?חלית? נפצעת – Have you become ill? Have you Been Injured?

August 2, 2015

Bennett the nurse

The Center for Realizing Medical Rights LTD filed Israel trademark 243620 for the words “?חלית? נפצעת” ‘י” which mean “Have you become ill? Have you Been Injured?”. The company has a very well known campaign that starts with these words and then continues “for non-legal advice, contact…”.

The Israel Law Bar consider that the The Center for Realizing Medical Rights LTD, which employs licensed attorneys at law but is not a law firm, is illegally and unacceptably competing with them as they consider that only they or a closed list of registered and licensed professionals including accountants, tax consultants, patent attorneys, and the like, have the right to represent clients on legal issues before various government bodies such as the National Insurance and Tax offices, the patent office and the like.

The position of the Israel Bar is, of course, driven by self interest, but arguments are used such as the fact that as it is a limited company, the Center for Realizing Medical Rights LTD can default on obligations, whereas a lawyer has unlimited liability.

“My Rights – Realizing Medical Rights, LTD.”, another similar service provider with dubious legality and the Israel Bar both filed opposition to the mark. Perhaps oddly, the opponents agreed to join their oppositions.

The Applicant refused to allow the procedures to be combined arguing that to do so would not prevent contradictory rulings. The Israel Bar objects to the list of goods and My Rights objects to the mark as being generic, and the basic facts of the two opponents are also different.

The Deputy Commissioner, Ms Bracha, ruled that courts have the authority to combine proceedings under Regulation 520 of the Civil Court Procedure 1984. The President of the Supreme Court can also combine different cases with different plaintiffs and order the lower courts to consider such cases in parallel. The Trademark Regulations 1940 do not have a similar regulation but the underlying logic is the same and the parties each accept that the Patent and Trademark Office can Combine Trademark Oppositions. The question is one of whether, in the current case, it is appropriate to do so.

The prime justification for combining cases is to save the court’s time. Despite the fact that so doing is not to the Applicant’s liking, only one opposition need succeed for the mark to be canceled. There is sufficient overlap in terms of grounds for refusing the mark that may be brought by the opposers, for the Patent and Trademark Office to combine the proceedings and have one hearing instead of two.

The Applicant further argued that some of his evidence was trade secrets that should not be published and made available to both opponents. The Court ruled that as when this became applicable they would rule on each alleged trade secret separately.

In conclusion, The Deputy Commissioner, Ms Jacqueline Bracha ruled that the proceedings should be combined and gave the opponents two months to submit evidence with future deadlines following the 1940 Trademark regulations.

COMMENT

We note that Glasberg & Applebaum who are representing the Applicants are taking on their professional representative organization. We applaud them for this. The Applicant is entitled to legal representation and we rely on their lawyers to provide this. We believe that the arguments as to the legality of the applicants’ services should be tackled head on by the Israel Law Bar and not in a trademark opposition. Nevertheless, we wait to see how this develops.

Second comment. Man Walked into a Bar. Ouch. Wounded? Injured? phone…


Old Jaffa Again

August 2, 2015

orange savings box

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin.

They successfully opposed Israel trademark application numbers 220541 and 220542 and prevented it from issuing.

20542 and 220581 for Old Jaffa, are for Preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively.

Israel trademark no. 237678 covers soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3. It previously issued without opposition. In an action combined with the opposition above, the Israel trademark 220581 (Old Jaffa) was canceled.

The ruling may be found here.

The  Council for Producing Plants and Their Marketing filed for legal costs, claiming actual legal costs of 49000 Shekels. They considered that they were entitled to full costs so that they wouldn’t lose out financially.

The applicant, Yeuda Malchi, considered that the ruling by the Commissioner closed all open issues, including costs.

The Israel Patent and Trademark Commissioner, Adv. Asa Kling rejected Malchi’s position, noting that Section 69 of the trademark regulations 1972 allow the Commissioner to rule reasonable costs. Case law shows that such discretionary costs are generally ruled. Circular M.N. 80 provides a framework for requesting costs.

Having established that it was right and proper to provide costs, the Commissioner looked at the reasonableness of the costs requested.  He noted that there were two cases that were combined. The first was an opposition proceeding and the second was a cancellation proceeding and bot required a not-inconsiderable amount of work. That said, there were some items that appeared to relate to a different mark, and the costs were in dollars at a rather high exchange rate.

The Commissioner was not convinced that the actual requested costs were all deserved and ruled costs of 30,000 Shekels including VAT.


