Voyager, It’s a Decision Jim, But Not as We Know It

August 17, 2014

voyager

Accel Telecom Ltd. filed Israel Trademark Application Number 251612 for Voyager”.

The mark was filed for the following goods: Fixed car phones and connected smart car phones; all included in class 9, and for telecommunication services, namely, providing electronic telecommunication connections, namely, providing voice and data wireless communications connections to enable users to transmit, reproduce, receive, access, search, index and retrieve data namely, images, sounds, text, movies and animations between mobile communication devices and computer communication networks, the Internet, information services networks and data networks; Telecommunication services, namely, telecommunication access services, communication by means of mobile phones, cellular telephone communication, mobile telephone services; all included in class 38.

The mark was accepted on 26 February 2012 and an opposition was filed by Plantronix Inc. on 28 May 2013,

On 27 March 2014 the list of goods was changed to Electronic apparatus, namely communication apparatus, telephones, mobiles, modems, and routers for communication apparatus; all included in class 9.

Somewhat confusingly, the decision states that a decision issued on 9 December 2014. At the time of writing, we consider this date that is in nearly four months time, a little suspect. In that decision, the Patent Office refused to allow the mark to coexist with Plantronics trademark 255989 which is an identical word mark. Our write up of that decision, by Ms Shoshani Caspi, may be found here.

Beyond the requirements of the Law, Ms Shoshani Caspi gave the parties an opportunity to provide evidence for allowing a coexistence agreement, provided the evidence would be submitted at least 30 days before a hearing on the issue.

On 19 December 2013 the parties informed the Israel Patent and Trademark Office that they did, indeed, desire to submit such evidence, but failed to do so. Despite this, a hearing was scheduled for 5 March 2014. During that hearing an agreement was reached that was acceptable to the parties and to the patent office.

However, on 22 June 2014, the parties merely submitted legal arguments without addressing the issue of confusing similarity.

Citing section 30 of the Trademark Ordinance, Ms Shoshani Caspi noted that in extreme circumstances, the Commissioner could allow two mark owners to use the same mark for the same good, and referenced a number of relevant decisions.

The parties argued that each was using the mark for different goods, sold to different customers via different channels and consequently there was not, in fact, any likelihood of confusion.

In this case, Ms Caspi could not accept the argument since the general case, as stated in section 11(9) is that confusingly similar marks cannot be allowed, and in this case the two marks are identical word marks for the same word “Voyager”.

One mark lists the foods as car phones and smart phones in vehicles, and the other as telecommunication equipment, such as earphones, computers and telephony communication equipment, adapters and battery rechargers, so both marks cover car phones. Indeed, the mark in question also covers remote telephony equipment under Class 38.

Ms Shoshani Caspi rejected the argument that in practice, Accel makes car phones and Plantronix makes ear-phones, since she considers these goods complimentary and thus still confusing to the public as to the source thereof.

The parties argued that whereas allowing Aroma to be used by more than one vendor of coffee and cake, was confusing, the current situation was more similar to Great Shape and referred to the 2003 decision concerning marks 107479 and 105968. Ms Shoshani Caspi rejected this argument. She also rejected the argument that since the distribution channels were different, there was no likelihood of confusion as the same customer could conceivably purchase both products.

Citing the Eshel – Yotvata Eshel Supreme court decision (which quoted Friedman p. 431) , she went on to rule that as defender of the public interest she could not allow coexistence, and she referred the case back to the parties to submit evidence in the ongoing opposition.

Decision re Voyager coexistence, Accel Telecom vs. Plantronix, ruling by Y. Shoshani Caspi, 20 July 2014.


AXXON Trademark Cancelled Despite Shoddy Research, But Serves Brimag Right

August 17, 2014

Axxon

Brimag Digital Age LTD own Israel Trademark No. 154869 in Class 9. Taser International LTD filed a cancellation proceedings on 12 September 2013. The owners of the mark did not respond and so Taser was given an opportunity to substantiate their request. On 19 March 2014, Taser  submitted their evidence, including an affidavit from Daniel Ben-Yishai, a trainee attorney at PCZL, the legal representatives of the Applicant for Cancellation. Notice of the submission of evidence was sent to the mark owner on 23 March 2014.

