Meet the Israel Trademark Examiners

November 12, 2014

Open Day

The Israel Patent and Trademark Office are having an Open Day, where lawyers and patent attorneys can meet the Examiners.

The meeting will take place on 25 November 2014 at 12:00 am in the lecture hall on the third floor at the Israel Patent Office.

The agenda which is based on suggestions from the Association of Israel Patent Attorneys, the AIPPI and the relevant committee of the Israel Bar includes discussion on:

  • whether office actions are sufficiently detailed or too laconic
  • whether someone submitting an affidavit in ex-partes proceedings should attend hearings
  • updates regarding when examination will occur
  • trademark searches under section 78 of the trademark ordinance 1940
  • correspondence with trademark department concerning International Applications under Madrid
  • updating contact details under circular 015/2012
  • working together to improve translation of lists of goods into Hebrew

So that they have an idea of numbers, people interested in attending are requested to contact the trademark department

 

 


Another Israel Patent Lapses Despite Timely Payment of Fees

November 11, 2014

Online payment

Israel patent number 213651 relates to a method of saving water. The patent issued on 31 August 2013, and the deadline for paying the renewal fee was 30 November 2013. Due to failure to pay the fee in a timely manner, once the grace period passed, it was considered as having lapsed from November 2013 and a notice that the patent had lapsed was subsequently published in the Israel Patent Office Journal of July 2014.

In October 2014 the patentee filed a request for reinstatement. The agent of record argued that the patentee had paid the renewal fee in a timely manner, however proof of payment was not sent to the Israel Patent Office. On discovering the error in June 2014, the agent of record contacted the patent office to discover what had happened, believing that proof of payment had been submitted. On discovering that proof of payment had not been received at the patent office, he took steps to revive the patent.

From the chain of events, the Deputy Commissioner, Ms Jacqueline Bracha, was assured that the patentee had not intended the patent to lapse and the fact that the patent had been paid but only the proof of payment had not been submitted was considered further evidence that the patentee had intended to renew the patent. There was a lack of explanation as to why so much time had passed from when the fact that the patent had lapsed was known to the patentee to when a reinstatement request was filed. Nevertheless, noting that the Israel Patent Office was closed for festivals, Ms Bracha allowed the request for reinstatement, and  this has published for opposition purposes.


Cofix and Cofizz, Lawyer Requests to Relinquish Representation

November 11, 2014

withdrawal

Israel trademark applications 261549 and 256612 for Cofizz and Cofix are considered competing marks.

Guy Ophir  is the agent of record for Mizrach and Amsalem, the applicants for Israel Trademark application number 261549 for Cofizz. On 21 September 2014 Adv Ophir requested to relinquish representation of his clients. The Deputy Commissioner, Ms Jacqueline Bracha asked Adv. Ophir how relinquishing him of his responsibilities would not adversely affect his client’s rights and cause the scheduled hearing to be delayed.

On 5 October 2014, Adv. Ophir submitted an affidavit to support his request. He detailed the steps he’d made to contact his clients, including proof that registered mail to his clients had been delivered.

Section 13 of the Israel Bar Law 1986 details professional ethical requirements for lawyers.  It requires that the lawyer acts promptly if he wishes to withdraw his representation and that the attorney receives dispensation from the court that is hearing the case. More details are set up in Appeal 15/05 Adv. Blatter et al. vs. Amitai Yigaeli 2005.  As stated by Judge Gronis, a central consideration is that hearings should not be postponed, leaving the court with empty slots. and that the opposing side may not want the hearing postponed and their wishes should be considered. As mentioned by Kling (the Commissioner’s father, Judge Kling) in Legal Ethics pages 344 and 345 (2001), a further consideration is the stage at which a proceeding has reached.

In this instance, a hearing has been set for 28 December 2014. The Deputy Commissioner has ruled that she is prepared to allow Adv. Ophir to withdraw from the case provided that the parties are contacted regarding the scheduled hearing at their registered address.

COMMENT

Details of why Adv. Ophir wishes to withdraw his representation is not clear. It does seem, however, that his clients are aware that he wishes to withdraw and are not responding to him.