Globex trademark cancelled after opposition not responded to

July 28, 2015

Konkov Andrii Anatoliiovych filed international trademark number 1168258 that was allowed in Israel and received the Israel trademark number 257718

The mark is shown.

Globex

The mark covers a massive arrange of goods and services in classes 9 and 35.  Chicago Mercantile Exchange Inc. opposed the mark. Since Applicants did not bother to respond, the mark was canceled.


July 28, 2015

182763

IL 182763, 184179, 182759 and 182758 are trademarks owned by Krasnyi Octybar and by the “Open-Type Joint Stock Company Rot Front”

The marks cover Waffles; confectionery for decorating Christmas trees; cakes; pastries; peanut confectionery; almond confectionery; pasty; cocoa; cocoa products; caramels [candy]; sweetmeats [candy]; liquorice [confectionery]; peppermint sweets; coffee; crackers; meat pies; farinaceous foods; candy for food; fruit jellies; marzipan; custard; honey; ice cream; sherbets [ices]; muesli; mint for confectionery; cocoa beverages with milk and coffee beverages with milk; coffee-based beverages, tea-based beverage, chocolate beverages with milk, chocolate-based beverages, cocoa-based beverages; lozenges; petits fours [cakes]; biscuits; pies; fondants; pralines; gingerbread; chewing gum, not for medical purposes; sugar; cake paste; confectionery; rusks; sandwiches; almond paste; tarts; cakes

(Edible decorations for-); halvah; bread; tea; all included in class 30.

Roshen Confectionary Corporation and Dealer BMD international LRD, Kharjov Biscuit Factory, Dolina Group and Letfood LTD requested that the marks be canceled. Krasnyi Octybar and Open-Type responded by requesting that those requesting the marks be canceled deposit 150,000 Shekels to cover legal costs should they lose. They considered that the initiators of the action should be made to deposit these relatively large sums as the plaintiffs are limited companies formed outside of Israel without significant Israeli assets. The plaintiffs countered that Open Type has not provided a shred of evidence that they would have a problem paying costs should they lose.

Ms Shoshani Caspi, the adjudicator of IP disputes at the Israel Patent Office noted that Section 253a of the Company Law 1999 provides the courts with wide discretion whether or not to grant such request.  Citing Judge Gronis, she noted that with minimum evidence such costs should be deposited.  Citing 10376/07 L. N. Computerized Engineering vs. Bank HaPoalim 11/2/2009, a three stage review of such requests should be conducted. The first stage is to ascertain the economic footing of the company.  Having ascertained that the company may have problems settling their bills, the court then has to decide whether there are grounds to require the side to place a deposit or not, based on the likelihood of them losing. Only then is the third stage, which is ascertaining the amount to be deposited.

In this instance, the respondents are the plaintiffs who launched adversarial proceedings against the mark holder. The onus is therefore on them to show financial ability NOT on the mark holder to show that they don’t have financial ability. The main grounds for the bond request are that the plaintiffs are foreign entities. As far as individuals are concerned, that is not, in and of itself, sufficient grounds to require a bond to be posted.  A lack of Israel assets does not indicate a lack of ability to pay if one loses, but it does indicate a lack of ability of the other party to collect which is, after all, the rationale for the Law. This, according to the adjudicator of IP, Ms Shoshani Caspi, is sufficient grounds to open the requirement of the posting of such a bond to be considered.

Meanwhile, the companies requesting that the marks be canceled have not shown evidence of having assets in Israel and have not provided evidence of financial standing. In the circumstances, there is no reason to assume that were the plaintiffs to lose, they would be able to pay costs. Consequently, it seems fair to require the party suing for the marks to be canceled to post a bond to cover defendants costs should they prove unsuccessful.

The defendants have managed to find the resources to register and maintain their marks and there is no indication that they should have problems paying costs were they to lose. Indeed, their comments indicate that they have resources. Nevertheless, if this is indeed the case, requiring them to post bail will not adversely affect their ability to conduct this legal proceedings.

Ms Shoshani Caspi does not accept the respondent’s position that the mark is likely to be canceled. She feels that unless a case is very obvious to succeed or to fail, she should reserve judgment until the evidence is submitted. She was not impressed with comments concerning the strength of other marks of the defendants or that they themselves had not requested that a bond be made.

Weighing everything up, Ms Caspi came to the conclusion that 7000 Shekels would be an appropriate bond in this case and ordered that it be posted within 21 days, otherwise, the request for cancellation of the marks would be canceled.

Intermediate ruling, Ms Shoshani Caspi, 4th June 2015.


