A Colourful Circular for Trademarks

February 6, 2012

Perhaps so that my brother and other trademark attorneys don’t feel left out, Adv. Assa Kling, the Israel Commissioner of Patents and Trademarks has kindly issued a circular for them as well!

In Circular 12/2012, the commissioner notes that Israel trademark applications under the Madrid Protocol may be filed in colour (that’s color for American readers).  In such cases, the colour may provide a distinguishing feature, but  is a limitation on the scope of coverage.  henceforth, the Pantone number won’t be listed in the registration, but the colour will be a feature of the mark and may therefore be limiting. Applicants wanting wider coverage should therefore file their marks in black and white.

The additional frivolous comment:

When first posted, I wrote:

“Strangely, the circular comes into force from when it was published, i.e. 31 January 2012, but it carries the date of 6 February 2012 and I received it along with everyone else only today. Still, in comparison with the retroactive amendment of the patent law last year, see here this is a minor problem.”

I suspect that at least one person in the Israel Patent Agency follows my musings. Today, 7th February, an amended Circular issued, correcting the coming into effect to 6 February 2012. This will be a relief for any applicants who responded in the week prior to publication of the Circular, who didn’t have the foresight  to anticipate this development!

 

Leave a Comment » | Israel IP, Israel Patent Agency, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Slogans to be treated like any other trademark applications

January 17, 2012

The Tel Aviv District Court has upheld a decision by the Israel Patent Office  to refuse Eveready’s Trademark Application Number TM 204, 832 for shaving creams and 204,499 for razors and shavers  for the slogan “Free your skin”.

However, the court has over-turned the assumption that slogans are always descriptive or laudatory and therefore invariably non-registerable, ruling that they should be examined like any other mark. Consequently, the current Commissioner or Patents and Trademarks Adv. Assa Kling has cancelled Patent Office Circular MN 29 that held that slogans cannot be registered.

BACKGROUND

On August 28, 2010, then Deputy Commissioner Noah Shalev Shmulovits upheld a decision of the trademark examiner, that Israel Trademark Number    was invalid for registration.

Shmulovits based his decision on Israel Patent Office Circular Number M.N. 29 in which then Commissioner of Patents and Trademarks Dr Meir Noam ruled that slogans could generally not be registered.

Since then, there have been a number of exceptions. See  for example party-like-a-rockstar,  im-lovin-it, shufersal, its-all-for-you, bleach-free and diamond in your pocket  for specific rulings.

Eveready appealed the decision to the courts. In a well-reasoned ruling, Judge Yitzhak Anber has ruled that slogans may often be laudatory or descriptive, but should be considered as simply multi-word marks and judged on their merits.

21488-05/11 Eveready vs. Commissioner of Patents and Trademarks, Tel Aviv District Court  by Judge Yitzhak Anber, 8 December 2011.

Leave a Comment » | Israel, Israel Court Ruling, Israel IP, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Israel Related, trademarks | Permalink
Posted by Dr Michael Factor

Philanthropical Giving – the fight of the non-profits

January 1, 2012

David Zilberslag is a well-known, public-spirited, Ultra-Orthodox leader who raises funds for helping those in need. He filed a trademark application (No. 205341) for כח לתת – Koach l’tet, literally, “the power to give”.

The organization L’tet - Humanitarian Aid In Israel, (ארגון לתת) filed an opposition to the mark, but after the applicant, represented by well-known attorney, Dr Yaakov Weinrot, his statement of case with a request for costs, L’tet withdrew their opposition, stating that although they believe the opposition was legally justified, they did not think it was correct use of public funds.

The Commissioner for Patents and Trademarks, Dr Assa Kling, accepted that both the applicant and the opposer did important humanitarian work, but felt that it was more appropriate for such organizations to find other ways to settle their differences than to fight opposition proceedings and generate legal costs. Nevertheless, he could not deny the parties’ right to fight through  the system.

Commissioner Kling ruled that in principle, the applicant was entitled to recover legal costs, but the awarding of such was discretionary on the Patent and Trademark Authority. No details of actual costs incurred were given, and generally actual costs are rarely given, but rather an estimate of fair costs. In light of the circumstances and the fairly early stage at which the dispute was terminated, he decided to use his discretion and not award costs at all.

COMMENT

This is, unfortunately, not the first time (and probably not the last time either) that two humanitarian organizations have been involved in trademark disputes.

