IL 153925 to Samsung to Be Published for Reinstatement

December 10, 2014

face

IL 153925 titled “SYSTEM AND METHOD FOR AUTOMATICALLY DETECTING NEUTRAL EXPRESSIONLESS FACES IN DIGITAL IMAGES” was first filed by IBM, was assigned to a company called IPO Healthcare based in Guernsey. It was transferred to a US law company called Bollinger Lane LLC in March 2010, and then on to Samsung Electronics later that year. In its peregrinations, the fact that the patent needed periodic renewal went amiss. It wasn’t docketed properly with Samsung’s renewal service.

Based on an affidavit from Samsung, it was determined that the patent going abandoned was unintentional, and the patent office has published a revival request for opposition purposes.

 

 

 


Orbotech Challenges Cost Ruling, but too Late

December 8, 2014

missed opportunity

Back on 9th November 2014, I reported that after finally ruling on the Camtek – Orbotech patent Opposition, the Israel Patent Office ruled very large costs to Adi Levit, mostly because he’d detailed his cost calculation and it was unchallenged by Orbotech who’d lost the case.

Camtek requested 302,895 Shekels costs (including VAT).  The request for costs were supported by an affidavit from Camtek’s IP manager Michael Lev. The sum includes legal fees of 288,687 Shekels to outside counsel, Adi Levit, 8208 Shekels to the witness Mr Golan, and 6000 Shekels for intermediate costs awarded. All cost requests were supported by documentary evidence such as invoices from outside counsel and salary slips from the witness. Orbotech, represented by Reuven Borchowski, did not counter the request for costs.

In her ruling, Ms Jacqueline Bracha reviewed the intermediate costs to see whether they were affected by the final decision and came to the conclusion that where she had ruled that the costs were incurred by Opposer unnecessarily, they should be discounted.  The costs awarded were 296,895 Shekels.

Apparently, on the day that the cost ruling issued, Orbotech requested that the ruling be canceled, arguing that because of industrial action in the courts, they were unable to respond on the last day as they had intended.

Camtek responded that they could have filed a notice of intent to challenge, the court strike was actually the day after, and a response could have been submitted despite the strike. They requested that Orbotech’s lawyer file an affidavit testifying to why he was unable to respond, and to be prepared to be cross-examined on it.

Ms Bracha decided that the ruling was given fairly and there was no reason to cancel it. The issue was not whether Reuven Borchovsky, attorney for Orbotech had intended filing a response, but whether there were counter-arguments on file when she made her ruling. As there weren’t, she was entitled to simply check the calculation submitted by Adv. Levit. Consequently, she saw no reason to cancel her decision to award the actual legal costs + witness fee – intermediate costs that were unnecessary.


Neil Wilcof appointed a Director of INTA

December 8, 2014

Neil Wilcoff

We note with pleasure that Neil Wilkof has been appointed a Director of INTA, the International Trademark Association. We believe that this development is good for INTA and is good for Israel’s standing in the international IP community.

Neil is a leading Israel based trademark professional and proficient speaker who is in much demand in Israel and overseas. He has authored a number of trademark books and is involved in INTA’s academic journal.

Neil is currently in Munich with Professor Jeremy Phillips, where they are running a conference for INTA on overlapping IP rights.

We trust that Neil will work with the INTA staff to ensure that the Hong Kong fiasco is not repeated and that Kosher food will be available at INTA conferences.


The Mattress Opposition Again

December 3, 2014

wisdom of solomon

Moshe and Anat Gabai have developed a mattress that they believe is useful in minimizing the occurrence of Sudden Infant Death Syndrome (SIDS) in children. On allowance, Aminach, a large Israel mattress manufacturer opposed the patent issuing.

The Applicants who were not represented, managed to overcome the prior art objections relating to novelty and non-obviousness, but were unable to prove that their mattress was effective. Consequently, Deputy Commissioner Ms Jacqueline Bracha ruled that the patent be cancelled as contravening Section 3 due to it lacking utility.

At the time, the Applicants did not have experimental evidence, but they teamed up with a scientist and generated some evidence that their mattress had some value in minimizing cot deaths.

The Applicants appealed to the District Court, however the District Court was not willing to examine this new evidence that wasn’t before the Patent Office.

Undeterred, and this time with professional assistance, the applicants appealed to the Supreme Court which established that in such circumstances, new evidence may be submitted. The case was referred back to the District Court which ruled that the evidence could be accepted and referred the case back to the Israel Patent Office.

