Kappa Costs Capped

August 9, 2015

Kappa

Israel Trademark Number 213924 to the Karelia Tobacco Company is for the word mark KAPPA and covers Cigarettes, tobacco and tobacco products, lighters, matches and smokers requisites; all included in class 34.

Basic Trademark S.A. who own the well-known Kappa mark for sportswear shown above, successfully filed to have the mark canceled and our report of the decision may be found here. 

Having won their case, Basic Trademark S.A. filed for costs, which they claimed amounted to 237,165.57 Shekels which is $62,228.59 US  at today’s exchange rate.

The attorney’s for Basic Trademark S.A. were Seligsohn, Gavrieli and Co. and the request for actual costs was accompanied by an affidavit from Adv. Gavrieli (presumably Nachum) that asserted that costs had added up to 200,692.15 Shekels in legal fees for over 185 hours work by some four attorneys of the firm. Debit notes and receipts were also appended. The remaining 29,719.2 Shekels exc. VAT was for Italian counsel’s fees, legitimately incurred as the case was international. Furthermore, a final 6,754.2 Shekels was incurred in preparing the request for costs, and a debit note was appended for this as well.

The Attorneys for Karelia (Reinhold Cohn) argued that Basic Trademark S.A. and their attorneys had not provided sufficient detail to justify the costs which were excessive. There were alleged contradictions between the bills by foreign counsel and the sums requested and the invoices from foreign counsel were not supported by an affidavit. Karelia’s attorneys alleged that the costs were excessive, included unnecessary work, were unreasonable, and weren’t even incurred in the current proceedings.

In her ruling, Ms Yaara Shoshani cited Bagatz Tnuva (891/05) noted that [in Israel] it is an established rule that the losing side should pay costs for the victor. The actual costs that the winning party paid out or agreed to pay out are, however, examined for reasonableness, proportionality and whether they were necessary in the circumstances. For the courts to access whether costs were fairly incurred, it is required to provide sufficient details regarding the invoices. Citing the costs request in the Opposition to IL 140492 Unipharm vs. Abbott, Where the requested costs are unusually high, the amount of details required to establish that the costs are reasonable in the circumstances will also be more.

In this instance, in the main ruling of the opposition procedure, Israel trademark no. TM 213924 was rejected, and thus the Opposer is entitled to costs from the Applicant. Nevertheless, the requested costs are subject to judicial scrutiny.

Regarding the invoices from the Israeli law firm (Seligsohn, Gabrieli & Co.) examination thereof does not reveal a breakdown of the costs in terms of the work done and the number of hours spent. It is not sufficient to just record a shopping list of actions performed without context and by merely providing a total. This is insufficient for judicial critique. The number of hours certain actions took and who performed them were not detailed, nor was the date that actions were taken, so the invoices were considered insufficiently detailed.

The Agents of the Applicant correctly noted that the Opposer’s receipts were to the associate IP firm and were not linked to specific invoices or indeed to work for the specific client. Although pro forma invoices are acceptable, if receipts are also submitted, the connection between the two should be clear.

The Opposer engaged an Italian firm that engaged the local Israel counsel to represent them. The costs submission also included a request for foreign counsel’s costs. In the opinion of Ms Yaara Shoshani Caspi, the affidavit by Adv. Gabrieli was insufficient as his personal knowledge regarding the actions of the main counsel abroad was not first hand knowledge. A supplementary Affidavit from the foreign counsel, with their invoices attached should have been submitted.

It is not just a lack of clarity however. Even were all the invoices to be fully detailed and supported by affidavits, it would be difficult to establish that the costs were necessary and reasonable as required by Bagatz Tnuva. In particular, she saw a problem in the request for a further 29,719.20 Shekels for services from the foreing attorneys. This request was not sufficiently detailed and therefore it was not clear that it was necessary and unavoidable. Since these costs were not established as necessary and essential, they should be deleted from the total costs. Thus the sum to be considered is 200,692.15 Shekels, i.e. the costs incurred for services provided by the Israel Attorneys of record.

The invoice 20402 is an acceptable submission in that it appears to relate to the subject proceedings, however it is insufficiently detailed to be considered reasonable.

Invoices 22941 and 25138 relate to a correction of the statement of case and to an appeal to the district court that was rejected. Neither of these actions, though related to the case, can be considered essential and required.