Unlike the case of Johnson & Johnson vs. the American Red Cross, regarding the continued use of the red cross symbol by the ambulance service, this case has some merit, in that charities should choose distinguishable names so that donors are not confused who they are supporting.

There are a number of cases where different charities have confusingly similar names. Then again, “to give” is rather generic, and one wonders why anyone should have rights to a word like that for philanthropic purposes.

I can understand the Commissioner’s position regarding philanthropic organizations wasting public money on legal fees. It is, however, a moral – ethical position, not a legal one. From a purely legal standpoint, one wonders if it would not have been appropriate to have awarded the usual costs awarded to an applicant for a trademark, where the opposition is dropped after the applicant files his statement of case. Commissioner Kling is well within the scope of his discretion, and value based judgements have been in vogue since Former Chief Justice Aharon Barak abandoned formalism and instigated more value-centric judgements.

Although I have no strong feelings regarding this decision not to award costs, personally, I am a formalist who prefers the “law is an ass” approach to Law. I note that judges and commissioners are not democratically elected, and often the reasons and methods of selection for such judicial personnel are somewhat murkily concealed.  In such a system, I would prefer judges and commissioners to judge and to award costs in a manner that neither favours plaintiff nor defendant and which is actually neutral to the type of goods or service that a trademark applicant provides. 

I note that we do not know if the Attorneys were actually charging for their time or if they were working pro bono. If one organization that helps the needy opposes a mark filed by another organization, is it wrong that the losing organization should transfer funds to the organization that wins?

Leave a Comment » | Israel, Israel IP, Israel Patent Office Rulings, Israel Trademark, trademarks, Uncategorized | Permalink
Posted by Dr Michael Factor

Judy Dvora Simchi of the Trademark Department of the Israel Patent Office Passes Away

November 28, 2011

The Israel Patent Office has notified the profession that Yehudit (Judy) of th trademark department has passed away. The funeral was on Sunday in Jerusalem, and the family will be observing the seven-day mourning period in the family home in Maale Adumim.

Leave a Comment » | Israel IP, Israel Patent Office, Israel Patent Office Rulings, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Filing Evidence in English In Oppositions Proceedings at the Israel Patent Office

November 21, 2011

Jonathan Schreiber filed Israel trademark Number 222275 for Metabolin, a product to assist in dieting by slowing the metabolic rate, which, when it was allowed, published for opposition purposes and Merk KGaA, represented by Gilat Bereket & Partners of the Reinhold Cohen group, filed an opposition.

The evidentiary Declaration submitted by Merk, ran to over 150 pages, all in English. The applicant, Mr Schreiber, who apparently is acting without representation, requested that this be translated into Hebrew and Ms Yaara Shoshani Caspi ordered that Merk do this, based on applicant’s claim that he didn’t understand English.

Merk / Gilat Bareket appealed this decision. they argued that they weren’t given an opportunity to oppose Schreiber’s request, in contravention of Circular M.N. 79 and of natural law, and should have had 20 days to respond. Substantively they argued that Schreiber was the sole shareholder of Anderson Medical LTD, whose website included various languages including English, and thus concluded that he understood the language. Furthermore, by providing affidavits in English, the witness would know what he was testifying and third parties would be able to access the material.

Ms Caspi Shoshani rejected the argument that the website indicated that Schreiber knew English, understanding that this merely indicated that he could have material translated at his expense. Substantively however, evidence should be filed in Hebrew or Arabic, but if both sides agreed to English being used, that was acceptable. There was no reason why applicant should bear the costs of translation.

Consequently Schreiber was in his rights to have documents translated into English. She suggested that if Merk were prepared to focus the discussion on relevant passages only, they could have these translated and forgo translating the full 150+ pages.

She noted that were she to come to the understanding that Schreiber did in fact have a good command over English language during the hearing or from his submissions, she would award damages to Merk, regardless of the final ruling.

COMMENT

I have no idea what is in the 150 pages, but can well believe that for an Israeli, this quantity of material in English is tiring. One wonders if it is necessary and it appears that Shoshani Caspi had her doubts as well.

There is an unfortunate practice, sometimes employed by litigants, of burying the opposing party in enormous quantities of material.  Legal Counsel are often not responsible, since if their client provides large quantities of evidence, they would generally file all of it as failing to do so could be construed as malpractice. Consequently costs escalate.

