YES!

February 18, 2015
Yes!

Yes!

DBS Satellite Services 1988 LTD provides satellite television services in Israel that are branded as YES. The Service is licensed by the Communications Ministry.

DBS Satellite Services 1988 LTD sued the brothers Ahmed and Amar Hamuda for trademark and copyright infringement and damages, requesting the following sanctions:

  1. A permanent injunction against the defendants to prevent them from distributing, marketing of selling pirate transmission of the Plaintiff, to cease using the plaintiff’s trademarks, including in third party publications. They requested an injunction against them using the plaintiff’s equipment, or equipment supplied by the plaintiff to their customers, for any but personal use, and to cease any non-personal use immediately.
  2. An order to the defendants or to the receiver to destroy all equipment that enables copyright infringement and all material carrying the YES logo.
  3. An injunction to remove YES’ registered trademarks from the FACEBOOK page for Acre Satellites and from all other publications.
  4. A request to reveal accounts going back seven years.
  5. Statutory damages of 700,000 Shekels under Section 56a of the Copyright Act and Statutory Damages of 100,000 Shekels for trademark infringements (claiming single infringements merely to reduce the court fees) and double costs as a punishment for willful infringement.
  6. Alternatively, compensation of 1,900,000 Shekels for Unjust Enrichment,  (the figures capped to reduce the court fees).

These injunctions were granted by Judge Zernkin, and following the Anton Pillar injunction, equipment and computer records were seized and a summary report was filed to the court by the receiver.

The injunctions were kept in force until the end of proceedings, and for the purposes of the hearing, an order to produce documents and to fill out questionnaires was issued.  This happened in the presence of the defendants who then failed to respond. Consequently, using powers under Section 122 of the Civil Court Procedure 1984, the court ruled that the statement of defense be struck from the record. It is noted that the statement of defense was a mere denial without any explanations.

In a ruling of 27 December 2014, Judge Orit Weinstein requested that the Prosecution supply evidence to substantiate their case and on 15 January 2015 they submitted evidence and affidavits of private detectives, by the VP (Engineering) of YES and the Head of Development at YES.

Based of the evidence submitted, Judge Weinstein ruled that there was sufficient grounds for a judgment against the defendants:

The Defendants broke the security encryption of the satellite transmissions and created a pirate industry, marketing and selling YES’ transmissions piratically, without paying YES, and by undercutting YES’ prices, free-riding on YES. YES’ copyright was infringed by the packaging of the transmission channels and the content, and YES’ trademarks were infringed by being used without permission and illegally.

Consequently, Judge Weinstein ruled that the temporary injunctions would become permanent injunctions, that all equipment be destroyed, following the receiver declaring that he was not holding any assets, there was no need to issue an order against him. The FACEBOOK page should be amended and so should all other publications so as not to include the trademarks of the plaintiff. Judge Weinstein further ruled statutory damages of 700,000 Shekels for copyright infringement and of 100,000 Shekels for trademark infringement, 10,000 Shekels expenses and 40,000 Shekels legal costs.

Civil Proceedings 111147-10-13 DBS Satellite Services (1998) LTD vs. Ahmed and Amar Hamuda.

COMMENTS
I have no sympathy for the defendants in this case. Nevertheless, although the ruling seems very reasonable and the defendants didn’t exactly defend themselves, in the hands of a good lawyer, they could have raised a number of interesting questions. Free riding is not a crime. YES probably does not own very much of the copyright in their transmissions and creating a copyright in a package of channels is stretching things a little. In a recent Supreme Court Ruling concerning parallel imported Tommy Hilfiger shirts here, the Supreme Court allowed the parallel importer to advertise that it was selling Tommy Hilfiger shirts, but not to claim that it was a registered supplier, and to inform customers that they were not entitled to warranties from the official suppliers.  Can one really prevent someone from using the word ‘yes’ on their facebook page or in advertisements?

pirate

Piracy is the crime of boarding shipping on the high seas that is punishable under international maritime law by requiring the pirate to walk the plank.

