Become Ill? Been Injured? – ? חלית? נפצעת

October 17, 2017

This ruling concerns a Trademark Opposition filed by the Israel Bar Society against an Israel trademark application submitted by the Center for Realizing Medical Rights LTD, and follows a High Court Ruling on the legality of the services provided and a court ruling on alleged Contempt of Court. The ruling is of relevance to the IP community in light of unlicensed practitioners and this is discussed by me after reporting the ruling.

Livnat Poran.jpgThe Center for Realizing Medical Rights LTD filed a trademark application for “Become Ill? Been Injured?” on 2 January 2012 in Class 36 for “consultation services relating to tax attributes; consultation services relating to rights bestowed by insurance policies; all included in class 36, and for consultation services relating to realization of rights for health deficiencies or injury; consultation services relating to realization of social security rights; all included in class 45”

On 17 September 2014, and after the mark was refused by the Examiner, the applicant appealed and a discussion was held with the Deputy Commissioner who, after considering the claims and evidence, agreed to allow the mark to be published for opposition purposes on 1 December 2014.

Israel BarOn 19 March 2015, the Israel Bar Association filed an opposition, and on 24 April 2015, Zechuti-Experts Regarding Medical Rights LTD also filed an Opposition. In an earlier ruling, Ms Bracha ruled that the Oppositions could be combined. However, on 1 November 2015, Zechuti withdrew their opposition, and the Israel Bar continued alone.

District Court.jpgIn parallel to the Trademark Opposition, the parties also fought a battle in the Israel Courts filing 9279/07 Israel Bar Association vs. the Center for Realizing Medical Rights LTD with the District Court (Jerusalem), claiming that the Center was invading the legal space by providing legal services. The District Court decision was appealed to the Supreme Court in 4223/12 the Center for Realizing Medical Rights LTD vs. the Israel Bar Association.

After the claims and counter claims were submitted, the Opposer submitted the District Court ruling, the Supreme Court Ruling, a further decision regarding wasting the court’s time, and a couple of Affidavits submitted by Adv. Feldman as part of the legal proceedings. The Applicant submitted an Affidavit of their CEO as evidence.

Opposer’s Claims

OppositionThe Israel Bar Association submitted that the mark lacks distinctive nature and contravenes Section 8(a) of the Trademark Ordinance 1972; was against the public order and thus non-registerable under section 11(5) and was misleading and encouraging unfair competition contrary to Section 11(6). They also claimed that it was descriptive of the services provided and thus non-registerable. After a hearing on the issue, the Opposition became more focused.

The Opposer acknowledged that since the Center for Realizing Medical Rights LTD had been using the mark extensively (in radio advertising campaigns) it was widely recognized and had acquired distinctiveness, but argued that the High Court had ruled that the Center for Realizing Medical Rights LTD should cease to offer its services, and two grounds for opposition remained.

  1. The Israel Bar Association considered that the Center for Realizing Medical Rights LTD was still providing legal advice and so allowing them to register the mark would be against the public order, and
  2. The Center for Realizing Medical Rights LTD was no longer offering the services it had a reputation in, and so the marks had lost their distinctiveness and so could no longer be registered.

Additionally, the Opposers also claim that the public links the services provided to Ms Livnat Poran whose name appears in the advertisements and not the name of the Center for Realizing Medical Rights LTD, so considers the mark as misleading.

The Applicants Claims

applicantThe Applicant refutes the Opposer’s allegations and affirms that the marks are distinctive, not misleading and not against the public order. They accuse the Israel Bar Association of fighting the campaign to prevent them from benefiting from their trademark and for misusing the Opposition proceeding. As to the two main claims, the Center for Realizing Medical Rights LTD considers that the mark is no longer linked to Ms Foran, and claims that the Center for Realizing Medical Rights LTD is continuing to offer legal services are both widening of the grounds for the Opposition. Read the rest of this entry »


Retroactive Extension Granted for Reporting a Lecture Disclosing a Patent Application Prior to Filing

October 10, 2017

Background

Patentability requires that a patent is novel, inventive and useful at the priority date, which is the effective filing date.

