Opposition to Israel trademark No. 238704 Lapidor – לפידאור

April 3, 2014

hanukia   lapidor   ptilor

Lapidor means “torch light” – torch as in a hand held flaming article, not an electronic pocket torch.

Polack Steinberg LTC filed Israel trademark application number 238704 for Lapidor for illumination equipment and accessories in Class 11 on 21 June 2011, and the mark was accepted and published for opposition purposes on 30 April 2012.

On 30 July 2012, Shalhevet Mifal l’Yitzur Nerot LTD (literally Flame Factory for Manufacturing Candles LTD) opposed the mark.

Opposer’s Claims

The Opposer manufacturers oil lamps and religious paraphernalia from various raw materials including plastic, glass and various metals. They have a registered trademark number 231561 for “Ptilor – פתילאור” literally, “light wick”. They also have a registered design for a glass oil lamp, and they claim to have exerted a lot of effort in designing an oil lamp that is easy to install and use, and where the consumerables may be safely replaced.

Originally, Opposer claimed that their mark was well-known in Israel and abroad, but this claim was later dropped.

Opposer alleged that applicant was selling his products as Ptilor – lapidor, and the New Ptilor – Lapidor. On discovering this, the Opposer filed a court proceedings in the District Court (3864-11-11) claiming passing off and unjust enrichment, resulting in a ruling against the applicant using Opposer’s marks.

Finally, Opposer argued that the applicant’s marks are confusingly similar and in the same class, and thus contravene sections 11(6) and 11(9) of the trademark ordinance.

Applicant’s Claims

Applicant manufactures oil lamps in the form of a torch which is packages in a package that converts into a Hanukkah lamp. The mark was chosen due to the shape of the lamp.

Applicant also has registered designs for the box (51251) and for the individual lamps (51252). Applicant claims to have its own reputation and client base and does not need to ride on Opposer’s reputation.

Applicant claims that the advertising campaign was without their knowledge and consent. Finally, the term “or” means light and no one company deserves a monopoly on this generic, descriptive word.

Both sides provides affidavits and supporting evidence and were cross examined on 9 December 2013.

The Ruling

The District Court only enjoined the defendants from using the word Ptilor and not from the word Lapidor (or from the suffix Or).

With regards to the claim that the marks were confusingly similar, the Deputy Commissioner applied the Triple Test. With regard to the appearance & sound of the mark, she ruled that the mark has to be considered in its entirety, and the little weight given to the suffix –or meaning light. Although the clients and distribution channels are similar, with no indication of inequitable behavior in choice of mark and with the marks looking and sounding different, the similarity in clients and distribution channels could not in and of itself create a likelihood of confusion.

The Deputy Commissioner argued that the claim that Lapidor was using the term Ptilor in comparative advertising is problematic since the word was associated with the product and arguably became generic and recognized as the product, i.e. a glass container of olive oil with a wick that made lighting Shabbat and Hanukkah candles with olive oil less fiddly. In other words, the Opposer’s mark is problematic, not the Applicant’s!

The charges of passing off and inequitable behavior was not proven and the Deputy Commissioner did not consider it necessary to address the other claims regarding Unfair Competion.

Conclusion

The opposition was rejected and the Opposer was ordered to pay 1500 Shekels costs and 17,000 Shekels in legal fees.

Israel Patent Office Ruling Concerning Israel trademark application number 238704 “Lapidor”, Jacqueline Bracha, 27 March 2014. 

COMMENT

The issue here is competition, pure and simple. Whatever applicant did or didn’t authorize regarding combining the marks, the term ‘or’ means light and Lapidor and Ptilor are not confusingly similar.

Marketing a similar product to one successful on the market is legitimate so long as the packaging is dissimilar, the branding is dissimilar, where a design is registered, (or under A.Sh.I.R. also unregistered designs), so long as the design appears different. That is the case here.

