After the tragic murder of Ms Nurit Maoz, head of the Israel Trademark Department, Ms Anat Levy, her deputy, with 20 years experience in trademark issues has been the acting Head of the Israel Trademark Department. The Israel Patent Office has now announced that following a tender, she had been appointed as the Head of the Trademark Department. We congratulate Ms Anat Levy and wish her success in her new position.

Morgan D. Rosenberg and Richard Apley have now published a companion volume: Business Method and Software Patents, A Practical Guide.

The 512 book looks impressive from the outside, in its smart two-tone grey binding with the publisher, Oxford, written in classic serif capitals on the spine. from the outside, therefore, the work looks impressive and is a valuable boon for display shelves viewable by clients.

From the inside, the book is a little more disappointing. In fact, it is a damp squib reminiscent of the long-awaited re Bilski Supreme Court decision regarding business method patents.

The authors have written a short essay on re Bilski, the prior art to that decision and the current state of the machine-or-transformation test as effectively the benchmark despite the door remaining open for other tests. The essay is competent, if a little pedestrian.

There is a short chapter on software patents and algorithms, that demonstrates Beauregard claim drafting, but adds little to their previous guide.

Oddly, the book includes therapeutic methods and methods of playing games as examples of business methods. The only obvious link is that most other jurisdictions consider these not patentable subject matter, however the book only relates to US patents. In principle, there is nothing wrong with a book relating to one jurisdiction, and the US is still the most important for most clients. Nevertheless, since the US allows patents for subject matter considered non-patentable elsewhere, a warning to readers that some of the author’s issued patents wouldn’t have a hope elsewhere would have been a welcome addition.

There is a fascinating example of an issued patent for a therapeutic treatment. US 7,288,077 “Device and Method to Alleviate Lower back Pain”, where the method comprises providing a device and the patient lifting his/her knees and rotating his/her buttocks.  One wonders how such claims could ever be enforced. Even weirder is US 7, 895,057 that is directed to a method fo providing postpartum treatment for enhancing comfort, physical and psychological wellbeing of a patient shortly after the birth of the child. This patent consists of plonking the patient in a wheelchair and carting her around to have her hair done, a message and skin care medicaments applied. It is surmised that the provision of the wheelchair ties the method to a machine. My theory, based on the patent issuing in February 2011, is that it was allowed in an attempt by an incompetent examiner increasing his examination rate before the end of the year. 

Most of the book, pages 103 to 515, are appendices, many of which being examples of US patents that are easily obtainable over the Internet and printable in A4 or viewable as text on the computer screen. Why would anyone want a half-size (approx A5) version? I am anyway, removing my glasses to read the tiny print of patents, so see little advantage in reducing the print size. The entire Bilski vs. Kapos Appeal is also reproduced in full. Like many practitioners I read the decision when it came out. it was sufficiently vacuous that I have no desire to have a copy on reference and shredded the decision long ago. If I should need it again, I reckon it will take me less time to find it on the Internet than to get up from the computer, find the book and open it.

The book is largely padding, and it is not a tome that I can recommend.

It would have been better if the first hundred pages were condensed and then added to the Essentials of Claim Drafting, with the duplication omitted.

Business Method and Software Patents, A Practical Guide, by Morgan D. Rosenberg and Richard Apley, Oxford University Press, February 2012. $185.

Available here. 

Obtaining patent protection  in Israel is not always plain sailing and there are stringent prior art disclosure rules. Nevertheless, applications may be filed in English. Furthermore, if a claim set has issued in a corresponding application in one a long list of examining countries, there is a procedure for obtaining the same claims in Israel without substantial examination.

One quirk of the Israeli patent system is that there is still no automatic 18 month publication (yet).

After examination, allowed patents publish, and during the next three months oppositions may be filed.

Until now, this post-allowance examination cost about $150. The fee has now been cancelled.

This means that patenting in Israel should be even cheaper!

