Back in February 2011, Judge Stumer of the Petach Tikveh District Court ruled that the implementation of an idea to collect DNA of dogs to enable prosecution of their owners who have fallen foul of the law by their pets fouling pavements (sidewalks) was copyright infringement. My original posting on the decision, together with an analysis of what was wrong with it, may be found here.

Judge Noam Solberg has no issue with the factual finding of the District Court that the idea originated with Zisso, the original plaintiff and defendant on appeal, but on a matter of Law confirms that implementation of an idea is not copyright infringement.  the implementation of the idea, if protectable at all, might be protectable by a patent if considered novel, inventive and useful, but as Zisso didn’t file a patent application, the issue is moot and the idea is now in the public domain. Attempting to claim that there is unjust enrichment or an assumed contract is an illegitimate attempt to widen the charges on appeal. Similarly, attempts to claim infringement of the original PowerPoint presentation by the Petach Tikveh Municipality using a similar presentation is widening the original claim.

Judges Naor and Jubran concurred with Solberg. The Petach Tikveh Municipility was awarded NIS 25000 in legal costs.

The Case: Civil Appeal 2682/11 Petach Tikveh municipality vs. Harry? Hairy? Hurry? Zisso

COMMENT

Readers will be pleased to learn that the Israel Supreme Court has reversed what may be the worst IP related decision that an Israel Court has ever issued.

Neil Wilcoff has recently been blogging about various courts getting patent law wrong. It seems that Judge Stumer isn’t the only Judge to make an embarrassing mistake.  Nevertheless, one wonders if there isn’t a case to be made for specialist IP courts?

Kimberly Lindy of IPR is organizing a conference this coming Wednesday, that is entitled “Best Practices in IP 2013 – INTERNATIONAL PERSPECTIVES ON CREATING AND EXTRACTING VALUE”.

We were somewhat surprised and bemused to learn on the IPKAT, that Dr Nicola Searle has resigned from her KAT blogging and is launching a blog called IPO FACTO under the auspices of the UK Intellectual Property Office.

Apparently, Ipso Facto was already taken. Not being formally qualified in UK trademark law, I can’t opine on whether IPO FACTO would be considered confusingly similar to IP Factor under UK unregistered trademark laws.

Lets look at this under Israel trademark standards by applying the five pronged triple test:

1. Sight and Sound

Well IPO FACTO and IP FACTOR look similar don’t they? The extra O on IP is compensated by the (c) in my logo.

IP standards for Intellectual Property the O stands for Office. The UKPTO calls itself the IPO in a similar manner to the Israel Patent Office calling itself The Patent Agency. Less significant organisations like the USPTO, JPO and SNPO use the national name. The UK doesn’t. Its like having stamps without the country name. Its a general trend of the British to ignore international reality and to remember the days of the Empire.

Is IPO pronounced I Pee, Oh! or, I Peeyo or I Po?

I think IPO and IP sound similar. For Scrabble fans, A Po is actually a small chamber pot, so secondary meanings of I pee and I po are also confusingly similar.

The stress on both Facto and Factor is on the first part of the word, and the IP bit is mostly generic. I think that on balance, we can say that the two marks sound and look similar.

2. Goods and Distribution Channels

Both IP Facto and IP Factor are intellectual property blogs accessible over the Internet.  My focus is Israel related IP and the IPO Facto will probably have a UK focus. I have a very British sense of humour, and so does Nicole, from her IPKAT postings. I think that the services are confusingly similar.

3. Any Other Issues

I don’t think I have a case for willful copying and inequitable behaviour. I suspect that I could make a case that a national IP office would be expected to do basic due diligence, and this is willful negligence analogous of Nelson putting the telescope to his blind eye.

I suspect that I have  Common Law rights, having clocked up nearly 300,000 hits in a blogging career spanning the best part of a decade, with over 1000 blog posts and a frivolous law suit from a prominent local IP lawyer who should have known better.

Well readers. What’s your verdict?

Catching the 10 PM ElAl flight at Tel Aviv on Saturday night isn’t easy. I arrived at the airport 30 minutes before take off and long after boarding closed. I was allowed on, and am making up by having arrived 3 hours early for my plane back. One can order Kosher food with other airlines, but with ElAl one actually gets it.

At Hong Kong airport, like many airports, there is a warning not to try smuggling suspicious white powder. Whereas the Western world is battling heroin and other narcotics, in China the problem is baby powder. One is allowed to purchase up to 1.8 Kg of baby formula for personal use (presumably for use by a close family member, as adults don’t eat the stuff, and children don’t purchase it). Importing more than 1.8 Kg carries a fine of up to 500,000 RMB or 2 years in prison. This is symptomatic of how China is, well, different from the rest of the world.