Adultery and Copyright – a cautionary tale

July 27, 2015

life is short
Ashley Madison is an online dating agency with a difference. Instead of focusing on the singles market, it provides its services to wannabee adulterers by inviting them to subscribe to their site and to post details about themselves, and the service helps pair up the wannabee adulterer with interested matches.
Their US registered trademark is ‘Life is short – have an affair’. How that passed the morality limitations is anyone’s guess. I expect that ‘purgatory is long and painful’ Or ‘Hell is Hot, Have an Affair’ are less effective advertising slogans.

Apart from eternal damnation, the service also has other risks. If would be adulterers profiles and perhaps, revealing photos are made available to suitable partners on line, it is not inconceivable that the would be adulterer and their bored spouse or his/her friends may simply be paired up by the service provider. One imagines that a private detective could easily discover identity of users, as could potential partners deciding that blackmail someone is more attractive a proposition than having an affair.

One imagines that blackmailers might intentionally subscribe, use attractive images obtained elsewhere, and fictitious profiles to describe themselves in order to identify targets.
In the past, people have left their computers logged on to compromising websites and have been discovered by their spouses. It has happened before and will happen again.

Ashley Madison has been hacked. Their 37 million anonymous users and estimated 170,000 Israeli users have been wholesale compromised. Not to worry, though. Ashley Madison thinks that they can use copyright law for damage limitation. There is an interesting analysis of why this doesn’t work in Fortune. See here.
The internet has changed many things, but many others stay the same. Intimate relationships have consequences. Always have and always will. Remaining anonymous when compromised and open to blackmail is far from certain.

I think the affair is likely to be short but the consequences may last much longer.


Rado Uhren AG (the Rado Watch Company) Fails to Stop Israel Company Registering Rado as Trademark for Shoes.

July 7, 2015

Rado

Rado Import and Marketing LTD filed the above mark for Clothing, footwear, headgear all in Class 25. The mark was allowed on 29 February 2012, and, perhaps unsurprisingly, Rado Uhren AG (the Rado Watch Company) opposed the registration.

Rado Uhren AG (the Rado Watch Company) claimed that the rights in the word mark RADO, including class 25, are exclusively associated with them. Under 24(1a)(1) of the Trademark Ordinance 1972, the Commissioner should prevent the mark in question from issuing. Grounds for the Opposition included that the Mark was confusingly similar to the Opposer’s marks which were well-known marks; registration of the mark was against the public order, and allowing the mark to register would mislead the public and allow unfair competition, under Sections 11(5), 11(6), 11(9) and 11(14). Furthermore, under Section 12 the mark was confusingly similar to Rado’s trading name and was applied for in bad faith.

The Opposer’s evidence was submitted as an Affidavit by Eli Holland, the CEO of Planet Time LTD which represents Rado in Israel.  Rado Import and Marketing LTD likewise filed an Affidavit of their CEO. Both parties attended a hearing before the Commissioner, and were cross examined. At the commissioner’s request, the parties submitted written summations.

Rado Uhren AG (the Rado Watch Company) is a leading watchmakers that was established in 1917 and which has a considerable worldwide reputation. Recently, the company has started selling clothing under the RADO brand, both in Israel and abroad, in a chain of Planet Time stores across the country.

Rado Uhren AG (the Rado Watch Company) has their own mark, TM 79906 in class 14 as follows:

Rado

They also have a further 5 marks in class 14 for different lines and models, RADO DIASTAR, RADO FLORENCE, RADO, RADO  D STAR and RADO JUBILE.

Rado Import and Marketing LTD was established in 1994 and claims to have spent hundreds of thousands of Shekels in advertising, and to have sold large numbers of shoes under the brand RADO in hundreds of stores, including leading Israel chain of department stores HaMashbir l’Zarchan, the Center for Orthopedic Shoes, Marco Shoes, and other retail outlets.

The Opposer, Rado Uhren AG, claims to have made continuous use of the RADO mark for decades and to enjoy an exclusive reputation in Israel and abroad for high quality watches.  Rado Uhren AG further claims that Rado Import and Marketing LTD intentionally copied their mark to benefit from the fruits of the mark’s reputation and usage of the mark was confusing to the public, particularly as the mark was virtually identical.

The Opposer considers that the marks look and sound the same, and that the additional R in the logo does not visually mitigate since the public has imperfect recall. The additional R would not generally be pronounced, as indeed, the CEO of Rado Import and Marketing LTD themselves pronounced the mark RADO and didn’t enunciate the additional R.