Background

In 2009, Judge Michal Agmon-Gonen ruled that a the anonymous owner of a website streaming UK premier league match broadcasts was not guilty of copyright infringement, since streaming is neither broadcasting nor cable distribution, and thus there is no infringement of the transmission clause, and since no permanent copies are made, but the game is watched live, there is no copyright infringement.

Agmon-Gonen went on to rule that since there was no infringement, there were no grounds to disclose the identity of the site owner.

THE APPEAL

On appeal, the Israel Supreme Court overturned the ruling, based on Tele-Event Decision, accepts that there is copyright in the coverage due to the choice of camera angles and editing, despite taking a mere 5 seconds or less. They concurred that the actual match is not copyright protected, but disagreed with the court of first instance in that they considered the edited coverage as being a creative work.

The defendant, being anonymous, prevented his cross-examination regarding fair use, but there was indication that he benefited from advertising revenue and solicited donations from viewers so his use was arguably commercial. The appellants claimed that they could not cross-examine him on this properly. Furthermore the streamed matches were not transformed in any way, preventing a transformative defense being offered.

The ruling that there was no infringement was overturned, and theNIS50,000 costs awarded to “ploiny” (john Doe – see Book of Ruth) were cancelled.

However, Deputy President Rivlin backed by Judge Meltzer, ruled that there were insufficient grounds under the current law, to force the Internet Service Providers to disclose Ploiny’s identity. Handel dissented.

COMMENT

The Supreme Court was correct to overturn the copyright decision. A narrow philological reading may be acceptable in extreme circumstances where there is no justification for a wide reading. Here the term broadcasting over cables or wireless covers the internet quite well and there is no philosophical justification to exclude it. People do not have a right to watch international sports events for free. I think if we concerned ourselves with human rights like security, health, freedom of expression and property, and didn’t cheapen the concept of rights to include the right to watch live football without paying for it, the world would be a farer place.

It costs to host football tournaments and sponsorship, ticket sales and broadcasting rights defer the cost, spreading it amongst the supporters.

On a case by case basis, if a government wants to make continuous support conditional of major matches being transmitted for free, that not does remove copyright from the event.

 I am generally against finding ISPs responsible for policing the network, but am not sure that I can see justification in maintaining secrecy of copyright infringer, it is neither freedom of speech or to create, but freedom to benefit from other’s creation. Sport, like any other cultural activity can be commercially marketed to interested parties. There is competition between different sporting events, and if premier league TV is too expensive, there is always the little league. Highlights are generally shown on free television.

It seems that Judge Rivlin felt that without legislation, their hands were tied against revealing the identity of the site-owner. Handel was close convinced, but out-voted. I am generally in favour of judges interpreting within the law and against judicial activism so generally applaud decision to call on the Knesset to rule on topic.

Another point of interest: there seems consensus that watching illegal TV streaming or listening to pirate radio is covered by fair use doctrine.

9183/09 Appeal to Supreme Court by the Football Association Premier League vs. Ploiny and the Legal Counsel of the Government 13 May 2012.

Along with some 8000 fellow practitioners, I flew into Washington last week for the 133rd meeting of the International Trademark Association.

I changed flights at London’s Heathrow Airport, arriving in from Israel to terminal 1 by El Al, and changing to terminal 3, for American Airways, where, due to it being the first anniversary of Osama Bin Laden’s assassination, the security was extra-tight, and everyone was taking their shoes and belts off. Delays were encountered, and it took quite a while to get through, get dressed, and to reach the American Airways desk to learn that the flight was shared with British Airways and would be departing from terminal 5. Another coach ride, queue, X-Ray, unpacking and pat-down later, I settled down for a four-hour wait.

Washington was lovely. The city is dignified and elegant and reeks power and influence from its Grecian and Romanesque temples and monuments to democracy and the Federal government.  The streets are clean and wide and laid out on a grid system. Provided one is sufficiently awake to remember the sequencial order of numbers and of the letters of the English alphabet, one can easily find one’s way around. Unlike San Francisco, the city is also flat, so the grid system makes sense.  Most receptions and hotels were in easy walking distance of each other and of the conference center.