There was a case some years back where a Turkish company making paint called Dewilux had their mark canceled by ICI, owners of Dulux. The term lux means light, but not many people know that. The Turks mark was confusingly similar. The two marks in this case simply aren’t. Whether either name is particularly distinctive is another issue.\

 


Pesach Closures

April 3, 2014

Pesach-Seder
The Israel Patent Office will be closed for Pesach (Passover) from Monday 14th April 2014 to Monday 21 April 2014, and will reopen on Tuesday 22 April 2014. Any deadlines are extended until Tuesday 22 April 2014.

NOTE – PCT applications based on a Paris Convention deadline falling over the closure period may be filed on 22 April 2014. However, the USPTO does not accept US national phase entries of such PCTs as timely filed when the priority application is a US Provisional application.


Chic Design

April 3, 2014

chic design
Chic Design Industries LTD filed Israel Trademark Application Number 223957 as shown above, for vending, distributing, importing and exporting furniture and for managing furniture showrooms in Class 35.

The application was submitted on 1 October 2009 and allowed on 9 January 2011, and published for opposition purposes on 31 January 2011. On 14 April 2011, Mr David Azriel filed an opposition, and subsequently the applicant filed a second mark in Class 20 for furniture including sofas, lounge suits, tables, chairs, sideboards, beds and mattresses. The mark was filed on 19 May 2011.

The opposer has a couple of long standing marks filed in 2004 for furniture and domestic ornaments, textiles, carpets, rugs and clothing in section 35.

The marks are shown below.

chic design 2

Opposer’s claims

The opposer claims to have used the marks for 17 years, to have invested in marketing and to have built up a reputation. The opposer claimed that the attempted registration is inequitable behavior, confuses the public and is unfair competition. Since the mark is similar to his earlier marks, it is ineligible for registration.

The Hebrew word עיצובים means designs, and so the word design דיזיין is not distinctive.

Applicant’s claims

The applicant claims to have used his logo since 2002, and to have invested some 100,000 Shekels a year in marketing. He claims to have sales of 12 million shekels a year, to be one of the leading three furniture distributors in Israel and to have developed a reputation.

Applicant claims to be a leading manufacturer of leather furniture, whereas the opposer is an importer of smaller household goods. He further argued that the client base was different. Applicant expressed surprise that opposer was opposing the furniture showrooms but not the mark for selling goods through other outlets.

The applicant argued that opposer had had to disclaim the word Chic to register his mark in the first place, and didn’t have rights in this generic term. Since the marks look and sound different, there was no reason to not allow his mark to be registered. Since he’d acted in good faith, the commissioner could allow coexistence. Applicant further accused opposer of inequitable behavior for waiting three years before commencing proceedings.

Both sides provided affidavits and documentary evidence to support their claims.

The ruling

Since the Opposer dropped charges of confusing public and unfair competition, the patent office ruled on the narrow question of registration in light of confusing similarities.

Under section 11(9), a mark that is identical or confusingly similar to one registered may not be registered. The purpose of the law is to protect the public from confusion and to protect the rights of a party whose mark is already registered.

Applying the triple test, Ms Bracha ruled that although the word ‘design’ is the English equivalent of ‘itzuvim’, the marks nevertheless sound different and look different, even though the word Chic is common to both. She went on to rule that the marks were not confusingly similar.

The goods are dissimilar, in that the applicant sells leather suites and the opposer sells carved legs and the like to carpenters and home designers, rather than full suites of furniture. The deputy commissioner went on to rule that the clients and distribution channels were different.

As to other considerations, Ms Bracha did not think that the public would be confused in that purchasers of leather suites would not think that there was a connection to the opposers mark. Both parties had coexisted for other a decade without any clients being confused, and it was only when one party discovered the other in the yellow pages, that he was aware of him. Similarly, the second company only learned of the first on receiving a Cease & Desist letter.

The Deputy Commissioner noted that the opposer had argued that the applicants marks were widely registered across the class, but only more narrowly used. She ruled that oposer could challenge the scope of the mark in cancellation proceedings at a later date.

In conclusion, the opposition was refused and Opposer was ordered to pay 15000 Shekels in costs.