Rado Uhren AG claimed to be using the mark for clothing and not just watches and to have actually registered the mark for clothing in some jurisdictions. Rado Uhren submitted as evidence, a number of press releases, clips and catalogs from Israel and abroad., and footage from sports events which they had sponsored.

There were two suitcase designs, one cap and one shirt that included the RADO logo, but prior to the hearing were not yet on sale in Israel, but which Rado Uhren AG’s CEO indicated were to go on sale shortly. Rado Uhren AG’s products were available in 25 jurisdictions.

Rado Uhren AG claimed that there was a trend to sell watches and shoes together, under a common brand, and showed that Louis Vitton, Prada, Boss and Dior sold both shoes and watches under the same logo.

Rado Import and Marketing LTD countered that Rado Uhren AG’s claiming rights to the word RADO in the shoe category some 20 years after the mark being used by them for shoes, was, in itself, inequitable behavior. Since Rado Import and Marketing LTD had 20 years market presence in Shoe branding, after carefully building their reputation, the mark in Israel was identified with them.

 

The Ruling

Noting that the opposition was under Sections 11(5), 11(6), 11(9) and 11(14) of the Trademark Ordinance, the Commissioner examined each Section in turn.

Section 11(9) considers the likelihood of confusion between the requested mark and marks registered in the trademark register. Likelihood of Confusion is based on the triple test. In this instance, the marks sound the same, and, due to the dominance of the word, RADO, look the same as well.  As to the customer base, both companies market to the wider public and advertise widely. Both classes 14 and 25 are large classes. They are, however, different classes, nevertheless, one has to look into whether the classes are of the same type.

The Commissioner does not consider that watches and shoes are the same type of good. Even though they may be advertised in the same magazine, they are sold in different stores. Rado Uhren having Class 25 registrations abroad for shoes or cases does not help them as it is the local mark that is of interest.

As to other considerations, Rado Import and Marketing LTD claim that the name Rado should be pronounced Radu and is Arabic for desirable (similar to the Hebrew רצוי).  Although not convincing, The Commissioner was more impressed with the fact that the usage by Rado Import and Marketing LTD goes back 20 years, 10 of which with Rado Uhren AG’s knowledge.

The Commissioner concluded that there is no real likelihood of confusion as the goods are in different classes.

As to Section 11(14), which protects well-known marks, the law states that a mark that is identical or similar to a well known mark, even for different types of goods cannot be registered, if the mark indicates a connection between the goods and the well known mark is likely to be damaged by the registration.

The definition of a well-known mark is discussed in the Absolut vodka case (9191/03 V&S Spirit Altiebolag vs. Absolut Shoes LTD, 19 July 2004).

In deciding whether a mark is well-known in Israel, one has to consider the relevant populations and whether the notoriety is the result of marketing. Notoriety has to be local. See UB TM 93261 Pentax vs. Asahi Kogaku, the considerations for whether a mark is to be considered well known or not were listed as including: the notoriety of the mark, the amount of usage and the period under which the mark has been in use, publication, registration and enforcement, exclusivity, type of use and similarity of other marks by third parties. In this regard, acquired distinctiveness is considered better than inherent distinctiveness in showing reputation, type of goods and services, marketing channels and the extent to which the mark indicates the quality of the goods.

Both parties agree that Rado is a dominant player in the watch market, both in Israel and abroad. The word Rado appears not only on watches, but also on hats, shirts and bracelets which are, essentially, promotional items for marketing watches.

In Israel, Rado watches are available from a number of outlets, and, in 2011-2012, the income generated from Rado watches was 11 and 13 million shekels, respectively. In 2012, 2 million shekels was spent on advertising Rado watches in the media and on hoardings, including in the Hebrew, Russian and Arabic press. Furthermore, with caution, advertising abroad, such as sponsoring the US Champion Tennis Tournament in 2011 and the Kremlin Cup in 2012, and other cultural events, has an impact on the reputation of Rado watches in Israel. This leads to the conclusion that Rado is a well-known mark in the watch population.

Although Rado Import and Marketing LTD’s products are not in the same class, well-known marks can block registration in other classes. Here the considerations are whether one would assume a connection and whether the famous mark owner would be likely to be damaged.

Judge Berliner in Unilever referred to Judge Rubinstein in Absolut and ruled that

“damage to reputation is not far from misleading but is not identical to it. The Legislator differentiates. It is easier to damage reputation than to mislead, but there is still a need for the customer to see a connection, and to cause damage, one needs a real basis for this”

In this instance, the Commissioner ruled that the Opposer has not shown that the sale of shoes under the brand Rado has done them damage, and again noted that they had knowingly lived with the Rado shoes for 10 years.