The Novelty requirement is absolute, but there are three exceptions given in Section 6:

  1. A publication of the invention without consent of the patentee provided that patentee files promptly on learning about the publication;
  2. display at a exhibition provided a patent is filed within six months;
  3. By way of a scientific lecture, provided the registrar was given advanced warning and the patent was filed within six months.

Section 164 gives the Registrar (Commissioner) wide discretionary powers to extend missed deadlines.

In this ruling, the Deputy Commissioner considers whether the advanced warning of Section 6(3) can be extended retroactively under the discretionary powers given by Section 164, i.e. if the Applicant can inform the Commissioner of a scientific lecture post facto and pay extension fees, so that the lecture by the inventor is not considered as novelty destroying prior art.

The Case

Japan flagOn 6 March 2012, Otsuka Pharmaceutical Co. Ltd. filed Israel Patent Number 218495 as a National Phase Entry of PCT/JP/2010/053032 titled “Therapeutic Agent for Chronic Pain” that was itself filed on 26 February 2010. The PCT application claimed priority from JP 2009-211021 filed on 11 September 2009.

On 27 August 2009, i.e. before the priority date, the conference proceedings of the “69th Tohoku District Meeting of the Japanese Society of Psychosomatic Medicine”. Published. One of these was titled  “An example of complete response of ariprazole against refractory head and neck pain associated with depression”.

A significant amount of the scientific work that was the basis of the patent and of the conference paper disclosed in a lecture on 12 September 2009. The Patentee claims that the PCT application was filed within six months of the abstract, and claims priority from the priority application and so the PCT application benefits from the grace period under Section 30 of the Japanese Patent Law.

On 22 July 2010, prior to entering the national stage in Israel, the Agent for Applicant requested an extension to the deadline of Section 6(3). The Head of the PCT Department refused this, since the notification of the publication was not provided in advance, and only time limits given in the Law can be extended.

On 15 August 2010, the Applicant responded that they would file a second request on entering the national stage into Israel and would provide written and verbal arguments justifying an exception, and, on 16 May 2011, a further notice refusing the extension was issued by the patent office.

On entering the National Phase into Israel, and with reference to Section 48D(a) of the Law, the Applicant noted that prior to entering the national phase into Israel, they had requested an extension to Section 6(3), and appended the decision of 16 May 2011.

During the Examination, the abstract from 27 August 2009 was cited against the claimed invention as being novelty destroying. Consequently, the Applicant requested a hearing to discuss whether the Section 6(3) deadline is extendible, and if so, whether the circumstances in question justify the Commissioner retroactively extending the deadline under section 164.

Discussion

Sections 6 and 164 are reproduced below:

  1. The right of the owner of an invention to be granted a patent shall not be affected by publication said in section 4—

(1) if it is proved that the matter published was obtained from him the owner of the invention or his predecessor in title and was published without his consent, and if the patent application was filed within a reasonable time after the publication became known to the applicant; or

(2)(a) the publication was by the owner of the invention or his predecessor in title in one of the following ways:

(i) display at an industrial or agricultural exhibition in Israel or at a recognized exhibition in one of the Convention States, of which official notice was given to the Registrar before its opening;

(ii) publication of a description of the invention at the time of a said exhibition;

(iii) use of the invention for the purposes of the exhibition and at the place of the exhibition;

(b) the publication was by use of the invention, even without its owners’ consent, at the time of the exhibition, at the place of the exhibition or outside it, on condition that the patent application was submitted within six months after the exhibition opened;

(3) publication was by way of a lecture by the inventor before a scientific society or by publication of the lecture in official transactions of the society, on condition that the Registrar was given notice of the lecture before it was delivered and that the patent application is filed within six months after the aforesaid publication.

Section 6(3) lists three conditions, that if fulfilled, render the prior publication as not damaging to the patentability of the patent.

