Dagesh – The emphasis on coexistence

March 10, 2015

Dagesh assistive technologies
The word ‘dagesh’ means emphasis. It is used particularly to denote a dot that is added to letters of printed Hebrew text to add stress. The letter Bet with a dagesh is pronounced Buh and without a dagesh as Vuh. The letter kaf is a kuh sound, and a gutteral chu sound as in Chanuka without a dagesh. Yemenite Jews differentiate between hard and soft Gimels and have a j sound as in giraffe. (An early multilingual Windows based word-processor was developed in Israel some years ago and sold under the brand Accent. The Hebrew-English version was marketed as Dagesh).

In 2012, Israel trademark application number 243617 was filed for “Dagesh Assistive Technologies”. The mark is shown above.
The application covers accessories or equipment intended to improve the functioning and the ability of people with disabilities, namely, computers; arms and mountings; peripheral equipment for computers such as keyboards, keyboard replacements, mice, mouse replacement, joysticks, switches and trackballs; teaching aids; augmentative and alternative communication and computerized communication system, namely, devices intended to improve communication of people with speech disabilities and other disabilities; devices for recording, transmission or restoration of voice; accessible toys and accessible leisure facilities; accessories or equipment intended to improve the functioning and the ability of people with disabilities; all for people with special needs and the population of special education, including people with physical disabilities( e,g with impaired vision or hearing) and/or mental disabilities and/or learning disabilities or developmental difficulties; all included in class 9, sale of computers , peripheral equipment, communication systems and augmentative and alternative communication system (AAC); all included in class 35. Lending of communication systems and augmentative and alternative communication systems (AAC); all included in class 38; training and services for special education students. consulting and adjusting accessibility to population with special needs; all included in class 41 and Lending of computers and peripheral equipment for computes; technical support provided to population with special needs with regard to technical aids and special instrument designated to such population; design and development of computer software in collaboration with para-medical experts for population with special needs; all included in class 42.
A second Israel trademark application number 260864 for the same mark covers adapted toys for children with special needs and recreation adapted facilities for population with special needs.in class 28, and for Providing treatment and solutions for populations with special needs with motor disabilities with the assistance of measures and paramedical experts: speech therapists; occupational therapists; Physiotherapists; art therapists in class 44.

Dagesh Hadracha
Meanwhile, Rivka Zadick filed Israel trademark application number 243484 for “Dagesh the center for therapy and training” which provides Diagnosis, and treatment of diseases and disorders of physical or cognitive disabilities for children; occupational therapy services; speech therapy, music therapy; art therapy; physical therapy; sport therapy; all included in class 44.
The dominant word element in each mark is the word Dagesh. The services provided are somewhat related which results in a similar customer base.
Because of the similarities between these co-pending marks, the Israel Trademark Office instituted a competing marks proceeding. However, the parties agreed to co-existence with minor amendments to the list of goods, and requested that the Israel Trademark Office ratify the agreement.
Since the marks are stylized and the logos are very different, the adjudicator of Intellectual Property, Ms Shoshani Caspi was happy to allow both marks to register as she did not think that this would create a likelihood of confusion among the public. The three marks have thus progressed to publication for opposition purposes and, unless there are third party oppositions, will be allowed to coexist.

In the circumstances, no costs were awarded.

RE Israel Trademarks 243617, 260864 and 243484 for Dagesh, coexistence ruling by Ms Shoshani Caspi, 8 February 2015.


IL 157,035 – If one accused of infringing a patent does not challenge its validity, is the accused estoppeled?

March 8, 2015

Fig. 3Fig. 6

Israel Patent Number 157,035 is owned by Moshe Lavi. It relates to a shelf for the compressor of an air conditioning unit.

The main claim is as follows:

 A modular bracket for an air conditioner compressor, said bracket comprising a substantially rectangular frame composed of at least two portions, being “U” or “L” shaped provided with surplus holes allowing adjustments to suit the thickness of an air-conditioning compressor to be seated thereon, at least one further structure being attachable to said rectangular frame to provide support thereto.

The patent application was filed in July 2003 and issued in May 2007. In April 2014, Zach Raz, represented by Pearl Adv. filed a cancellation proceedings and, on 27 July 2014 Moshe Lavi, represented by Pearl Cohen Tzedek Latzer Barats filed a request to have the case thrown out.

