Supreme Court Adds Sauce to Temporary Injunction

April 25, 2018

Back in February, we reported regarding a temporary injunction that Barilla obtained in the Tel Aviv District Court against Rami Levy, requiring them to remove packages of pasta that came boxed in blue boxes with cellophane windows and similar packaging to Barilla’s range of pastas.

The image above shows Rami Levy’s packaging under the Olla own-brand on the left, and the Barilla packaging on the right.

Whilst it is true that the Olla packaging does state Rami-Levy – Shivuk HaShikma (Sycamore Packaging), and the name of the pasta is written in Hebrew, it is also true that both brand-names end with the syllable and letters lla, and the fonts are italicized and slope to the right.

Rami Levy appealed the decision to the Supreme Court but Judge Solberg upheld the temporary injunction pending a full trial and ruling, and also widened it to cover pasta sauces, noting that like Barilla, Rami Levy uses glass jars with blue lids for their tomato sauces. Costs of 40,000 Shekels were awarded to Barilla for having to deal with the appeal.

Comment 

We note that Rami Levy has a further on brand packaging for dried pasta (on the right), where Taaman (whose own packaging is blue) package their pasta for Rami Levy in cellophane bags that seem inspired by Osem’s Perfecto range (on the left) so they can simply pour out the boxes and bag in cellophane, at least until Osem sues them.

steaks

We also note that Rami Levy (on the left) recently jumped into the frying pan with minute steaks, using a packaging scheme not vastly dissimilar from Baladi’s (on the right), and that Judge Avrahami of the Petach Tikveh District Court granted a temporary injunction requiring Rami Levy to adhere a sticker that is not red, white or black to their frozen meat package of minute steaks that should be at least 11 cm by 8.5 cm, that is clearly printed and which states that the product is under Rami Levy’s own label. The sticker must not include the price or he words “Special Offer”, that could dilute the effect of differentiating between the products. The sticker is to be applied to the front of the packaging at the top, under the term “Maadaniyah” (delicatessen).

Appeal 1065/18 and 1521/18 Rami Levy vs. Barilla, 22/4/2018


Shuka – A Trademark Parody

April 22, 2018

Shoka 1Shuka is a fictitious insurance broker used in a long running and highly effective, humorous series of advertisements by IDI, an insurance company offering direct insurance services over the phone by dialing 9,000,000.

I

IDI is an insurance company. They applied for Israel Trademark No. 264302 for the word שוקה (Shuka) covering financial transactions, insurance and life insurance in class 36 on 2 April 2014. The mark was allowed on 16 July 2015.

The Association of Insurance Agents in Israel, which is a non-profit organization representing thousands of licensed insurance brokers, opposed the mark on 11 August 2015, alleging that it was misleading and its registration was contrary to Section 11(6) of the Trademark Ordinance 1972. The grounds of the Opposition were that the Applicants gave the impression that they were licensed insurance brokers and this is not the case.

Shoka 2There was a proceeding between the parties in the Tel Aviv District Court (28223-03-12) in which the Opposer requested that the court issue an injunction against the Applicant to stop their advertising which was alleged to be insulting slander and misleading, and created unjust competition. The District Court partially accepted the Opposer’s claims and forbade the Applicant from using the advertising campaign clips and radio advertisements and various other advertisements.

Shoka 4

On appeal to the Supreme Court, this decision was overturned. In Civil Appeal 3322/16 and 4313/16 IDI Insurance ltd vs. The Association of Insurance Agents in Israel, 30 April 2017, the Supreme Court ruled that the advertisements did not create a tort and the appropriate grounds for the complaint was the Libel and Slander Act. However Section 54 of the Act relates to any community that is not a company, and so the civil case was inappropriate. The Court stated this in Section 31 of the ruling:

However, in this instance we are dealing with humorous advertisements wherein insurance brokers are indirectly represented in jest and parody that is so exaggerated that it is clear that the reasonable viewer will consider the claims accordingly. That as may be, one cannot state that, following the advertisements, a reasonable person would consider that the characteristics ascribed to Shuka in the advertisements, hedonistic, archaic, etc) apply to specific insurance brokers, and there isn’t even a hint of this.

The Supreme Court also ruled that the advertisements were not an insulting description, since the viewer would not consider the advertisements as information imparted to him seriously due to the dominant humorous elements of the advertisements (paragraph 64 of the advertisement.

The Association of Insurance Agents in Israel requested reconsideration.

Read the rest of this entry »


Abandoned Patent Opposition Converted into Ex-Partes Procedure

April 20, 2018

Israel Patent Application No. 220476 to Mapi Pharma titled “Long Acting Depot System Comprising a Pharmaceutical Acceptable Salt of Glatiramer” was allowed and published for opposition purposes. Teva filed an opposition under Section 34 of the Law.

glatiramer

The application relates to a dosing regime of Glatiramer and salts thereof. The drug is an immunomodulator medication used to treat multiple sclerosis.

