Israel Patent Office Server Outage

May 18, 2015

server

With reference to Fig. 1, the Israel Patent Office server 1 will be down from 5 PM (Israel time) on 18th May until 6 am the following morning. This means it will be disconnected from network 2 and patent attorneys 4A-C will not be able to access content stored in databases thereon (Fig. 2).

This is a planned outage due to maintenance requirements.

TOS-day_of_the_dove_klingons

Rumours that there is a planned Klingon takeover of the Israel Patent Office are believed to be without substance.


US Court of Appeals Rules Standard Innovention’s Adult Toy Modest

May 14, 2015

toy

According to the International Trade Commission, Standard Innovation’s patent US 7,931,605 titled as used in their kinesiotherapy devices (that’s the CAFC term, Standard Innovation refers to the device as the We-Vibe product) is infringed by Lelo’s adult toys.

Lelo’s claims of invalidity due to obviousness were rejected.

On Appeal the Federal Circuit overturned the ITC ruling.  Since under section 337 investigations, a party can stop patent infringing products from being imported into the US if the company is shown to have made “significant investment” in the US. The Federal Circuit considered that as the components were made in China, Standard Innovention’s investment was modest.

The ruling is here.

The ruling is actually significant in that it relates to whether patents are enforceable in the US by Anton Pillar injunctions and customs seizures, etc. where the product is manufactured in China from largely off-the-shelf components.

What is the point of having a patent if you can’t enforce it?

Actually, to be fair, the patent is enforceable, or at least, there is a presumption of validity and this may be used to obtain judgement and possibly and probably preliminary injunctions. It is not, however, enforceable through the ITC.


LES Event on Employee Inventions and University Inventions

May 11, 2015

les

LES Israel is hosting an event on Monday May 18th 2015 on Employee’s Inventions and University Inventions in Israel and Germany.

Speakers include Prof. Dr. Heinz Goddar, Adv. Eran Bareket, Adv. Tal Band and Adv. Gil Granot-Meyer from Yeda R&D.

Full details may be found here

COMMENT

The topic of service inventions is a recurring theme. I co-hosted a conference on this together with WIPO and ONO back in 2009. See here.

Following this event, the State of Israel sued Omrix claiming that their blood clotting adhesive was a govt. service invention. I argued that the strategy taken was flawed in that it invalidated the US patent. Furthermore, I noted that the attorney who the State outsourced to had an apparent conflict of interest as Omrix had been bought out by Johnson & Johnson and the attorney had been handling their trademark portfolio.

More recently, the State of Israel sued employees of the Volcani Institute claiming that they had stolen a service invention.

The topic is widely covered by Dr Shlomit Yanitzky Ravid in a book based on her PhD thesis. See here.


Upcoming conferences

April 28, 2015

IPR conference

With the annual INTA bun fight in San Diego, it is easy to overlook other IP events.

Kim Lindy’s highly professional annual IP Best Practices Conference is scheduled for May 11th and 12th in Tel Aviv. Details may be found here.

Wipo

The Ninth WIPO Advanced Intellectual Property Research Forum, a joint three day collaboration between WIPO and the Faculty of Law, Hebrew University of Jerusalem, is taking place from May 26 to May 28 at the WIPO campus in Geneva. This initiative was put into place and initially organized by Ms. Li Maor and is headed by Dr. Guy Pesach, Associate Professor, Faculty of Law, Hebrew University of Jerusalem. Moshe Leimberg has taken over from Li Maor, and can be contacted for more details.


Nanobiotica

April 26, 2015

nanobiotica

Israel Trademark No. 246664 for “Nanobiotica” was filed by Dieteti Kol LTD. On it being allowed, Nanobiotix filed an opposition.

Nanobiotix have a pending mark of their own, No. 243678 “Nanobiotix” for classes 10, 42 and 44, and they requesting suspension of the opposition pending a decision in the Nanobiotix case which they consider as relating to the same issue. That case was the subject of a competing marks proceeding, but was allowed and is now being opposed.

Nanobiotix argues that the present proceeding should be suspended to save legal resources and to prevent contrary rulings issuing. The Applicant claims that there is ongoing negotiations towards a compromise. However, the Opposer denies that this is the case.

The Applicant does not wish to suspend the proceeding and considers the Opposer’s request as inequitable in light of the negotiations. The Applicant further considers the Opposer’s case is weak, inter alia due to them not yet having products on the market, whereas Nanobiotica is a brand that has already been launched and has clients.