The invoice number 24018 relates to contacts between the Israel Attorneys of record and the local distributor, and to a request to suspend patent office proceedings until the court ruled on the appeal.

Invoices 25658, 27986, 28932 and 30483 relate to charges connected to fling evidence and summations. These are certainly billable actions for which compensation is due, but the level of detail in the invoices is insufficient to establish that the charges were reasonable, proportional and necessary.

Invoice 27986 relates to attempts to negotiate a settlement and should not be obtainable via the patent office costs procedure (which relates to costs from the legal action), Nor should costs incurred for negotiating a procedural agreement be obtainable as part of patent office ruling incurred costs

That said, despite similarities between Opposer’s statements in different jurisdictions, the Opposer had to write a statement for use in the Israel proceedings and this involved Israel attorney time and is billable.

The amount of work and evidence submitted by Kappa was, however, considerable and tool time. That said, the mark was dropped prior to a hearing on the evidence which presumably saved expenses.

In consequence of the above, actual costs were not ruled. Rather Ms Shoshani Caspi weighed up the amount of work and based on the above analysis estimated a fair cost ruling. In conclusion, costs of 50,000 Shekels including VAT were awarded to Kappa.

Ruling on costs incurred in Opposition to Israel Trademark Number 231924 to Karelia Tobacco Company Inc., Opposed by Basic Trademarks S.A. Ruling of 23 June 2015  


Long Abandoned Patent Reinstated As Applicant was Ill and Application had not Published.

August 4, 2015

revival 2

In general, an Israel patent that has gone abandoned can be reinstated within 12 months of going abandoned under Section 21a of the law, if the abandonment was unintentional. After a year it is more difficult to reinstate, but in exceptional circumstances, reinstatement is possible after longer periods under Section 164.

IL 194015 to Natapov, Perstnev, Perstnev and Vilacer titled “the Insulating Material” was rejected in May 2012, due to failure of the applicants to respond to the Notice Prior to Examination. It transpired that one inventor-applicant had passed away and one of the others, who filed a request for reinstatement, was previously ill and indisposed, leading to the patent application becoming abandoned and not reinstated earlier. For reasons of privacy, the nature of the applicant’s health issues were not published, but, suffice to say, the Deputy Commissioner found them convincing. Despite the mark being abandoned for over 3 years, the Deputy Commissioner saw fit to reinstate as the abandoned application had not published and so there was no issue of third parties relying on the abandonment as grounds for objecting to reinstatement.

The patent application was reinstated and the applicants were given four months to respond to the Notice Prior to Examination. The details of the inheritors of the dead inventor had to be listed in the register. However the Deputy Commissioner ruled that under Section 16a, the application could not be enforced against third parties who can be shown to have utilized the patent prior to its reinstatement and publication.

COMMENTS

This is not the first time that an application that has been abandoned for more than three years has been revived. See here for another example.

I had some Russian clients who came to me with a portfolio of half a dozen applications including two abandoned cases. I managed to get five of the six cases allowed, but not the first and long abandoned one (also about three years) despite fairly extensive health issues of the applicant that were backed with the appropriate documentation.

Obviously one can’t compare the specific health issues in the two cases, but ultimately the main reason that reinstatement was not possible in the case I handled was that there was a corresponding US case that had published, so arguably, at least theoretically, third parties might have relied on this being abandoned, since the US case was published and the Israel application, which was the priority document was referred to in the US file wrapper.

I actually foresaw this development and suggested that Applicant was willing to provide a non-transferable license to all such third parties using or with plans to use the application prior to reinstatement. Unfortunately, the Deputy Commissioner didn’t relate to this suggestion and the Applicant decided not to Appeal or at least was tardy and missed the date for so doing.


Rentalcars.com

August 4, 2015

gtld

This ruling considers whether a generic top level domain g.TLD can be registered as a trademark.