The application is a national stage of a PCT filed on 19 August 2010 which claims priority from an American patent application of 4 January 2010.

The patent was examined and published for opposition purposes on 31 March 2016. On 28 June 2016, Teva filed an opposition. After the parties submitted their statements of case, Teva withdrew their opposition for commercial reasons.

Under Section 34 of the Patent Law 1967, the Commissioner has to decide whether the suspended opposition provides a sufficient basis for the patent to be granted.

In their Statement of Case Teva raised various issues regarding the patentability of the claimed invention. Since no evidence was submitted, the Deputy Commissioner concentrated on the allegation that the publication of WO2005/041933 from 12 May 2005 anticipates the invention and negates novelty.

Claim 1 recites:

“A long acting parenteral pharmaceutical composition comprising a therapeutically effective amount of a pharmaceutically acceptable salt of glatiramer, the composition being in a sustained release depot form which releases a therapeutically effective amount of the pharmaceutically acceptable salt of glatiramer over a period of about one week to about 6 months.”

Paragraph 20 of the Statement of Case which from paragraph 58 of their counter statement, it appears the patentee accepts, construes claim 1 as follows:

  1. A long acting pharmaceutical composition
  2. For parenteral dosing
  3. comprising a therapeutically effective amount of a pharmaceutically acceptable salt of glatiramer,
  4. the composition being in a sustained release depot form
  5. which releases a therapeutically effective amount of the pharmaceutically acceptable salt of glatiramer over a period of about one week to about 6 months.

Read the rest of this entry »


Wok and Walk

April 20, 2018

wokRo.R. Sheli ltd own Israel Trademark No. 233836 for “wok and walk

The mark owner has tried to have some sections of the request for cancellation struck from the record. Sections 18 -22 claim that the registration was in bad faith and so the trademarks should be cancelled under Section 39(a1) of the ordinance 1972. According to the mark owner, it appears that in an Affidavit by Rami Lev opposing expedited examination and registration of TM Application no. 291833, it is claimed that the franchise started trading in 2004. However the owner of the mark in question registered their mark back in 2000. So the trademark owner claims that there is no grounds to accuse them of acting in bad faith since their use of the mark preceded that of the party requesting cancellation.

wok to walk

Wok to Walk Franchise oppose this request and claims that now is not the time to relate to this claim and to do so at this stage is not in accordance with the civil procedure.  Deputy Commissioner Ms Jacqueline Bracha concurs with Wok to Walk Franchise.

In civil proceedings, the right to cancellation of baseless claims is anchored in regulation 100 of the Civil Procedure Regulations 1984. The Patent Office can rely on this, see cancellation rulings regarding TM Nos. 192398, 193299, 301639, 201641, 201645, 201642, 193947, 193948 HaIr Halvanah LTD. (White City LTD vs. Biyanei HaIr HaLevanah Achzackot LTD10 November 2009.

The case law states that:

The test for whether  or not there is a basis for suing  on these grounds is whether “the plaintiff, on the assumption that the factual basis for the claim is proven, is entitled to receive the requested sanction (Civil Appeal 109//49 Engineering and Industry Company vs. Mizrach Insurance Services, p.d. 5, 1585, 1591 (1951). Cancellations of Statements of Case on the basis of lack of case should be allowed only in cases where were the plaintiff to successfully prove all the significant facts of the case, they would still not be entitled to a ruling since the statement of case does not include a legal basis for the claim that obliges the other party   (Yoel Zusman “Civil Procedure 384-385, 7th Edition, edited by Shlomo Levine, 1995). The purpose of this regulation is to prevent purposeless hearings and expenses in unnecessary human resources considering pointless claims.

In this case, the request for cancellation and the sections to be cancelled are concerned with a bad faith allegation due to the mark owner knowing about the competing mark, and registered it to prevent the franchise going international. The franchise argue that
Read the rest of this entry »


A Balanced Temporary Injunction Against Rami Levy

April 19, 2018

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

steaks

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

baladi minute steak

The claims of passing off and copyright infringement were considered unlikely to prevail and thus not grounds for a temporary injunction. However, Judge Avrahami saw fit to grant a temporary injunction on the grounds of unjust enrichment. Rather than have Rami Levy’s product removed from the shelves and repackaged which could result in the meat being lost, she ruled that a sticker in a contrasting colour should be attached to the packages indicating that Maadaniya was Rami Levy’s own brand. Rami Levy was also advised to work towards introducing a more different package. The parties were invited to try to settle their differences without the court having to hear the case in its

Baladi makes meat products including minute steak which are thinly sliced steak that can be roasted in a frying pan in one minute. Baladi claims to have designed the packaging that they use for minute steaks.