Note, the Pearls concerned are different lawyers with the same name. To differentiate between them, we will call one firm Pearl and the other Pearl Cohen – Brats.

In an earlier dispute, 47000-02-12 Moshe Lavi vs. Zach Oz Air Conditioning LTD., the parties agreed to an out-of-court settlement in which the applicants for cancellation undertook not to infringe the patent, and, consequently, Pearl Cohen Brats argued that they were estopelled from challenging the validity of the patent.

At this stage Pearl Cohen Brats claims that Zach Oz never raised validity issues which are generally the first line of defense that infringers take, and at this stage, they are estoppled and it is too late for the them to challenge the validity of the patent whether or not the grounds for so doing were known at the time of the previous ruling.

Moshe Lavi represented by Pearl Cohen Brats further alleged that Zach OZ was behaving inequitably and was misusing the legal procedures. This argument was based on the compensation damages awarded in the out-of-court settlement were minimum as the parties were keen to put the legal battles behind them, and, were Moshe Lavi to know that the validity would subsequently be challenged, they would never have agreed to reducing the compensation.

Zach Oz argued that there was no positive declaration of validity or admission of validity in the court case or in the out of court settlement. They further argued that the grounds for invalidating the patent were only discovered after the out-of-court settlement. They further opined that throwing a case out without discussing its merits should only be considered in extreme cases where it is clear that the case is frivolous. Since the issue of infringement and that of validity are not the same, one cannot consider that the previous court ruling prevents the patent office from hearing the case.

Ruling

The Commissioner, Asa Kling noted that throwing out a case on a technicality without hearing it on its merits was an extreme step, and that the Israel Patent Office had an obligation to ensure the integrity of the patent register (see section 73b of the Israel Patent Law 1967) so that the validity of any patent that arguably should never have issued should be challengeable.

Citing Judge Zamir in Appeal 3833/93 Levine vs. Levine:

Access to the Courts is a constitutional right despite there not being a constitution and this right is not yet written into the basic laws, and the courts will uphold this right.

Judge Heishin in 733/95 Orpal Aluminium vs. Klil Industries LTD PD 51(3) 755, 628:

Access to the courts is a basic right as basic rights are commonly understood.
Furthermore, access to the courts is considered a basic right, even if not literally stated in the Basic Laws. It is the air that allows the courts to breathe and is the basis of the judiciary and of the rule of law.

In other words, Heishin was noting that the courts need to be able to hear cases to function and so were loath to throw cases out on a technicality.

Commissioner Kling accepted the need for finality, but ruled that the need for access to courts  and for cleaning the patent register by voiding  a priori non-valid patents was a greater need. He didn’t consider that civil procedures were merely for the benefit of the warring parties and there was an overriding national interest in allowing cancellation proceedings to be judged on their merits. Section 73b rules that such cancellation proceedings could be submitted by anyone.

Based on the statements of case, this instance was not one of those rare cases where access to the courts should be denied.

In paragraph 2 of the statement of case, Lavi (represented by Pearl Cohen Brats) stated that “the patent was granted on 12 May 2007 and is in force for all purposes”. In paragraph 14 of the counter claims Zach Oz represented by Pearl stated that the patent is in force until 21 July 2013, i.e. a further year. It seems that this was simply a misreading of the register. One cannot deduce from this that they accepted that the patent was inviolate and could not be challenged.

Since anyway, anyone can challenge the validity of a patent, and in so doing, serves the public interest, the whole concept of judicial estoppels is irrelevant and this skirmish is simply a waste of precious judicial time.

Essentially the infringer, can, of right, challenge the validity of the patent in the patent office whilst defending himself from allegations of infringement. The legislators intentionally allowed this and the estoppel simply does not exist.

It appears that Lavi (represented by Pearl Cohen Brats) are attempting to learn ex silencio assent to the validity of a patent whose validity was never formally asserted. Although Section 182 allows the alleged infringer to raise invalidity issues in his defense, he is not obliged to do so.

