Sahara

July 10, 2014

sahara

Tambour and Nirlit are both Israeli paint manufacturers.

Tambour filed a trademark for Sahara as a shade of paint. They filed for accelerated examination, and three weeks later the mark issued for opposition purposes.

The opposition period is three months, and on the final day, an examiner published a decision to allow the mark.

Nirlit submitted a mark for Sahara themselves on the final day of the opposition period and then requested that Tambour’s notice of allowance be cancelled, and the marks be considered as competing marks. The Examiner cancelled the mark and both sides have been fighting as to whether the cancellation was correct, whether it should be considered as void, and whether the court of the Israel Trademark Office is the correct jurisdiction or whether Tambour should have to appeal to the District Court to have the allowance reinstated.

The wording of the ordinance refers to “a competing mark being filed before a pending mark is allowed”. The legal issues boil down to whether decisions can be cancelled and what the word before means.

Other issues raised included whether Nirlit should have informed Tambour of their filing and of the cancellation of the Notice of Allowance. Did Tambour have rights to request amendments to Nirlit’s application?

THE RULING

The Adjudicator of Patents and Trademarks, Ms Yaara Shoshani Caspi did a fine piece of analysis and more or less sorted out the mess.

According to the ruling, trademark decisions are administrative decisions that can be withdrawn. The term “earlier” should be interpreted as meaning up until midnight of the previous day.

According to the ruling, the Examiner was not incorrect to allow Tambour’s mark, but was wrong to cancel the decision to allow it once it had issued. This decision is an administrative decision that can be withdrawn.

Once the marks are not co-pending, there is no competing marks scenario. All interim rulings are ex-parte. There is no obligation to inform the other party who has absolutely no standing.

The mark is retro-actively considered as published and Nirlit had two days left to file an opposition.

No costs were awarded to either side.

COMMENT

I think this ruling is the best of a bad job.  I don’t think we need to interpret earlier as the previous day. the notice of allowance for Tambour’s had issued before Nirlit’s was entered into the system. One hand does not need to now what the other is doing. All Examiners need to check what has been done.

Since there  was no pending mark for Nirlit at the time that Tambour’s mark was allowed, the notice of allowance was correct. It can happen that one department is more efficient than an other.

Retroactive publication for opposition purposes is problematic since in addition to Nirlit, it is not inconceivable that a third party may have a problem with the name.

Western Sahara is a disputed territory and most of the players involved do not recognize Israel. I am not sure that that will necessarily stop them from complaining about the place name being used to denote a shade of paint.


Deadline for Opposition Passes, but Trademark Opposition Accepted as a Cancellation

July 10, 2014

It is well established that opposers have three months to file trademark oppositions. Once this deadline has passed, the correct procedure is to file a cancellation request. There are not many differences between the two proceedings, but the onus changes to an assumption of validity.

Marco Pietroni filed a Madrid Protocol trademark application that specified Israel as one of the countries covered. The mark, 251203 is for the word “Stoneglass” and was filed in classes 19 and 21 for Glass element for building, glass slabs for use in building, plate glass for building, sheet glass for use in building, glass panels, glass tiles (not for roofing), glass for building, and in class 21 for sheet glass (except glass used in building), sheet glazing materials (other than for use in building), glass panels (semi-finished article).

The mark was allowed on 7 November 2014, and a notice was sent to the WIPO that unless an opposition was filed by 28 February 2014, the mark would issue.

An opposition was filed on 2 March 2014 under Section 56 of the trademark ordinance, and a copy, in Hebrew was sent to the International Registry that day.

Since no response was received, the mark was considered cancelled.

I examined the register.

The record is as follows:

Changes
יומן שינויים
תאריך הפרסום
תאור (לועזית)
תאור (עברית)
מהות הארוע (לועזית)
מהות הארוע (עברית)
תאריך הארוע
Publication date
Description (English)
Description (Hebrew)
Nature of event (English)
Nature of event (Hebrew)
Date of event
28/11/2013
Accepted
קובל
07/11/2013
Commencement of opposition procedure
פתיחת הליך מסוג התנגדות
02/03/2014
Cancellation of opposition procedure
סגירת הליך מסוג התנגדות
24/06/2014
Cancellation – abandoned
נמחק – הוזנח
24/06/2014

Under regulation 37 of the trademark regulations, since more than two months had passed and the trademark owner had not responded to the opposition, the mark was considered abandoned.

