When Polo Universal LTD and Apollo Adex LTD. applied for a number of trademarks (138302,3 and 138296-9) including the word Polo, the fashion house Ralph Loren filed oppositions.

After both sides submitted their evidence, a hearing was set up. However,  at the last-minute, the witness for Ralph Loren failed to show, without providing good reason for his absence. This made it impossible for the applicant’s attorneys to cross-examine.

Based on an Israel Supreme Court precedent concerning 6181/96 Yigal Cardi vs. Bacardi LTD., where a witness for the rum manufacturer failed to show, albeit with good reason, the Deputy Commissioner of Patents and Trademarks, Noach Shalev Shmulovich, who heard the case, decided that the evidence submitted by Ralph Loren, that could not be challenged in court, was of very limited value.

Nevertheless, since the Ralph Loren Polo mark is well-known internationally and well-known in Israel, the Deputy Commissioner ruled that there is a public interest in preventing fashion accessories marked Polo that did not originate with Ralph Loren being sold, as this would lead to consumers mistakenly purchasing goods believed to be associated with Ralph Loren, that were nothing to do with the fashion house.

Although Loren’s marks usually included a Polo player on a horse, whereas the applicants marks included what appears to be a stylized hockey stick or golf club, the  Deputy Commissioner ruled that the public would probably view the mark as two separate marks, one for the word Polo and the other for the rider, rather than two elements of a combined mark.

That the opposed marks included a second word, describing the type of good, was considered irrelevant, as there was still a likelihood of confusion as to the origin of the goods. Likewise, although when compared side by side, the opposed marks are visually different, the word Polo is so well-known for fashion goods, that there was still a likelihood of confusion, and the goods would not generally be sold side by side.

Consequently, the marks for leather goods, clothing, jewelry and the like, were disallowed, however the marks for measuring equipment were allowed on condition that optical goods were disclaimed. This was justified by pointing out that Volswagen sold a car branded as Polo, and so for non-fashion goods, the term was not associated with Ralph Loren. 

Generally, the successful party in an opposition proceedings is awarded costs, and where both sides win partially, each side carries his own legal costs. However, in this instance, to compensate the applicant’s attorney for the time wasted in preparing for a hearing where the opposer failed to show, and essentially as a punishment for contempt and for wasting the Patent Office’s time by not showing up for the hearing, the Deputy Commissioner ruled NIS 75,000 (about $20,000) in legal costs against Loren, to be paid to Polo Universal and to Apollo Adex.    

The case: Opposition to Israel trademark numbers 138302,3 and 138296-9 to Apollo Adex and Polo Universal.

IRRELEVANT COMMENTS

I enjoyed this decision, particularly the large legal costs award to the losing side. I suspect the Deputy Commissioner enjoyed awarding it as well.

I’ve also wondered why Polo Universal’s logo features a hockey stick, although I don’t either polo or hockey are widely played in Israel, so am not sure how many customers notice the mixed metaphor. I also am surprises to see button down shirts with collars sold as Polo shirts.

Probably because they are not widely available in Israel, the Polo mint was not discussed. Then again, if I remember correctly, the mints were a freebie that were wrapped around the holes…

Ruling the marks descriptive and lacking distinctiveness, they were refused, and, in a ruling by Deputy Commissioner of Patents and Trademarks, Noach Shalev Shmulovich, the refusal was upheld, despite the mark being registered in the US and thus arguably allowable under Section 16.

For details of Russel Weiner http://en.wikipedia.org/wiki/Russell_Weiner

For details of the drink: http://en.wikipedia.org/wiki/Rockstar_energy_drink

On appeal, the Deputy Commissioner of Patents and Trademarks has ruled that the mark is eligible on the basis that it was registered in the country of origin (Section 16 of the trademark Ordinance), and has a small element of distinctiveness in the eyes of the party-goer. The word party needs to be disclaimed however.

I find the ruling strange. The  brand name RockStar is clearly distinctive if used as a special noun. In the slogan, it becomes a common noun and should perhaps be available to everyone. If, say, Red Bull were to request a mark Party like a RedBull, would that be Kosher?   

I find it difficult to square this ruling with the other recent slogan decisions, see: Laudatory Slogans – I’m Lovin’ It 

Then again, the XO decision, also for energy drinks, is also a difficult one – see Israel Patent Office Allows Two Companies to Register Same Trademark. It could be, therefore, that hyped up party-goers have particularly acute sensitivities and wouldn’t be confused by a drink in a plastic bottle or aluminium can. The same party-goers will see a slogan “Party like a rockStar” and no that it relates to a product and is not laudatory or descriptive, and is not merely a slogan.