The first condition relates to the nature of the publication and to the reasons for it happening. In this instance, it relates to a lecture by the inventor before a scientific society or the publication of the lecture in the formal society conference proceedings. There is no doubt that the publication in question fulfills these conditions.

The third condition relates to the period from which the publication occurs and the date of filing of the patent. The proceedings were published on 27 August 2009, and the international publication was on the 26 February 2010. The Applicant claims that one should see the date of filing of the PCT Application designating Israel, as the date as far as Section 6(3) is concerned. The Deputy Commissioner, Ms Jacqueline Bracha considers that the Applicant is correct in this regard.

Section 48(c) of the Law is an exception to Section 15 that states that a PCT Application designating Israel, receives a data as per the PCT Convention:

48C. The provisions of this Law shall apply to applications addressed to Israel, with the changes specified in this Chapter and with the changes specified below:

(1) the provisions of sections 11, 14, 15, 17(a) and 20 shall not apply;

(2) the provisions of section 16 shall apply to an application, in respect of which the applicant met the conditions prescribed in section 48D;

(3) the date of the application shall be determined in accordance with the provisions of the Convention;

(4) the provisions of section 165(a) shall not apply to information published under the Convention in respect of applications;

(5) notwithstanding the provisions of section 168(a), documents published according to the Convention in respect of applications shall be open for public inspection.

In accordance with Section 11(3) of the PCT Conventions, the filing date of the PCT application is considered as the National Entry Date in all designated states:

(3)  Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”

In light of this, the effective filing date in Israel is the filing date of the PCT Application designating Israel, and so the Applicant has fulfilled Section 6(3) of the Law.

The Applicant does not dispute that he did not fulfill the second condition requiring informing the Commissioner of the lecture before it happened. However, he alleges that it is within the Commissioner’s Authority to extend this deadline under the powers granted by Section 164 of the Law.

Patent Deadlines are generally extendible, apart from the deadline for filing an opposition, the deadline at which a patent lapses (but can be restored), the grace period for renewals, and deadlines relating to patent term extensions.

Other than these, the Registrar (Commissioner) has wide discretion to grant extensions. This is clear from Section 164 of the Law, repeated below:

164.—(a) The Registrar may, if he sees reasonable cause for doing so, extend any time prescribed by this Law or by regulations under it for the performance of anything at the Office or before the Registrar, except for the times prescribed in sections 30, 56, 57, 61, 64F, 64M; however, for purposes of section 10—

(1) the Registrar shall not extend the time prescribed by subsection (a)(1), unless he is satisfied that the application in Israel was not submitted on time because of circumstances over which the applicant and his representative had no control and which could not be prevented;

(2) the Registrar shall extend the time prescribed by subsection (a)(2) only as long as the application has not yet been accepted and if he is satisfied that a mistake was made innocently.

(3)The Registrar may make the extension of times conditional on conditions as he deems fit.

(c) An application for extension of a time may be submitted within the time or after it.

(d)Notwithstanding the provisions of subsections (a) and (b) and the provisions of any other Law, if the last day of the period prescribed in section 10(a)(1) falls on a .day that is not a work day, then the period shall end on the first work day thereafter; this provisions does not derogate from the power to extend beyond the time prescribed in section 10(a)(1).

The Examiner considered that this condition is not a deadline that can be extended and so the Commissioner does not have jurisdiction under Section 164.

The Deputy Commissioner notes that as far as the publication in question is concerned, the Applicant acted in good faith opposite the Patent Office. Firstly, even before entering the national phase the Applicant requested an extension to inform the patent office, when filing, he noted the request on the Application form and listed the reference in the list of disclosed prior art in accordance with the duty of disclosure of Section 18 of the Law. When discussing the requirement in the hearing, the question arose as to whether the Applicant should have appealed Dr Bart’s ruling. Perhaps the Applicant should have Appealed under Section 161 but the Deputy Commissioner does not consider it too late to discuss the issue substantively, or the failure to appeal as inequitable behavior.