Arguably with regular TV transmissions, there is a case for Ministry of Communications regulation to divide the radio frequencies into separate bands and to prevent channels interfering with each other. I am not sure that for digital signals sent by satellite this is the case. Certainly government tenders have been abused. The tender for commercial radio that then Govt. Minister Shulamit Aloni put together was designed to prevent Arutz 7 from obtaining a license. The same politicians who called the Arutz 7 team pirates and warned about pirate radios risking plane crashes lauded the late peace activist Abu Natan and his pirate radio ship the Voice of Peace and nominated him for a Nobel Prize. When the Supreme Court voted en banc against Arutz 7, without a dissenting voice even mentioning the value of free speech, it was clear that things have deteriorated a long way since Agranat’s deicison re Kol HaAm.


Wishing Our Asian Clients a Happy New Year

February 17, 2015

billy goats gruff

 

We wish our Asian associates and clients a Happy New Year of the Goat, and hope that patent trolls get what’s coming to them!


Old Jaffa

February 16, 2015

jaffa orange    old jaffa

A Mr Yehuda Malki filed two trademark applications, 220542 and 220581 for Old Jaffa, 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.

On allowance, the Council for Creating Plants and for their Marketing – Citrus Division opposed the marks.

Israel trademark no. 237678 which covers soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 issued without opposition, but the the Council for Creating Plants and for their Marketing – Citrus Division field for cancellation of the mark.

On 12 September 2012, the Commissioner Asa Kling ordered the cases to be heard together and on 31 October 2012, the three cases were heard.

The Applicant, unrepresented, informed the Commissioner that he did not intend cross-examining the Opposer, and so the Opposer was exempted from appearing.

The Opposer considered that using the term Jaffa for anything not including citrus fruits was false labeling as the term was understood in the trademark ordinance and registration of the mark was therefore against the public good.

The Applicant rejected this interpretation and considered that considerations regarding false labeling were beyond what should be considered when registering trademarks. The public good should allow him to go about his business.

Section 11(5) of the Trademark Ordinance 1972 states that trademarks that are immoral or against the public good cannot be registered.

Section 2a of the Ordinance states that Jaffa is an appellation of origin under the law of Appellations of Origin 1965, and suing the word Jaffa, Jaffas or Joppa in Hebrew or English, or marks including the word or sounding like the word was not allowed under Section 2. Section 2b states that addition of words such as kind, type, copy, goods originating or the like did not stop using these terms form being forbidden.

According to the Commissioner, the concept of “public good” is a general principle that the courts can apply wherever they consider it appropriate, and this changes from  time to time and from place to place. However, as far as the term Jaffa is concerned, it is an appellation of origin that has specific legislation designed to advance Israel’s citrus industry.

In the legislation relating to the appellation of origin it is noted that the special law was drafted as the term Jaffa was being used for citrus fruit not originating in Israel and for other goods that are not citrus fruit and are not necessarily from Israel.

Consequently, the Commissioner accepted that the appellation of origin was designed to promote Israel’s citrus industry worldwide. Marks such as Old Jaffa were, indeed, against the public interest.

The Applicant considered that the term ‘Old’ was different from type or kind, and effectively removed the term Old Jaffa from the special law protecting Jaffa.

The Commissioner considered that arguably a law from the Sixties may be no longer relevant and noted that back in 2005, the previous Commissioner considered whether or not to extend the appellation of origin protection for Jaffa, but noted that the protection was extended and is in force.

Furthermore, since the word JAFFA is protected as a trademark (Israel trademark 20481) the requested mark should not be considered distinct within classes 29 and 30, and shouldn’t be allowed to be registered.

Despite the fact that fresh fruit and dried goods are often sold in different places, this is not always the case. The term old is not enough to allow registration, since Old Jaffa refers to Jaffa (in other words, it’s  not like the difference between York and New York).