The Commissioner does not see that the public would assume an association.

As far as Section 11(6) ”passing off” is concerned, the Commissioner considered that Rado had failed to prove that there had been an attempt to ‘free ride’ on the reputation of Rado watches, and so there are no grounds to cancel the mark under this clause.

The Opposer did not themselves relate to Sections 11(5) and 12 in their summaries and the Commissioner therefore felt equally able to ignore these grounds.

The Opposer wished to submit some late evidence including Facebook pages where the Applicant was using the word RADO without the additional R, but the Commissioner did not see that these would change his ruling.

In light of the above analysis, Adv. Kling ruled that the mark could be registered and, after weighing up the evidence, ruled 5000 NIS in legal costs and 20,000 in lawyers fees.

Re 244357 Rado, Adv. Assa Kling, 29 June 2015.

COMMENT

I am unhappy about this ruling, and the recently reported Coveri case, since Rado is a well-known mark that is at least being diluted. The argument that Opposer did nothing to prevent the word Rado being used for selling shoes for ten years has some validity but we note that Eden Spring’s use of the word Champagne in a marketing slogan was considered illegal and there the court did not find that the Comite Interprofessionnel du vin de Champagne (CIVC) were tardy in bringing their complaint.

Shoes and watches are not the same, but Rado is a made-up word. Not speaking Arabic I can’t comment on the Rado-Radu explanation, but I note that the word virgin is generic for olive oil, and the Israel Patent and Trademark Office nevertheless found in favour of Richard Branson’s Virgin Enterprises where an enterprising person sold candles made from solidified olive oil as virgin candles.

It seems to me that despite not acting against the shoe retailer, Rado Watches should, based on these precedents, be able to prevent the R-Rado trademark from being registered.  If the word Rado to be pronounced Radu means desirable in Arabic, that is additional grounds for the patent office to consider the mark Laudatory and thus non-registerable.

As an aside, when we got married twenty years ago, Miri and I received matching His & Hers watches (paid for by our respective in-laws). Certainly 20 years ago Rado was considered a high-quality watch. Our models were at the cheaper end of the range. I actually had nothing but trouble with mine (I call this the Geller effect. My cheaper current Seiko watch has disappeared a few days ago – I call that the Houdini effect. My wife calls it clutter).  It is certainly true that the company took repairs seriously. I never had a problem having it repaired. I eventually got fed up and no longer wear it.

As I see it, using Rado for shoes is rather like someone randomly choosing the name Rolls Royce or Ferrari as a brand, and should be treated as such.


Is a Do-it-yourself Opposer entitled to legal costs?

July 2, 2015

do it yourself

Unipharm, an Israel ‘Branded Generic’ supplier has a long history of successfully opposing and canceling pharmaceutical patents.

In this instance, they successfully opposed IL 164925 titled “Pharmaceutical Compositions and Kits Comprising Combinations of Valsartan, Amlodipine and Hydrochlorothiazide” to Novartis which led to the application being abandoned. Where an Opposer wins such an Opposition proceeding, the opposer is entitled to claim real costs accrued in so doing.

In this instance, Unipharm, represented by their CEO Dr Zebulun Tomer and without legal counsel filed a Notice of Opposition and statement of case directly (without using the services of their outside counsel, Adv Adi Levit).

The opposition resulted in Novartis abandoning Israel Application No. IL 164925 titled “”. As he did not use legal counsel, Dr Tomer asked for an assessment of costs based on the quantity weight of material filed and the number of references that had to be learned, rather than real and actual costs incurred.

Novartis sees things differently. They believe that Unipharm have failed to show any additional work beyond what they usually do regarding every patent application in Israel, and, citing Regulation 516a of the Civil Procedural Law 1984 and various Israel Patent Office Decisions, argued that consequently no costs should be awarded.

Discussion

The Deputy Commissioner Ms Jacqueline Bracha noted that both sides agree that were Unipharm to have engaged professional counsel they would be entitled to real costs incurred provided that, after judicial review, those costs were considered realistic and necessarily incurred in the opposition until the point where the Applicant gave up. The argument in this instance is simply a question as to whether a Do-It-Yourself Opposition conducted by Unipharm’s management entitled them to some sort of compensation for the time spent and work performed on the opposition where they chose not to engage outside counsel.