From the way he writes his name in English in the trademark application and from the English description which is clearly a literal word for word translation from Hebrew into English of the goods covered by the mark, I think it is self-evident that Yonatan Shreiber is not able to easily review 150 pages of material in English.

2 Comments | Israel IP, Israel Patent Office Rulings, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Requesting Reconsideration of an Israel Patent Office Decision

November 21, 2011

Berik Design USA Inc. , and Greenstar Hong Kong Ltd.,  (“Opposers”) represented by JMB, Factor & Co. are opposingIsrael pending trademark Nos. 227959 and 227960 by No Fear International LTD, (“Applicant”) represented by Shlomo Cohen & Co.

The following interim ruling relates to a request by Applicant’s counsel to have a decision of the Patent Office Adjudicator reconsidered.

BACKGROUND

Shortly before the deadline for filing a response to the Opposition, the Applicant requested a two month extension to file their response and legal arguments against the Opposition , but the Patent Office granted one additional month only.

Claiming that the Opposers were uncooperative and that obtaining evidence from abroad was problematic, counsel for Applicant requested that this decision be reconsidered.

The Applicant did not provide JMB, Factor & Co. (the Opposers’ Counsel) with a copy of their request, as is customary.

The Adjudicator requested the Opposers’ respond to the Applicant’s request. This was particular difficult for the Opposers’ Counsel, since they had not been provided with a copy of the request. The Opposers’ Counsel spent many days attempting to obtain a copy of the request from the Patent Office, a task which proved to be difficult since the clerk handling the matter was on vacation at the time.

After finally obtaining the details of the request, JMB, Factor & Co., responded to it,  informing the Adjudicator that in principle, the Opposers’ do not oppose the Applicant’s request for an additional month’s extension. However, the Applicant’s counsel  had never contacted them to request such an extension. Furthermore, the Opposers’ Counsel requested the imposition of costs on the Applicant for the time spent in obtaining a copy of the request from the patent office and in responding to it..

The Ruling

According to the Adjudicator for Intellectual Property, Ms Yaara Shoshani Caspi, there is a list of instances where reconsideration of a ruling is legitimate, that is detailed in Appeal No. 1574/11 Strauss Marketing LTD. vs. Moshe Orman, 2011. In her opinion, the current situation does not fall into an appropriate category and thus the decision should not be reconsidered.

Nevertheless, Ms Caspi Shoshani went on to look at the specifics of the case, and noted that the counter-case should have been filed by 30 August 2011, but the request for an extension was only received on 4 September 2011, albeit dated 24 August 2011. The applicant claimed to have relied on a reminder letter from the patent office dated 14 July 2011, but there was a general letter from 31 March 2011 from the trademark department of the patent office to the effect that no reminders would be sent.

Consequently, the request for an extension was rejected and costs ofNIS1500 were awarded to the Opposers.

Following the ruling, the Applicant’s Counsel requested the Adjudicator to reconsider her decision regarding the extension and the amount of the damages.

The Applicant has since filed his response, a copy of which the Opposers’ have yet to receive. The Adjudicator has since ruled that the since the response has now been filed, the request for an extension is moot. Furthermore, the Arrbitrator has ruled that the level of the costs awarded shall not be amended.

Opposition to Israel TM 227959 and 227960, Berik Design USA INC. V. No Fear International LTD.

COMMENT

My brother Aharon, head of trademark department in our firm won this little skirmish, which is nice. Of more importance of course, is to win the opposition proceedings.

It is quite unreasonable for something to take 10 days to reach the patent office from a law firm that uses couriers, and in the age of faxes. Furthermore, regular mail shouldn’t take that long to arrive, and important documents sent by mail could be sent registered or express mail. I think Ms Shoshani Caspi’s ruling reflects this.

Leave a Comment » | Intellectual Property, Israel Patent Office Rulings, Israel Trademark, opposition, trademarks | Permalink
Posted by Dr Michael Factor

November 20, 2011

Adv. Doron Neuman represents Toolbox Design. Their trademark application number 224994 was refused, and the applicant requested and was granted a hearing. the day before the hearing, it was noted that he had not paid the request fee and the staff of the patent office made efforts to reach him, apparently beyond that required of them. On the day of the hearing itself, the Patent Office managed to make contact with the legal representative who informed them that his client had decided to forfeit his right to the hearing. In view of the costs incurred in preparation, costs of NIS 800 were awarded to the State for wasting judgement time, unproductively used due to applicant’s behavior.