The mere fact that in the previous court case, there were vague references to validity issues, the court never addressed those issues and it cannot be construed that the previous court had affirmed that the patent is valid.

Citing Zaltzman in Court Actions 1991, , the Commissioner ruled that an out-of-court settlement undertaking not to infringe that was subsequently endorsed by the court cannot be considered as if the parties had accepted validity of the patent or that there was indeed infringement. They had merely decided not to bother to have an adversarial dispute that could create estoppels.

Arguably, the claim that the token compensation would not have been accepted had the patentee known that the validity of the patent would subsequently be challenged might be grounds for ruling that the agreement was broken or for claiming inequitable behavior in an appropriate forum but this could not be used to argue that the case should be thrown out without relating to the issues raised, thereby preventing the validity of the patent from being challenged in the patent office.

The Commissioner ruled that each side should bear their own costs for this request to throw out the case.

The patentee was given three months to relate to the validity issue.

COMMENT

Disclosure – Way back in 2007 when Lavi sued Zach Oz, I was approached by Soroker-Agmon on behalf of the defendant to give an expert opinion concerning whether the patent was infringed. I came to the conclusion that there was no infringement unless the claims would be interpreted so broadly that they would be voidable as lacking novelty (the Gillette Defence). I requested a minimal budget to search the prior art as it seemed clear to me that the patent was for a shelf bracket with a triangular brace and it should never have issued anyway. The budget was not forthcoming, and I never got to present my arguments of non-infringement in court as the defendant got cold feet and agreed to the out-of-court settlement so my arguments were never heard. It was and is my belief that the patent in question was not infringed, could easily be voided as lacking inventive step and, with a little searching, should be easy to show was anticipated. No substantive judgment was given.

The issue before the Commissioner was a legal one and was simply whether the arguments for cancellation should be considered on their merits, or whether the party requesting cancellation should be legally prevented from presenting their arguments.

The commissioner is, of course correct to throw out the request to throw out the case on a technicality. Furthermore, as the request was frivolous, and as noted by the commissioner, the request was a waste of Judicial resources, I think he was more than generous in ruling that the parties should bear their own costs.

I understand that back when the infringement case was filed, Zach Oz had minimal resources to fight the patentee and was effectively bullied into submission. As with the Source Vagabond case, a more vigorous defense would have been that the whole lawsuit was frivolous, that the patent was not infringed. Maybe now they’ll do what they should have back then and show that the patent never should have issued.


March 8, 2015

cornflakes

On May 31, 1895, John Harvey Kellogg of battle Creek Michigan filed US 558,393 for “flaked cereal and process of preparing same”

US558393-0.

Nearly 120 years later, US IP firm Brooks Kushman joined forces with Italian IP Firm Modiano and Partners, to host a patent breakfast in Liliot, a Tel Aviv restaurant with a social agenda.

Liliyot

The event, by invitation only, was open to boutique IP firms, and, apart from having to drive into Tel Aviv, was a congenial way to start the day, see old friends and colleagues and to learn about recent IP developments. Driving into Tel Aviv from time to time certainly makes one appreciate not living or working there.

Micaela Modliano

Micaela Modliano spoke about using the PPH to accelerate patent prosecution in Europe, and, assuming that the basis of a PPH request would be a US or Israel patent application, discussed the type of amendments that would and wouldn’t be allowed. Israel and Europe have only had a PPH arrangement since January of the year (reported on this blog before the Israel Patent Office announcement).

erin bowles

Erin Bowles of Brooks Kushman spoke about the new possibilities of challenging patent validity since the America Invents Act, particularly a sort of opposition window within 9 months of patents issuing. Erin was on her first visit to Israel and, not being familiar with Purim (which lasts longer in modern day Israel than is strictly speaking, Biblically ordained) was rather surprised to see Robo-cops, smurfs and other weird and wonderful creatures walking past the restaurant.

Robyn Lederman2   

The presentations were informative and dealt with new issues. The Modliano sisters and Robyn Lederman were charming hosts. The food was delicious and the company was excellent. It was a great opportunity to catch up with ex-mentors and ex-trainees, colleagues and competitors.

Liliot helps teenagers from deprived backgrounds to learn catering skills and it was a great choice of venue.