The main issue under discussion, is whether the requirement to provide advanced knowledge of a publication is a deadline that can be retroactively extended under section 161, is whether this is an exception to the rule.

To answer this question, it appears appropriate to consider the underlying purpose of the condition and its source. Section 11 of the Paris Convention for the Protection of Intellectual Property 1883 states that the signatory states should provide temporary protection for a period not exceeding that defined in section 4 of the Convention (grace period) for displaying an invention or design at an official exhibition. Indeed, allowing exhibited goods to be protected was one of the aims of the convention:

“(a) Since lack or inadequacy of protection of industrial property at international exhibitions was one of the reasons which promoted the conclusion of the Convention, it is natural that the principle of such protection should already have been included in the original text of the Convention of 1883. It was then the intention to oblige the member States to take necessary legislative measures to that effect but to leave them free in determining the ways and means of achieving this end.”

GHC Bodenhausen Guide to the Application of the Paris Convention for the Protection of Industrial Property, as Revised at Stockholm in 1967 (1968) page 149.

Since the individual states had wide discretion regarding their national legislation and the administrative requirements for obtaining this protection, the basis for the pre-exhibition notice, which is largely unique to Israel, is not part of the convention itself. Additionally, examination of the pre legislative proposed law does not provide an explanation.

The Law in many jurisdictions does not require a pre Exhibition notice of intent to exhibit to be submitted to the patent office. The Japanese Patent Office requires sub mission of the patent application together with a notice within six months of the exhibition. (See Hiroya Kawaguchi “The Essentials of Japanese Patent Law” (2007) p. 31.

A similar requirement for submitting a the notice of an exhibition together with the application is found in Section 55 of the European Patent Convention:

“(1) For the application of Article 54, a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence of:

(a) an evident abuse in relation to the applicant or his legal predecessor, or

(b( the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognized, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.

(2) In the case of paragraph 1(b), paragraph 1 shall apply only if the applicant states, when filing the European patent application, that the invention has been so displayed and files a supporting certificate within the time limit and under the conditions laid down in the Implementing Regulations.”

In the US, the exhibition of the invention is part of the one year general grace period for inventor disclosures – See §35 US Section 102b of the US Patent Law and Daniel J. Gervais International Intellectual Property: A Handbook of Contemporary Research (2015) p.45.

From here it is clear that the Israel Law is somewhat unique in requiring prior notification. In light of the difference between the Laws and the legislative being silent regarding whether or not this period can be extended, the question of the interest that the Israel Law intended to protect by requiring prior notification of exhibition or lecture becomes important.

There are three possible purposes that come to mind.

  1. One possibility is to protect the inventor; who prior to exhibiting or lecturing must determine that the exhibit or lecture will not damage his future protection. By providing notification, the Commissioner can obtain the disclosure and will be reminded of the Section 6 exception. If the inventor does not receive the authorization to exhibit, he can quickly file an Application before the publication. This Paternalistic rationale, even if a positive thing, is somewhat exceptional on the IP horizon.
  2. Another possible purpose is certainty of the public regarding whether a prior disclosure is legally and not merely factually novelty disclosing or not. In other words, the public wishes to know as early as possible, if an invention is to be patent protected or is in the public domain. Even if this is an appropriate aim, it is not achieved by the requirement for earlier registration under section 6(3) of the Law, since such notification is not known to the public prior to the patent application becoming available for public inspection 18 months after filing ( and until fairly recently, on allowance). At the time that the patent file wrapper is available for inspection, it makes no difference if the Patent Office was informed of the exhibition or lecture in advance or after the event. Thus the public reliance on publication is different from the reliance of national phase entry which interested parties can and do follow, see for example, 23511-05-12 Mindcake LLC vs. Israel Commissioner of Patents and Trademarks, 17 January 2013:

Thus, the extension of the national phase entry deadline is a matter of significance, since when this date passes, the invention is immediately transferred from the patentee to the public domain, who is allowed to make use of the invention according to their will.