Were the applicants’ goods related to the Old City of Jaffa, possibly consumers would associate the location separately from citrus fruits but currently that is not the case. Consequently, trademarks 220541, 220542 are refused and 237678 is canceled. The parties are invited to request costs.

Decision re Opposition to 220542 and 220581,  and cancellation of 237678 re Old Jaffa; Malki vs. the Council for Creating Plants and for their Marketing – Citrus Division by Asa Kling, 4 January 2015.

Comment

Currently, to provide Jaffa oranges all year round, the term is used for marketing oranges originating in South Africa and not just in Israel.

Still, the District Court over-ruled the previous Commissioner and allowed the mark to be registered. See here.

Still, I think that the fact that the term is no longer an indication of the origins of the citrus fruit does provide justification to interpret the rule narrowly, and, in my opinion, the term Old Jaffa does conjure up the coastal town and not Jaffa Oranges. Certainly, 40 years ago, the restaurant in London called Old Jaffa was trying to invoke the place and not the fruit.  Nevertheless, following a court ruling, the issue may be beyond a Commissioner to cancel the law or to interpret it narrowly. If Yehuda Malki decides to appeal this ruling to the courts, it will be interesting to see what happens.

 

 


“The Duchess! The Duchess! Oh my dear paws! Oh my fur and whiskers!”

February 15, 2015

The Hunter Group Ltd. Pty which is a Thai company filed Israel Trademark Application No. 190,755 for a design including the word ‘Sleeky’ together with a couple of paw prints. The application is in class 31 and covers pet food including dog food and cat food; all included in class 31. The mark is shown here:

sleeky

The Iams Company (a US manufacturer) have a registered mark 91789 for a footprint as follows:

Iams poor-print

Their mark also covers foodstuff for animals in the same class.

In practice, the Iams company markets pet foods as the brands Eukanuba and IAMS together with the footprint as below:

Eukanuba nad Iams

When the Israel Patent Office allowed the 190,755 mark, the Iams Company filed an Opposition which was presided over by then Deputy Commissioner Noah Shalev Shmulevezh, and eventually rejected in a ruling in June 2012 by the Israel Commissioner of Patents and Trademarks, Asa Kling, based on the material in the file (without a hearing).

The Commissioner applied the ‘triple test’, and noted that although the goods and channels of marketing are similar, there is no likelihood of confusion since the marks sound different and look different, although the Hunter Group’s mark includes a couple of footprints that are somewhat similar to the Iams trademark protected footprint.

Under Section 25 of the Trademark Ordinance, Iams, represented by Dr Shlomo Cohen, filed an Appeal to the Tel Aviv District Court.

The Hunter Group Ltd. Part was represented by Adv. Yossi Bregman (Wolf Goller Bregman) and by my brother Adv. Aharon Factor acting Of Counsel.

Judge Ginat of the Tel Aviv District Court ruled that the issue is likelihood of confusion and the triple test serves as an indication of whether or not there is likelihood of confusion.

Iams considered that their mark was well-known, both in Israel and abroad, and Hunter’s mark was an infringing copy.

Iams tried to show that Hunter’s ‘expert witness’ was merely a local sales representative and no ‘expert’. Judge Ginat retaliated by noting that Iams expert has argued that Eukanuba was used for dog food and IAMS was used for ipkat cat food, whereas in practice it is the other way around.

Although Iams’ well-known mark has been in use since 1980, the paw prints are different. Also, Nestle Purina Petcare Company has a paw print mark 87,529 that was originally owned by Spillers and is also used for pet food in the same class. Their paw print is shown below:

nestle's paw print

When pushed, Iams’ expert acknowledged that Nestle’s mark bore some similarity to theirs, but argued that they weren’t filing suit against Nestle at present. Judge Ginat found it astounding that their expert claimed to be unaware of Nestle’s mark. Particularly as in their statement in the Opposition they claimed that Nestle’s mark was only registered with the Opposer’s consent.

Dr Shlomo Cohen claimed that since the Applicant in that case was the well-known company Nestle, Iams was prepared to allow them to register their mark but this does not confer any rights whatsoever to third parties.