The hotel serves unidentified frying objects for breakfast. The hotel elevator requires a magnetic card to operate it. One sees mangoes growing.

The Israeli film the Band’s Visit (ביקור התזמורת), about an Egyptian military band that goes to wrong place, was showing on Asian Television in my hotel room – with Chinese dubbing! It’s a small world.

Perhaps the clearest indication of the total lack of cultural understanding between East and West is that when I bought some souvenirs at the market under the Macaw border crossing, it was put into a carrier bag decorated with a Buddha and swastikas. I was wearing a kippa (yarmulke, skull-cap) , and looking fairly Jewish. I don’t believe that either the idol or the symbol of the Nazis were meant to offend. I don’t know if the salespeople realized I was Jewish. I don’t think they associate swastikas with Nazis, Hitler or the Final Solution.  I’ve thrown the bag away.

The plane back had a couple of groups of Chinese tourists. I would not be surprised if innocent hospitable gestures in hotels, street markets or tourist stops in Israel are deeply offensive to the Chinese. On my last trip I bought a course in Mandarin. Maybe I should try to progress with it before going back.

Israel Trademark Application No. 231719 “Khan Shaharut” was filed by Negev & Galil Initiatives LTD. for food, drink and temporary accommodation related services in Class 43. The word Khan is Turkish for a caravanserai, an a roadside inn where travelers can rest and recover from the day’s journey. (It also was the name of an English Progressive Rock Band in the 1970s, a wrathful character in Star Trek, and a Marvel Comics character).

Khan Shaharut is the name of a hostelry in Maale Shaharut, a town in the Arava part of the Negev that provides meals and sleeping accommodation. The trademark office rejected the application as lacking distinguishing characteristics (section 10(11) of the Trademark Ordinance 1972, but authorized the applicant to provide evidence that the name had acquired secondary meaning.

In response to the request for evidence of secondary use, the Applicant filed an affidavit arguing that he had purchased the initiative in 2007 from Shaharut Desert Lodges LTD and 21st Century Camel Riders LTD., who had operated the Khan since the 1980s. The applicant was requested to provide additional information regarding publicity of the Khan, and as two years from filing had passed, the case was transferred to the Arbitrator (name not given).  In a hearing in February 2012, the CEO of the Applicant indicated that the trademark Khan Shaharut had been in use since 1985, although the name of the company was Khan Shaharut – Camel Riding.  Since acquiring the company, the name Khan Shaharut was in exclusive use.  In another claim, the CEO argued that Khan Shaharut was situated in Maale Shaharut, (Shaharut Heights), which is not known as Shaharut, and so the word Shaharut could not fairly be considered a geographical application of origin. In a supplementary affidavit, the applicant provided further details regarding the services provided by the site, and that a holdiay village was being developed.

In the Ruling, the Arbitrator rejected claims that the location was only known as Maale Shaharut, since on maps of the judicial region it was called Shaharut. He/she noted that no financial information was supplied that could help substantiate the claim, but nevertheless, provided more than 20 popular Israeli news related internet sites where the mark Khan Shaharut was used in advertisements. The mark was allowed to proceed to publication.

COMMENT

Genghis Khan fought from horseback. Mongolians do ride camels, but they ride the two humped bactrian camel variety, as the image of Mongolians playing camel polo under a statue to Genghis Kahn testifies. In the Negev, we have dromedaries. Whether Mongolian tourists would have a problem with the juxtaposition of Khan and one humped camels is a matter of conjecture. Since the camel riding part of the name is now no longer in use, perhaps we’ll never know.

Three humped camel here . Four humped beast here. Sally the camel here

Trademarks are required to be distinctive and to serve not as a description of the goods or service, but as an  indication of the source of the goods or services.

Innovation Ventures LLC filed Israel Trademark Application Number 223922 “5-Hour Energy” for energy drinks, including concentrated shots of energy drinks in class 32. The application was filed in September 2009 and refused in July 2010 as lacking distinctiveness as required by Section 8a of the Israel Trademark Ordinance – 1972, and under section (10) 11 of the Ordinance as being descriptive and directly related to the type or quality of the goods to be marked therewith.