March 8, 2015

Reporter

“I see nobody on the road”, said Alice.
“I only wish I had such eyes,” the King remarked in a fretful tone. “To be able to see Nobody! And at the distance too! Why, it’s as much as I can do to see real people, by this light!”
Through the Looking Glass, Lewis Carrol

Fin. Ing S.R.L. owns Israel Trademark Number 207810 for Reporter as shown above. The mark covers clothing, footwear, headgear; all included in class 25.
On 19 August 2014, Richemont Internationals S. A. filed a cancellation proceedings claiming a lack of use during the three previous years. Fin. Ing. S.R.L. did not file a counter statement of case, and so Richemont Internationals S. A. filed their evidence which Fin. Ing. again ignored.
On 24 December 2014, Richemont Internationals S. A. requested that the Patent and Trademark Office issue a ruling based on the material on file, without a hearing. Richemont Internationals S. A. admitted that the their interest in cancelling Fin. Ing.’s mark was due to their trademark application being refused.
Richemont International’s evidence included a notarized statement from their lawyer in Switzerland, that, following investigations, to the best of their knowledge, the mark owners had not used the mark in Israel within at least the previous three years within the class under which the goods were registered, or for clothing, footwear or headgear at all.
Ruling
Under Section 41, any third party can request cancellation of a trademark on the ground that there was no intention to use the mark or that it had not been used within three years.
Trademarks are considered property rights to all intents and purposes and these rights should not be easily abrogated. Consequently, the burden of proof of lack of use rests squarely on the challenger. The challenger can submit his evidence, and then the burden of proof switches to the trademark owner, and the burden switches back and forth.
When considering use of a mark, the usage may be minimal (see Amir Friedman Trademarks, Law, Rulings and Comparative Law, Ferlstein 3rd Edition, p.p. 488-489), see also the trademark ruling concerning 14630 and 13296 “DIVA”.
In this instance, there is an objective problem to show lack of use, since the affidavit of the Swiss lawyer was written by a foreign national relying on inquiries made locally that were not specified. The identities of the private investigators used, their activities and the dates that these took place were not detailed. Statements of the private investigators themselves should have been submitted. Thus the cancellation request was rejected as insufficiently substantiated.
Ms Shoshani-Caspi noted that the cancellation proceedings were unchallenged, but considered that the mark holder was required to defend himself from fairly based challenges, and, where insufficient evidence of non-use is submitted, the mark remains unscathed. This finding is in accordance with Section 71a of the trademark regulations 1940 that state that if the mark ruler ignores a cancellation request under section 70 and does not respond within two months, the Commissioner will alert the mark holder and give him two months to respond. If the requester for cancellation submits evidence, the Commissioner will give him an opportunity to present his case and will only cancel the mark if convinced that it is correct to do so.
Not finding the evidence convincing, Ms Shoshani Caspi ruled that she could simply ignore the request for cancellation. Nevertheless, since the mark holder had not done anything to protect the mark, she gave the representative of the mark holder until 22 February 2015 to choose between cancelling the mark and respond showing use.
The initiator of the cancellation proceedings was given until 5 March 2015 to present more convincing evidence and following this, a ruling would be given.
No costs were awarded.
Ruling concerning cancellation of Israel Trademark Number 207810 for Reporter, the mark owned by Fin. Ing S.R.L. and challenged by Richemont Internationals S. A. Ruling of 5 February 2015.

COMMENTS
Ms Yaara-Shoshani-Caspi is well within her rights to argue that the initiator of the cancellation proceedings had not established that the mark was not being used. The problem is that whereas it is possible to provide evidence of use, one cannot actually provide evidence of non-use.

That is, of course, the purpose behind the quote from Through the Looking Glass at the beginning of this post.

Richemont are represented by Eitan Mehulal who seem to have been unable to win an uncontested proceeding. Meanwhile, Reinhold Cohen was the agent of record who was obliged by the adjudicator to get a decision from their client, appears to have now been replaced by Colb. Go figure.


An overview of the Annual General Meeting of the Israel Patent Attorneys Association

March 3, 2015

zoa

Yesterday I attended the Annual General Meeting of the Israel Patent Attorneys Association. The event, as ever, was held in Zionist House of America, in Tel Aviv.