According to the Affidavit, on-line searches at the mark owners web sites http://www.brimag.co.il and http://www.brimag-systems.co.il on 11 September 2014 and 4 March 2013 failed to uncover any mention of the mark in question. Computer print-outs of the searches were attached. Ben Yishai testified to having phoned Brimag’s information center and their Customer Service and Replacement Parts line and they were unable to provide details of any part carrying the AXXON name.

RULING

Section 41 of the Trademark Ordinance allows any party to initiate cancellation proceedings against any mark not in bona fide use over three years prior to the request for cancellation. It is, of course, difficult to prove that something has not happened, but the mark owners were informed of the cancellation request and did not respond. Although the burden of proof is with the party requesting the cancellation of the mark, this burden of proof moves from side to side as the proceedings progress.

The Arbitrator of IP, Ms Yaara Shoshani Caspi criticized PCZL for using a trainee to look into usage and not a private investigator with some training, and considered the evidence as having low value. Nevertheless, in view of the lack of response from Brimag, she ruled that the mark be cancelled and also ruled 2000 Shekels costs against Brimag.

COMMENTS

Ms Yaara Shoshani Caspi’s criticism of PCZL’s sloppiness is correct. A simple Google search of the Internet for AXXON and BRIMAG proves that the mark is actually in use.  It is related to in the 2012 financial reports for Brimag: http://lxsrv1.bizportal.co.il/bizportalnew/bursamess/gif/e05310.pdf (see page 23 for example. this came up in a very simple Internet Google search.

There are various special offers for AXXON steam irons where Brimag is apparently the importer and service provider. See for example:

here, here and here.

The mark in question is actually for electromechanic and electronic apparatus included in class 9; apparatus for recording, transmission or reproduction of sound or images; measuring, signalling, checking (supervision) apparatus; magnetic data carriers; videocassette recorders; televisions; projectors; video cameras; facsimiles; amplifiers; loud speakers; compact disc players and recorders; laser disk players; receivers; digital versatile disk (DVD) players; stereo systems; minidisk players and recorders; discmans; radios; telephones; headphones; microphones; parts and accessories for the above mentioned goods; all included in class 9.

Arguably, steam irons are not covered by the class. That as may be, trainee lawyers do not have the training to provide evidence of non-use. Their supervisors should indeed be aware of this, and should provide guidance. Nevertheless, Brimag (and their representatives Wolf Goller Bregman) did not respond to the request for cancellation and so whether or not the mark was not in use over the past three years, they cannot really complain against this decision.

Although the search I did took two minutes, I don’t think that arbitrators at the Israel Patent and Trademark Office are required to do their own inquisitorial inquiries and can generally be expected to simply weigh up the evidence provided. If Taser now files their own mark, Brimag can show prior use, but that would require them to be trademark savvy and this does not seem to be the case.


Camtek Gets A Knockout Against Orbotech

August 14, 2014

CamtekOrbotech

Camtek and Orbotech are both Israel based manufacturers of imaging systems for the semiconductor industry.

After requesting modified examination under Section 17c of the Law, Orbotech received a notice of allowance for Israel Patent Number 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors” which published for opposition purposes back on 31 October 2010.

On 31 January 2011 Camtek filed an opposition.

Camtek claimed that the system and method use image analysis based on Darkfield and Brightfield illumination, using standard elements, and thus the claimed invention lacked novelty and inventive step over the prior art including US 6,947,151, IL 81450,  US 5,969,372,  WO 99/10730, HandBook for Machine Vision, 2006 and Optical Consideration for Machine Vision, 1985.

Furthermore, Camtek claimed that Orbotech had failed to make earlier Orbotech patent no. IL 81450 of record in this case, contravening the duty of disclosure under Section 18 of the Israel Patent Law and showing inequitable behaviour.