In this instance, we cannot assume that this reliance is relevant since the public learn about the exhibition approval long after it has issued, so long as it is before the patent wrapper itself is open for inspection.

3.A third aim is to provide the Commissioner with the tools to determine whether a prior art publication is indeed at a scientific or recognized exhibition or not. For such a consideration, the Deputy Commissioner does not consider that prior notice makes much difference. The onus is on the patentee to convince the Commissioner, who is not required to make investigations. So in cases where the Applicant is unable to convince the Commissioner that the exhibition should not be novelty destroying, his request will be refused. From here it is clear that any evidentiary problems will work against the Applicant and we therefore return to the first suggestion that the purpose is to protect the Applicant.

This is not the first time that the Court of the Patent Office has considered this issue. In re IL 68447 to Byong Wha Suh (published on 29 February 1984), the Commissioner was petitioned to extend the Section 6 time-frame. After considering the European Patent Law, the Commissioner reasoned that one could indeed extend the deadline for informing the ILPO and reasoned as follows:

“We state immediately that in our Opinion, section 164a of the Israel Patent Law is sufficiently broad to allow the Section 6(2)(a)(1) deadline to be extended.

The Section allows deadlines that are stated in the Patent Law or the Regulations to be extended, and the wording is not limited to procedural deadlines (such as the deadlines for filing and responding in contentious proceedings)., but also allows extensions of deadlines that can affect the validity of a patent. This can be learned from the wording of Section 164 which specifically excludes extending deadlines for paying renewal fees for lapsed patents, which teaches that the legislative body did not see fit to prohibit other deadlines being extended at the Commissioner’s discretion.

It is true that there is no positive reference to Section 6(3) in Section 164 of the Law. Section 164 does, however, allow the Commissioner to retroactively allow extensions. The Applicant is correct in his claim that “so long as the Commissioner receives notification of the lecture before it is given” relates to time limits, even if it is not explicit. It is also clear that this time passes with the lecture and so any time thereafter misses the stated deadline for the action.

To the extent that the advanced deadline is paternalistic, prohibiting extending the time limit will not enable the intent to be achieved. From here, the deputy commissioner deduces that the Commissioner (and by transfer of powers, she herself) has the authorization to extend the time limit.

It is true that the Commissioner has wide discretionary powers under Section 164, the extent of which changes with circumstances. Application of Section 164(a) to give a retroactive extension will be depend on the nature of the process, the specific circumstances, and the weighing up of the Applicant’s interest and the public’s interest. See Appeal 2826/04 Recordati Ireland Ltd vs. Commissioner of Patents, 28 October 2004.

Section 164 of the Law, cited above, that allows the Commissioner to extend deadlines, does not extend to all of the dictates of the Patent Law (for details of the things that the Commissioner does not have discretion to extend deadlines, see Friedman page 172-178). In this instance, the Court of first Instance correctly noted that the Commissioner can extend deadlines before or after they pass, as stated in section 164(c), so long as he sees a reasonable justification for so doing, but the issue is not one of legal authority, but rather of correct use of that authority. In Appeal 248/95 Fabio Perini S.P.A v. Industrie Meccaniche Alberto Consani S.P.A., Judge Winograd considered the correct interpretation of Section 164of the Law (in the original version prior to the third amendment. The Court supported the liberal interpretation granting extensions for filing Oppositions, stating that Opposer serves the public interest and the integrity of the Register not just his own interest by filing Oppositions, and the range of things that the Commissioner is allowed to extend is wide.

As ruled in the IL 110548 Opposition Shmuel Sadovski vs. Hugla Kimberly Marketing Ltd. (12 August 2010), the relevant considerations for deciding that a justification is reasonable is the extent of the delay and whether there is an explanation for it. The extent of the delay can affect not just the perceived behavior of the Applicant and whether it is reasonable, but also whether the public can be considered to have relied on that behavior.