I once had a client on Big Brother, where we had a contentious issue at the patent office, and a corresponding case (handled by a different firm) in the Jerusalem District Court. We could see the client on TV but couldn’t get instructions from him. Other clients have moved without updating addresses, etc. I can certainly sympathize with an attorney whose client is unresponsive. Here is seems that the client is aware that representation is being withdrawn, so it does seem fair.

 


Royal Clothing – A Hassidic Trademark Spat

November 11, 2014

royal clothing

Royal – the Great Center for American Clothing, LTD filed Israel trademark application no. 236655 for Royal Clothing. the mark covers clothing, shoes and head coverings in class 25.

Broadway Hassidic Clothing LTD opposed the registration claiming to have exclusive rights in the term Royal, and that the mark should be refused as lacking distinctiveness when compared to their (non-registered) mark. The mark could confuse the public and support unfair trade, and was filed in bad faith.

Broadway Hassidic Clothing LTD  claimed to be the leading purveyors of Hassidic garb, including trouser suits, shirts, study gowns and Shabbat cloaks, with multi-million dollar sales in Israel and abroad, and stores in Hassidic-Hareidi centers including Jerusalem, Bnei Barak, Ashdod, Beitar, Bet Shemesh and New York. In addition to their stores, they held seasonal sales. Although not having registered the brand, Broadway Hassidic Clothing LTD  claimed to have used the brand name Royal since 2009. The Applicant, Royal – the Great Center for American Clothing, LTD, has a couple of shops in Ultra-Orthodox population centers Israel and claim to have exclusive rights from the brand owners in the US, who also failed to register their mark. Back in 2011, Royal – the Great Center for American Clothing, LTD opposed Israel Trademark  Application No. 235810 for Royal Clothing, opposed a registration by Broadway Hassidic Clothing for a stylized mark. That application was abandoned.  Meanwhile, Broadway Hassidic Clothing LTD now has a pending trademark application no. 244009 for the word “Royal”.

The applicants and opposers submitted various affidavits and statements and a hearing was heard. The problem was that neither side could show that they had registered rights in the US, or, indeed, had unregistered rights there. Both statements of case left gaps in the chain of ownership.

The opposer didn’t claim rights to the mark in question, but claimed rights to the word Royal, which is only part of the mark in question.

The Commissioner ruled that the Opposer had not succeeded in proving rights to the word Royal, and even less so to the mark in question which was sufficiently distinctive to be registerable. Even were the Opposer to demonstrate rights in the word Royal, that He ruled that the mark could be registered and both parties could submit requests for costs.

COMMENT

The Commissioner seems to have done a reasonable job applying trademark law to a case where neither side had paid attention to trademark issues in a timely manner and where the underlying facts are obscured.  It doesn’t seem that either party has royal connections or fabricates clothing by royal appointment. It is difficult to imagine any member of the UK Royal Family wearing Hassidic style clothing.

 

 

 

 


Kerem Ben-Zimra – Competing Marks

November 10, 2014

competing wine

David Nachmias filed Israel TM Application no. 258163 for “Kerem Ben Zimra Winery” The Hebrew word kerem means vineyard). Not long afterwards, Yekev Ben Zimra LTD filed Israel trademark application number IL 258562 for יקב בן זמרה (transliterates as Yekev Ben Zimra and means Ben Zimra Winery) and IL 258563 for Ben Zimra Winery. All the marks cover wines in class 33.

Since the marks are similar and were co-pending, in January 2014, the Israel Trademark Office initiated a competing marks procedure under Section 29 of the Trademark Ordinance 1972.

In competing rights procedures, the first to file (in this case Nachmias) does not necessarily prevail. Other factors to be considered are the extent of use of the marks and whether there is inequitable behaviour of either or both parties. The parties are given an opportunity to file evidence to support their rights to the mark.

In this instance, the parties did not file evidence and in August 2014 the Trademark Office gave one month’s notice to the parties to file evidence or the marks would be considered withdrawn. This was ignored, so Ms Yaara Shoshani Caspi closed the files but noted that the parties could refile their applications.