Ms Bracha is prepared to accept the evidence provided it is relevant.

COMMENT

I can develop a persuasive theory that the mattress design allows dissipation of carbon dioxide and helps a baby that is lying face down to breath freely. I can think of several ways of demonstrating utility and have discovered a university researcher who is able to run some useful experiments. Unfortunately, the only really convincing evidence would be to conduct experiments with a statistically significant pool of identical twin babies, one twin sleeping on regular mattresses and the other on the Applicant’s mattress. I find the idea a little obnoxious and do not see that utility requires proof.

I think the Gabai’s deserve a patent for this, and am impressed with their tenaciousness.


Voyager again

December 3, 2014

voyager 1

Plantronics opposes Accel Telecom’s request for Israel Trademark No. 251612 for the word “Voyager”.

The mark is directed to Fixed car phones and connected smart car phones; all included in class 9, and to Telecommunication services, namely, providing electronic telecommunication connections, namely, providing voice and data wireless communications connections to enable users to transmit, reproduce, receive, access, search, index and retrieve data namely, images, sounds, text, movies and animations between mobile communication devices and computer communication networks, the Internet, information services networks and data networks; Telecommunication services, namely, telecommunication access services, communication by means of mobile phones, cellular telephone communication, mobile telephone services; all included in class 38.

Plantronics also uses the trademark Voyager for telecommunications equipment, hence the opposition.

As reported earlier, here   and here,   the parties managed to come to an understanding and worked out a coexistence agreement. However, the Israel Patent and Trademark Office were not prepared to accept the coexistence agreement as they considered that the public could still be confused as to the source of goods covered by the mark.

At this stage Accel have to provide evidence, but have asked for the Opposition to be suspended pending hearing of an appeal. Their deadline for filing evidence was originally in September, but has been extended to 27 November 2014.   Now Ms Shoshani Caspi has given them a further six month extension provided the fees are paid within 5 days.


Trade Dress, Likelihood of Confusion and Passing Off

November 26, 2014
Not that kind of can can...

Not that kind of can can…

XL Energy International Corp. is a leading manufacturer of energy drinks.

Here is one of their cans:

classic XL can

Cool Trade & Industry Co. have twice tried to get large shipments of empty beverage pans into the West Bank (also known as the Palestinian Authority and as Judea & Samaria) over the Allenby Bridge from Jordan. The shipments were each of 600,000 cans. In the first case, Judge Gideon Ginat of the Tel Aviv District Court ruled that there was a likelihood of confusion between the Cool Trade & Industry Co cans and those of XL and that the cans should be destroyed or sent back to Jordan, whereas in the second case, he ruled that there was no likelihood of confusion and the cans could enter the country.

The decision highlights the fine differences between competing products that are legitimate alternatives, and those that are considered as copies.

Background

XL Energy International Corp. produces the XL energy drink in its factory in Poland. The product is described as being a carbonated energy drink containing and caffeine and taurine that is manufactured by Tempo Drinks LTD. The company claims to have sold hundreds of millions of cans since introduced into Israel in 2004. Tempo distributes in Israel and Unipal General Trading Co. distributes in the areas under the control of the Palestinian Autonomy.

On 19 March 2013, following a first shipment of 600,000 HipHop cans labeled X2 in a red font that is arguably confusingly similar to the XL log, in blue cans with darker blue bubbles, the Customs Authority held up the shipment and Tempo and XL sued for trademark infringement, passing off and Unjust Enrichment. On 30 April 2014 a second shipment of 600,000 was held up by customs and XL sued again. This time the cans do not have the darker bubbles and the X2 logo is in black and silver instead of in red.

XL has two Israel trademarks. Israel TM No. 216718 and 217476 reproduced below.

TM 216718   TM 217476

They sued for trademark infringement under the Trademark Ordinance 1972 and for passing off under Section 1a of the trade laws 1999.

The first set of imported cans are shown here.

first shipment   first shiment 2

The second set of imported cans are show here:

second shiment   second shiment 2

XL claims to have sold 53,000,000 cans in the Palestinian Autonomy during the years 2009 to 2013 and to have spent half a million dollars in advertising. The parties agree that their products are similar, are aimed at a similar market and are distributed via similar retail outlets and may even be sold on the same shelf.