The INTA organizers, as always, thoughtfully provided a table of Kosher food at the opening reception. However, for some silly reason it was situated by the main entrance, rather than tucked into a corner. Consequently, large number of conventioneers from all nationalities and religions descended on the burekas and salads on the kosher food table, oblivious of the fact that the offerings on the regular tables appeared to be rather more appetizing. Some late-comers who kept strictly Kosher, missed out on getting anything to eat. However, this was more than compensated for by the bar providing both Chardonnay and Merlot Israeli wines from the Kosher Barkan winery.

On the first day, I sat in on both the INTA bulletin and Non-traditional trade-mark sub-committees for the Middle East and Africa, doing my bit to put Israel on the map. Socializing with representatives from neighboring states in the Middle East was pleasant as always, but unlikely to bring in much work.

For a fun networking experience, that is totally fruitless, I doubt anything beats speed-networking. In an hour consisting of 20 three-minute slots I met attractive ladies from the Phillipines and the Dominician Republic, and delightful professionals from the Iran and Saudi Arabia. We promised each other all our work to our respective jurisdictions and I threatened to arrange a regional IP conference for them to speak at. I also met a USPTO examiner in the speed-working session. I told him that I hated the prices and the service, but would continue using the USPTO, and wasn’t expecting any reciprocal work at all.

Once again, the Caribbean IP stall was the most colorful. The Phoenician knickknacks from Lebanese firm Grant Thornton were amongst the nicest give-aways, and the Baklawa given out by the firm headed up by Dr. Mowafak Al Yaffi was, as always, truly delicious. Furthermore, the Grant Thornton stall was cleverly positioned near Markeur who had a coffee machine that made a reasonable expresso, so the combination was good for a coffee and sugar infusion - welcome after late night partying with jetlag. 

Everyone was raffling I-Padiae indicating that IP attorneys are interested in Apple technology. With superb misfiring, the Smithsonian are hosting a Steve Jobs exhibition with displayed articles including various Mackintosh and Apple junk. Ironically, the exhibition opens today, after INTA finishes.  See here for more details.

The zoo, art galleries and museums of the Smithsonian are free. I spent two days before the conference and the final afternoon taking advantage of the quality collections. It is difficult not to compare Washington with London, which also has many free museums and galleries.  The collections of both countries are superb and many ways complement each other.  The Smithsonian Air and Space museum, gave appropriate weight to the US aircraft carriers in the Pacific theatre, and emphasizing American fighter aces, with the RAF museum emphasizing the British contribution. The exhibitions on the Wright brothers and on Amelia Earhart were particularly well done.  The bling in the National History Museum was ostentatious to a level exceeded only by the Crown Jewels in London, with a fine collection of enormous diamonds, sapphires, emeralds and rubies.

Free access to a zoo is a rare thing. Due to the emphasis on comfort of the inmates, and an attempt to display them in their natural surroundings, it was not easy to spot the animals, many of which were simply sleeping. With rare ecological forethought, however, it seems that the exhibits get recycled and are subsequently displayed for posterity in the national History Museum  where they are more easily viewed. Unlike the other cats, the pandas and most of the other exhibits which simply slept, the cheetas did stalked about, with a grace and elegance not easily captured by the taxidermist.

In addition to housing an impressive collection including works by Gainsborough, Turner and Constable, by Rubens and Rembrandt, Renoir and Matisse, the gallery was notable for  a painting by Samuel Morse, from which I learned that the telegraph pioneer was also an accomplished painter, and for a Picasso exhibition showing work from over his entire career, which demonstrated that he understood perspective and could paint and draw, and helped put expressionism into some sort of perspective.

INTA is great for meeting up with associates. The parties and receptions were fun. Finnegan’s was probably the best party in town, with great music and a great venue.

In terms of the number of paws pressed and business cards collected, the conference was a roaring success. One meets great people from all over the world. The challenge, as always, is one of how to convert contacts into clients.