Furthermore, the Trademark Department of the Israel Patent Authority informed the Applicant of 5 similar co-pending applications: 221,579 “5 Hour Energy”, 221,718 “4 Hour Energy”, 221,719 “6 hour Energy”,  232512 “5 Hour power” and 232,515 “5 HOUR PAOWER”   to other applicants, creating a situation of competing applications.

The Applicant persuaded the applicants of the competing marks to withdraw their applications, and requested that if not considered inherently distinctive under Section 8, would be considered for registration under Section 16a, which allows registration for marks registered in the country of origin under certain conditions. The Examiner stuck his ground, dismissing evidence alleging that the mark had acquired distinctiveness in Israel through use, and further rejected the application to register the mark on the basis of the mark registered in the country of origin.

The Applicant tried to prove the acquired distinctiveness with an affidavit from one of the managers, a Mr Robert MrCormack. However, at a hearing on 18 December 2012, Mr McCormack did not show up and so could not be cross-examined.

It transpires that the Hearing Officer of a corresponding application in the UK  (No. 2607023) found the mark inherently distinctive. The applicant also posited that the mark was, at best, a hint of its properties, basing itself on arguments filed in the US, where it noted that the term could relate to food, drink, injections, pill, exercise, electrical energy or nuclear energy, and was therefore, at best suggestive and not descriptive. The applicant noted that it had spent about $100 Million on advertisements and product placement in the US, and that several offers made to manufacturer to import and distribute the product in Israel were indicative that the mark was well-known here, even though the product wasn’t actually available in Israel. Applicant also noted that the US product had received Kashrut approval and was, therefore, known in the Jewish community in the US, which has connections with a large section of the Israeli public.

In the ruling (unsigned), the adjudicator noted that the absence of Mr McCormack minimized the value of his testimony, including the worth of surveys, since it was impossible to ascertain how they were performed and how reliable they were. The Adjudicator went on to rule that the mark lacked sufficient  inherent distinctiveness and was too descriptive to be registered under Section 8, but  could be registered under Section 16 since it was difficult to argue that it had absolutely no acquired distinctiveness.

COMMENT

I am unhappy with this decision. The label including colors and graphic elements may be distinctive. If disclaimers were still being registered, I have no doubt that the words, 5, hour and energy would all have to be disclaimed. I think a term such as 5 hour energy should remain available for all providers of drinks, shots, pills, injections, etc. that provide a 5 hour energy boost. To prevent confusion, specific suppliers should choose specific and distinctive product names.  TRIPS notwithstanding, registering a mark like this merely because it was registered abroad seems like a perpetuation of a poor decision.

I also note that I have been dissatisfied with Israel trademark rulings concerning energy drinks in the past. See torro-trademark, party-like-a-rockstar and XO Decision 

What is it about energy drinks that causes a difference in opinion between the learned adjudicators and this blogger? I don’t use any of these products so my dissatisfaction cannot be put down to that…

In the ongoing patent saga between Camtek and Orbotech, two Israeli manufacturers of optical imaging systems for quality control of semiconductor substrates, Camtek, represented by Adv. Adi Levit, petitioned to correct the statement of case concerning their opposition to Orbotech’s patent no. 179995 titled “SYSTEM AND METHOD FOR INSPECTING PATTERNED DEVICES HAVING MICROSCOPIC CONDUCTORS”

Evidence has already been presented, but some of Camtek’s evidence was struck as irrelevant. This attempt to correct the statement of case was, according to Orbotech, represented by Adv. Reuven Borchowsky, an attempt to bring into discussion material that has already been ruled as irrelevant and subsequently appealed and upheld.

The case was allowed on the 30 October 2011 and the appeal was filed (as is customary to delay allowance for as long as possible), on 31 January 2012. the attempt to correct the statement of case was filed on 19 March 2013, only just over a month before a hearing due for 22 April  2013

Adv. Levit argued that the correction was required because of the public interest of maintaining the ‘purity of the register’. In other words, if Orbtech don’t deserve a patent for lack of novelty, inventive step, and / or utility, civil procedure should be waived in the interest of making sure that they don’t get one.   The issue seems to be about the angle of the azimuth being claimed but not properly supported. Orbotech disagreed with a change in direction late in the proceedings.

The arbitrator (not signed so not sure who), seems to be accusing Camtek of time-wasting shenanigans, and rejected the request, ruling that the purity of the register was not a be all and end all blanket legitimacy for everything, and hinting at inequitable behavior. She also ruled NIS 3000 of costs to the applicant.