Judge Gilat rejected this. He considered that the very argument countered the requirement of equitable behaviour and Iams are estopped from claiming confusion of the public, since no license was granted by Iams to Nestle, and one can’t selectively apply one’s rights against an insignificant player claiming a likelihood of confusion, whilst ignoring a serious competitor with a large market share.

To support this contention, Judge Ginat quoted Sir Nicolas Browne-Wilkinson V-C in Express Newspapers plc vs. News (UK) LTD, concerning claims and counter claims regarding copyright in articles that

“There is a principle of law of general application that it is not possible to approbate and reprobate. That means that you are not allowed to blow hot and cold in the attitude that you adopt. A man cannot adopt two inconsistent attitudes towards another: he must elect between them and, having elected to adopt one stance, cannot thereafter be permitted to do back and adopt an inconsistent stance”.

In the hearing before the Commissioner, Iams expert witness expressed a certainty that when the products are displayed side by side the consumer (i.e. the purchaser, not the pet) would be misled by the similarity. The Commissioner noted that this was speculative and no evidence was given for this beyond hearsay from store owners. No confused customers came forward to complain. Being unsubstantiated, Judge Ginat felt that the Appellant had failed to show that customers were confused and that their profits had suffered. Although the Opposer to the mark is not required to substantiate these allegations, Judge Ginat noted that it would have been wise to do so.  Furthermore, the marks seems to coexist quite happily in main jurisdictions including IAM’s home country, the USA, and there have been no TM oppositions in any other jurisdiction apart from Israel.

As to the triple test, Judge Ginat noted that in addition to the sight and sound of a mark, and to the goods and channels, the third strand of the five part trilogy was the “common sense test”, and noted that there were significant differences that ruled out customer confusion including the fact that the paw prints were appended by the Thai applicant to the brand name Sleeky. Sleeky sounds COMPLETELY different to both Iams and Eukanuba. The Appellant tried bringing the Supreme Court Decision 3976/10 Akisionerno Droujesto vs. Phillip Morrison to support the contention that there was a likelihood of confusion, but Judge Ginat considered that even accepting the fact the English is a second language and words could be mispronounced, the differences between Sleeky and Iams and Eukanuba were rather more striking than the similarity between Eve and Eva as cigarette brands, and didn’t see that this argument really advanced the appellant’s case.

In conclusion, Judge Ginat upheld the Commissioner’s ruling that the marks could coexistent and that both product lines could be sold side by side as they were worldwide Furthermore, the public interest was served by competition in the pet-food industry. Costs of 10,000 Shekels for legal fees was awarded to The Hunter Group Ltd.

Civil Appeal 3066.09.12 the Iams Company vs. Hunter Group Ltd. Part, re IL TM 190,755 before Judge Ginat of the Tel Aviv District Court, 11 February 2015.

COMMENT

Granted, I don’t purchase cat or dog food and have better English than most Israelis – some of whom have English as only a third language. Nevertheless, it seems clear to me that a paw-print, at best, indicates that the product contains pet food, and is for animal consumption, not human consumption. A paw print is at least strongly indicative that the product is intended for cats and dogs and so interpretation should be narrow and only a very similar footprint should be considered infringing. Two footprints of one form are not confusingly similar to one simplified footprint. With the brand-names clearly shown and so completely different, there is no likelihood of confusion so Judge Ginat is correct. However, no doubt IPKATS and ipdogs ip litigators everywhere will wait with bated breath to see if Iams and their representative appeals this decision to the Israel Supreme Court.

More Paws for thought:

“Pooh looked at his two paws. He knew that one of them was the right, and he knew that when you had decided which one of them was the right, then the other was the left, but he never could remember how to begin”

David said moreover, The LORD that delivered me out of the paw of the lion, and out of the paw of the bear, he will deliver me out of the hand of this Philistine. And Saul said unto David, Go, and the LORD be with thee.”