Bizsolutions were giving out butterflies that glow in the dark that my 9 year old thought was cool, and all the kids enjoyed Envoy’s chocolate sunflowers and Avantiq’s sunglasses.  Nevertheless, the swag was generally dissapointing. I felt obliged to buy real presents.

Brandshelter’s darts that stick to a computer monitor were probably the most fun of the various giveaways. In the useful category, there was an abundance of flash memory sticks, pens and pads. Oppendahl were giving out pocket multimeters for some reason.

On the way back my brother showed me an article about the underwear bomber and explained that new regulations required taking off one’s underclothes to allow sniffer dogs to check for explosives. I felt a bit sheepish when getting dressed again after holding up other passengers, and realizing that he wasn’t serious.

The strike in Heathrow Airport was an inconvenience, but providing my suitcase does indeed arrive over the next couple of days, won’t be a long-term disruption. It also reminded me of why I emigrated from the UK!

I’ll have to dig out my eighties’ shoulder pads and ten-galleon hat for Dallas next year.

Qumsieh, a Jordanian firm of patent attorneys, handles trademarks in the West Bank. I’ve met various members of the Qumsieh family at International conferences. Indeed, have had dealings with the firm for patent work in Jordan. I believe the family is Christian.

In their recent newsletter, they’ve reported on a couple of trademark oppositions they’ve handled before the West Bank trademark office.

I am reproducing the cases below, both to give Qumsieh some publicity, and because the West Bank trademark office in Ramallah is a couple of miles closer to where I live than the Israel Patent Office in Jerusalem, and it is interesting to see what happens there.

Opposition Against Trademark “Durra & Device”
United Brothers Co., a Palestinian company, filed two trademarks applications, the first was for “Durra & device” in class 30, application no. 15895, published on 9 December 2009, and the second for “Durra in Arabic & device” in class 30, application no. 15899, published on 9 December 2009.
Acting on behalf of Al Durra Food Products Co., a Syrian company and the original owner of “Durra & device”, Qumsieh filed an opposition against the above applications based on the following:
Al Durra Food Products Co. has prior registrations for “Durra” in class 30 in their home country and abroad since 11 December 2001.
The opposed applications are identical to Al Durra Food Products Co., trademark, and will confuse the consumers as to the origins of the products.
Al Durra Food Products Co., also has prior use of the subject trademark in the same class in Syria and worldwide.
Based on the above reasons, Al Durra Food Products Co.’s trademark has become a famous trademark amongst their client base and the public.
The defendant submitted a counter statement claiming that the opposition was submitted after the expiration of the opposition period, and their reply also stated that they have the right of ownership of the subject trademark, since they have a prior application for registration in the West Bank, despite the fact that the opposer had prior registrations in many countries around the world. They requested a rejection of our opposition and to carry on with their registration procedures.

The Registrar issued his decision to cancel the said application procedures, based on the following:
The opposition was submitted during the legal opposition period for that mark.
The Syrian company submitted evidence that they own the trademark since 2001 (in their home country and worldwide), and that date is before the date of submitting the opposed application.
The defendant did not submit any evidence to prove their prior ownership of “Durra”.
A trademark being accepted and published in the Official Gazette does not grant ownership of that trademark according to the law.
The defendant appealed before the High Court. After several hearings, the court issued its decree to support the Registrar’s decision and stop the trademark registration procedure, and this decision is final.
For more information regarding the West Bank, please contact west-bank@qumsieh.com.
 