Rami Levi is a public company that runs supermarkets across Israel. The company stocks known brands and also sells popular products packaged for them under their own label.

Rami Levi sells Baladi products. It also sells minute steaks under their only  own label “Rami Levi’s Sycamore Marketing Delicatessen”. Rami Levi’s own label minute steaks are packaged by TBone Veal.

In a preliminary ruling, Baladi claimed that minute steaks were not sold in supermarkets until they launched this product in November 2017 with a massive and expensive sales campaign. From the launch until 19 March 2018, the product sold well due to the marketing campaign. On 19 March 2018, suddenly, without notice, Rami Levi forbade Baladi to replenish supplies and blocked the product, and instead supplied minute steaks under their own label.

baladi logo

Baladi claims that the own-label brand is packaged in a copycat package of that of their product, and that this was a calculated, organized action of Rami Levi in bad faith, to ride on Baladi’s advertising campaign and product launch, benefiting from their investment. Baladi’s campaign has drawn customers to want to purchase their product. The customers go to the meat refrigerators and find the infringing product that is a copy of their package and are misled into believing that they are purchasing Baladi’s product.

Baladi considers that the case is particularly serious since Rami Levi is a retailer that can block their product whilst offering the competing own-label product. This is particularly problematic since Rami Levi’s product launch was just before Pesach and close to Independence Day which is the start of the Israel barbecue season when sales go up significantly.

In light of the above, on 22 March 2018, Baladi sued for passing off, unfair trade practices, copyright infringement in the product package and unjust enrichment. They filed their case in the Tel Aviv and Jaffa District Court. Baladi requested a permanent injunction, compensation and production of sales data. For the purpose of assessing the court fees, Baladi assess the damages at 2,750,000 Shekels.

Baladi also requested a temporary injunction on Rami Levi to prevent them using the product sold under their private label or at least to prevent them selling the product in the packaging used at the time of filing, and to cease from blocking Baladi’s products, and to enable their products to be sold on an equal basis with other frozen meat products. The Request was supported by an affidavit from Ms Irene Feldman, the VCFO of Baladi, and was filed as an ex-partes action for immediate attention since any delay will cause irreparable damage.

El gaucho minute steak

In response, Yossi Sabato, the VCEO of Rami Levy submitted an Affidavit claiming that Baladi was acting in extreme bad faith by not telling the court that they were conducting a parallel action against El Gaucho which is a label of TBone Veal in the Central District Court as 4347-01-18. In that instance, they made similar accusations which were rejected. This action, in a different court, against a different label, was a type of forum shopping that was indicative of bad faith and should be sufficient for the case to be thrown out. This was simply an attempt to corner the market and to prevent competition. The Ex-partes actions in both the El Gaucho case and in the present instance are cynical exploitations of the legal system designed to get free publicity, and the plaintiff was suing for extreme damages without having first contacted the supermarket chain, which is itself inequitable behavior for which the case should be thrown out.

monopoly

With regards to the complaint itself, Rami Levy claims that Baladi is trying to obtain a monopoly on minute steaks, which is a term known in Israel and abroad and which they did not coin. Baladi also tried to obtain a trademark for this generic term. Minute steaks have been advertised in Israel in the past and are available in restaurants and from butchers, and even from supermarkets. Baladi has not been in the market long enough for minute steaks to be identified with them to the extent that they deserve a monopoly on the term (acquired distinctiveness), and a reputation that is protectable, and even Baladi does not claim to have rights to minute steaks but only to the sound of the name.

Rami Levy

Rami Levy claims that their product package is completely different from Baladi’s, including writing and visual elements, and there is no likelihood of confusion. Baladi advertises their product with their trade-name Baladi clearly written thereon and, in the absence of this term, there is no likelihood of confusion. Rami Levy’s private label HaMaadaniya (literally the delicatessen) is well-known to Rami Levy’s customers as a low price brand, and there is no likelihood of confusion.

“Rami Levy” is written clearly on the front and back of the packaging, and is a super brand that does not need to ride on the reputation of Baladi or anyone else. The difference in price also prevents confusion, and all Rami Levy’s own branded products are clearly sold as such in their stores, and there are loads of examples of private labels being sold alongside branded goods and the public are not misled in any way that they are purchasing something other than the own label.

boycott

As to the issue of marketing Baladi’s products in Rami Levy’s stores, Rami Levy contends that they are under no obligation by general law (in rem) or by contract (in personam) with Baladi, to purchase any of Baladi’s products, including their meat products. Baladi’s goods are available in other chains. At present, Rami Levy stores DO stock Baladi’s minute steaks but, in view of the high price that Baladi dictates for their product, Rami Levy is under no obligation to replenish stocks of something much more

In answer to Rami Levy’s response, Baladi reiterated that their issue is NOT the name ‘minute steak’, but the packaging and the product blocking. On 26 March 2018. a long hearing was held. There were many attempts to bring the parties into an understanding, and the affidavits were reviewed and the parties summarized their arguments. After the hearing the parties still refused to come to an understanding, and so there is no alternative but to reach a verdict in this instance.