 Presumably, with Israel having joined Madrid, there will be many dubious marks like this that will be allowed here as they were allowed elsewhere.

All deadlines falling over closure period are extended until the day after. With the Israel Patent Office closed from 22nd September 2010 to 3rd October 2010, it is possible to restore a missed Paris deadline for filing a PCT elsewhere in the world, by making an Israeli entity (like me) a part owner.

Who does this work? Say, the missed deadline is 25th September 2010. That is a Saturday, and so any of the very many PCT receiving offers, including the International Bureau in Geneva are closed on Saturday and Sunday, allowing the application to be filed up to Midnight on Monday 27th. If that date is missed, then making an Israeli a co-owner, say of profits in Trinidad & Tobago, will enable us to file the application for you on 3 October 2010. It’s a nice legal loophole to bear in mind.

Israelis can similarly take advantage of closures elsewhere for Christmas, Thanksgiving, etc.

In general, laudatory words and phrases may be used to promote goods and services, but are not registerable as trademarks.

Slogans are not used to identify the source of a good or service and thus cannot be registered either.

There are exceptions.  See European Court of Justice recognizes ‘Vorsprung Durch Technik’ As Distinctive Trademark

The Israel patent office is fairly consistent though.

A range of decisions have recently issued where laudatory marks and slogans have been refused. These include “enjoined in 70+ countries” and “best enjoyed slowly” both filed by Philip Morris Products for cigarettes. The best enjoyed slowly was allowed with a small graphic element and with a disclaimer for the phrase. See Israel TM Application 213403 and 189964).

Orange Brand Services faired little better with “together we can do more”.

However, McDonalds Corporation have managed to register the laudatory slogan “I’m lovin’ it”.

The difference? well the verb to love is not correctly parsed in the present as ‘I am loving’, but rather as ‘I love’. The poor grammar provides an element of distinctiveness beyond the more common dropped g.

Furthermore, the massive usage has created secondary usage in the public.

I find the argument persuasive. The slogan is so well identified with McDonalds, that when it is heard, the listener thinks McDonalds first, and the meaning of the words afterwards.

Since Quelle did not defend the mark and Tyco supplied evidence that there was no use whatsoever, the mark was cancelled under Section 41 of the Trademark Ordinance, with Tyco being awarded NIS 8000 in legal fees.

Teva have lost to Eli Lilly over Evista, with the U.S. Court of Appeals for the Federal Circuit (CAFC) upholding a decision banning Teva Pharmaceuticals Ltd from making a generic version of Evista. Eli Lilly’s patent protection won’t expire until March 2014.

However,the CAFC also upheld a decision by the district court in Indiana that some claims in two other Lilly patents related to Evista were invalid.

Evista, with sales exceeding a billion dollars a year, is used to treat osteoporosis in post-menopausal women.

The case: Eli Lilly and Co v. Teva Pharmaceuticals USA, Inc. No. 2010-1005, 1033.

The Application in question was apparently allowed in Israel and should publish for Opposition purposes in the July 2010 journal, which is expected to publish in a few months as there is a backlog.

In a decision by Deputy Commissioner Noach Shalev Shmulovich, that published on 25 August 2010, it was ruled that Mr Oren is indeed an inventor and has a moral right to be acknowledged as such. In view that he wasn’t a sole inventor, he received the relatively small sum of NIS 20,000 in legal costs.

One of the issues appears to be whether a the assembler of a multi-part system or method as claimed is the inventor or if, the system or method has a point of novelty that may be conveniently identified by a ‘wherein’ clause in a US patent, or by a ‘characterized by’ statement in a European patent, then the creator of the point of novelty is the inventor.

Clearly the creator of the point of absolute novelty is a contender for inventive step, but is the assembler of the system or method merely implementing and embodying an inventive concept, or is this reducing it to practice? What is the point of invention?

I have a number of issues with the decision.