The attendance was relatively high for this type of event, with maybe 80 – 100 participants at the beginning. However, many left after the lectures and before the General Meeting.

Before the AGM part of the proceedings, there were two speakers: the Deputy Legal Advisor to the Government on civil issues, Adv. Erez Kaminitz and the Commissioner, Asa Kling.

 

kaminitz

Adv. Erez Kaminitz spoke on “Legislation, How an Idea Becomes a Statute”. Kaminitz used the metaphor of drafting a patent application and the prosecution process to illustrate the legislative process. This was an interesting analogy that didn’t quite work. What was clear was that although he obviously knew his subject and was qualified to speak on it, he didn’t understand much about patent drafting or prosecution. There was nothing new to anyone with a law degree or an interest in politics. I am not sure to what extent the material is covered in High School Civics as I didn’t study in High School in Israel, but I suspect amongst the patent attorneys present there were few who found the explanation enlightening. It seemed as though Kaminitz felt that the audience needed something that they could latch on to so that they could follow the legislative process. This is not the case. As a group, patent attorneys are highly educated and used to being exposed to new ideas. I found the analogy patronizing and unnecessary.

It seems that the elections are holding up legislation  I had intended to cast my vote on the burning IP issues, but it seems that none of the parties running for the Knesset have IP policy in their manifestos and patents, trademarks and design legislation is simply not high on the agenda of any of the political parties.

asa-kling

 

The commissioner Asa Kling spoke about transparency and partnership, and gave a sneak preview of the Israel filing and prosecution statistics for patents, designs and trademarks for 2014. The absolute numbers of new applications are very close to those for last year, which hopefully indicates that the downwards trend of recent years has flattened out.

We discovered the low level of feedback that the patent office receives when it asks for public opinion. It does appear that feedback is earnestly solicited, and I really should try to formally respond more often, and not just blog my musings.

Adv. Kling showed us various guides and other material on the website and chided us for not visiting or referring clients. He explained that attempts to provide real time information were hampered by protection mechanisms in place to prevent cyber attacks. Nevertheless, he was proud of the examiner guidelines and other material available for review and felt that the level of transparency was higher than for other government bodies.

transparency

Like many of my colleagues, I have advised clients to submit their PCT applications for International Searches (ISRs) with the Israel Patent Office, mostly because it is cheap. I have been pleasantly surprised with the results and, where the results have been favorable, clients have generally been happy. What I don’t know is whether the Israel Patent Office has done an objectively good job, or whether the EPO will find additional art that the Israel Patent Office has missed. I’ve filed national phases for cases that have ISRs from the Israel Patent Office, and am waiting to see what foreign patent offices uncover. It was fascinating to learn that the Commissioner and presumably the examiners at the Israel Patent Office are also eagerly awaiting European Supplementary Search Reports and Examination of corresponding family members to PCT applications that the Israel Patent Office has processed as an International Search and Examination Office. In other words, they have similar considerations.

I discovered that to date, the Israel Patent Office has searched about 30 PCT applications for the USPTO and, although authorized to provide a similar service to the Georgian patent office, do date, have yet to do so. 30 applications originating in the US is a number that I can relate to, as is nothing whatsoever from Georgia. It was interesting seeing the similarities and differences between our respective practices.

facebook

We discovered that the Israel Patent Office has a Facebook account which we were invited to visit and to ‘like’. It reminded me that some years ago, the EPO invited me to exchange links with them.

The committee was friendly and seemed to be actually thanking the members for coming. This was refreshing. The actual AGM business wasn’t very interesting.

We discovered that no progress had been made on setting up a website. Veteran Patent Attorney Daniel Freimann made the eminently reasonable suggestion for the organization to set up a mediation service for settling disputes between members. The idea was unfortunately ignored.

vote

All resolutions passed unanimously or at least overwhelmingly. There was only one position (that of a member of the overseer committee) which was contested. Here after some reminding, Einav Zilber, the Secretary of the IPAA, requested that those who were only trainees or otherwise not entitled to vote refrain from so doing, as should those who had submitted a proxy vote. Not overly surprisingly the candidate who won did not see the need to actually attend the meeting, and had enough proxy votes to outvote those present. One of my colleagues asked me why he’d bothered to stay for the voting, and I had no satisfactory answer for him. Perhaps one day proxy voting will be anonymous in sealed envelopes and not merely block voting by larger firms.  If this happens, I suspect that more licensed Israel patent attorneys will join the organization and take part in the proceedings.