The plaintiff argued that customers do not have perfect recall and may see a Hip-Hop can and think that it is an XL can. Their witness argued that customers spend three seconds in front of the beverage refrigerator and that this type of purchase is an impulse purchase. There are differences between the two cans, but the overall impression provided by the two cans is the same. Judge Ginat accepted this argument based on the case-law, particularly 5454/02 Taam Teva (1988) Tovoli vs. Ambrosa.

The defendant argued that XL were not entitled to a monopoly on the X or on blue cans. They claimed that their cans had different markings, different text and different text colour.

Judge Ginat was convinced that the defendant was well aware of the XL cans trade-dress and appearance before they designed the Hip-Hop can. The issue is the likelihood of confusion of customers.

Citing an ECJ ruling: Court of Justice of the European Communities, JUDGMENT OF THE GENERAL COURT (Eighth Chamber),  Tresplain Investments v. OHIM (9 Dec 2010)

“Under the laws of the United Kingdom, it is for the court in question to determine whether it is likely that the relevant public will be deceived. Examples of specific instances of confusion may be useful, but the decision of the court does not depend solely or even primarily on the evaluation of such evidence (Parker’Knoll Ltd v Knoll International Ltd (1962) R.P.C. 265, 285, 291 HL).”

Judge Ginat noted that although the case was brought in the Tel Aviv court and was cans were intended for the Palestinian market. The issue here is likelihood of confusion by West Bank and Gazan Arabs. Unfortunately, neither party has provided any evidence regarding the market, such as consumer, wholesaler or retailer testimonies. The defendant’s evidence was mumbled and unclear. What is clear is that there are other energy drinks such as Blu.

Judge Ginat noted that in the UK, the courts were wary of giving monopolies based on colours, and cited the following precedents:

  • Sodastream Ltd. v Thorn Cascade Co. Ltd. [1982] RPC 459
  • Roche Products v. Berk [1973] R P C 461
  • Cadbury-Schwepps . The Pub Squash [1981] R P C 429, 460-461

He also noted that Judge Dr Binyamini had rejected Straus’ claims against Noga Icecream as them having a monopoly for gold containers. Furthermore, a single letter such as X is not protectable as a trademark. See E! Entertainment vs. Duetche telekom A.G. and Dr Seligsohn “Law of Trademarks and related Laws, Schocken 1972.

He then went on to cite Qualitex v. Jacobson Products 514 U.S. 159 (1995) and Christian Louboutin v. Yves Saint Laurent America (5 Sep. 2012) to the effect that a colour can serve as a trademark, i.e. as an indication of origin.

“The question of whether a color can be protected as a trademark or trade dress was finally resolved in 1995 by the Supreme Court’s decision in Qualitex, which involved a claim for trade dress protection of the green-gold color of a dry cleaning press pad. The question presented was “whether the [Lanham Act] permits the registration of a trademark that consists, purely and simply, of a color.”  Qualitex, 514 U.S. at 160–61 (citation omitted). Reversing a decision of the Ninth Circuit that had declared color per se ineligible for trademark protection, the Court observed that “it is difficult to find, in basic trademark objectives, a reason to disqualify absolutely the use of a color as a mark.” Id. at 164. The Court held, among other things, that it could find no “principled objection to the use of color as a mark in the important ‘functionality’ doctrine of trademark law.” Id. It concluded that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Id. at 166 (emphasis added).”

However, the US Supreme Court acknowledged an Aesthetic Functionality Doctrine under which monolistic rights in a colour will not be granted where doing so undermines the competitor’s ability to compete in the relevant market.

“In short, a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors’ ability to compete in the relevant market. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995) (linking aesthetic functionality to availability of alternative designs for children’s fall-themed sweaters); Landscape 20 Forms, Inc., 70 F.3d at 253 (holding that “in order for a court to find a product design functional, it must first find that certain features of the design are essential to effective competition in a particular market”). In making this determination, courts must carefully weigh “the competitive benefits of protecting the source-identifying aspects” of a mark against the “competitive costs of precluding competitors from using the feature.” Fabrication Enters., Inc., 64 F.3d at 59. Finally, we note that a product feature’s successful source indication can sometimes be difficult to distinguish from the feature’s aesthetic function, if any. See, e.g., Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857 (7th Cir. 2010) (noting that “[f]iguring out which designs [produce a benefit other than source identification] can be tricky”). Therefore, in determining whether a mark has an aesthetic function so as to preclude trademark protection, we take care to ensure that the mark’s very success in denoting (and promoting) its source does not itself defeat the markholder’s right to protect that mark. See Wallace Int’l Silversmiths, Inc., 916 F.2d at 80 (rejecting argument that “the commercial success of an aesthetic feature automatically destroys all of the originator’s trademark interest in it, notwithstanding the feature’s secondary meaning and the lack of any evidence that competitors cannot develop noninfringing, attractive patterns”).