Accelerating Patent Examination when Inventor is Aged

April 3, 2014

old inventor

Background

In Israel, applications are sorted into tentative technology groups on filing and then, within each technology group, are examined approximately in order of priority date. Periodically, when the ratio of examiners to applications under examination drops sufficiently, the Israel Patent Office sends out Notices Prior to Examination for another batch of applications. There is no need to request examination and no special fee for so doing.

Under Section 19a of the Israel Patent Law, the applicant may pay a fee and request accelerated examination. If there are sufficient grounds for so doing, the patent office will allow the examination of a pending case to proceed, and the examiner should prioritize examination of that case on receiving a response to office actions.

This model has been confused somewhat by the various bilateral and multilateral patent prosecution highway agreements, where positive examination results from the country of first filing may be used as the basis of accelerating examination elsewhere.

The case

On 9 December 2012, Cimas Limited requested accelerated examination of Israel Patent Application No. 216870 on the grounds that the inventor, Professor Shimon Slavin, was born in 1941. Examiner Itay Katz noted that section 19aa1 allowed acceleration based on the age of the applicant, but not of the inventor. Since the applicant was a company, he rejected the request.

Applicant responded that Section 19aa6 allows acceleration in special cases where it is warranted. Whilst section 19aa1 does indeed relate to applicants, the fact that a company may be formed and a patent assigned to it for economic reasons was not supposed to shut the door in the face of elderly inventors who might benefit from acknowledgement of their inventive contributions.

The ruling

The amendment to Section 19 in 2012 was an attempt to codify patent office practice.

Within the discipline covered, Applications should generally be examined in order of filing. Not only is this fair, but otherwise a later filed patent could become a bar to practicing an earlier filed invention. Section 19 is an open list. As of 15 January 2014, requests for accelerating examination should be brought to the Commissioner’s attention.

There is no doubt that 70-year-old applicants are entitled to accelerated examination. Sections 39-43 of the Law states that inventors are entitled to recognition as such, but not to be entitled to anything else. The Commissioner was skeptical that this throws light on the issue in question. Citing Dr Shlomit Yanitzky Ravid, the Commissioner argued that being recognized as an inventor has indirect financial ramifications. Noting government decision 431 from 2006 to address the needs of the elderly which eventually resulted in a ministry for the elderly, and concerns for them to be able to remain in the workforce, the Commissioner ruled that there was a public interest in allowing elderly inventors to enjoy the fruit of their creation. He also went on to rule that the mere fact that the patent is assigned only partially negates the rights of the elderly inventor, for example, forfeiting the discount in filing fees.

Conclusion

The commissioner ruled that the application could proceed to Examination.

Comments

Age of inventor is certainly grounds for acceleration in the US, even now, after the America Invents Act, when the applicant may be a company.

However, arguably the Ministry for the Elderly and the Pensioner’s Party had plenty of opportunity to create an age of inventor clause in this amendment and didn’t. Age of Applicant is a general consideration not an exceptional circumstance and in absence of clear legislation, I am not sure that this interpretation is fair. If we accept age of inventor as being relevant, then what is the cut off age? Retirement age? 70? 80?   Then again, since the Law clearly states that age of applicant is grounds for acceleration, presumably companies such as IBM, Kodak, Coca Cola and the like, should have an advantage over start-up companies! The ruling opens the door to fraud by grandfathering in the inventor, i.e. adding grand-dad as an inventor to skip the queue.

Commissioner Kling has noted that advancing the interests of senior citizens is on the government agenda and used this as the basis for accelerating examination when the inventor is a senior citizen. What about other groups that the government wishes to advance? Former Chief Justice Barak ruled in favour of preferential treatment to rectify this situation. If women and men apply for a senior position and a woman candidate is as qualified as a man, the Supreme Court under Barak would have the woman chosen. Women are certainly under-represented as inventors. Very few applications list women as inventors. Possibly women inventors could request accelerated examination on grounds of their gender? Similar arguments could be proposed to accelerate examination for minorities (Caucasians, Beduin, Israeli Arabs, or for people living in the periphery, or settlers. There is a difference in that the aged are less likely to be around in 2 or 3 years when their application comes around for examination, but that may be true of citizens living on the Gazan border or actively serving in the army or doing reserve duty, minorities such as lifeguards and frequent flyers. I think this may be what the courts refer to as a slippery slope…

 

Over all, I think the decision is wiser than the wording of the amendment.