“Whenever you find yourself on the side of the majority, it is time to pause and reflect.” ― Mark Twain (R.L. Clements)

 

 


Verbosity in summaries

February 15, 2015

Lord Chesterfield once wrote to a friend. “I’m sorry that I have written you a five-page letter; I didn’t have time to write a one page letter.

In Opposition to Israel Patent No. 16800 to PMS Armor LTD Opposed by DSM IP Assets, Ms Yaara Shoshani Caspi requested that the summaries be submitted on no more than 45 pages with standard margins and font.

For those who have lost the thread in this exciting opposition, and a parallel one between the two parties, see here , here and here.

Adv. Mati Barsam, representing PMS Armor LTD seemed to misunderstand the cap of 45 pages and filed 52 pages. Also, since he did not use double-spacing, the summary submitted was much wordier than it should have been.

Ms Shoshani Caspi considered that it was well-known that standard format was double spacing, David font at 12 point with margins of at least 2 cm on all sides. She ruled that in consequence of the over-long submission by PMS Armor LTD, DSM IP Assets could file up to 50 pages.

Citing the relevant case-law 16840/06 P .A. N. vs. Public Guardian, 20 Apr 2007, it is stated that:

“inter alia, limiting the amount of summary material is designed to ensure equality between the litigants in their access to the courts, the use of a smaller font is an attempt to overcome the limitation imposed by the court and to obtain an advantage over opposing counsel thereby”

So as to be absolutely clear, although the respondent was allowed to submit 50 pages, they were required to do so in double spacing, David font at 12 point with margins of at least 2 cm on all sides. PMS Armor LTD was ordered to pay 1200 Shekels + VAT to DSM IP.

COMMENT

If I was sitting in judgment on this case, I’d have been tempted to send the summary back and asked for it to be shortened, giving maybe 3 days, with the alternative that only the first 45 pages would be considered. If the summary is in single spacing, would reformat in double spacing and accept the first 45 pages only.

That said, Ms Shoshani Caspi’s approach is, of course, both reasonable and in line with Israel Patent Office policy to charge excess fees for filing long applications, and with WIPO’s policy of charging per page for PCT applications with more than 30 pages (including forms).

45 pages seems to me to more than enough to summarize just about anything. Particularly in Hebrew which generally requires only about 65% of the space taken by the same material in English. Once arguments are constructed and written up, it should be possible to cut down verbage and to edit down at least 20%. When I recycled reedited IP Factor blog entries for columns in various magazines such as WIPR, MIP and IAM, each one had its own word allowance, and by careful editing, it was always possible to cut articles down to size. It’s a question of being succinct and focused. Writing a 400 word précis of an article was a standard requirement to matriculate in English Language ‘O’ levels in the UK. It is a useful skill.

Since the advert of word processing, patent applications have become longer. Whilst it is not always possible to submit PCT applications in 30 pages, avoiding excess claim fees, for many inventions, this is more than adequate.

It seems to be easy to fall for the temptation to copy-and-paste and to write more, than to use the available editing facilities to shorten one’s work. I suppose when one employed scribes and wrote on expensive material like vellum, things were different.

Some clients and attorneys seem think that the longer the submission, the better. However, the opposite is usually the case. It is unlikely that a 50 page summary can be read in one sitting and for the adjudicator to work from a submission this long, the adjudicator really needs to summarize the summarize, and this is ridiculous. It is not just summaries of course. There are some IP firms that seem to file telephone directories for every application. This is generally unnecessary.

As an aside, as someone who regularly wades through IP decisions, I think that it would be nice if IP adjudicators and judges tried to cut their rulings down by 20% as well. Then again, no doubt my blogging could be focused and succinct.


The XMultiple

February 11, 2015

XMULTIPLE

XMultiple

Mr Alan Pocrass filed Israel Trademark No. 233310 for the wordmark XMULTIPLE for Electrical, electronic and fiberoptics connectors for data, telephone, cable, television and computers, namely, RJ connectors, coaxial connectors, coaxial and flat-ribbon interconnect systems and ethernet switches; all included in class 9. The application was filed on 27 October 2010 and the Notice of Allowance  published for opposition purposes on 31 May 2011.