Because aesthetic function and branding success can sometimes be difficult to distinguish, the aesthetic functionality analysis is highly fact-specific. In conducting this inquiry, courts must consider both the markholder’s right to enjoy the benefits of its effort to distinguish its product and the public’s right to the “vigorously competitive market[ ]” protected by the Lanham Act, which an overly broad trademark might hinder. Yurman Design, Inc., 262 F.3d at 115 (internal quotation mark omitted). In sum, courts must avoid jumping to the conclusion that an aesthetic feature is functional merely because it denotes the product’s desirable source. Cf. Pagliero, 198 F.2d at 343.”

In summary, whether or not a colour mark is recognized is highly case-specific. This made the judge’s ruling difficult as neither side provided evidence regarding other energy drinks available in territories administered by the Palestinian Authority.

Conclusion

In conclusion, Judge Ginat felt that despite the obvious and non-accidental similarities, where other manufacturers are selling energy drinks in blue cans and using an X, or bubbles, noone is entitled to a monopoly for these with regards to carbonated energy drinks.

Judge Ginat considered that the first shipment of cans is confusingly similar to XL’s beverage cans and so there was passing off. Furthermore, the cans were marked in ways that are very similar to identical to XL’s registered marks.  However, the second shipment, where the cans were clearly labeled Hip Hop Energy X2 the background blue is different and there is no likelihood of customer confusion nor is there trademark infringement.

Verdict

The Customs Authority shall see to the destruction of the first shipment and the defendant is forbidden from importing or distributing cans of the first design. The second shipment shall be released and the storage costs incurred will be born by the plaintiff.

If Cool Trade & Industry Co. do not pay the storage costs, Customs may deduct this from the deposit made by XL who may then sue Cool Trade & Industry Co. to recover the costs.

In the cirucumstances, no costs were awarded to either party and no fines were imposed. 

Civil Ruling 38108-03-13 and 26979-05-13 XL Energy International Corp. vs. Cool Trade & Industry Co., Tel Aviv District Court, Judge Gidon Ginat, 16 November 2014.

Comment 

Blu and Red Bull both have blue cans. The size of the energy drink cans is standard. In other words, there is a standard appearance that says energy drink. Judge Ginat considers that the customer will recognize Cool Trade & Industry Co.’s cans as being cans of energy drink, but won’t be confused into thinking that the cans are XLs.

There is a problem though. X2 looks remarkably like XL, and this seems intentional. A single letter cannot be registered as a trademark, but two characters can. West Bank Arabs might well see X2 as XL.

This ruling brings to mind Judge Agmon Gonen’s ruling concerning four stripe trainers that are inspired by Adidas’ designs but not really confusingly similar therewith. It also brings to mind the rather odd XO decision wherein two different companies selling energy drinks were allowed to register the same mark!

Finally, we remember fondly that whilst Pepsi was boycotting Israel due to pressure from Arab countries, a Galilean Arab manufactured and sold Pips Cola.

Pips Cola

The courts ruled that Pepsi had given up on their rights in Israel, and lacking other alternatives, Pepsi eventually bought the rights to Pips Cola from the manufacturer.


A Meeting With Israel Trademark Examiners

November 26, 2014

israel patent office logoTM R

The Israel Patent and Trademark Office held a meeting with practitioners on 25 November 2014.

The event was held at the rather odd time of 12 AM to 2 PM which made meeting colleagues for lunch before or after a little difficult. However, refreshments of the cake and biscuit, tea coffee and soft drinks kind were provided.

The chairs in the main hall in the patent office were arranged in a couple of concentric circles, and, although most of the trademark examiners sat next to each other, there was still no clear ‘us and them’ divide. The lawyers had mostly not worn their dark suit and no black ties were in evidence. Even the commissioner was casually clad in an open-necked shirt and no jacket. The informal setting was, I felt, very conducive to creating an atmosphere of working together to further the examination process. There were about 10 patent office employees and perhaps 50 practitioners present. These included former employers, colleagues and employees of mine and a fair sprinkling of competitors, some of whom we’ve crossed swords with in opposition, cancellation or infringement proceedings. There were more attorneys-at-law and less patent attorneys than what one usually sees at patent events, but considering the subject matter, this was to be expected. All in all, it was a good opportunity to meet up with people.