WEST BANK Opposition Against ZAHI
United Brothers Co., a Palestinian company, filed on 29 June 2009 a trademark application for “ZAHI (in Latin and Arabic letters)” in class 30 under no. 16371. The application was published on 26 April 2010.
Acting on behalf of  ZOUHAIR KATRANJI & SONS CO. (ZAHI FOR INDUSTRY & TRADE), a Syrian company, Qumsieh filed an opposition against the above application based on the following:
Earlier registrations by ZOUHAIR KATRANJI & SONS CO. for ZAHI in class 30 in their home country and abroad since the 1990s.
Prior use of the said mark in their home country and abroad by ZOUHAIR KATRANJI & SONS CO.
The trademark ZAHI has become a famous and well-known trademark due to the above reasons.
The infringing application is identical to ZOUHAIR KATRANJI & SONS CO. trademark, and will lead to confusing the consumers as to the origins of the products bearing that mark.
The defendant submitted a counter statement claiming that the opposition was submitted after the expiration of the opposition period, and their reply also stated that they have the right of ownership of the subject trademark, since they have a prior application for registration in the West Bank, despite the fact that the opposer had prior registrations in many countries around the world. They requested a rejection of our opposition and to carry on with their registration procedures.

After reviewing the file, the opposition, and the reply, the Trademark Registrar issued his decision to stop the registration procedures of the opposed trademark, and he supported this verdict by the following:
The opposition was submitted during the legal opposition period for that mark.
The Syrian company submitted evidence that they own the trademark since 1992 (in their home country and worldwide), and that date is before the date of submitting the opposed application.
The defendant did not submit any evidence to prove their prior ownership of “ZAHI”.
A trademark being accepted and published in the Official Gazette does not grant ownership of that trademark according to the law.
United Brothers Co. appealed before the High Court. After several hearings, the court issued its decree to support the Registrar’s decision to stop the trademark registration procedure, and this decision cannot be appealed further.
For more information please contact west-bank@qumsieh.com.

COMMENT
I am not sure whether as a resident of Ofra, which is not far from Ramallah, I can get licensed in the West Bank. It would be nice if the Palestinian Authority and the Israel Patent Authority could have some sort of cross-recognition for patent attorneys as New Zealand and Australia do, and as Canada and the US do. 

Than again, my Arabic is fairly basic, so I am not sure if I would manage.

NOTE – I’ve stuck to the term West Bank as used by Qumsieh. Feel free to read Judea & Samaria, Palestinian Authority, Palestine, Greater Israel, Occupied Territories, Liberated Territories, etc.

Maybe one day we can have a regional IP conference with representatives of Egypt, Israel, Gaza (Hamastan), Jordan, Syria and Lebanon. Chance would be a fine thing!

It is not every day that a significant book on IP in Israel is published.

Oxford University Press have just published a single volume overview of Intellectual property law in Israel, that was written by Two Israeli litigators, Eran Liss and Dan Adin. 

The 712 page tome is supposed to cover copyright, patents, designs, trademarks, unjust enrichment, and the  integrated circuit protection law, and to cover the case-law and how the courts rule on these issues.

Eran Liss and  Dan Adin are experienced litigators and founding partners of Adin-Liss Law Offices, a fairly recent Israeli IP boutique based in Tel Aviv.

We assume that this work will be of great interest to active patent attorneys and lawyers practicing in Israel, to trainee Israel patent attorneys sitting the theory exams, to academics interested in comparative law, and to large IP firms abroad, wishing to have a handy reference work.

I have not read the book yet, but look forward to critically reviewing it. In the meantime therefore, I am publishing reviews by Professor Jeremy Phillips and by Dr Amir Khoury.

“In a commercially volatile country like Israel — with its lively and imaginative legal profession, a profusion of legal and business cultures, a vigorously competitive marketplace, ambitious traders, and a surging economy — the practice of intellectual property law has a sense of immediacy and intensity which few other jurisdictions can match. With Intellectual Property Law and Practice in Israel, Israeli practitioners Eran Liss and Dan Adin have written the definitive text for all English-speaking lawyers and strategic advisers with clients doing business in Israel.”

–Professor Jeremy Phillips, Editor, Journal of Intellectual Property Law & Practice

“Israel has had a longstanding affair with intellectual property, innovation, and IP-related production. Intellectual Property Law and Practice in Israel is an exceptional contribution to the understanding of this topic, and helps readers to use and navigate the IP system in Israel on legislative, judicial, and administrative levels. In its breadth of coverage and depth of analysis, the book is a strong addition to the library of anyone engaged in legal analysis of IP laws as well as anyone practicing international trade and business with Israel. I recommend it highly to practitioners and academics alike.”