The Applicant countered that the invention did not relate to a new principle or to a new component but rather to a new system, in that the arrangement of components provided the invention.

Inter Partes Opposition to 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors”

As to the Duty of Disclosure, Orbotech went on to argue that the cited art was insufficient to invalidate the invention as claimed.

Experts representing both parties submitted affidavits and the applicant managed to have some clauses cancelled as illegimate widening of the grounds of opposition. The experts were cross-examined.

Ruling

The application includes 30 claims, of which claims 1, 11 and 22 are independent.

The system, as claimed in claim 1 is directed to:

An inspection system operative to inspect patterned devices having microscopic conductors, the system comprising:
at least first and second light sources, which illuminate a patterned substrate, said patterned substrate defining a substrate plane, wherein said first and second light sources define first and second paths of illumination, respectively; wherein said first and second paths of light are mutually non-parallel in a plane parallel to said substrate plane;
a camera viewing a location of a candidate defect on said patterned substrate, and acquiring thereat at least one image of the location, said at least one image being illuminated by illumination from at least said first and second light sources; wherein said camera defines an optical axis and said first and second paths of illumination are offset from said optical axis;
and wherein a response to illumination supplied along said first path of illumination is differentiable from a response to illumination supplied along said second path of illumination; and a defect classifier operative to receive said at least one image and to distinguish therewithin a candidate defect caused by a particle foreign to said patterned substrate from other types of candidate defects.

Claim 11 is directed to a corresponding method and claim 22 to the system of claim 1 being able to differentiate between cuts and other defects.

The opposition proceedings focused on the meaning of the term used to describe the first and second paths of light, described as being “mutually non-parallel in a plane parallel to said substrate plane“. The Applicant claimed that this relates to the Azimuth angle, and the Opposer noted that the term Azimuth Angle is not mentioned anywhere in the claims and is first introduced in the affidavit of Orbotech’s expert witness.

In the ruling, Deputy Commissioner Jacqueline Bracha cited 345/87 Hughes Aircraft Company vs. State of Israel to explain how claim construction should be achieved in Israel. Essentially, claims, are to be interpreted like any other clause in any other document. The specification as a whole is to be used to explain the claims, while noting that the claims are intended to be understood by persons of the art, and with a little leeway to account for the Applicant’s intention, falling back on dictionaries whilst acknowledging that the Applicant may be his own lexographer.

Based on the above, the Deputy Commissioner went on to rule that ideally, claims should be self-explanatory and understandable to persons of the art without reference to the specification. Even where a full understanding is based on other parts of the specification, the claims should be sufficiently clear and concise, and this is the purpose of Section 13 of the Law and clause 20(a) 3 of the regulations.

Ms Bracha went on to claim that this approach reflects the Supreme Court ruling 2626/11 Hasin Esh Taaiyot (lit. Fireproof Industries) vs. Koniel Antonio (Nevo 11/4/13).

“secondly, where a legal disagreement relates to a monopol or its boundaries, the specification will serve as a support for explaining the claims.” …. “from this, it transpires that the specification cannot protect details that are not mentioned in the claims. In other words, the monopoly went extend beyond the scope of the claim-set. This principle protects the public interest in that it provides clarity to that protected by a patent and allows the public to do research and development on those elements [described but] not protected.

Ms Bracha went on to suggest that as with Contract Law, any ambiguities should act against the Patentee since the Patentee is responsible for them.

Quoting from recent US decision, Nautilus Inc. v. Biosig Instruments, Inc. 572 US (2014):

“At the same time, a patent must be precise enough to afford clear notice of what is claimed, thereby “‘appris[ing] the public of what is still open to them.'”…patent system fosters “an incentive to be as vague and ambiguous as you can with your claims” and “defer clarity at all costs”). Eliminating that temptation is in order, and “the patent drafter is in the best position to resolve that ambiguity in … patent claims”.”