Ice Line LTD. vs. Ice Shot LTD. – competing marks

April 3, 2014

ice-shot  ice shot 2

If a second, trademark application is filed whilst a first similar mark is pending, the patent office initiates a competing marks procedure under section 29 of the Trademark Ordinance 1972.  One mark is chosen to proceed to examination, and only once it is allowed or rejected, is the other mark examined. When choosing which mark to proceed with, the first mark filed is a consideration, but the patent office also considers the scope of use of the marks by the two applicants, and also whether there is evidence of inequitable behavior.

In this case, a Mr Joash Hassidim filed Israel trademark application no. 250709 on 30 October 2012 for a stylized mark containing the words Ice Shot, for alcoholic drinks in class 33. On 7 February 2013, Ice Shot LTD. filed Israel trademark application no. 253348 for a different stylized mark containing the words Ice Shot, again for alcoholic drinks, excluding beer in class 33. 

The sides were given until 30 November 2013 to submit evidence, but the second applicant, Ice Shot LTD. missed this deadline and only evidence on 5 December 2013 without asking for or being granted an extension. In an interim ruling on 9 December 2013, the Deputy Commissioner, Ms Bracha, ruled that the evidence would not be considered 

On 12 February 2014, Mr Hassidim was cross-examined on his statement. Mr Hassidim claimed that he and his partners conceived the mark in 2009 or 2010 and in 2011 engaged a graphic designer to create the logo and packaging. The mark is being used in connection with a fruit flavored alcohol that is intended for freezing (presumably intention is to be sold from a freezer, at or below 0°C, the alcoholic beverage will not be frozen). The product was launched in Elat and from 2012 onwards, has been sold across the country.

Hassidim claimed that he first learned of the use by Ice Shot in 2013. He summed up noting that the he was the first to file, his product is available in over 1000 outlets and at various events and hotels, and that since the competing marks evidence was not accepted, they really had no claims at all. He also provided various publicity material from local newspapers, the internet and Facebook showing usage of the mark.

Ice-Shot LTD. made various counter-claims re usage of mark from 2012, but since their evidence was not accepted, they couldn’t substantiate their claims. Ice-Shot tried to argue that Hassidim’s usage was only in Elat and mostly on off-shore cruises and could not fairly be considered usage in Israel. They claimed to have continuous registration of the web domain www.iceshot.co.il, which the first applicant should have known about, and that the earlier filing by first applicant was only an insignificant three months earlier.

In conclusion, since none of the evidence of Ice-Shot LTD was accepted, the equitable behavior of the first applicant could not be challenged. Arguably the second applicant filed only on learning about the first applicant’s filing. That as may be, Israel trademark application no. 250709 to Hassidim (Ice Line LTD) issued, and the later filed Israel trademark application no. 253348 was canceled. Costs of 7000 Shekels + VAT + expenses of 700 shekels (a total of about $2200) were awarded to Hassidim.

Decision re Ice Line LTD. vs. Ice Shot LTD., Ms Jaqueline Bracha, 12 Feb 2014

COMMENTS

The moral of the story is to file one’s evidence in time.


RETINA trademark registered by APPLE INC. in same class as identical mark to KODAK

April 3, 2014

RETINA

APPLE Inc. filed Israel trade mark No. 235988 for the word RETINA. The goods covered by the mark included: Computers; computer display screens; handheld mobile digital electronic devices used as a telephone, handheld computer, personal digital assistant, electronic personal organizer, and electronic notepad computer; handheld mobile digital electronic devices used to access the Internet, electronic mail, digital audio and video, and other digital data – all in class 9. 