In other words,  an opposition procedure was initiated despite three months having passed, and on applicant failing to respond, the cancellation procedure was canceled and the mark was registered as abandoned.

COMMENT

In my opinion, this is a miscarriage of justice. For whatever reason, the opposition was filed too late. It should have been ignored. Since it was too late, there is no reason why the applicant (who does not have local representation) should have responded.

Regulation 37 follows regulation 35. The requirement to respond to an opposition presupposes that the opposition was timely filed.

In the Suprene case, the Deputy Commissioner Ms Jacqueline Bracha ruled that she does not have authority to extend the three month drop deadline for filing oppositions and that if the deadline is missed, a cancellation proceeding is in order.

One wonders why the Adjudicator Ms Shoshani Caspi considers that she does have this authority?

We cannot even tell if the International register informed the applicant of the late filed opposition. Generally late submitted documents are not considered.


When a mark under Opposition is assigned to a third party

July 10, 2014

puss in boots

Israel Trademark Number 244831 is for the word mark “PAMA” and covers Clothing and shoes for women, grils and grown up grils only; all included in class 25. The mark is owned by Abedel Razzak Ebido, a resident of Hebron.

We assume that grils are girls, and grown up grils are maidens or young ladies.

PUMA SE applied to have the mark canceled. Abedel Razzak Ebido meanwhile assigned the mark to another family member and forgot to inform the opposers of this. Attempts to argue that he forgot, and that the assignment was in the family so didn’t matter were rejected. PUMA were awarded 1500 Shekels in legal costs.

COMMENT

Since the District Court has argued that Palestinian youth are entitled to their rip-off brands, allowing four stripe Adidas trainers, it is important that brand owners fight mark like this.


When an Israel Patent Lapses Due to Lack of Funds

July 10, 2014

resuscitate

In an appeal to restore lapsed patent number 177522 to Yad Conena LTD., the director Shmuel Savyon claimed that the patent had lapsed due to lack of financial resources. this wasn’t the first time that the patent had lapsed, but on a previous occasion, it was restored after then Deputy Commissioner Noah Shalev Smylovich was convinced that the patent had become abandoned unintentionally.

Section 60 of the Israel Patent Law allows a lapsed patent to be reinstated if the patent lapsed in reasonable circumstances against the patentee’s wishes, and if, on learning that it had become abandoned, the patentee takes immediate steps to rectify the situation.

Deputy Commissioner Jacqueline Bracha considered that in this case, the patentee was aware that the patent had lapsed and had made a conscious decision to allow the asset to lapse due to lack of funds. The patentee didn’t suddenly learn that the patent had lapsed, but rather was aware of the situation. When circumstances changed, he tried to revive the case. This is beyond the scope of Section 60.

COMMENT

I think the Deputy Commissioner is correct in her interpretation of the Law. However, I note that other jurisdictions are more flexible, and though expensive, it is sometimes possible to revive abandoned patents under such circumstances elsewhere. Thankfully most of my clients are in good financial shape, but I have a couple of cases in Europe and the US where the applicants have ran out of funds but the situation has improved. In general, I do whatever I can to help such clients, but only after receipt of anticipated costs up front.

 


Fair Use

July 9, 2014

Shelley-Yachimovich-Labor-Party

Shelly Yachimovich is a member of the Knesset. She used to be a journalist, and during the incidents in question, was the Head of Israel’s Labour Party.

Danon PR Communications publishes a local newspaper in Modiin -  an Israeli city.