Xmultiple Technologies, Inc. opposed the mark. On 11 September 2013, the parties filed a joint request for a specific procedural arrangement under which a scheduled hearing would be canceled and the Commissioner would rule on the evidence and summaries submitted by the parties.

Opposer’s Arguments

XMulptiple Technologies, Inc is a leading Taiwanese manufacturer of industrial electronic equipment that provides components to manufacturers worldwide and including Israel. Since 2002 electronic components have been sold under the XMultiple brand and currently there are more than a million dollars worth of components sold in Israel each year. The director of XMULTIPLE had a business relationship with the Applicant from 1999 but this finished in 2010 and the Applicant owes Opposer some million dollars. The applicant continues to use the mark and to provide customer support to XMULTIPLE products.

The Opposer claimed hat they were the true owner of the mark and that the Applicant had trespassed on their rights by attempting to register the marks in Israel and elsewhere. The Opposer considered the attempt to register the mark was against public order under Section 5(11) and, since it was identified with the Opposer contravened Section 6(11) and was a false indication of origin. The business practices of the Applicant were unfair competition.  The Opposer alleged that the Applicant was selecting inferior goods from other suppliers under the trade name XMULTIPLE . Since the Opposer was called Xmultiple, the Applicant’s branding of their goods as XMULTIPLE contravened Section 12 of the trademark Ordinance. Furthermore, the Opposer claimed that the mark lacked distinctiveness under Section 8(a). Finally, since the marks were used by the Opposer, they could not be registered under Section 11(13).

The Applicant counter-claimed that he had many years of experience in the electronic component industry and that he’d set up an American company called XMULTIPLEtechnologies Inc. In 1999, before the establishment of the Taiwanese company and collaboration between the two companies. The company was set up to market a patented component and the collaboration with the Taiwanese company was to manufacture this patented component.

The parties submitted their arguments, and then the Applicant submitted a Taiwanese ruling from a corresponding proceedings and requested that this should estoppel the Opposer. Because of the territorial aspects of trademarks the Commissioner believed that in general decisions of foreign courts are not given much weight.

The Opposer was unable to show that they had a reputation in the mark in Israel. Despite the business disagreements between the parties, the registration of the mark in the name of the Applicant wasn’t considered as contravening public order. In conclusion,  the Opposition was rejected and the mark was allowed to be registered. The parties were invited to submit their requests for costs.

Comment

The decision is probably a correct one. If the parties had a reasonable written contract between them, it would be easier to ascertain who had better rights to the mark. I note that the Opposer claimed that the mark lacked distinctiveness under Section 8(a). I find it a little amusing that the Opposer argued that the name  XMULTIPLE lacks distinctiveness, whilst simultaneously calling themselves Xmultiple and claiming rights to the mark. In the legal world, these things happen.

 


February 11, 2015
Not that kind of niagara!

Not that kind of niagara!

Israel Patent 202468 to Sassy and Dalia Kazir issued on 1 March 2012 for a “toilet water supply system and method therefor”. The patentee paid the renewal fee in a timely manner but did not send proof of payment to the patent office and the patent lapsed.

Mr Katzir submitted an affidavit to the effect that within a week of receiving notification that the patent was not in effect, they requested reinstatement.

In the circumstances, the Deputy Commissioner ruled that the Section 60 requirements that the applicant did not intend the application to lapse and acted in a timely manner to reinstate were fulfilled and a ruling to reinstate will publish for opposition purposes.

COMMENT

It is, of course, ludicrous that one can pay renewals on-line at the Israel Patent Office, filling in the patent number, and then one has to print out the payment slip and send to the patent office so that it arrives there in a timely manner. This requirement results in regular rulings and wastes everyone’s time.


Follow

Get every new post delivered to your Inbox.

Join 414 other followers