Since KODAK had an earlier Israel trade mark No 12555 RETINA, from 1953 in class 9 for photographic cameras the mark was refused under Section 9(11) of the trademark regulations. 

Applicant submitted a coexistence agreement from KODAK, but the Examiner felt this was insufficient, and the applicant requested an oral hearing in which Applicant argued that APPLE uses the mark on screens, whereas KODAK used the mark on lenses for mechanical cameras. APPLE argued that their target audience was general, whereas KODAK’s products were aimed at professional photographers. Furthermore, the mark was successfully registered in a number of jurisdictions around the world including the UK, Switzerland and New Zealand. Since the applicant uses the logo RETINA together with the iconic Apple logo, there is no real likelihood of confusion. 

In her ruling, Deputy Commissioner Jacqueline Bracha noted that the triple test (similarity of marks, similarity of goods, customers and any other reasons), was all well and good for similar but non-identical marks. However, where the mark is identical, the test should be applied very stringently. Citing Seligsohn and the visa decision she noted that if the mark is identical, one has to be very careful about allowing co-existence. Nevertheless, the goods so marked are different. She noted that despite both being related to photography, the goods neither compete nor have a symbiotic relationship, where one complements the other. 

The retail outlets are also different. Although the general public purchasing Apple products includes professional photographers, since professional photographers are specialists it is unlikely that they would be confused regarding the origin of the different products. 

Despite the coexistence agreement between the parties not being the be all and end all in such matters, this also supports the contention that there is no likelihood of confusion. 

Ms Bracha also noted that the word Retina has a meaning which lowers the likelihood of association exclusively with one producer or another. She acknowledged that the mark was used together with the Apple logo, but since it was submitted on its own, and, if allowed, could be used on its own, this was given little weight. Nevertheless, on weighting everything up, she concluded that the mark could be registered. 

Decision re Israel trade mark No. 235988for the word RETINA, Ms Jaqueline Bracha, 6 March 2014.  

COMMENT

The decision is well-reasoned. Judge Ginat’s ruling on SoHo, three days later also supports it. The problem may come about if and when KODAK or APPLE branch out into new areas. Apple Records and Apple Inc. lived in happy coexistence until the MP media players.

What I believe Ms Bracha could and should have done is to limit the scope of goods in both registered marks to define the KODAK mark as for camera accessories, lenses, etc. for the professional photographer, and Apple’s mark for consumer goods comprising largely of an LCD screen.

Some years ago I registered a trademark for the boutique winery Tanya, whilst there was a Polish vodka called Tania on the Israel market. We filed a coexistence agreement with from the Polish company, and at their request, marked our goods for wines and not vodka. This avoids future conflict.

 

 

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Soho in Israel

March 20, 2014

SoHo

Collection Soho LTD owns a chain of design shops selling furniture, kitchenware, ornaments, bags, jewelry and fashion accessories. The chain has been in existence for 10 years, and in June 2013, the company was awarded a trademark for the word Soho in class 35, covering Shops for sale of designed goods in different consumer sections including – foodware and tableware, office supplies, appointment books and planers, calendars, kitchenware, baby and infant products, greeting cards, bathware (sic), furniture.

When Electra Real Estate LTD and Ben Ephraim and Sons, Building and Entrepeneurship LTD publicized a plan for a shopping mall called So Ho, Collection Soho LTD filed for an injunction, under the Equitable Trade Laws and the Trademark Ordinance.

Judge Gidon Ginat of the Tel Aviv District Court heard the case. As is his custom, and as he explained at an AIPPI conference in Israel a few months back, Judge Ginat prefers to address the whole issue in one hearing rather than rule on temporary injunctions and let cases drag out. He ruled that under both trademark infringement and the tort of Passing Off, the relevant test was whether there was an objective likelihood of confusing potential customers such that someone might purchase the goods of one company thinking that they were purchasing the goods of the other company.