COMMENTS

We suspect that both parties are motivated by a mixture of commercial interests and bad feelings, and the purity or otherwise of the register is not a significant consideration here. It is legitimate for the opposer’s counsel to file responses on the last day, as it is his client’s interest to stop the patent issuing for as long as possible. Additional delays, especially when not based on newly discovered evidence, is intolerable.  the ruling is a reasonable one, if a little formalistic and dry.  To be honest, I’ve lost interest in the little skirmishes and await a final ruling on the validity of the patent. On the other hand, a heavy case load could be responsible for not filing request to amend the statement of case a little earlier. We note that most Paris Convention filings seem to wait until the last day. It is not inequitable behavior, just procrastination.

Genentech filed and received allowance of Israel Patent Number 175885 titled “ANTIBODY, A FRAGMENT THEREOF, A METHOD OF PREPARING THE SAME AND A USE OF THE ANTIBODY”. the patent issued on 29 May 2011 and was next due to be renewed on 17 December 2014.

On  24 April 2013, Genentech requested to withdraw the patent. Actually, the claim this was their second attempt to withdraw the patent, having first asked to do so on 21 March 2013.

Patentees are able to request that a valid patent be withdrawn, and the effect of so doing is as if the patent had never issued. The request has published for opposition purposes.

COMMENT

I wonder what is going on here?

In Febrary 2007, Israel patent Number 171865 to Speedline technologies, titled METHOD AND APPARATUS FOR SIMULTANEOUS INSPECTION AND CLEANING OF A STENCIL published for opposition purposes, and an opposition was filed in may 2007.  It has now, six years later been  withdrawn. In a brief statement, Ms Yaara Shoshani Caspi has ruled that she does not see any reason to continue the opposition as an in partes procedure with the patent office taking an inquisitional position. The application will therefore be allowed.

COMMENTS

This announcement tells nothing of the reasons for opposition or why Ms Shoshani caspi ruled that there was no public interest justification to prevent the application for issuing. This information is also not on the IPO website. If someone reviews the file and submits a request for cancellation, no doubt we will be wiser.

Eli Tiar allowed his patent number 148847 titled “EARTH SCREW ANCHOR ASSEMBLY” to go abandoned. The patent was filed in March 2002, and granted in February 2011. The first and second renewals, for years 1-6 and 7-10 were timely paid, but the third renewal, due March 2012, was not paid, due to lack of funds and commercial interest.

The Deputy Commissioner, Ms Jaqueline Bracha, did not consider this excuse as a legitimate reason to allow the abandoned patent to publish for reinstatement, since the law requires the patentee to take immediate steps on becoming aware that the patent lapsed. In this case, the patentee was aware that the patent would and then had lapsed, but made a financial decision to allow this to happen. This cannot be considered unintentional. The request to revive was therefore rejected.

On the other hand, Israel Patent 151594 to Biomar Israel LTD. for a FUNGICIDE COMPOSITION CONTAINING TEA TREE OIL was supposed to be renewed on 4 September 2012, and lapsed six months later on 4 May 2013, after the grace period passed. However, as evidenced by an affidavit, the agent responsible for maintenance was changed, from Dr Eyal Bressler to Daniel Faigelson, and a human error was made in entering the renewal data.  The applicant never intended the application to lapse, and so Ms Jaqueline Bracha ordered that its reinstatement was allowed to publish for opposition purposes.

Israel patent number 161941 titled SHELF-STABLE VEGETABLE COMPOSITION AND METHOD OF MAKING to the Societe des Produits Nestle SA lapsed since the patentee misinformed a renewal service, informing them that the next renewal was due in 2012, but in fact it was due in 2008. The mistake was spotted in 2013,  and the company took immediate action to rectify the situation. Ms Jaqueline Bracha ordered that its reinstatement was allowed to publish for opposition purposes. She also has set up an inquiry to determine why a notice of the patent becoming abandoned wasn’t sent out earlier, although notes that this service is not obligatory on the patent office, and cannot, itself be blamed for patents lapsing.

Israel Patent Number 158611 to IBM titled “METHOD FOR INTEROPERATION BETWEEN LEGACY SOFTWARE AND SCREEN READER PROGRAMS” lapsed as from 11 March 2012, due to non-payment of the third renewal, due with extension period by 11 September 2012. IBM’s attorneys did not provide a sufficiently detailed affidavit explaining the reason for the patent lapsing and were given an opportunity to rectify this. It turns out that the renewal company they use gave insufficient information to their local agents who handle the renewals in Israel. This was considered adequate to allow a  notice of reinstatement to publish.

The relevant law is sections 57 and 60 of the Israel Patent Law.