In this instance, the Applicant first approached the committee with explanations that do not seem unreasonable. The difference between the Israel Patent Law and that in Japan and many other countries goes a long way to justify the mistake made. Indeed, the Applicant made a submission via their attorneys, prior to entering the national phase so as to address the issue as early as possible. As to third parties relying on the delay, it does not seem that this can be construed as being in any way connected to them not contacting the Patent Office prior to the lecture, as explained hereinabove.

Nevertheless, this ruling is given ex partes at the request of the Applicant, without the public being represented, and at this stage third parties do not have standing. Third party standing only will occur when the patent is allowed. In light of the above, the Deputy Commissioner rules that the application can continue to examination without the prior publication in the form of the lecture acting as novelty destroying prior art, using discretion under Section 164 (b) of the law which states “The Commissioner is authorized to extend deadlines as he sees fit”.

Conclusion

The request is accepted and the deadline for informing the patent office is retroactively extended on condition that a fee be paid from the time of the publication of the Application having been filed on 27 August 2009, until the national phase entry into Israel on 6 March 2012. It is noted that the prior informing was rejected by the Examiner and the Applicant could have appealed that decision within 30 days, so extension fees would anyway be due.

The retroactive extension is granted contingent on Oppositions on allowance being considered on their merit, with the issue of this extension being considered legitimate grounds for inter-partes challenge.

Ruling by Ms Jacqueline Bracha re Section 6 publication of IL 218495, 24 September 2017


Increase in Official Publication Fees in Syria

October 3, 2017

200px-Flag_of_Syria.svgOn 28 August 2017 the Syria Minister of Internal Trade issued Ministerial Decree No. 2133 announcing an increase in the official publication fees for new trademarks and renewal applications, as well as for publication for recordals of assignment, mergers and changes of name and address.

The decree will become effective on 15 October 2017 affecting applications pending publication, as follows:

Item Old Price New Price
Publication fees for accepted applications in the Official Gazette (for a list of goods of 10 words) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees after registration in the Official Gazette (for a list of goods of 10 words) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications before acceptance (for applications filed or renewed before April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications after issuing the renewal certificate (for applications filed or renewed before April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications after acceptance (for applications filed or renewed on or after April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Fees for additional group of 10 words in the list of goods and services SYP 500
USD 1
SYP 1500
USD 3
Publication fees for the recordal of assignment SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of merger SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of change of name SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of change of address SYP 25000
USD 50
SYP 50000
USD 100

Renewals of trademarks filed or renewed before April 2007 will be published twice, the first time after acceptance and the second time after the issuance of the registration or renewal certificate. Trademarks filed or renewed after April 2007 will only receive one publication notice, after acceptance.


HALLEY vs. HALEY

September 29, 2017

HalleyJordan based patent attorneys Qumsieh report filed an application in the Palestinian Authority (referred to by Qumsieh as the State of Palestine) for a trademark for Halley on behalf of their Client, Yildez Holding Anonim Sirketi, a Turkish company, on 25 June 2015 in class 30. The mark received the trademark number 27208. The application was published in the Palestine Official Gazette on 15 December 2015 subject to the opposition period of 3 months.

A Saudi Arabian company, under the name of Abdullah Al Othaim Markets, filed an opposition against our client’s application on the basis of it:

  • Being a well-known company in terms of commercialising food products;
  • Being the owner of the registered trademarks “Haley” in Latin and Arabic characters in classes 21, 29, 30, 31, and 32;
  • Prior registration of “Haley” in the home country and abroad since 2003;
  • Claiming their mark “Haley” as a well-known trademark, and
  • Commercialising their products under the trademark “Haley” on their website, which is known to consumers worldwide.

Qumsieh countered that:

  • Their client is also a worldwide,  well-known, company established in 1989;
  • Their client is the owner of the registered trademark  “HALLEY” in Turkey and worldwide in classes 29 and 30 since 1993;
  • The trademark “HALLEY” is well-known worldwide, and customers now associates this brand with Yildez Holding Anonim Sirketi, and
  • The trademark is widely used worldwide and in Palestine [sic].