On 6 October 2011, the local paper published an interview of a worker in Yachimovich’ headquarters, that was written by Channa Stern. Yachimovich posted this on her website, and the paper asked for it to be removed and for 40,000 Shekels compensation for copyright infringement. When this tactic didn’t work, the paper sued Yachimovich under Sections 11 and 34 of the 2007 Israel Copyright Act and under Section 1 of the Law Against Unjust Enrichment, claiming statutory damages of 100,000 Shekels and legal costs.

Yachimovich claimed that the article was posted under a section of the website devoted to newspaper articles and that the source was clearly marked. The article was posted by a volunteer, and, on the newspaper complaining, it was removed. Nevertheless, no guilt was admitted.

In her defense, Yachimovich claimed that the interview was in a question & answer format, and thus the copyright belonged to the interviewee and not to the interviewer. Furthermore, she claimed fair use under Section 19 of the Copyright Act. She argued that the article had no inherent value, no potential for resale and no way of monetizing, and that the reposting on her website only gave further coverage to the article and to the local paper to a fresh audience who would otherwise not have been aware of it.

Finally, the paper had used a publicity photo of Yachimovich without her permission. Although this was a PR picture, it had cost money. This raised equal and opposite copyright issues. To the extent that there were grounds for copyright compensation in the publication of the article, Yachimovich was entitled to equal compensation in use of her picture and the two payments should be offset. Attempts to reach a compromise failed, and the court was authorized to rule on the basis of the evidence submitted without cross-examination.

The first issue that the court grappled with was whether an interview is considered copyright of the interviewer, or if it is a list of answers attributed to the interviewee?

The court accepted that there was copyright in interviews if there was at least a minimum of creativity in the wording of the questions or their arrangement and editing. There was a cute reference to Peah 1: 1 which discusses minimum standards for various Biblical commandments, including visiting the Temple on pilgrim holidays, where the term for sighting the Temple, is identical to the term for interview.

The amount of creativity was at least that of tables and anthologies, and on the basis of the work-product definition, there was copyright in the publication.

Posting the article on the internet website, where some 20% of the interview was posted was considered republication.

The interviewer is more than merely a technician and has rights in the interview. The question of joint ownership of interviewer and interviewee is discussed at length, and the understanding developed is that of use of jointly owned real estate by one party.

Fair Use

Various decisions relating to summaries of newspapers has established that merely relating to copyright materials as being a review is not sufficient to create a fair use presumption. One paper cannot simply quote large chunks of another and claim fair use. On the other hand, there are no simple tests of quantity or quality, and the issue is one of context. In this instance, Yachimovich has created an anthology of newspaper articles and source was accredited. The use is non-commercial. There was no compelling reason for reproduction under the public’s right to know, but review purposes are also considered fair use. The article was not reproduced in its totality, but rather a selection was made. The reproduction neither damaged the circulation of the original paper, nor boosted Yachimovich’s website’s circulation. Yachimovich claimed that reproducing such articles was common practice, but didn’t provide evidence of this. Nevertheless, the claim of fair use was upheld.

Moral Rights

Although moral rights create separate grounds for claiming damages, in this instance, the source was attributed, so moral rights were not compromised.

Unjust Enrichment

Since Yachimovich did nothing underhand, did not profit herself, or prevent the plaintiff from profiting from the publication, it was considered unfitting to consider unjust enrichment beyond the copyright issue.

Statutory damages

Having established fair use, the question of statutory damages was moot. Nevertheless, the judge saw fit to expand a little.

The plaintiff claimed that Yachimovich had made “Political Gains” and since she was an ex-journalist herself and a Member of the Knesset, she should be an example to the public. The plaintiff further argued that with statutory damages, there was no requirement to estimate the actual damages. However the defendant argued that 100,000 Shekels was exaggerated and baseless in this case.

The court accepted that the plaintiff could save themselves the trouble of estimating and proving exact damages, but the court had the prerogative to rule less than maximum damages if it saw fit. In this case, the defendant had immediately removed the offending article, there was no damages and no claims of inequitable behaviour.

Shamgar from 592/88 Sagi vs. the Estate of Abraham Ninio (2) 254, 265 (1992), was cited and Judge Michal Agmon-Gonen in Zoom p. 601 was referred to, noting that when ruling damages one has to look at the damages caused and the warning effect.