Ruling

The Deputy Commissioner, Ms Jacqueline Bracha, ruled that the issue at stake is that of a pending proceedings, and that in 9/75 El Okvi vs. Israel Lands Authority, P. D. 29 (2) 477  it was ruled that the authority to suspend proceedings should be used to accomplish two aims: (i) to avoid unnecessary work for the opponent, and (ii) to avoid unnecessarily troubling the courts, which occurs where two courts rule on the same substantive, legal or factual questions and the duplication leads to a danger of inconsistency.

In the present situation the two proceedings relate to identical issues but the tribunal is identical, so there is no reason why the rulings should be contrary. Consequently, there is no rationale to suspend the hearing and Ms Bracha rejected the request.

However, since the two parties acknowledge that this issue is identical, both in terms of law and in terms of the identities of the parties involved, the two cases should be combined and heard together. This is appropriate on grounds of efficiency and to minimize use of court time, and the costs to the parties themselves. The trademark regulations do not provide guidance for combining cases, and guidance may be drawn from Regulation 530 of the Code for Civil Court Proceedings 1984.

The opposition concerning Israel Trademark No. 243678 “Nanobiotix” has reached the evidence stage and on 11 January 2015, the Opposer there, who is the applicant in this case, submitted her evidence. To facilitate combining the two cases, the combination will occur after both sides has submitted their evidence in each case. The parties may submit evidence relating to the two cases separately or in a single submission.

No costs were awarded.

COMMENT

There was an earlier interim ruling regarding posting a bond for these marks. See here. The C.E.O. of Nanobiotica, Zion Yedid, is fighting without legal representation. Nanobiotix is represented by Adin – Liss. We suspect that this has at least passing relevance to the attempt to suspend the proceeding instead of the obvious consideration to combine the cases.


Can the appearance of a smartphone be trademarked?

April 12, 2015

We recently reported a circular summing up Israel Patent Office policy regarding 3D trademarks. Whilst radiator caps and the like are clearly registerable, in general, the Israel Patent Office is wary of allowing trademarks for the shape of functional articles or for novel packaging and it is necessary to show that the shape is not merely functional but has acquired distinctiveness.

Smartphone

It seems that the circular was a prequel to a recently published ruling wherein the Israel Patent Office refused to allow the shape of an Apple i-phone to be registered as a trademark. The mark in question is IL 236294 as shown above. The mark covers “Handheld mobile digital electronic devices for use as a mobile phone, digital audio and video player, handheld computer, personal digital assistant, electronic organizer, electronic notepad, electronic calendar, electronic book reader, calculator, and camera, for sending and receiving electronic mail and other digital data, and for accessing the Internet; all included in class 9″. The mark was filed in March 2011 and claims priority from a Hong Kong mark filed in September 2010.

The Examiner considered the requested mark as an image of the good being sold and not a trademark showing the origin of the good and therefore refused it under Section 8a of the Israel Trademark Ordinance 1972, following the guidelines of Circular MN 61 from 2008.

The examiner considered the correct protection for that shown is as a registered design and that in order to register the design as a trademark it is necessary to show that it is neither aesthetic or functional in essence, and has acquired the trademark characteristic of indicating origin through usage.

The Applicant responded that the image was of an I-Phone 4 which was exclusively associated with Apple and was well recognized and respected worldwide, and had successfully been registered as a trademark in many countries, including Australia, the US, Ukraine, turkey, Switzerland, Japan, France, the EU, and Hong Kong. The Applicant further requested that the mark be allowed under Section 16 based on the corresponding US registration no. 3,470,983. (Section 16 allows marks having minimal distinctiveness to be registered based on a registration in Applicant’s home country).
The examiner pointed out that the issue wasn’t minimal distinctiveness or the lack of it, but rather if the requested mark is the appearance of an article that is aesthetic or functional in essence, and so upheld the refusal.

The Applecant Applicant reiterated that the mark had acquired distinctiveness and that it was identified with the applicant and brought an Affidavit from Thomas R. La Perel, Apple’s general legal counsel. In the Affidavit, La Perle stated that “The Application is for the design of Apple’s distinctive iPhone telecommunications device featuring Apple’s unique product configuration and colorful icon display”. La Perle stressed the product’s design and that “Consumers identify the get up with the product and Apple as its source. He noted that Apple had spent vast sums advertising and promoting their product and gave evidence for this.