After reviewing the matter, the Palestine Trademark Registrar allowed HALLEY to register.

COMMENT

We note that the stylized mark Halley is registered in Israel for plumbing products, namely: faucets, shower installations, shower cabinets, shower cubicles, bathtubs, water closets, sinks, wash-hand basins, urinals, sanitary apparatus in the form of squatting pans, toilet seat lids, toilet cisterns; all included in class 11.

If the Palestine Territory mark is also for sanitary equipment, and Haley (not registered in Israel) sells food products, there is indeed little likelihood of confusion.


An Attempt to Cancel Patent For Breaking GSM Standard Algorithm

September 27, 2017

GSM logoDr Elad Barkan invented or discovered a cryptology method for breaking GSM coded communications and filed a patent application on 30 April 2003 titled “Cryptanalysis Method and System”, which was awarded Israel Patent No. IL 155671 in June 2005. The method was based on the discovery of a fundamental coding flaw in the GSM protocol which caused quite a stir among both telecommunication experts and the cryptology community.

DiscoveryOn 23 June 2015, Rontal Engineering Applications 2001 Ltd applied to have the patent cancelled on various grounds including that it was a discovery and not an invention, that the supplementary tests of inventiveness were met so that there was no inventive step, and that the patent was never implemented. In a long and detailed decision, Deputy Commissioner Ms Jacqueline Bracha considered the various allegations and ruled on the validity of the patent registration.

After the statements of case and the evidence were submitted, a three-day hearing was scheduled in December 2016, and the parties then submitted written summations.

Complicating matters, during the summation stage, the Opposer, Rontal Engineering Applications 200 Ltd filed for bankruptcy. Dr Barkan submitted a request that they post a bond for 200,000 Shekels, to pay his legal fees should he prevail against them. The Deputy Commissioner agreed with his request and a bond was posted on 15 July 2017.

Somewhat unusually, the ruling starts with a list of definitions of various words relating to the GSM protocol. Then the decision goes on to rule if the invention relates to patentable subject matter.  In a 46 page ruling with 165 paragraphs, the Deputy Commissioner found that the invention is patentable per se. Furthermore, the invention described is substantially different to the closest prior art so the patent was upheld.

In my conclusions at the end of this article, I conclude that the Opposers could probably have successfully obtained their real objective by negotiating a claim restriction to exclude brute force attacks which were never intended to be covered by the claims anyway.

A summary of the Decision follows.

Glossary

The patent relates to GSM encryption, and to understand the case, a number of terms need to be defined.

GSM NETWORKGSM is an acronym for Global System for Mobile Communications. It is a standard for cellular phone networks developed in 1987 and available since 1992. The standard was published before the priority date.The standard is a digital telecommunication standard and voice is digitized, transmitted and then converted back into sound. GSM is encrypted to prevent third parties from eavesdropping. The communication takes place via base stations.

Read the rest of this entry »


 Appeal Regarding Infanti Baby Seats Virtually identical to those of Fisher Price (Mattel)

September 19, 2017

fisher price swing seatBaby swing-seats that were made in China and are identical to Fisher Price swing seats, down to the image of a lion on the upholstery, were imported and sold in Israel under the brand Infanti. Fisher Price obtained an Anton Pillar injunction and seized 1830 seats from the Importers’ warehouse. However, the Nazareth District Court rejected all attempts to obtain compensation under copyright infringement of the lion design printed on the seat upholstery and in the instruction manual, trademark infringement for the Fisher Price logo shown in the illustrations of the instruction manual, the trade tort of Passing Off, and the catch-all Law Of Unjust Enrichment following A.Sh.I.R. The case was then referred to the High Court.