COMMENT

Kerem Ben Zimra is a village near Tzfat that was founded in 1949. It takes its name from the Rabbi from the period of the Mishna, Rav Yossi Ben Zimra haCohen, whose grave is found in the village. David Nachmias and Yekev Ben Zimra both have addresses in the village.

There are other wineries in Kerem Ben Zimra. The Adir Winery has a range called Ben Zimra. The wines produced in Kerem Ben Zimra have a good reputation. As always with competing use for a place-name, it is not clear whether either or both parties should be able to register their marks. In this instance, the parties seem to have backed off a legal battle. It could, however, be a case of both sides losing. What is clear is that there is a likelihood of confusion if two or more wineries call their produce Ben-Zimra.


Wyeth’s Patent Term Extension for Bazedoxifene Cancelled Prior to ReExamination

November 10, 2014
Rocking the boat...

Rocking the boat…

There was an amendment to the Israel Patent Law earlier this year. This amendment (11th amendment) relates to patent term extensions. The amendment was announced, but did not go into immediate effect.

Wyeth filed a request to correct a mistake in the Patent Extension Order concerning Israel Patent Number 120701. The extension Order was given on 23 February 2014, and extends the basic patent for Bazedoxifene which, without the extension, would have lapsed on 18 April 2017.  The intention to grant an extension until 26 August 2019 was given in October 2013 and published back then. The calculation was based on the Law prior to the eleventh amendment.

On 18 September 2014, Wyeth submitted a request to correct the Extension Order to provide protection according to the regime after the eleventh amendment.

Section 16 of the Amendment states:

16(a) this Law will apply to Extension Order requests that are pending before the Commissioner of Patents on the day that this Law comes into effect, and for future requests for patent term extension.

Wyeth’s contention is that the amendment to the Law came into effect on 27 January 2014 and due to the publication for opposition purposes, the period for opposition finished on 31 January 2014, so, at the time the Law came into affect no Patent Term Extension had been granted and the request for patent term extension for IL 120701 must, therefore, be considered as pending at the time the amendment came into effect.

The amendment narrowed down the list of countries that could be relied upon for Israel to grant a corresponding extension. Instead of anywhere in Europe that grants an extension, only Italy, UK, Germany, Spain and France could be taken into account. Significantly, Japan was no longer considered a relevant country in regards to patent term extensions. Wyeth’s patent was extended on the basis of the extension of the corresponding Japanese patent. By ignoring Japan, a longer term could be requested.

There is an interesting twist here. In October 2013, the FDA issued approval for Bazedoxifene together with conjugated estrogens as Duavee. This fact was not taken into account in calculating the Patent term Extension and could act against Wyeth. The Commissioner ruled that it would be improper to apply some sections of the amendment and not others, and that the Israel Patent Office should consider the ramifications of this FDA approval as well. In consequence, the Commissioner did not amend the ruling, but rather canceled it as a wrongfully given bureaucratic decision. He ruled that the published patent term extension was null and void and that the Application would be subjected to accelerated re-examination under the amended Law with the ramifications, if any, of the FDA approval of Duavee also considered.

Various legal precedents were given to support this contention and the solution it offered. The Commissioner noted that Patent Term Extensions are not final and could be reconsidered, even previous to the eleventh amendment.  He related to previous rulings concerning Teva vs. Abbott, Neurim, Lundbeck vs. Unipharm and Roche.

In addition to being able to oppose any subsequent patent term extension, the cancellation of the existing patent term extension may also be opposed by third parties.

Ruling Concerning Patent term extension to IL 120701 to Wyeth, 3 November 2014.


Child Guard Registered as an Israel Trademark on Appeal

November 9, 2014

Childguard

Child Track LTD filed trademark application numbers 229697 and 229698 for “Child Guard” covering “Software used to monitor and record user activity data from and into non-mobile devices including personal computers and mobile devices including cellular phones and personal digital assistants (PDA); software to monitor and report all information uploaded and downloaded vie the Internet and all information entering and exiting from non-mobile and mobile devices; restricting access to and by computer networks, to and of undesired websites, media, individuals and facilities” in class 9, and for “Scientific and technological services; design and development of software; security services including monitoring and recording data from and into non-mobile personal devices including personal computers and mobile personal devices including cellular phones and personal digital assistants (PDA); reporting information uploaded and downloaded via the Internet and all information entering and exiting from non-mobile and mobile devices; restricting access to and by computer networks to and of undesired websites, media and individuals and facilities” in class 42.