The ruling now gets very technical regarding what light sources can be considered parallel and where Darkfield fits into the picture, at different azimuth’s and refers to Figures attached  to Golan’s affidavit that, unfortunately, are not reproduced.

The Applicant, does, however, refer to the specification as well.

As to Novelty, the Deputy Commissioner cited Section 4 of the Law and Hughes Aircraft section 45. For comparative purposes, she cited a UK ruling:

“In order to anticipate a patent, the prior art must disclose the claimed invention and (together with common general knowledge) enable the ordinary skilled person to perform it.”

(H. Lundbeck A/S v. Generics (UK) Ltd. & Ors [2008] R.P.C. 19, par. 9).

the Opposer noted that a Supervision system was available from Amitech prior to the priority date and that this is a prior art publication in Israel (in the US and some other places, there is a grace period).

The functionality of this earlier system was examined and was compared to the claimed invention. The cited art was then examined in turn.

The Deputy Commissioner ruled that claim 1 was anticipated by IL 81450, specifically by claims 11-13 thereof, and thus lacked novelty.

Claim 2 merely adds a camera. to photograph defects.

Claim 3 adds a classifier of defects but the nature of this is not explained and the term classifier per se is too broad to be inventive.

Claim 4 merely slightly improves the functionality of the classifier and is not inventive over claim 3.

Similarly Claim 5, which is able to identify dust particles, merely slightly improves the functionality of the classifier and is not inventive over claim 3.

Claim 6 introduces using two sources of monochromatic light having different wavelengths. This is considered obvious my be combination of IL 81450 and WO 99/10730.

Claim 7 indicates that the two light sources do not act together and is not considered inventive over claim 1.

Claim 8 relates to perpendicular light sources which is preempted by IL 81450.

Claim 9 was not specifically challenged by the Opposer and appears to have been supported by Fig 4D and by pages 11 and 12 of the specification. Probably because the Opposer didn’t challenge this, the Applicant’s expert witness did not relate to this claims. Somewhat oddly in my opinion, the deputy Commissioner felt that the onus was on the applicant to prove novelty and he had failed to do so, so this claim was struck as well.

Claim 10 simply applies claim 1 to an array of electronic components and neither describes the equipment or the method, so was considered anticipated and not based on the specification and thus rejected under sections 4 and 13. Here again, I am at a loss to understand the relevance of section 13.

Claim 11 relates to a method of using the system of claim 1 and the reasoning used against claim 1 is relevant here as well. Claim 12 relates to claim 11 using Darkfield, claim 12 to claim 11 using an AOI system and since the system described is an AOI system, this adds nothing.   Claims 14 to 21 are method equivalents of claims 3-10 and claims 22-25 claim the system of claim 1 where the defects detected change and this does not render the equipment or the method new. Claims 26-30 relate to the substrate being examined and this also does not render the equipment or the method new.

Equitable Behavior

The background of the application relates to the supervisor and to the US 6,947,151 patent, so failure to mention these in an information disclosure statement was not deemed critical. However, IL 81450 is owned by Amitech and thus known to them, yet was not mentioned. Apparently the Opposer did not claim inequitable behavior (to me it seems odd that Adv. Levit would miss this).

Mentioning the Supervisor in the background is somewhat of a problem since the Examiner cannot easily determine what this includes. The Deputy Commissioner hypothesizes that submission of a product manual might have been in order under section 20(a)1, but the Examiner did not ask for this and she does not see that the law provides for sanctions against the applicant. The sanction for inequitable behavior is defined in Section 18c and relates to the duty of disclosure of documents and here, the Applicant fulfilled his obligations. Citing 14/92 Plasson Maagan Michael vs. Ferdy Freint, the Deputy Commissioner noted that the duty of disclosure is ongoing up until allowance and that failure can result in more than compensation [i.e. that an issued patent may be deem unenforceable or voided]. Mentioning equipment in the background is insufficient. The background should have included a description of the functionality.