In an attempt to provide services for patent attorneys, it transpired that the committee had made some inquiries into negotiating personal insurance plans for members. Whereas professional malpractice insurance is something that is expensive and one can see the point of the organization negotiating block rates, I don’t think that patent attorneys need to negotiate as a group for personal insurance or pension plans. Such initiatives make sense for professions characterized by large numbers of practitioners and low salaries, such as the teaching profession, nursing and social work. Patent Attorneys are a small group of high earners that are regularly solicited by insurance brokers.

refreshments

The refreshments were more than adequate comprising bread rolls with savory fillings, fruit platters, miniature muffins and biscuits, soft drinks, tea and coffee. The meeting was a good opportunity to meet ones colleagues and competitors.

Generally a successful event and Israel Patent Attorneys are invited to join.


Trademark for Kappa Cigarette Brand Opposed

February 26, 2015

Kappa

Karelia Tobacco Company Inc filed Israel trademark application 213924 for the word Kappa (non-stylized). The mark covers cigarettes, tobacco and tobacco products, lighters, matches and smoker’s requirements, all in class 34. The application was filed in August 2006, and was accepted in March 2010 and published for opposition purposes. Basic Trademarks S.A. opposed the application. Basic Trademarks S.A. has a brand of sports clothing Kappa – with the logo shown above.

Among other grounds, Basic Trademarks attempted to amend their statement of case to oppose the registration on the Section 7a(d) of the Law to Limit Advertising and marketing of tobacco products. This attempt was thrown out based on a ruling that limiting cigarette advertising was not grounds for preventing a trademark from being registered. Furthermore, tobacco brands could not fairly be considered unregisterable under grounds of Public Order.

Kappa appealed this interim ruling to the District Court (Appeal 15171-02-11) who ruled that public order was a consideration. The statement of case was then amended. The sides submitted their evidence, but forgo the need for a hearing, allowing the Israel Patent and Trademark Office to rule on the Opposition based on the written evidence and submissions.

Opposer’s Case

The Opposer argued that they were a world leading clothing company that made shoes, clothing and head-wear for leisure wear, sports, and for sporty fashion. The mark was well known in the US, Europe, Canada, China and Israel.

The Opposer has 13 marks including the name Kappa in various classes, with and without the logo shown above, where the word Kappa is dominant. The Opposer claims to have invested significant resources in advertising and marketing, worldwide including Israel. The turnover reaches millions of Euros a year. The company promotes sports and international sports competitions.

Due to the advertising, Kappa is a well known mark, as the term is defined in Section 1 of the Ordinance, and thus under Section 11(14) the mark cannot be registered by others in other classes as this would create a linkage to the clothing manufacturer which would damage their reputation.

The mark was also not registerable under Section 11(6) as to register it would dilute the sports company’s mark, damage their reputation and be unfair competition.

Furthermore, following the appeal, the application should be refused under Section 11(5) as being against the public good – Section 7a(d) of the Law to limit advertising and marketing of tobacco products was legislated since tobacco is unhealthy. Finally, the applicant had not actually sold tobacco products under the Kappa brand and so would not suffer significant losses from having the mark refused.

Applicant’s case

Karelia Tobacco Company Inc argued that Kappa is famous only for the word together with the back to back male and female and the word itself is not well known.

Trademarks and branding for cigarettes is allowed in Israel and so public order considerations should be considered irrelevant. The word Kappa is similar, but there is no conceptual relationship between the goods. (What the argument is really saying is that since Kappa promotes a healthy sporty image and cigarettes don’t fit into that image, noone would think that Kappa cigarettes are a product of the sporty fashion company. Both marks are used with other elements and the possibility of damage to Kappa sportswear from Kappa cigarettes is not proven.

The distribution channels and customer base is very different. Kappa is a Greek letter and like Delta, although can be monopolized, cannot be monopolized across classes. For example, the word Kappa is in use by third parties in the print industry.