NOTE – the marks are for the words Child Guard. The logo above is not the registered mark. It is included in this blog post as an illustration only.

The word marks were filed in May 2010 and the Examiner at the Israel Patent and Trademark Office refused the mark as being descriptive. The basis for the rejection was Section 8a of the Trademark Ordinance 1972, which prohibits registration of descriptive marks. The Applicant claimed that the word mark was not intended to label protective software or services, but rather to track entrance to such websites and to inform a responsible adult. This claim was supported by exemplary printouts.

The Trademark Department stated that it was willing to allow registration of the word mark based on acquired distinctiveness under Section 8b if evidence was submitted to support this contention. The Applicant submitted a response claiming that it had acquired distinctiveness, but this wasn’t submitted as an affidavit and had no evidentiary value. The trademark department noted this, and the Applicant resubmitted a signed statement by a Mr Benzi Salomon. This was not considered persuasive and the mark was refused.

The Applicant filed an Appeal, and the Deputy Commissioner agreed to rule based on the claims in the file, forgoing a hearing.

Ms Bracha ruled that a trademark has to be distinctive in order to indicate the source of goods, distinguishing one source from competing suppliers. Citing Seligsohn, she went on to note that whether or not a mark is considered distinctive depends on the goods or services and what is acceptable in that category.

The Applicant’s response regarding the nature of the service provided was that it does not guard children against entering inappropriate cites, so could not be considered descriptive. Instead, it allowed free access but informed a responsible adult as to where the child was surfing.

The Deputy Commissioner felt that the mark was not totally descriptive of monitoring and was more indicative, and as such, the name would not provide an immediate association with the service provided. She accepted that a mark that indicates the purpose of a service could be descriptive, but felt that the service and program did not itself provide protection, but only with adult intervention.

Ms Bracha noted that a mark, once issued, could be used for additional products so was wary of allowing a mark merely because current services and computer program functionality may be indicated but not described. She felt, however, that there was enough of a difference for the mark to have a degree of distinctiveness. She also noted that the requested word mark was not the only or even the natural way to describe the product and service. Furthermore, she did not consider the mark laudatory, and noted that the examiner had not raised that as an objection either.

Conducting an Internet search via Google, Ms Bracha noted that Child Guard was typically used for physical devices that provided some degree of protection to babies. There was a company called Guard Child but it was not certain that they were active in Israel. Nor was there evidence that they used the mark for similar goods or services.

Consequently, Ms Bracha ruled that the mark was inherently distinctive, thereby rendering the issue of acquired distinctiveness moot. Somewhat superfluously, Ms Bracha noted that the applicant’s evidence established that the mark had been in use since 2009 and in November 2011 they had received some television coverage. The product had been demonstrated to parents and youth. Despite the lacunae in the evidence regarding the amount of use, some use was shown. Consequently she allowed the mark to be registered.

Ex Partes Ruling re Israel Trademarks 229697 and 229698 for Child Guard, Ms Jacqueline Bracha, 6 October 2014.

COMMENT

I suspect that teenagers moderate their Internet activities if they know that a parent or teacher is receiving details of where they are surfing, so that actual adult intervention is not necessarily needed.

More importantly, I find this decision lacks analytical rigour.  The supplementary evidence  supplied is evidence of use of the term as a trademark. It is not evidence of acquired distinctiveness. Anything may be used as a trademark.  Not everything can be registered.

Registering marks provides a potentially everlasting exclusivity for the mark, where third parties can be prevented from using the mark. I think it is poor policy to allow one party the exclusive right to mark his software products and services that are designed to protect children as “child guard”.  I think this is the reason why descriptive marks are not allowed to be registered.

In this instance, I think the Examiner was correct and the Deputy Commissioner was wrong to reverse the ruling on Appeal.

 

 


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