In this instance, the case was taken down quickly. The creative piece was an interview of low inherent worth, and the plaintiff had no suffered any damages as the website was not a competitor to the local paper. The defendant’s profit was indirect and minor. The article was posted by a junior and there was nothing inequitable in the defendant’s behaviour. The bottom line is that there is copyright infringement. It is covered by the fair use exception and the damages are zero.

Regarding usage of the photo of Shelly Yachimovich, the copyright claim was only made by way of offset and not in its own right, so once the damages to be offset are zero, the issue is moot. Nevertheless, the picture is a PR photo that is supplied for use by papers. It is a creative work and is owned by Ms Yachimovich as it was work for hire, created for her. The paper, despite claiming to be a local non-profit publication had intentionally used this creative work.

The picture was used to add colour to the article and this is generally accepted use of publicity photos. Although the paper is given away free, it is a profit generating paper that lives off advertisements. Nevertheless, the article had newsworthiness and furthers free speech and other values leading to a conclusion of fair use. The photo was attributed to “Yachimovich PR” which indicates that there was no attempt to profit by it. The photo was a PR photo that was used for PR purposes, and this is fair use. Thus there was no grounds to grant damages to Yachimovich for using this photograph in this manner.

Since the defendant had raised counter claims, both parties had conducted themselves fairly, and related to the issues raised, the judge did not see fit to rule costs.

Civil Ruling 57588-05-12 Danon PR Telecommunications vs. Shelly Yachimovich, before Judge Ronit FinShuk Alt, 3 July 2014 

COMMENT

This seems to be a good decision. It is a timely one as well. Plaintiffs are too quick to sue claiming copyright infringement. There is and should be a robust fair use doctrine.


Comprising

July 8, 2014

Chinese patent

In patent claim language, the term ‘comprising’ is generally taken to mean that a claimed device or system includes the listed elements, but they are not necessarily a closed list. In other words, possibly the device or system includes additional elements. Similarly, a method comprising a list of steps may include additional steps not detailed.

There has now been a Chinese ruling to the contrary. Apparently the China Patent Re-examination Board (PRB) has maintained the validity of a patent by interpreting the term “comprising” of the challenged claim as “consisting of”, thereby narrowing the claim scope to avoid prior art.

The case relates to ceramic blasting beads, and an attempt to invalidate Pat. No. ZL200810045235.7 regarding a composition for “ceramic blasting beads” was overturned.

Claim 1 of the patent in question is clear and unambiguous, claiming a ceramic blasting bead comprising various oxides, including ZrO2 and HfO2; Al2O3 or CaO, etc. The petitioner asserted that claim 1 lacks novelty in view of the prior art which discloses all ingredients, and, in addition, two other elements, Y2O3 and CeO2. The patent owner argued that the term “comprising” in Claim 1 is intended to mean “including the following and excluding others” on the basis that the specification disclosed that the motivation of the invention was to provide a solution that excludes Y2O3 and CeO2. The plaintiff disagreed on the necessity to introduce the specification for claim scope determination under Art.59 on the reason that the claims are clear in and of themselves, and thee is no need to look to the specification for further clarification.

Under former Chinese practice, Article 59 teaches that the protection scope of an invention or a utility model patent is confined to what is claimed literally, and the specification may be used to interpret the claims when the claims are unclear by itself. However, in this case, the PRB gave a new understanding of Article 59 that under certain situations, one could also integrate the parts of the specification and the background art of the patent application for claim scope determination, so that the technical solution can be accurately conveyed from the claims, provided that the interpretation does not violate logic and common sense. The PRB further clarifies that introducing the specification for claim scope determination is not restricted to where a claim is unclear.

The Appeal Board reinterpreted Article 59 and concluded that “if a skilled person in the art based on the disclosure of the specification can interpret that certain technical features should be excluded, such exclusion is allowable under the circumstance that the claim terms are not obviously contradictory”.