–Dr. Amir H. Khoury, Senior Lecturer, Faculty of Law,Tel Aviv University

“Intellectual Property Law and Practice in Israel” by Eran Liss and Dan Adin                  

ISBN13: 9780199917419   ISBN10: 0199917418  Paperback

712 pages, 6-1/8 x 9-1/4; date of publication – Apr 2012,  cost: $225.00  

LES Israel is pleased to host LES member Neil Wilkof,

who will continue his presentation of the topic:

The Licensing of a Famous Trademark:

Does It Make Legal Sense?

Neil is the author of the treatise, Trade Mark Licensing, published by Sweet & Maxwell (1994, 2005).

As always, the event will take place at Beit Hapraklit, 10 Daniel Frisch St., Tel Aviv on Tuesday 1 May 2012 at 8:30am.

The event is free to LES members; Non-members: 50 NIS charge

Kindly confirm your participation by return e-mail to les_israel@yahoo.com

COMMENT

Neil is an authority and an accomplished speaker. It will be well-worth hearing him. 8:30 am in the middle of Tel Aviv seems less attractive though, and I expect that some of his subject matter will be covered the following week at INTA.

We are pleased to see that LES are continuing to provide their members with quality programs, unlike other IP organizations in Israel, that seem rather more dormant.

Here’s an idea: why not beat the traffic and start the program at 7:45 with an optional Shacharit (morning prayers)  ?

The Orthodox Union has a registered trademark for the circle U sign as shown.

MOOMilk, a product of a dairy in Maine uses the symbol but their milk is not supervised by the Orthodox Union. 

In the suit, the Orthodox Union said it made clear to MOOMilk that its symbol was a protected trademark:

“MOOMILK’s conduct has injured the Orthodox Union and kosher consumers who rely on the Orthodox Union and the OU mark as an indicator that a merchant using that mark or a product bearing that mark has been supervised, endorsed or approved by the Orthodox Union,”

The suit asks for a preliminary injunction to keep MOOMilk from using the trademark. It also demands that MOOMilk provide details about all of the dairy’s unauthorized use of the mark and give information of “all sales and profits gained from the sale of products, bearing or sold in connection with MOOMilk’s use of an unauthorized OU mark.”

The union is looking for damages “in an amount of three times the amount of the Orthodox Union’s damages or MOOMilk’s profits … for MOOMilk’s intentional and willful use of a counterfeit OU mark.”   See here for more details.

Under Amendments 17 and 20 to the Pharmacist’s Ordinance (New Version), 5741-1981, which takes effect from August 1, 2012, the labeling of all drugs and medicines, including prescription drugs and not just over-the-counter formulations, will require the pharmaceutical brand name to appear in Arabic and Russian, in addition to Hebrew and English, as currently required.   

As with other product brands, the brands of pharmaceutical preparations, but not international non-proprietary names (INNs) may be registered as trademarks.

In light of the new labeling requirements, it is recommended to apply for Israel trademarks for the pharmaceutical brand-name in each of the four languages: Hebrew, Arabic, English and Russian.

It will be noted that, where a mark is registered as a trademark in a country of origin that is a party to the WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention), or a member of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS), the Registrar of Trademarks will not refuse to register the same mark (telle quelle), except in rare and specific circumstances. Well-known trade marks are also protected under the Israel Trademark Ordinance.

NOTE

Despite Israel’s relatively small population, some 33 languages are in daily use.

The official languages are Modern Hebrew and Arabic. Most Arab Israelis, who make up about 20% of the country’s population, can speak Hebrew as well as Arabic. English is a very popular second language in Israel. It is often used in the spheres of international relations and foreign affairs. It is a requirement for students to study English at schools and universities. Because of it’s ubiquitous nature and the traditionally poor language skills of native English speakers, many American, British, Canadian, Australian and other immigrants find learning Hebrew very difficult. About 20% of the Israeli population is fluent in Russian.