Traveljigsaw LTD filed Israel Trademark Application TM 241856 for the word mark rentalcars.com for:

Transport services; travel services; car hire services; arranging holiday transport; vehicle rental and leasing services; rental and leasing of passenger vehicles, commercial and industrial vehicles; rental and leasing of cars, bicycles, motorcycles, camping cars, trucks, lorries, vans, coaches, buses, caravans; rental and leasing of vehicle equipment and apparatus; rental and leasing of vehicle accessories, including, luggage carriers, car seats, child safety seats, vehicle trailers, luggage racks, bike racks; arranging for transportation of persons; travel arrangement services; travel reservation services; electronic information services, namely, interactive and on-line information services featuring vehicle leasing and rental and travel information and interactive and on-line reservation services for vehicle leasing and rental; booking and ticket services; arranging and/or booking of holidays, travel, tours, cruises and vehicle hire, including arranging and/or booking of holidays, travel, tours, cruises and vehicle hire via the Internet; arranging and/or booking of seats for travel, including arranging and/or booking of seats for travel via the Internet; travel agency services, including travel agency services via the Internet; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services, all included in class 39.

The mark was applied for on 26 October 2011 and the Trademark Examiner at the Israel Patent Office refused the mark under Section 8a of the trademark Ordinance 1972 as the mark was descriptive of the goods to be protected.

The Applicant disagreed, arguing that the mark was not descriptive and the link between the mark and the services was tenuous. The mark relates to a website and not to car services. The site doesn’t even offer car hire services but merely is a platform for such services. The addition of the .com makes the mark distinctive and not merely descriptive.

The Applicant further argued that various countries such as Italy, Greece and Romania had allowed the mark to be registered. The company was internationally recognized. The applicant did not, however, want the mark based on a foreign registration.

The applicant supported their argument with an affidavit which was not found persuasive. They therefore filed a second affidavit, and, following a final rejection appealed this decision to the Commissioner to rule based on the contents of the file, but requested that the contents of the second affidavit be kept confidential as it allegedly included trade-secrets.

Ruling

Trade Secrets

Section 23 of the Fair Trade Laws 1999 allows the court to keep certain submissions secret, See 2375/13 Rami Levy vs. Moshe Dahan, 8 July 2013, where relevant considerations such as relevance of information to the proceedings, damage likely to be caused by its publication and the advantage to third parties.

In this instance, the confidentiality request relates to expenses in marketing and publicising the website, number of customers in each country during the period of 2004 to 2012, number of web visits from each country, invoices to Google and other suppliers.

Section 5 of the Fair Trade Laws states that:

A trade secret is business information of any type that is not public knowledge and is not easily obtainable, that provides a commercial advantage over competitors, so long as that the owners take reasonable precautions to keep the information confidential.

The information in question may be considered as trade secrets. In adversarial proceedings, the information is usually necessary to follow the adjudicator’s reasoning. In this instance, however, the proceeding is one of examination between the applicant and the Israel Patent Office and the amount of information that needs to be published is simply the minimum required to make the decision comprehensible.

In this instance, the decision does not require the second Affidavit by Peter Ronney from 2 May 2014 to enable interested parties to follow the decision, and so this information may stay restricted.

Inherent Distinctiveness

The purpose of section 8a is so that articles labeled with the desired mark (in this case rentalcars.com) can know the source of origin of goods or services (Seligsohn page 20).

In general, marks may be generic, descriptive, indicative, random and imaginary, although sometimes the boundaries between these categories are blurred. There is a theoretical continuum between generic and created marks, and the more unique and random the mark, or the more a mark has acquired distinctiveness, the wider protection, and generic marks are not protectable at all. Words that are descriptive of the goods or services must remain in the public domain. “Rentalcars.com” is, accrding to Deputy Commissioner, Ms Jacqueline Bracha, wholly generic and descriptive of the services provided, and the dotcom suffix is insufficient to make the mark unique and distinctive.

The .com suffix merely indicates a generic top level domain gTLD, see Kerley’s Law of Trademarks and Trade Names 15th Ed. (201) P. 859. The issue has been widely discussed in previous ruling 234287 “Hotels.co.il” from September 2013.

Quoting Kerley, the dotcom suffix merely indicates an international profile and therefore does not provide distinctiveness.

The summations noted that the company provides car rental services in Israel and abroad. Consequently, the argument that the company does not ONLY provide care rental services was not given much weight as this was the major activity and other services were related.