That said, the claims are all struck down as lacking novelty or inventive step and the efficiency of the proceedings may be considered in terms of the amount of work required by opposer to obtain and describe this evidence when costs are awarded.

The opposition was accepted and the patent application was cancelled.

Israel Patent Number 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors” to Orbotech, Opposed by Camtek, ruling by Deputy Commissioner Jacqueline Bracha, 20 July 2014

Comments

I don’t remember the quote from Hasin Eish, but I think the Supreme Court ruling is not as clear as it could be. One can do research and development on patented elements protected by claims, and one can manufacture and sell non-claimed elements that are described.

Claim 1 cannot fairly be read as relating to perpendicular azimuths. This could be a flaw in the drafting, but also may indicate that the applicant was unaware of what they wanted an invention on at the time of filing. The Israel Law used to enable suing for infringement of ‘the pith and marrow’ of the invention as described, and if it is clear from specification that something not clearly claimed was intended, the claim construction for enforcement purposes may work slightly differently. At the opposition stage, claim 1 does appear too wide and it might, perhaps, have benefited from narrowing and clarifying amendments.  I am a little unhappy at claim 9 being invalidated because of the failure of applicant to show patentability. I think that in both examination and opposition, there is a presumption of novelty and inventiveness to the extent that, although not yet enforceable against third parties, during examination and opposition proceedings, the onus is on the Examiner and then the Opposer, to challenge the validity by bringing relevant prior art and logical arguments.

Nevertheless, the decision seems to be generally thorough and well reasoned.


Israel Trademark Arbitrator Cheesed Off with Cancellation Proceedings

August 13, 2014

pizza

Israel Trademark no. IL TM 236375 “פיצרלה” (Pizarella) to Yitzchak Hazot covers Cheese and dairy products; all included in class 29, Pizzas and pizza’s dough; included in class 30, and Restaurants and pizza restaurants; included in class 43.

The mark, issued on 11 June 2011, and Messers Yoel Lavi and Assaf Revach filed a cancellation proceedings on 18 October 2013 through Naomi Assia Law Offices.  On 19 March 2014, withn the framework of the opposition proceedings, the complainants should have filed evidence but failed to do so. On 25 May 2014, the Trademark Office sent a notice that failure to comply would result in the case being closed within 7 days.

On 5 June 2014, the complainants requested an extension to allow further negotiations between the parties, and on 8 June 2014, the Court of the Patent and Trademark Office gave an extension but requested an update from the parties by 22 June 2014. This was not received.  Ruling that the complainant was apparently handling the issue themselves, the arbitrator of the case, Ms Yaara Shoshani Caspi, closed the file and the mark remains valid.

 


Arutz 7’s take on the 2013 Report of the Israel Patent Office

July 28, 2014

Arutz 7

In an earlier post, I summarized the 2013 Patent Office Report.

It is interesting to see what happens when journalists who are non-patent professionals analyze and report on the same data.

Arutz 7 is a nationalist news web-site.  It used to be a popular pirate radio station, but was eventually closed down in an en-banc Supreme Court Ruling, which gave the impression that the cutlass welding settlers were making Palestinian’s walk the plank. None of the eminent judges saw fit to refer to freedom of speech or to the classic Kol HaAm decision. Funnily enough, the same politicians who appealed to the Supreme Court against the pirates, nominated Voice of Peace pirate Abu Natan for a Nobel Peace Prize. It is a funny world, but I digress.

Anyway, Arutz 7 have published a write-up of the 2013 report. It may be found here.

What I find fascinating is that they see the main story that can be culled from the data is that the Israel patent office manages to get 99.7% of PCT filings to Geneva in under 4 weeks, where the majority of those held back have security related issues. To me, this statistic indicates that the PCT department works efficiently, but this is probably a factor of over-staffing as much as anything else, since to become an International Search Authority, the Israel Patent Office needed to reach 100 examiners and some of these pad out the PCT Department.

