up. Particularly those with new associates. It turned out to be fairly easy to find a Indian IP professional at the meeting point. I was looking for someone well dressed, about 5′ 6″, dark skinned with black hair. It was trying to find the right Indian professional that proved difficult. I had a similar problem with Chinese patent attorneys, except the complexion was lighter and the general build more petite. Unfortunately, with 10,000 conference participants, even arranging to meet in a particular spot proved difficult. The blind dates meetings were hard to accomplish as I found myself making eye to name on tag over chest contact with promising but wrong candidates, there being some three hundred or so at the same meeting area.

After a full day’s networking, I didn’t really have the energy to party into the night. I did however, go to the “Meet the Bloggers” reception at Henry’s Pub in the heart of the red gas light district. It was nice to be approached by friends and by people I didn’t recognize, who enjoy this erudite and informative blog. It seems my comments about my wife making me throw away the shoe boxes of business cards from last year before bringing any new ones home struck a chord.

henry's pub

The waitresses in their short pants (using the term in the English manner) made it easy to understand why the Beach Boys sang about Californian girls, but one wonders why the Mamas and Papas didn’t ground them for going out (un)dressed like that?

california girls

To accompany the cider I was swigging, I ordered a plate of raw vegetables with hummus, as did a Sikh associate. Being very close to the Mexican border, the hummus was rather hotter than its Middle Eastern equivalent.

Professor Phillips and his personal assistants

Professor Jeremy Phillips who got a special mention for his prolific blogging, was accompanied by various editors, marketing directors and other young ladies from Oxford University Press. He looked a little like Mother Goose, as he shepherded his harem grand-daughters, off to bed.

There were apparently over 9650 registrants at INTA, and I suspect a further 3-4000 attorneys that came along for the receptions but didn’t register. It was impossible to meet everyone, but I did manage to chat to several hundred practitioners.

As always, Middle Eastern colleagues from Jordan, Egypt, UAE, Lebanon and Dubai were very friendly and special mention should be made of the very attractive young ladies working the Iran trademark stall. We promised to send each other work Insh’Allah once the political situation improves. Grant Thornton’s Baklava was, as always, delicious.

I will refrain from commenting on the lectures, mostly because I didn’t go to any, but also because it seems that no-one else is interested in them anyway.

Instead, here are my winners in the various swag categories, from the Exhibition Center where I shopped for souvenirs and gifts for the kids:

For younger daughters, first prize goes to Zuykov who gave away Babushka dolls. For older daughters, one firm was giving out scented soap, and there were a lot of Chinese bags, scarves and keyrings. Older sons will be delighted with Ali & Associates‘ flash memory daggers. Younger sons will enjoy the rubber band driven balsa wood model airplanes distributed by Patssy Wave.

Suitable for adults and children (i.e. less mature male IP professionals) is Burns & Levinson‘s desktop magnetic dart board. They also had a larger size interactive game, where one throws a remote control at a dartboard shown on a screen – or at least, that seemed to be the idea). For adults, Ali & Associates were giving away pen-knives and pen sets, and also magnetic compasses that were probably designed to find Mecca, but worked equally well for Jerusalem. I discovered I had been praying Westwards instead of Eastwards in my hotel room, but the Talmudic rabbis had a flat Earth cosmology, and we now know that what goes around comes around, so I don’t suppose it matters. Wives and female practitioners may be pleased with Treadstone Inc.’s insulated frozen food bag. Asia IP Exchange were giving out inflatable pillows. Grant-Thornton Lebanon distributed some nice coasters, this time showing the Hanging Gardens of Babylon. Despite being a Lebanese firm, over the years, I’ve noticed that they claim IP rights to Egyptian pyramids, Phoenician culture and Israeli Hummus. Although not available from a stall, I think my own limited edition PC Teabags was perhaps the best freebie for patent attorneys.

Talking about adult give-aways, there was a company called .sucks that had a scam to try to get people to register their domains to prevent others from so-doing. Frankly, I was surprised that INTA let them rent space in the exhibition center. They had people outside the conference center too, who were giving away  latex prophylactics condominiums. These green modeling balloons have a nipple at one end which, on inflation, can be pressed back and tied into the knot to make a quite convincing apple. As one of my female colleagues pointed out, it is inadvisable to rely on such things given out for free on street corners to avoid the by-products of intimate networking.

Ghiradelli

Unsurprisingly, the conference coffee was American and foul. There was a Starbucks outside, but that served similar dish-water, with the main difference being the need to pay for it. Better Caffeine fixes were supplied by Dennemeyer and by the SMD Group who each had an expresso machine. For those preferring their Caffeine is solid form, as always, the best chocolate was to be had at the Ecuador stand, but Dennemeyer’s Dickensian chocolate was a close second. For a delicious chocolate fix, we recommend the hot chocolate at Ghiradelli.

bugs bunny

One reception that I did attend was Rothwell Figg‘s  held in the Chuck Jones Gallery, which was resplendent with Bugs Bunny and Road Runner art-work. Most of the food was not Kosher, but there was a welcome if somewhat melancholy fruit platter with strawberries and pineapple. (*yes, I know, purists will argue that Hallachically melon, strawberries and pineapple are not fruit as they don’t grow on woody perennials).

Midway

I understand that Thompson Reuters sponsored a reception on the US Midway Aircraft Carrier that is now a museum, and that dancing on the flight deck was quite something.

Orlando

I am not sure how I will be able to convince the kids that INTA Orlando next year is ‘work’, but am looking forwards to going with my wife.


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.


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