From the questions asked, it seemed that many practitioners felt that the need to translate lists of goods into Hebrew was burdensome and superfluous, and something that the commissioner could do away with by issuing an appropriate Circular. This was considered to be particularly the case as Madrid Applications are filed in English only, without a need to translate the list of goods. The Commissioner merely noted that he was not sure that he agreed that doing so was a good idea, and anyway, it was beyond his authority. I think that such complaints seemed to miss the point that registering trademarks is not just a way of protecting rights for clients, but enables third parties doing business in Israel to see whether a mark is available. This is the point of having a trademark register, and Hebrew is the official language and many Israeli businessmen may not be fluent in English. Nevertheless, former commissioner and current head of the AIPA, Dr Meir Noam, had a good point when he noted that English is a richer language than Hebrew, with more specific terms for lists of goods. I think that lists of goods should be transcribed into Hebrew in a Biblical fashion, so instead of having to find different words for Parkas, Duffle Coats and Anoraks, a term such as ‘hooded coats and their kinds’ could be used. Instead of laboriously translating a list of three hundred electronic components, a general phrase such as electronic components for telecommunications could be used.

One lawyer who complained about the large amount of work involved in translating lists of words. He felt that this caused trademark filings to be unnecessarily expensive. He also complained about the official fees, compared to some other jurisdictions.  It is not clear to me whether the official fees should reflect the relatively small local population or the size of the economy. I suspect that some product sales reflect one and some the other. I note that in some places marks are registered but not examined and so the fees are generally cheaper.

It was difficult to feel sorry for the lawyer having to translate lists of terms into Hebrew. Trademark filing is fairly profitable and doesn’t involve much more than form filling, so if there is sometimes a little translation work, so what? The lawyer’s argument that he charges a standard fee per mark, and sometimes there is a lot of translation work to do seemed a little ludicrous. If he was unimaginative enough to not consider a basic filing fee and supplementary translation fees where appropriate, why should the law be changed?

Other gripes raised concerned the competing marks procedure wherein the applicants of two co-pending applications for the same or similar marks have to persuade the Patent Office that their rights in the mark are better. Of particular chagrin is the fact that once one application is considered as preferable to be examined first, after a long and often expensive and protracted procedure, the application is only then examined and may be rejected as generic, non-distinctive, or too similar to a registered patent.

Some present felt that an indication of the likelihood of being registerable should be given prior to embarking on the competing marks procedure.

We suspect that a reasonable practitioner should be able to anticipate reasonable rejections of this nature and if they are not reasonable, should be able to overcome them. I felt that the complaint reflected a basic laziness more than anything. One presumes that if there were no hiccups with trademark filing, one wouldn’t need trademark attorneys. There seems to be no problem biting the hand that feeds.

Another bone of contention raised was if the parties to a competing marks procedure are willing to coexist, why should the patent office decide to over-rule them? These type of questions are what Israelis refer to as kit-bag questions. The patent office never merely over-rules the parties. Occasionally, the parties will be over-ruled if the patent office adjudicator considers that an agreement reached is not in the public interest and leaves a likelihood of confusion or could create a cartel or otherwise impede fair competition. Where the parties are over-ruled that patent office gives reasons. If the party (parties) is (are) not satisfied, it (they) can appeal to the courts.

Discussing the event afterwards, one ex-employee told me that he found the discussion re formalities very boring. Another told me that he’d waited a long time for a meeting like this, to discuss the issues raised. In general, I got the impression that most participants were quite happy, and the trademark examiners told me that they found the opportunity to get feedback from the practitioners very worthwhile.

Regarding substantive changes to trademark law, I don’t think that many of the suggestions raised will be implemented. I suspect that if they were, those who raised the issues would then complain of having less work.

Regarding procedural issues, some suggestions will be implemented, and I suspect that putting faces to names, many practitioners will be more likely to pick up the phone to the Examiner to try to resolve issues, which may save time all round.

Apparently Dr Kfir Luzzatto took it upon himself to collate the questions from the profession, and is to be thanked for so doing. Appreciation is also extended to Dr Meir Noam of the Association of Israel Patent Attorneys and to the present commissioner Asa Kling for setting the event up, and to the trademark examiners for preparing for the event.


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