The Case: TM 224994 to Toolbox design, 7 November 2011, by Adjudicator Ms Y. S Caspi

Leave a Comment » | IPO, Israel, Israel Related, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

In Israel Trademarks, should the list of goods in English prevail?

November 14, 2011

When filing trademark applications in Israel, it is necessary to specify the class of goods and lists of articles covered in Hebrew and English.

For trademarks filed by applicants from abroad, the list fo goods provided by the applicant is typically in English, and the Israel representative has to find suitable translations.

For example, I remember helping to translate a trademark for a list of goods that included, anoraks, parkas and duffel coats. All these are hooded coats. Anoraks are generally fabricated from waterproof synthetic material and have quilted linings and are zippered. Parkas are generally dark blue with orange linings and stiffer hood, and tend to have both zippers and buttons or press studs. Duffle coats are typically made from wool, have toggles instead of conventional round buttons and are best described as the type of hooded coat that Paddington Bear wore.

One of my Turkish clients makes paper goods and among the list of disposable articles for one of their marks, was the word napkin. Now in the UK, a paper napkin is also referred to as a serviette, and is placed on the dining table and used to wipe one’s fingers and mouth. I understand that in the US, a napkin would not be put on the dining table. Not knowing what the company manufactured or might manufacture in future, I suggested that we included in the list of goods: disposable paper diapers, sanitary napkins and serviettes, and the client concurred. In that instance, there were no similar marks in the class, so wide protection was possible.

Where the trademark is for engineering components or technical goods, the problem is compounded since many lawyers who handle trademark matters have little technical competence.

To overcome this sort of confusion, the practice of adding a notice has developed, that in case of discrepancy between the English and Hebrew list of goods, the English list of goods prevails.

In Circular 2011/07, the Israel Commissioner of Patents and Trademarks, Adv. Asa Kling, has put an end to this practice. Such notices will no longer be allowed.

It makes perfect sense that in Israel, the Hebrew list of goods prevails. Israel judges are expected to know Hebrew, and may have less than adequate English. On the other hand, why should trademark owners lose their rights due to mistakes by attorneys that may be difficult to avoid, since some nouns that represent articles in English simply don’t have accurate translations?

In practice, since Israel ascended to the Madrid Protocol last year, most applications originating abroad are filed under the protocol and the list of goods is filed in English only. This avoids the need to translate the list of goods into Hebrew altogether.

On a positive note, the issuance of this circular may indicate that the trademark department is now running normally after the tragic loss of Ms Nurit Maoz, who was brutally murdered.

We note that in the Wrangler case, the court decided that there was trademark protection for a W on the back pocket of jeans, where Wrangler had registered the mark for shirts and overalls only, and not for trousers/pants/jeans . Go figure.

Time will tell if as a result of this circular, there will be more or less ambiguity regarding the list of goods protected by a mark.

Leave a Comment » | Intellectual Property, IPO, Israel, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Israel Supreme Court Reverses Eve – Eva Trademark Decision

October 10, 2011

Back in May 2010, we reported that the then Deputy Commissioner of Patents and Trademarks, Noah Shalev Shlomovits ruled that the Aktsionerno Droujestvo Bulgartabac Holding’s  cigarette brand Eva was not confusingly similar to the Philip Morris brand Eve. See  here  for more details.

Essentially, Shlomovits ruled that the fact that the marks had different graphical elements was less important than the sound of the mark since cigarettes are bought by requesting a brand from a salesperson.  He went on to rule that since the Bulgartabac Holdings cigarette was pronounced Eva (rhyming with Never), it was very different from Eve (rhyming with weave). I was less than confused, as I would typically pronounce Eva as EEva rhyming with Beaver. I did a small survey of IP professionals and others, and am certainly not the only one to pronounce the name differently than Shmulovitz.

Anyway, Philip Morris wasn’t happy either and appealed the decision to the Supreme Court.

Counsel for Philip Morris claimed that the name Eve would be pronounced EEV in the UK, EV in France, and Eva or Yeva in  Russia. Also, cigarettes are sometimes purchased from vending machines so placing all the evidence on the sound of the name exaggerated the audible aspects of the name.