Relevant Considerations Regarding Temporary Injunctions

Principles-Governing-Issuance-of-Temporary-Injunction

It is known that the party requesting a temporary injunction has to convince the Court, on the basis of apparently convincing evidence, that there is grounds for the complaint and the Court then has to balance the ease of implementing the different actions, i.e. the damage to the complainant if a temporary restriction order is not issued, vs. the damage to defendant if a temporary restriction order is issued but if it later transpires should not have been. The Court has to ascertain whether the temporary injunction was requested in good faith, and if the injunction is just and fitting in the circumstances and does not unduly damage the defendant – See Regulation 363 of the Civil Procedures Regulation 1984.

interests

The main considerations for requesting a temporary injunction are the likelihood of prevailing and the balance of interests of the two parties, but where the Court considers that the likelihood of prevailing is greater, they will be less concerned about the balance of interests, and the opposite is also true.

When deciding on a temporary injunction, the court also has Read the rest of this entry »


A cost ruling and a tax question

April 17, 2018

This cost ruling highlights a tax issue where it seems to be unclear whether charges for legal work performed on behalf of a foreign entity concerning an issued patent (or trademark) in Israel incur VAT. It also highlights the problems that can occur where firms split and one professional leaves taking clients and on-going issues with him. What is required is professionalism and good between the management of the original firm and the new representatives to deal with costs incurred by the original constellation. Unfortunately, sometimes this good will is lacking.

alkermesAlkermes Pharma Ireland LTD has an exclusive license from Novartis to manufacture a drug in accordance with IL 142896 and its divisional patent no. IL 179379 entitled “Multiparticulate Modified Release Composition”. The active ingredient is Methylphenidate and is commonly known as Retalin. It is used for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy.

MediceMedice Arneimittel GmbH filed a request to cancel the relevant patents and the claim scope was narrowed in a preliminary action by Alkermes, but the cancellation actions were unsuccessful. Now Alkerermes has requested costs of $1,029,561.95 which comes to 3,626,118.18 Shekels costs.

History and Timeline

IL 179379 is a Divisional Application of IL 142896. The allowed patents published for opposition purposes on 8 March 2007 and 31 March 2011 respectively. Since no oppositions were filed, they issued on 9 June 2007 and on 1 July 2011. On 6 August 2012, an exclusive license for manufacturing was issued in the name of Alkermes.

On 14 November 2012, Medice Arneimittel GmbH applied to cancel the patent. The application was supported by a technical opinion provided by Professor Golomb.

On 7th February 2014, before a counter-claim and evidence were submitted, the patentee requested to amend the specification under Sections 65 and 66 of the Israel Patent Law 1967 which allows the scope of a challenged patent to be restricted by the patentee within the scope of the monopoly originally allowed.

On 6 March 2013, the Medice Arneimittel responded and on 14 March 2013 Notartis answered and on 17 March 2013 Medice Arneimittel GmbH requested permission to respond to the answer. On 5 May 2013, then Commissioner Kling scheduled a date for a hearing to discuss the amendment. In the hearing which was held on 4 June 2013, the Commissioner ruled that he case be conducted under Section 102(vi) as if the amendment was accepted, and after the cancellation proceedings be ruled, on the amendment would publish for opposition purposes.

In light of this ruling, Medice Arneimittel submitted an amended cancellation proceeding together with a further affidavit from Professor Golomb.

On 4 March 2014, Novartis/ Alkerermes submitted their counter claims submitted with an expert opinion from Professor Mark A Stein and Professor Joseph Cost.

On 2 June 2014, Medice Arneimittel submitted their counter-evidence including a further affidavit from Professor Golomb together with a request to submit a further three prior art publications. On 18 June 2014, the Commissioner allowed this extra prior art to be submitted, and allowed Novartis/Alkerermes to relate Read the rest of this entry »


Patent Office Closures – Pesach 2018

March 27, 2018
The Festival of Pesach celebrates Human Freedom and the birth of the Jewish people.
The Israel Patent Office will be closed from Friday 30 March 2018, and all deadlines falling in the period that the patent office is closed, are suspended until the Israel Patent Office reopens on Sunday April  8th 2018.

 

WIPO, the UKPTO and some others are closed on 2nd April 2018 for the Easter Bank Holiday weekend. Easter follows the full moon and more or less coincides with Pesach of course, as Jesus’ Last Supper was Seder Night.

Coincidentally, the China State Intellectual Property Office will be closed for the Tomb Sweeping Festival from Thursday April 5 through Saturday April 7th 2018. To the best of my knowledge, this has nothing whatsoever to do with Pesach or Easter.