This ruling by a panel of Israel High Court judges considers whether copyright subsists for a product design or artwork printed on a product where no design was registered for the product and whether there are grounds for sanctions under the trade-law of Passing Off or under the Law of Unjust Enrichment. The legal advisor to the government filed an amicus brief clarifying the position of the government in such issues.

judge elyakim rubinstenThe main ruling was given by Vice President of the High Court, Judge Elyakim Rubinstein who first considered the basic relationship between design law and copyright. Then, he ruled whether part of something that could have been registered as a design is entitled to copyright protection, and if so, whether the lion character is copyright protected even if the swing chair could have been registered as a design. Are the respondents direct or indirect infringers of the Appellant’s copyright? Do they have the defense of being unaware? Does trademark infringement require intent? And finally is there Passing Off or Unjust Enrichment?

Essentially Judge Rubinstein and Fogelman found copyright infringement due to the lion character on the upholstery, and Judge Meltzer also found that there was passing off, due to the products being virtually identical. Judges Rubinstein and Fogelman rejected the claims of passing off since although Fisher Price clearly had a reputation, they did not necessarily have a reputation for the baby swing seat. Infanti’s copies, though virtually identical to those of Fisher Price, were packaged in different boxes and the boxes were clearly labelled Infanti. The product itself was also labeled with the Infanti brand.

The main ruling is given below, followed by additional comments by Judges Fogelman and Meltzer. Since this is an important ruling, I have translated it in full. At the end are some comments and criticisms.

Background

This is an appeal against ruling 39534-02-15 by Nazareth district Court judge, Ben Chamo which was given on 8 January 2015 and in which Fisher Price lost their claim regarding copyright infringement in a child’s swing seat.

The ruling addresses the relationship between copyright and registered design rights. Judge Rubinstein notes that in the modern consumer society, the design of consumer goods has an increasing importance, and that manufacturers invest heavily  Consequently, many goods are some combination of functionality and artistic expression which makes it difficult to classify such goods in a single IP category and raises difficult legal questions. This appeal relates to a list of such questions of which the relationship between design law and copyright is central.

The Appellant, Mattel Inc. is a US Company that owns Fisher Price which makes baby goods, etc. The Respondent, Dvaron Import-Export Co. Ltd, is a company that imports various baby products into Israel. They and their directors and share holders were sued.

infantiMattel / Fisher-Price learned through Sakal which imports their products into Israel, that the respondents have been distributing a baby swing seat manufactured in China and branded as Infanti, which is a copy of the Fisher-Price swing seat.  Read the rest of this entry »


Oppostion to Smartbike Trademark

September 17, 2017

268138El-Col Electronics (Nazareth Illit) Ltd submitted a trademark application for Israel Trademark No. 268138 in class 12.

The mark is a graphical image bearing the words Smart Bike as shown.

On 7 March 2017, an opposition was filed by Smartrike Marketing Ltd and Smart Trike MNF PTE LTd under section 24a of the Trademark Ordinance 1972, and Regulation 64a of the 1940 regulations.

On 30 April 2017, the Applicants requested an extension of time for submitting their Counter-Statement of Case in Response to the Oppositions. On 20 June 2017, the Applicant submitted their claims in accordance with Section 35 and requested that the Opposer deposit a bond for covering costs.

Section 38 of the Regulations provides the Opposer with a period that ended on 20 August 2017 to submit their evidence. In addition, the Opposer should have responded to the bond request within 20 days. However, until the time of writing this Decision, it appears that the Opposer chose not to submit evidence in an Opposition they themselves initiated. Nor did they respond to the request to deposit a bond.

Consequently, under Regulation 39, Smartrike is to be considered as having abandoned the Opposition:

If the Opposer does not submit evidence, he is considered as having abandoned the Opposition unless the Commissioner rules differently.

Since the Opposer did not submit  evidence and also failed to contact the court secretary, and since she saw no justification to rule differently, Adjudicator of IP, Ms Shoshani-Caspi ruled that the opposition be considered closed, and that Israel Trademark Application No. 268138 be immediately registered.

Based on the various considerations, she ruled that the Opposer should pay costs of 1000 Shekels + VAT within 14 days.

Opposition to Israel TM Application No. 268138, Ruling by Ms Shoshani Caspi, 28 August 2017