In their defense, Bulgartabac Holdings relied on Shmulovitz’ ruling and also pointed out that the name is not Eva, but rather an ‘E’ followed by a heart followed by an ‘a’  and should not necessary be assumed as being a ‘v’, although they admitted that the cigarettes are sometimes labelled Eva in Hungary. Whilst acknowledging that both cigarettes were aimed at female smokers, Bulgartabac Holdings argued that the price difference to indicate that the Philip Morris cigarette was aimed at connoisseur market, whereas their fag was more aimed at the mass market. Because both cigarettes were somewhat established, even were it argued that there was perhaps a possibility of confusion once upon a time, this was certainly no longer the case.

Somewhat refreshingly, the Israel Supreme Court quoted Maimonides, acquisition, Laws of Sale 18: 1, that passing off is forbidden, and went on to refer (perhaps somewhat irrelevantly to a responsa of Rabbi Moshe Isserles (the Rema) concerning an Edition of the Maimonides Code published by MaHaRam Padua, and also to Talmud Babli, Baba Batra 21:2, all quoted by Rabbi Navon in his article Copyright in Jewish Law, Tsohar 7:35.

Then the decision related to Article 11 of the Trademark Ordinance 1972, to prevent confusingly similar marks from issuing.  After acknowledging that an appeal is not supposed to be a retrial, the judges noted that in this case, it is not witnesses that are being reconsidered but the nature of objects. They went on to point out that analyzing the likelihood of confusion by a pedestrian application of the triple test was insufficient, and that as well as analysis, one should synthesize the evidence and come to a decision based on the total picture. With this perspective, the judges ruled that the marks were indeed confusingly similar and overturned the deputy commissioner’s ruling, preventing the marks from issuing.

The upshot of this is that Aktsionerno Droujestvo Bulgartabac Holding’s Eva brand was not allowed to be registered, and legal costs of NIS 45,000 (more than $12,000) were awarded.

Civil Appeal 3975/10 Philip Morris Products S.A. vs. Akisionerno Droujestvo, Supreme Court (Judges Handel, Hayot and Amit) 2 October 2011.

COMMENT

I am very pleased with this decision, not least becuase the judges ruled in accordance with my comments last year! We hope that more weight will be given to common sense in the ‘any other considerations’ strand of the triple test. We also applaud the reference to Jewish Civil Law in the Supreme Court decision.

Leave a Comment » | Fair Use, infringement, Israel Court Ruling, trademarks, Uncategorized | Permalink
Posted by Dr Michael Factor

Cheap Versions of Bakugan Game Imported From Far East

October 10, 2011

Spinmaster have a popular game called Bakugan that is apparently not just popular with the kids, but also with importers and judges – see here and here.

The authorized distributors and trademark rights holders have been back in court. This time against a Mr Chai Omra who imported some 40,512 sets of Bakugan from China. The sets were impounded by Customs and the rights owner sued for their destruction and NIS 100,000 for copyright infringement. He also claimed trademark infringement, passing off and unjust enrichment.

Mr Omra claimed that these were legitimate sets and was parallel importing, so there was no copyright infringement or at least that he had a defense of not knowing that these were not authorized sets.

The rights owner noted that the ball was a different size, that there were Chinese instruction cards in the box, which are not provided in original sets intended for the Western market, and the bar codes were wrong, thereby proving that the sets did not originate with an authorized manufacturer.

In his ruling, Judge Zerankin dismissed the ignorance defense, noting that Omra had bee in court before for importing toys manufactured in the Far East, and had previously shipped 15,000 Bakuga sets as well.

The Judge ruled to rule NIS 20,000 for trademark infringement, NIS 40,000 for copyright infringement and NIS 40,000 for passing off. As there was no enrichment from this shipment, he rejected the unjust enrichment claim. In addition, he ruled a further NIS 40,000 legal fees.

The Case:  T.A. 43006-08/10 Spinmaster vs. Hai Omra LTD and Israel Customs Authority,  Judge Adi Zerankin, Haifa District Court, 22 September 2011

COMMENT

The applicant requested statutory damages of NIS 100,000 for copyright infringement. Importing copyright material is indeed copyright infringement. He is entitled to statutory damages for passing off or for copyright infringement, but I don’t believe is entitled to additive statutory damages for both. Once the total damage is NIS 100,000, it hardly matters. Still I would have expected damages of NIS 100,000 for copyright infringement and NIS 100,000 for passing off, then capped at NIS 100,000 as one cannot receive more than NIS 100,000 for a single infringing event.

I am also not sure where the statutory damages for trademark infringement come from.

Leave a Comment » | Copyright, infringement, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

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