1. The Deputy Commissioner states that the right embodied in naming the inventor is a moral right to be identified as such and there is a public interest for inventors to be acknowledged.  It is not clear where the moral right of an inventor to be acknowledged as such is to be found in the Israel Patent Law or indeed any other Israel Law.Let me put it another way – in addition to be an active blogger, I also draft patent applications. I am never acknowledged as the author of the specification. I could argue a moral right to be thus identified under the Israel Copyright Law, but this Law does not cover inventions. Indeed patents and the patent Law are about legal rights and not moral rights and are largely amoral.
2. Another issue that I don’t understand is how come Mr Oren had status at all. Up until publication for opposition purposes, patent examination in Israel is an ex Partes procedure. Only on publication, do third parties have the right to oppose a patent issuing.
3.  Grounds of opposition are given in Article 3 Sections 30-34, and include novelty, patentability and ownership – i.e. title to the invention). See http://www.wipo.int/clea/en/text_html.jsp?lang=EN&id=2364  In other words, even on publication of an allowed application, it does not appear that moral right of an inventor to be named in a patent application can be the basis for opposition.
4. Under what grounds can the Israel Patent Office make a declaratory statement of ownership?

   The application was apparently allowed under Section 17c of the Law, based on the corresponding US patent no.  US 7,374,545,  i.e. by conforming the claims and text to that of the US patent. Yoram Alroy - presumably a co-inventor as stated at the end  of the decision although his rights to be named as such were also stated as not being within the ambit of the present decision  - is mentioned there as the sole inventor. In the US, the inventor(s)  are the original applicants, who may then subsequently assign their rights to another entity, often a company. Under labour law, employees may be obligated to do so. That as may be, the ruling dismisses the relevance of the US determination of the inventor since in the States “unlike in Israel, there is no clear difference between applicants and inventors”. I neither understand nor agree with that statement. If the granted patent in Israel was granted on the basis of the US invention, and has identical specification and claims thereto, it should have the same inventors, unless the definition of an inventor is different, or the definition of that invented is different.
   It appears that in the US, the identity of the inventor is determined by inventorship of the invention as claimed. One could argue that in Israel the invention is not merely the claims or not just the claims but the “pith and marrow” of the invention. Such a position could be based on the UK Law from which the Israel Law is largely derived. The Deputy Commissioner does not expressly do this, although he examines the statement of invention, the list of figures and the preferred embodiments. It is not clear to me which of these elements or all of the above is, according to the deputy commissioner, the identity of ‘the invention’. Presumably once the invention is isolated, the identity of the inventor(s) may be determined.

5. Without a clear statement of what the invention is as far as Israel Law is concerned, the identity of the inventor – moral or otherwise is problematic. Unless it is clear that both the USPTO and the Israel Patent Office are relating to different things – then the indication that the Israel patent has different inventors than the US invention casts a cloud over the validity of the US patent, since in the US, the issue is not merely a moral one, but could indicate patent fraud. It is thus possible, that the actual cost of this moral exercise may be rather more expensive than the damages in Israel.
6. In this regard, we note that the ruling mentions in passing at the end thereof, that the company claimed that Mr Alroi signed the new inventor Eli Oren on some document that prevented him from recognition as an inventor and/or that he’d given up his right and/or had some reason not to be credited and / or the time passed had created a bar from raising the issue.  The Deputy Cmmissioner does not think these statements are appropriate and that it is correct of the company to hide them.  – Maybe, but they are now of record. They are in the published decision. This casts a cloud over the valdity of the US case and perhaps of the European patent as well due to inequitable behavior.
7. Ironically, the decision does nothing to clarify the definition of an inventor and the identification of the invention under Israel Law. the question raised is a good one. The answer is less satisfactory.

New opportunities for marketing leverage following Internet marketing distribution and the Madrid Protocol

In conjunction with the Federation of Israeli Chambers of Commerce and Ellen B. Shankman & Associates, JMB, Factor & Co. is delighted to invite Israeli manufacturers and exporters to a seminar to be held 3:00-6:00 p.m. on Sunday September 5, 2010.

Israel Federation of Chambers of Commerce House, 84 Hashmonaim St., Tel Aviv. Welcome by Adv. Uriel Lynn, President of the FICC

• “Marketing and Branding in the New Era” Dr. Dan Herman, CEO Competitive Advantage LTD.
• Mr Moty Cory, Intellectual Property Director, Nice Systems LTD.
• “Why Create a Trademark Portfolio?” Dr Michael Factor, Partner, JMB, Factor & Co.
• “Branding and Brand Protection Online” Adv. Ellen Shankman, Principle, Ellen B. Shankman &Associates
• “Registering Trademarks has Never Been Easier or More Economical – Using the Madrid Protocol” Adv. Aharon Factor, Head of Trademarks, JMB, Factor & Co.

Reception including a toast to the Jewish New Year. No cover charge.

Please register: seminars@israel-patents.co.il