RULING
In her ruling, Ms Bracha noted that trademarks may be 2 or 3 dimensional and are suppose to be indications by the manufacturer of the origin of the goods. In this case, the mark was not indicated as being a three dimensional mark and it is correct to assume that it is a two dimensional mark, and the applicant argued that it was a two dimensional mark of the face of the i-phone which is rectangular with curved corners, with icons in rows of four, as a feature that can be changed.
In Appeal 11487/03 August Storck KG vs. Alfa Intuit food Products LTD (Toffiffee) the Supreme Court ruled that the appearance of a good (whether 2d or 3d) may serve as a trademark but only if it is very different from that typical of the type of product, such that the consumer comprehends it as an indication of origin. This is eseentuially what the ECJ ruled in C456/01, 457/01 Henkel KGaH v. OHIM (2005) 34-39 http://curia.europa.eu/en/content/juris/index.htm which referred to August Storck KG vs. OHIM sections 25-29 to the effect that the law applies to two dimensional images of the three dimensional product.

Thus whether or not the mark is two or three dimensional, if it is a representation of the product or its wrapping, the issue is whether it is functional or aesthetic in essence, or serves as an indication of origin.

Applicant argued that the image is of the front surface and is flat, so three dimensionality and product appearance is not an issue. The deputy commissioner disagrees.

Here the Deputy Commissioner related to recently issued circular 032/2015 that replaces MN 61 and provides a certain leniency to representations of flagship products.

In this instance, the registration in the US is for the shape of the phone with specific icons in a specific pattern and the application in Israel is very much broader.

In Europe, EC Regulation 207/2009 states that:
“1. The following shall not be registered or, if registered, shall be liable to be declared invalid:

(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;”
Regulation 3 continues to state that marks that have an acquired distinctiveness may be registered provided that they are not one of the alternatives in Regulation 1 which is an absolute bar to registration.
Citing T.C. Jehoram, C. van Nispen, T. Huydencoper European Trademark Law, p. 103 (2010(:
“In connection with the fact that the absolute ground for exclusion of Article 3(1)(e) Directive cannot be overcome by acquiring distinctive character through use, it is also relevant to asses whether or not the shape previously gave the product substantive value. The grounds for exclusion may not arise before the shape has acquired a reputation as a distinctive sign. In that case: once affected by the absolute exclusion, this exclusion always applies.
In other words, before considering whether or not the mark has acquired distinctiveness, it is necessary to address whether it is in a class of goods that can not be registered under any circumstances without the company name or the like.
The Applicant argued that the issue is not whether the design is aesthetic or functional, but if it is exclusively aesthetic or functional. Thus in cases like this where the appearance is functional or aesthetic but not exclusively so, and where the consumer would identify the appearance as a source of indication of the product, the appearance should be registerable.
The Supreme Court used the word significant functionality or aesthetic character (ממשי) where as the European court used the word exclusive (בלעדי), to the effect that as far as Israel is concerned, a significant functional / aesthetic characteristic is sufficient to prevent registration, even if the good has acquired distinctiveness.

The applicant tried arguing that since the appearance could vary somewhat, the appearance of a smartphone cannot be considered essentially functional / aesthetic and thus not registerable.

The Deputy Commissioner accepted that function could be attained differently, but considered the design as aesthetic and thus non-registerable as a trademark, though registerable as a design. She was not prepared to allow registration on the grounds that other smartphones were variations on the theme, considering the design aesthetic.

In the State of California, the I-phone was recognized as having “unregistered trade dress” and the applicant considered this fact as indicative that there was something that could be registered as a trademark. The Deputy Commissioner cited IL 169447- IL 16949 Ein Gedi Cosmetics to the effect that even in the US trade-dress is relevant to unfair competition but to trademark registerability:

Restatement of Unfair Competition (3rd):
“The term ‘trade dress’ is often used to describe the overall appearance or image of goods or services as offered for sale in the marketplace. ‘Trade dress’ traditionally includes the appearance of labels, wrappers, and containers used in packaging a product as well as displays and other materials used in presenting the product to prospective purchasers […]”
Furthermore, in the US, as far as trade dress of a product and not its packaging is concerned, one requires acquired distinctiveness.
The Deputy Commissioner considered arguments by the Applicant as beign the first to launch a product with this appearance as of relevance to the issue of design registerability but irrelevant to trademark registerability per se.
As far as the graphic user interface GUI is concerned, the Deputy Commissioner cited Rachel Stigler, Ooey GUI: The Messy Protection of Graphical User Interfaces, 12 Nw. J. Tech. & Intell. Prop. 215 (2014).http://scholarlycommons.law.northwestern.edu/njtip/vol12/iss3/3 to the effect that:
“…trade dress right only attach once the GUI becomes so distinctive that it is recognizable by a majority of consumers (i.e., achieves near-famous status)…”

In general,design registration is preferable to copyright or trade dress:

“While at least one commentator suggests that design patents should be eliminated, arguing that protection afforded by copyright and trade dress is enough, design patents provide a more clearly-defined scope of GUI protection than copyright or trade dress (individually or combined), are gaining momentum in the courts and in the software industry, and are becoming faster and cheaper to obtain.”