There is a problem. Section 4.2.1, Ch. 10, Part II of the Chinese Examination Guideline clearly states that “comprising” means that some components which are not indicated in the claim may be further included in a claimed composition. Thus until now, a closed-ended interpretation that excludes features not specifically recited in the claim was untenable. Even though specific PRB decisions are not binding precedents, this decision creates a high degree of uncertainty for those who may wish to invalidate patents based on novelty and/or inventiveness, but may provide another option for patent owners to argue for narrower interpretation of the claims should new prior art be presented during invalidity proceedings that anticipates the originally granted claims.

COMMENTS

Since an Australian judge understood the term comprising as limiting, I’ve generally included a paragraph at the end of patent specifications to the effect that the term “comprising” means including but not necessarily to the exclusion of other elements or steps. In other words, the term comprising indicates an open list. A paragraph of this sort can save a lot of ambiguity, but in this case, might have sunk the application.

What is worth noting is that in the Australian case, the judge was a general judge. In this instance, the Chinese board is apparently a dedicated patent forum. In Israel, the patent examiners have a nasty habit of deciding that text of this nature renders the scope of protection ambiguous and request that such paragraphs are removed.

In general, I am not a great fan of boiler-plate text.  The problem is not that people use standard paragraphs. The problem is that they do so without thinking. This case emphasizes that every line of a patent application is a two edged sword in that what is added to widen the scope of a patent claim, invariably widens the prior art that can be cited against the patent as rendering it lacking novelty or inventive step.

Negative claiming is generally frowned upon as being indefinite. However, in this case it seems that if the invention is that the ceramic beads do not contain ceria or yttria, this seems to be what should have been claimed.

There are about 20 applications that I’ve written over the past couple of years that are currently under examination in China and Taiwan. I have to rely on associates for translating my specifications into the local vernacular and in accordance with local case-law. I know what I mean when I write the applications, but do not know what is before the Examiner. Office actions are translated into English for me, and I instruct an associate who responds in Chinese. This is rather like the party game Chinese Whispers. When cases are allowed, I can never really tell whether the claimed invention is what was intended, and recently, where drafting for a China based client, I have the CEO’s personal assistant double check the translation against my original before filing.


What Happens When One Party of a Jointly Owned Application is Not Interested in Continuing with Examination?

July 7, 2014

Three parties: CNRS, University of Pierre and Marie Curie, and the Centre Etudes et de Valorisation des Algues, Ceva filed a national phase of FR2011/051384 into Israel as IL 224677.

On three separate occasions, the Centre Etudes et de Valorisation des Algues, Ceva indicated a lack of interest in the European and Israeli applications being examined. In the circumstances, the other two parties applied to continue prosecuting under Section 25, with their request supported by a statement from Ludovic Hamon the VP of CNRS.

RULING

In cases of multiple owners, Section 25 allows for a jointly owned patent application to be prosecuted in accordance with the desires of only some of the parties, but the Commissioner will only abandon an application or patent at the request of all of the parties.

Section 25 has not been clarified by the case law, and the accompanying explanation to the Law from prior to its legislation, does not relate to this section.

The Deputy Commissioner suggests that the purpose of the Law is so that a pending application may be moved forwards without agreement of all parties, so long as they are all kept in the picture.

In this case, despite the disagreement on ownership, two of the applicants are willing to the prosecution of the application without the involvement of the third party.

Since the Commissioner cannot see how the third party can lose from this, she ruled that examination should continue, with the third party being informed of developments.

Whereas all applicants may submit for an application to be abandoned, there is apparently no mechanism for one applicant of many to disengage himself from the examination process. Consequently, the Deputy Commissioner suggests that she should act as per the Law of Chattels. However, without clear indication from the third party that they are relinquishing all rights in the application she is unwilling to do more than simply to follow advice of the other parties.

Ruling, Jacqueline Bracha, 30 June 2014

COMMENT

This type of case could get very messy. Any of the joint owners can license the patent if allowed. Where parties are jointly owned, one should try to have clear contractual obligations in place. In this sort of case, ideally the interested parties should try to buy out the rights of the disinterested party.


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