Both in Israel and abroad the same mark may be used for cigarettes and for sports goods with both marks coexisting. (This argument is plausible, however, no examples are given).

In conclusion, applicant rejects claims of confusion, unfair competition and dilution, and argued that Kappa had not proven that their mark is well known in the meaning of the term as far as well known marks is concerned. Furthermore, the advertising limitations on cigarettes cannot be applied to prevent the mark from registering.

Kappa submitted evidence of turnover and advertising expenditures and a Wikipedia excerpt concerning fashion cigarettes.    It seems that Yves Saint Laurent, Givenchy, Versace, Pierre Cardin, Christian Lacroix and Cartier have, at one time, each allowed their name to be linked to cigarettes. It was argued that sine fashion brands do allow their names to be used with designer perfumes and cigarettes, a cigarette with the same name as a fashion brand could be considered as linked to the fashion brand, creating a confusion regarding origin.

The Ruling

Citing precedents, the Adjudicator Ms Shoshani Caspi ruled that in oppositions, the burden of proof lies with the Applicant. Nevertheless, the Opposer has to base their opposition on facts.

The parties forgo a formal hearing with cross-examination and allowed the Adjudicator to rule on the evidence submitted.

Firstly, Ms Shoshani Caspi examined whether Kappa could fairly be considered a well known mark for fashion at the time that Kappa was filed for cigarettes, allowing it to prevent marks from being registered in additional classes, i.e. not just for fashion accessories.

The determination of whether Kappa could be considered a well-known mark was based on market penetration in the relevant population sector, the extent of usage of the mark and its longevity, long term advertising, inherent distinctiveness, whether the mark was in exclusive use and to what extent the owners of the mark invest in combatting infringers. The mark had to be considered well-known in Israel and not just abroad.

Al the evidence pointed to the mark being well known, despite the fact that generally the name Kappa is generally used together with the logo. The mark has been in use since 1969 and is mostly used in connection with sporty clothing. The opposers have an international portfolio of 600 marks including the word Kappa alone, not just as part of Robe De Kappa or together with the emblem. They have sponsored various football teams in Italy, Holland, France and Spain. The brand has millions of dollars of annual income from sales in Israel and has sponsored various local football teams including HaPoel Tel Aviv and Betar Jerusalem.  Thus the KAPPA mark was well-known in Israel as well.

The second issue is whether, due to the phenomenon of fashion cigarettes, whether the public would identify KAPPA cigarettes with the fashion brand. Here, when extending a mark into new categories of goods, there is a need to act sensitively and to weigh up the interests of the competing parties.

Ms Shoshani Caspi was impressed that both fashion and cigarette usage are susceptible to trends and found the phenomenon of fashion cigarette branding persuasive.

The fact that the cigarette brand had not yet launched strengthened this, and she was also convinced that a brand associated with the fashion house could do harm to the fashion house’ image.

Since the fashion house had a sixty year history and the cigarette company could not provide any reasonable explanation for the choice of name, she suspected inequitable behavior and considered dilution a real possibiliity.

In conclusion, MS Shoshani Caspi ruled that the Kappa fashion mark was well known, that fashion and cigarettes could confuse confusion and dilution and rejected registration of the Kappa brand for cigarettes and rejected the registrations under Section 11(14 and 11(6).

Ruling re Opposition to by Kappa clothing to Kappa as Israel Trademark 213924 “Kappa” for cigarettes, Ms Shoshani Caspi, 22 January 2015

 

COMMENT

The fashion brand argument ignores the fact that haute-couture and sports goods are not the same, and that fashion cigarettes are a relic of a bygone era when smoking was certainly socially acceptable, but more was actually considered cool and sophisticated, and not just among teenagers. Put another way, when cigarettes were fashion accessories, fashion houses were happy to have their names associated with cigarette brands. That is not the case now, as evidenced by Kappa’s arguments. That said, the decision seems reasonable.

 


Over 400 Followers!

February 25, 2015

400

We are delighted to note that we now have over 400 followers who receive emails each time we make a blog post.

We have over 100 visits most days and over 2750 opening our monthly newsletters.

We thank you all for your support.

 


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