The fact that a name is registerable as a domain name does not imply that it is registerable as a trademark as the guidelines and requirements for registering domains in Israel  are very different from the trademark regulations, so the fact that a domain was registered does not free the patent and trademark office from independently examining whether marks are distinctive enough to serve as trademarks.

The commissioner noted that there is no connection between Traveljigsaw – the name of the service provider, and the services provided. Citing the TTAB – the Trademark Tribunal in the USPTO in its ruling concerning 1800.tickets and tickets.com it was ruled that such marks may not be registered even if the term ticket is dropped from the list of goods.

“The test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single significant quality, feature, etc. of the goods or services. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-established [*5]  that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977).

In turning first to the alpha or letter portion of this alleged mark (the word “tickets”), we find from this record that the evidence is overwhelming that the word “tickets” is merely descriptive of applicant’s services, even after all the earlier “ticket” and “ticketing” language has been scrubbed from the recitation of services.

Similarly in In re Dial A Mattress Operating Corp., 1999 TTAB LEXIS 623, 9-10 (TTAB 1999)  concerning the mark 188-mattress:

“We are persuaded that the analysis and rationale set forth in Dranoff-Perlstein and 800 Spirits, supra, would serve as an appropriate complement to the Federal Circuit’s Ginn two-part test in cases requiring a determination of the genericness of alphanumeric telephone number marks. Accordingly, we hold that if the mark sought to be registered is comprised solely of the combination of a designation (such as a toll-free telephone area code) which is devoid of source-indicating significance, joined with matter which, under the Ginn two-part test, is generic for the identified goods or services, then the mark as a whole is generic and unregistrable. Stated differently, a generic term is not transformed into a registrable mark simply by joining it with a toll-free telephone area code which itself is devoid of source-indicating significance.

TMEP section 1209.01(b)(12). Furthermore, it appears that a similar analysis has been adopted by the Office for examination of the ever-increasing number of marks which consist of or incorporate those portions of Internet domain names which are devoid of any source-indicating significance, such as “http,” “www” and “.com”. See Examination Guide No. 2-99, issued September 29, 1999, entitled “Marks Composed, in Whole or in Part, of Domain Names.”

Acquired Distinctiveness

Since the mark is generic it cannot have acquired distinctiveness. Nevertheless, the ruling went on to examine the alleged acquired distinctiveness and, citing Kerley, noted that A domain name registration as such is not an intellectual property right: it is a contract with the registration authority.”

In conclusion, the mark was refused.

Re TM 241856 to Traveljigsaw LTD for “RENTALCARS.COM”, ruling by Ms Jacqueline Bracha, 30 June 2015.


Deleting Documents in Patent Cancellation Proceeding

August 4, 2015

fighting robots

Aquatron and Maytronics are competing Israeli companies that each make pool cleaning robots.

Maytronics was awarded Israel Patent IL 206154 titled “Pool Cleaning Robot”. Aquatron filed to have the patent cancelled.

In the cancellation proceedings various issues came up such as whether Aquatron had received permission from Maytronics to use the patent. However, in a procedural agreement between the parties, it was decided that the summation statements would not to relate to this issue.

In their summation, Maytronics, did, however relate to the alleged license to use the patent, and so Aquatron filed to have the relevant passages deleted from the file. In their defense, Maytronics’ argued that Aquatron had submitted emails that related to the agreement as part of their evidence, and this had voided the procedural agreement.

Ms Jacqueline Bracha used Contract Law (section 25a) to rule that what was agreed between the sides is binding. Had they intended to state that evidence should be suppressed they could have done so. The disputed sections on the patentee’s summation were ordered deleted from the record, but the emails submitted by Aquatron were allowed.


?חלית? נפצעת – Have you become ill? Have you Been Injured?

August 2, 2015

Bennett the nurse

The Center for Realizing Medical Rights LTD filed Israel trademark 243620 for the words “?חלית? נפצעת” ‘י” which mean “Have you become ill? Have you Been Injured?”. The company has a very well known campaign that starts with these words and then continues “for non-legal advice, contact…”.

The Israel Law Bar consider that the The Center for Realizing Medical Rights LTD, which employs licensed attorneys at law but is not a law firm, is illegally and unacceptably competing with them as they consider that only they or a closed list of registered and licensed professionals including accountants, tax consultants, patent attorneys, and the like, have the right to represent clients on legal issues before various government bodies such as the National Insurance and Tax offices, the patent office and the like.