In conclusion, Ms Bracha considers that since Toffiffee, the Israel Court has departed from the US and considers that not only does a product shape not have inherent distinctiveness but to be registered, it cannot have a significant inherent functionality or aesthetic character.

As to the trade dress issues, Ms Bracha noted that Israel law was not sufficiently clear if this is to be considered passing off, but did not consider that the design could be registered as a trademark due to its functional and aesthetic aspects.
Ms Bracha considered the acquired distinctiveness issue moot, but nevertheless argued that in this instance, the i-phone does not have acquired distinctiveness as a trademark. She did not consider Section 16 relevant.

Ruling re IL 236294 by Deputy Commissioner Ms Jacqueline Bracha, 19 March 2015.

COMMENT

apple suaceThe issue is whether the design is used to indicate Apple as the sauce source.

The problem remains that the design is identified with Apple, and is a design and should be treated as such. It cannot fairly be registered as a trademark. In my opinion, after A.Sh.I.R. torts of unjust enrichment and passing up could be brought if there is a case of passing off. Once competitor clearly writes Samsung or similar on the front of the case, I am not sure that they can’t copy the design unless it is registered.

This case is reminiscent of Interlego where Lego tried to obtain copyright for their distinctive brick design. Lego is a design and not a copyright. The appearance of the i-phone is a design and not a trademark.

The Israel Patent Office does not generally allow marks for functional or aesthetic elements, but only if they are used as an indication of origin, i.e. as a trademark. If the above image is shown on the outside of a box, is a graphic label of what is inside, or is it an image of what is inside?

The Israel Patent Office is applying its policy fairly in what is perhaps a difficult case. We understand that Apple may appeal this decision to the courts. That is the correct procedure with regards to patent office policy.


WIPO To Make Two Stops in the Holyland

March 18, 2015

road show

WIPO, the World Intellectual Property Organization that is manages the PCT system for filing International patents and the Madrid Protocol for filing international trademarks has a team of roving lecturers who will be performing lecturing in Israel.

Concerts Seminars are scheduled for 13th April in Beer Sheva and for the 15th April in Haifa.

More details may be found here

The provisional program in Beer Sheva Park Carusso for Science, 79 Atzmaut Street, is as follows:

Monday, April 13, 2015

9.30 a.m. – 9.50 a.m. Opening Session

Welcome addresses by:
Mr. Asa Kling, Director, Israel Patent Office (ILPO)
Local industry\Chief Scientist\Politician TBD
Mr. Yoshiyuki Takagi, Assistant Director General, Global Infrastructure Sector (GIS), WIPO

9.50 a.m. – 10.10 a.m. Topic 1: The ILPO as WIPO’s cooperation partner and service provider for the users of the IP system

Speaker: Mr. Asa Kling, ILPO\

10.10 a.m. – 10.30 a.m. Topic 2: Introduction to WIPO
Development of the International Legal Framework
Major Intellectual Property Economic Studies

Speaker: Mr. Moshe Leimberg, Senior Program Officer, Section for Coordination of Developed countries, Department for Transition and Developed Countries (TDC), WIPO

10.30 a.m. – 10.45 a.m. Topic 3: The Patent Cooperation Treaty (PCT) –
Introduction and Future Developments

Speaker: Mr. Matthew Bryan, Director, PCT Legal Division, Patents and Technology Sector, (PTS), WIPO

10.45 a.m. – 11.00 a.m. The PCT – The actual practice (questions, experiences, discussion)

Moderator: Mr. Michael Bart, Head, PCT division, ILPO

Speakers: Mr. Matthew Bryan, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.00 a.m. – 11.15 a.m. Coffee break

11.15 a.m. – 11.35 a.m. Topic 4: Global Intellectual Property Systems
The Madrid System for the International Registration of Marks
The Hague System for the International Registration of Industrial Designs

Speaker: Mrs. Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector (BDS), WIPO