According to Adv. Emi Plimor, the Secretary General of the Justice Ministry, “this reflects the technological level, creativity and innovation of Israeli inventors”.

I am pleased that the Israel Patent Office is so efficient at forwarding applications, but I am not sure how significant it actually is. When it took them a couple of months, there were no repercussions that I am aware of. That said, the on-line payment innovation that saves having to go to the Post Office and then submit the payment physically is a great improvement from the perspective of the practitioner.


Moroccan Oil Loses Passing Off Case in UK

July 28, 2014

Miracle OilMoroccan Oil

Our friends at Marks & Spenser Clerk have reported an interesting case concerning the hair-slicking Israeli product Moroccan Oil.

Essentially, Moroccanoil Israel Limited (MIL) sued Aldi Stores Limited for packaging their Miracle Oil in a confusingly similar packaging, under the law of Passing Off. the case was heard in a specialist IP Court, the UK Intellectual Property Enterprise Court.

Morrocanoil Israel LTD charged that Aldi’s Miracle Oil packaging amounted to a misrepresentation calculated to deceive or confuse the public.

As can be seen in the images, the box shape and colour, the bottle shape and size, the colour of the term Miracle Oil is identical to the M in Morrocanoil’s logo.

They claimed three alternative grounds of misrepresentation:

  1. a substantial proportion of the public would take Aldi’s “MIRACLE OIL” product to be MIL’s “MOROCCANOIL”;
  2. although the public would distinguish between the products, they would assume there to be an association between them in the form of there being a common manufacturer; or
  3. the public would assume that Aldi’s “MIRACLE OIL” was being sold under licence from MIL.

Previous UK case law had drawn a clear distinction between an intent to take advantage of a claimant’s goodwill and an intent to “live dangerously” by inviting comparison. In this ruling the judge considered that the subjective intention of the defendant must be taken into account and, if the defendant’s intent is that the name and / or get-up of its product will bring to mind the claimant’s product but not lead to any false assumption on the part of the public as to any sort of trade connection, including common manufacturer or a licence, then this cannot be deemed to establish that a misrepresentation has been made.

The judge went on to rule that none of the evidence provided by MIL demonstrated that members of the relevant public had assumed there to be a trade connection between the two products as a result of the name and / or get-up of Aldi’s product. Evidence that certain individuals viewed Aldi’s packaging as “cheeky” was held to be insufficient as such remarks served to demonstrate an awareness that MIRACLE OIL was not MOROCCANOIL and did not come from the same manufacturer.  Ultimately, while it was accepted that Aldi did intend to make the public recall MIL’s product when they saw MIRACLE OIL, it was held that purchase of Aldi’s product was not, and was not likely to be, made with any relevant false assumption in the mind of the purchasers.

COMMENTS

There is also an IPKAT post on this case.

It seems that to be able to prevent this type of copying in the UK, claiming ‘passing off’ is insufficient. That type of doctrine is only good to prevent identically names goods. Perhaps brand leaders should consider using unique packaging and should register these as designs. In my view, this seems an expensive requirement. In copyright law, there is a long established defense for satire. I don’t think that satire should be available for cases like this.

If one labels, say, jeans, as ‘Levy’s Kosher 613′, and use the stitching and studs, etc. of the iconic 501’s, Would Levi Strauss have a case of passing off? I don’t know. I do know that an Israeli producer of modest skirts with a wavy pocket design was threatened by Wrangler’s local representative and settled out of court.

A couple of year back I wrote up a case concerning generic body warmers which the judge threw out.  It seems that Israeli courts are taking a similar approach to that taken in the UK.

For some reason I am reminded of ‘The Sale of Two Titties’ by the Dutch author Dikkens.


Congratulations to the IPKAT

July 21, 2014

top cat

The IPKAT has clocked up its 10,000,000 hit today.

Congratulations to Professor Jeremy Phillips, to veteran Israel trademark attorney Neil Wilcoff and to the other Kats on this tremendous achievement.


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