Based on the fact that New York and London have Soho districts of a Bohemian, arty character, and with reference to Judge Gronis’ decision (Supreme Court Rules that Usage of “Shemesh” by Competing Restaurant is Kosherconcerning the word Shemesh, where the now head of Supreme Court ruled that registration of the word Shemesh (Sun) as a trademark by a grill restaurant, was insufficient to prevent others from calling their restaurants various names that included the word Shemesh, Judge Ginat ruled that in addition to the classic triple test for likelihood of confusion and the distinctive-indicative-generic term spectrum, he went on to rule that there are words with a universal aura and that it was difficult to accept that someone could take ownership over such words, and felt that Soho was in that category.

Although there is a chain of design shops called SoHo, there are other enterprises using the name Soho as part of their name. Here there was an interest in developing a shopping precinct called SoHo, not a single shop. Judge Ginat felt that there was no real likelihood of confusion, and therefore denied the injunction and ruled that the precinct could use the name SoHo. But should use a different font and not use the phrase Collection SoHo.

In the circumstances, due to the other goods sold in the shopping mall, Judge Ginat ruled that it would be clear to customers that the mall was not related to Collection SoHo, and threw out the case. However, he also ruled that the defendants could not use the same font as that used by Collection Soho LTD or use the phrase Soho Design.

13408.02.14 Collection Soho LTD vs Electra Real Estate LTD and Ben Ephraim and Sons, Building and Entrepeneurship LTD, Tel Aviv District Court before Judge Ginat, 9th March 2014

COMMENT

The term Soho conjures up a bohemian arty sort of lifestyle to Americans due to the neighborhood called South of Houston or Soho for short. To the British, the term indicates London’s historic red light district

There are 13 marks for Soho in the trademark registry, six of which have lapsed and 7 that are in force. For example, International Paper Company of Memphis, Tennessee, U.S.A. has a trademark No. 202063  for Disposable containers for use in the food and beverage service industry, namely, cups, lids, bowls, plates and serving platters; all included in class 21 and mark 202062 for Disposable containers made of paperboard for use in the food and beverage service industry, namely, cup carriers, cup sleeves, boxes, buckets, and bags; all included in class 16. Two of the lapsed marks, Soho and Soho Club were for registered to a Tango LTD, for clothing in class 25.

It is not clear to me why the word Soho should not be monopolized in Israel by registration of a trademark. If such a mark is registered, I fail to understand why the mark owner should not be able to enjoy a monopoly for the word.

I can see that the two signs use different fonts, but only can tell this as they are reproduced side by side. Both signs use san serif thin letters. The H is more or less identical. The S is slightly different and the O is more round in the complainant’s logo and more oblong in the defendants. The overall impression is very similar. I think this indicates intentional passing off, or at least inequitable behavior.

Nevertheless, it is difficult to criticize Judge Ginat for following Supreme Court precedent. His analysis is solid, and he has indeed moved this case quickly through the system. However, I was critical of the original Shemesh decision. Whilst judges are bound by precedents, bloggers aren’t. My concern is that whereas under common law, the likelihood of confusion may be the issue. trademarks are registered and are generally considered a form of property. If a mark is registered for design, why shouldn’t the mark owner be considered just that, an owner of a piece of abstract property? Can the existence of other retailers selling designer goods be considered as dilution? I would argue that judge Grunis’ decision was wrong since it dilutes the Shemesh brand name and this decision has a similar effect.

What Judge Ginat is doing essentially, is ruling that the right of any third-party to use a place-name like Soho for a shopping area over-rides the rights of a trademark owner to stop this unless there is a likelihood of confusion of origin of goods. There are two torts here. Likelihood of confusion and a separate trademark infringement issue. If the only issue is likelihood of confusion, why register trademarks? It will be interesting to see if this decision is appealed, and if so, what the verdict will be.

One final comment: the late Rabbi Irving Jacobs, formerly Principle of Jews College London, once told me that Rabbi Farber, the minister of Soho used to say that on leaving the synagogue one could make the blessing בורה מיני זונות.


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