The position of the Israel Bar is, of course, driven by self interest, but arguments are used such as the fact that as it is a limited company, the Center for Realizing Medical Rights LTD can default on obligations, whereas a lawyer has unlimited liability.

“My Rights – Realizing Medical Rights, LTD.”, another similar service provider with dubious legality and the Israel Bar both filed opposition to the mark. Perhaps oddly, the opponents agreed to join their oppositions.

The Applicant refused to allow the procedures to be combined arguing that to do so would not prevent contradictory rulings. The Israel Bar objects to the list of goods and My Rights objects to the mark as being generic, and the basic facts of the two opponents are also different.

The Deputy Commissioner, Ms Bracha, ruled that courts have the authority to combine proceedings under Regulation 520 of the Civil Court Procedure 1984. The President of the Supreme Court can also combine different cases with different plaintiffs and order the lower courts to consider such cases in parallel. The Trademark Regulations 1940 do not have a similar regulation but the underlying logic is the same and the parties each accept that the Patent and Trademark Office can Combine Trademark Oppositions. The question is one of whether, in the current case, it is appropriate to do so.

The prime justification for combining cases is to save the court’s time. Despite the fact that so doing is not to the Applicant’s liking, only one opposition need succeed for the mark to be canceled. There is sufficient overlap in terms of grounds for refusing the mark that may be brought by the opposers, for the Patent and Trademark Office to combine the proceedings and have one hearing instead of two.

The Applicant further argued that some of his evidence was trade secrets that should not be published and made available to both opponents. The Court ruled that as when this became applicable they would rule on each alleged trade secret separately.

In conclusion, The Deputy Commissioner, Ms Jacqueline Bracha ruled that the proceedings should be combined and gave the opponents two months to submit evidence with future deadlines following the 1940 Trademark regulations.

COMMENT

We note that Glasberg & Applebaum who are representing the Applicants are taking on their professional representative organization. We applaud them for this. The Applicant is entitled to legal representation and we rely on their lawyers to provide this. We believe that the arguments as to the legality of the applicants’ services should be tackled head on by the Israel Law Bar and not in a trademark opposition. Nevertheless, we wait to see how this develops.

Second comment. Man Walked into a Bar. Ouch. Wounded? Injured? phone…


Old Jaffa Again

August 2, 2015

orange savings box

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin. They successfully opposed Israel trademark application numbers 220541 and 220542 and prevented it from issuing.

Israel Trademark Application Numbers 20542 and 220581 for OLD JAFFA, are for Preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively.

Israel trademark no. 237678 covers soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3. It previously issued without opposition. In an action combined with the opposition above, the Israel trademark 220581 (Old Jaffa) was canceled. The ruling may be found here.

The  Council for Producing Plants and Their Marketing filed for legal costs, claiming actual legal costs of 49000 Shekels. They considered that they were entitled to full costs so that they wouldn’t lose out financially.

The applicant, Yehuda Malchi, considered that the ruling by the Commissioner closed all open issues, including costs.

The Israel Patent and Trademark Commissioner, Adv. Asa Kling rejected Malchi’s position, noting that Section 69 of the trademark regulations 1972 allow the Commissioner to rule reasonable costs. Case law shows that such discretionary costs are generally ruled. Circular M.N. 80 provides a framework for requesting costs.

Having established that it was right and proper to provide costs, the Commissioner looked at the reasonableness of the costs requested.  He noted that there were two cases that were combined. The first was an opposition proceeding and the second was a cancellation proceeding and bot required a not-inconsiderable amount of work. That said, there were some items that appeared to relate to a different mark, and the costs were in dollars at a rather high exchange rate.

The Commissioner was not convinced that the actual requested costs were all deserved and ruled costs of 30,000 Shekels including VAT.


Globex trademark cancelled after opposition not responded to

July 28, 2015

Konkov Andrii Anatoliiovych filed international trademark number 1168258 that was allowed in Israel and received the Israel trademark number 257718

The mark is shown.

Globex

The mark covers a massive arrange of goods and services in classes 9 and 35.  Chicago Mercantile Exchange Inc. opposed the mark. Since Applicants did not bother to respond, the mark was canceled.


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