Ms Bracha noted that without any paper work to go on such as an affidavit from the CEO or the firm’s accountant indicating how many hours were spent by staff and what their time was worth, it is difficult to estimate costs, and even so called ‘estimated costs’ have to be anchored to something.

Unipharm claim that examination of the Statement of Case which was the last filing before the application was abandoned, and comparing to other cases provides prima facie evidence of time spent. In IL 143088 where Unipharm successfully opposed Glaxosmithkline LLC’s patent, Unipharm were awarded 2500 Shekels including the fee for filing the opposition – which was clearly incurred in this instance as well.

Novartis countered that in IL 166621 where Unipharm successfully opposed an application filed by Neurocrie Bionsenses Inc. and requested 110,000 Shekels costs, the Commissioner assessed the costs and noted that the work by the CEO was not proven.  Furthermore, in other precedents, the Israel Patent Office has ruled that employees time that was within the course of the daily work should not be considered as being a recoverable legal expense. In the Neurocrie Bionsenses case, the Commissioner ruled costs of 6000 Shekels by way of estimate – and, in that case, the application was abandoned after evidence was filed.

Ms Bracha ruminated that Costs are not a punishment for the loser, but are compensation for the winner. That said, the opposer is providing a public service [in causing the canceling of a patent application that should not issue on its merits due to lack of novelty, obviousness, etc]. This is very different from most civil cases where a ruling only affects the parties concerned. Ms Bracha considers the public service aspect of more significance than the significance to the opposer themselves.

In 248/95 Fabio Perini SPA vs. Industrie Meccanishe Alberto Consani SPA, President Winograd considered the opposer as being a ‘soldier of the commissioner’. This public good aspect was also recognized in the Opposition proceedings IL 200343 Tzori Naaman Victor LTD vs. Ronen Aharon Cohen, 23 March 2015. MS Bracha then drew a parallel between the Opposer and someone bringing a class-action who is entitled to compensation for the public duty performed.

Weighing up all the above (and, I suspect rolling the dice), costs of 3500 Shekels were awarded to Unipharm.

IL 164925 to Nvartis, Opposed by Unipharm, Ruling re Costs by Jacqueline Bracha, 5 May 2015

COMMENT

Health Warning – It is highly inadvisable to file patent opposition procedures without professional counsel. It is highly inadvisable to forgo legal counsel when going head-to-head with one of Israel’s larger Patent firms representing a multinational company that is ranked by Forbes as the third largest healthcare company worldwide among other rankings that Novartis is proud of.

That said, Dr Zebulun Tomer has handled more patent oppositions than the vast majority of Israeli attorneys-in-law specializing in IP and of Israel patent attorneys.

As to the issue of whether compensation is deserved, one could regard Dr Tomer as saving Novartis real lawyers fees. Certainly Dr Tomer’s time has some value. Nevertheless, I think there is an assumption on Ms Bracha’s part that the result of the patent application being abandoned means that there is merit in Unipharm’s opposition. This may well be the case. They have an impressive track record killing pharma patents as readers of this blog will be aware. But herein lies the rub.

You see, Novartis and others have come to realize that it may be strategically sensible to abandon Israel patent applications that are opposed by Unipharm irather than to fight for them. The Israel market is small. If Unipharm present their evidence and arguments, not just the patent in Israel but the worldwide patent family could be invalidated. This has happened to Smithkline, Lundbeck and others that Unipharm have taken on in recent years.

If Unipharm has not had to win their opposition on its merits, there may be no prima facie basis for assuming that the patent is actually invalid. Indeed, I opposed a patent on behalf of an Israel Government Ministry (the Ministry of Religion) against a subcontractor (offering high density but nevertheless, Halllachically permissible burial solutions), and though the subcontractor explicitly denied all my points he nevertheless decided to abandon the allowed patent rather than to fight the Israel Government who is the major client. In that case I am fairly sure that we had good arguments. In this instance, who knows what Unipharm would have argued?

Public good is also more nuanced. Non-patented medicine is generally cheaper which is generally considered as being in the public interest. However, without the temporary monopoly rights afforded by patent protection, pharmaceutical companies will invariably not undergo clinical trials. Causing a promising drug to be abandoned is not in the public interest. Furthermore, pharmaceutical research is not cheap. Companies like Novartis need sales revenue to be able to develop new drugs.

I suspect that the pharma lobby will be unhappy with this decision, and those that see Unipharm as a Robin Hood pharmacist will applaud it. That as may be, I suspect that neither side will appeal as the costs in so doing will be totally out of proportion to the possible financial benefits.


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