11.35 a.m. – 11.50 a.m. Global Intellectual Property Systems: The actual practice (questions, experiences, discussion)

Moderator: Ms. Anat Levi-Ne’eman, Head, Trademarks Division, ILPO

Speakers: Ms. Debbie Roenning, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.50 a.m. – 12.10 p.m. Topic 5: WIPO’s Arbitration and Mediation Center

Speaker: Mr. Matthew Bryan, WIPO

12.10 p.m. – 12.40 p.m. Topic 6: Global Databases for Intellectual Property Platforms and Tools for the Connected Knowledge Economy, with an emphasis on WIPO Green and WIPO Re:Search

Speaker: Mr. Yoshiyuki Takagi, WIPO

12.40 p.m. – 1.00 p.m. Topic 7: WIPO digital copyright developments

Speaker: Mr. Paolo Lanteri, Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO

1.00 p.m. – 1.30 p.m. CLOSING SESSION

Questions and Answers

1.30 p.m. – 2.30 p.m. Lunch break with specific Sessions (Patents, Trademarks, Databases, and Copyright)

2.30 p.m. – 3.00 p.m. Ceremony to present the ILPO prize for an academic thesis on various fields of IP

Presenter: Dr. Daniel Ben Oliel, Associate Professor, Faculty of Law, Haifa University

The Wednesday Program in Haifa will be held on Wednesday, April 15 2015 at the Technion in the Batler Hall, Neeman Centre, Technion:

9.00 a.m. – 9.20 a.m. Opening Session

Welcome addresses by:
Mr. Asa Kling, Director, Israel Patent Office (ILPO)
Local industry\Chief Scientist\Politician TBD
Mr. Yoshiyuki Takagi, Assistant Director General, Global Infrastructure Sector (GIS), WIPO

9.20 a.m. – 9.40 a.m. Topic 1: The ILPO as WIPO’s cooperation partner and service provider for the users of the IP system

Speaker: Mr. Asa Kling, ILPO

9.40 a.m. – 10.00 a.m. Topic 2: Introduction to WIPO
Development of the International Legal Framework
Major Intellectual Property Economic Studies

Speaker: Mr. Moshe Leimberg, Senior Program Officer, Section for Coordination of Developed countries, Department for Transition and Developed Countries (TDC), WIPO

10.00 a.m. – 10.15 a.m. Topic 3: The Patent Cooperation Treaty (PCT) –
Introduction and Future Developments

Speaker: Mr. Matthew Bryan, Director, PCT Legal Division, Patents and Technology Sector, (PTS), WIPO

10.15 a.m. – 10.35 a.m. The PCT – The actual practice (questions, experiences, discussion)

Moderator: Mr. Michael Bart, Head, PCT division, ILPO

Speakers: Mr. Matthew Bryan, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

10.35 a.m. – 10.50 a.m. Coffee break

10.50 a.m. – 11.10 a.m. Topic 4: Global Intellectual Property Systems
The Madrid System for the International Registration of Marks
The Hague System for the International Registration of Industrial Designs

Speaker: Mrs. Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector (BDS), WIPO

11.10 a.m. – 11.25 a.m. Global Intellectual Property Systems: The actual practice (questions, experiences, discussion)

Moderator: Ms. Anat Levi-Ne’eman, Head, Trademarks Division, ILPO

Speakers: Ms. Debbie Roenning, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.25 a.m. – 11.45 a.m. Topic 5: WIPO’s Arbitration and Mediation Center

Speaker: Mr. Matthew Bryan, WIPO

11.45 a.m. – 12.15 p.m. Topic 6: Global Databases for Intellectual Property Platforms and Tools for the Connected Knowledge Economy, with an emphasis on WIPO Green and WIPO Re:Search

Speaker: Mr. Yoshiyuki Takagi, WIPO

12.15 p.m. – 12.35 p.m. Topic 7: WIPO digital copyright developments

Speaker: Mr. Paolo Lanteri, Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO

12.35 p.m. – 1.00 p.m. CLOSING SESSION

Questions and Answers

1.00 p.m. – 2.00 p.m. Lunch break with specific Sessions (Patents, Trademarks, Databases, and Copyright)

COMMENTS

We suspect that this portends Israel joining the Hague System for the International Registration of Industrial Designs or some other design upheaval.

In general I applaud the idea of not doing every seminar in Tel Aviv or Jerusalem. However, the majority of practitioners to not live in Haifa or Beer Sheva. Why start these events at 9 am? Surely a 10 am kick-off would be more appropriate where people are traveling in?


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