District Court Upholds Trademark Ruling Re Scratch on Aluminium Profiles

November 16, 2016

The District Court has upheld Ms Bracha’s Decision not to allow registration of Israel trademark application 240319 filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co.) or NAPCO is such a mark following opposition proceeding by  Extal LTD.

240139

The mark, concerned is shown here. It was applied for aluminium profiles in class 6. A report of the Opposition ruling of the Israel Patent Office may be found here.

 


Costs Where the Agent of Record is Slow but Sure

November 14, 2016

tortoise

On 17 February 2016, Talia Bio-Cosmetics LTD filed Israel Trademark Application No. 282845 for the word Talia covering soaps, ethereal oils and cosmetics in class 3. We assume that the term ethereal oils means essential oils, i.e. oils having a low vapour pressure that are easily vapourized.

The mark was allowed, and then, on 29 May 2016, ARIANDA THALIA SODI MIRANDA, represented by Colb, filed an Opposition.

Talia Bio-Cosmetics LTD engaged Adv. Moshe Goldberg to represent them, and, on 10 July 2016, the Opposition was withdrawn. Then Adv. Goldberg submitted a request for 10,200 NIS costs for 17 hours work spent on the Opposition. The cost request was supported by a detailed list of work done.

The Applicant claimed that the costs requested were exorbitant and unrealistic since the Opposition was withdrawn so early. The Applicant further noted that the request was not accompanied by an Affidavit and alleged that it was insufficiently detailed.

The Deputy Commissioner Ms Jacqueline Bracha noted that Section 69 of the Trademark Ordinance 1972 stated that costs were at the discretion of the Patent Office :

In any hearing before the Commissioner, he is authorized to award the party costs that he considers realistic.

In this instance, the Opposer, by withdrawing the Oppostion, is considered as having lost the proceeding and is obliged to pay costs. See Supreme Court Ruling 891/05 Tnuva Cooperative for Marketing Israeli Produce vs. The Authority for Granting export Licences of the Department of Trade and Industry p.d 60(1) 600 (30 June 2005).

As a matter of principle and as a starting position, the prevailing party is entitled to real costs, i.e. the costs that he has had to lay out. However, this is only the starting position. It is not the end of the matter, since the one sitting in judgement should examiner the costs requested and decide if they are reasonable, proportional and essential,when considering the whole picture. The Attorney’s fees are a relevant but not the only relevant consideration.

The Applicant has requested a rather large costs of 10,700 Shekels for 17 hours work spent on the file. In practice, the Opposer filed an Opposition and then requested an extension for submitting the Statement of Case. The Applicant requested that a bond be paid and also responded to the request for an extension. The Applicant never filed any substantive response since the Opposition proceeding was closed a mere week after it was opened.

To the extent that costs are extreme, there is a greater burden of proof on the Applicant to justify them. See Opposition to Patent Application No. 153109 Unipharm vs. Mercke Sharpe & Dohme 29 March 2011.

Ms Bracha considered the statement of costs sufficiently detailed but nevertheless considered it unreasonable when considering the stage of the proceeding reached, where no statement of case and no evidence had been filed. Consequently she ruled costs of 2000 Shekels to be paid within 21 days.


Sebastia – an Iconic Image

November 14, 2016

sabastia

In addition to copyright, photographers also enjoy the moral right to have their photographs identified as being taken by them.

YNET, the Internet portal of Yediot Aharonot, used an archived photograph from 1975 of the attempt to establish a Jewish settlement in Sebastia. The photographer, Moshe Milner, was not attributed. He filed a complaint with the District Court and received compensation of 12000 Shekels, with the judge accusing Yediot Aharanot of being in that area between intent and innocence that is characterized by laziness, closing one’s eyes and acting rashly.

I believe the image concerned, is the one shown above. Showing Rabbis Hanan Porat (Z’L) and Moshe Levinger.


ECJ rules that the shape of a Rubik Cube is not a valid trademark

November 11, 2016

cube

Everyone agrees that three dimensionsal trademarks are possible. A classic example might be Rolls Royce’s mascot.  Where a mark has functionality, it becomes more difficult. Unique packaging, such as the shape of a truly unique bottle, is trademarkable.

Rubik’s Cube, which was invented in 1974 by Hungarian architecture professor Erno Rubik, has enduring popularity and has sold more than 400 million cubes worldwide. Seven Towns registered the Rubik’s Cube as a three-dimensional EU trademark with the EUIPO in 1999. Simba Toys challenged the registration, but in 2014 the European Union General Court decided the three-dimensional trademark was valid, and ordered Simba to pay costs.

The European Court of Justice has now ruled the registration invalid.

And what about Israel? Been there… Done that.


Exforge Patent Successfully Opposed in Israel, despite surviving an Opposition based on similar citations in Europe

November 7, 2016

Exforge is a blockbuster drug sold by Novartis for lowering blood pressure that combiexforgenes two medications in a film-coated tablet It contains amlodipine, a dihydropyridine-type calcium channel blocker, and valsartan, an angiotensin II receptor antagonist (ARB or A2RA); typically formulated as the benzenesulfonate salt.

Israel Patent Application No. IL 140665 titled “USE OF COMBINATION COMPOSITIONS COMPRISING VALSARTAN AND AMLODIPINE IN THE PREPARATION OF MEDICAMENTS FOR THE TREATMENT AND PREVENTION OF DIABETES ASSOCIATED WITH HYPERTENSION” relates to the drug.

In an Opposition to the Patent Application issuing, the Deputy Commissioner, Ms Jacqueline Bracha, has ruled that the combination of two active ingredients, each individually known for treating high blood pressure, into one pill for ease of dosage is not inherently inventive where the separate efficacy of the active ingredients is known, as are other two component pills for treating hypertension. Though claimed by applicants, there is no evidence of a synergy between the active ingredients.  The Patent Application is therefore ruled not patentable in Israel and significant costs were awarded to Teva and Unipharm. We expect that the decision will be appealed. This decision may have a knock on effect regarding patents for the same drug abroad and may encourage Teva to proceed with at-risk launches of generic competitors in other jurisdictions.

A translation of the ruling follows:

Read the rest of this entry »


Bon Bon

November 3, 2016

Israel Trademark Application No. 267718 is for the mark Bon Bon showed alongside this paragraph. The mark covers Cocoa; sugar; flour and preparatiobon-bonns made from cereals, namely cereal-based snack food, high-protein cereal bars; pastry; confectionery made of sugar, namely candy, sweets, pralines, chocolate, pastilles [confectionery], halvah, waffles; honey in class 30, and was filed by Open-Type Joint Stock Company “ROT FRONT”, a Company registered in the Russian Federation.

The registration included the following limitation: The mark is limited to the colours word Purple, dark purple, light purple and white. as shown in the mark.

The application is a national stage entry of International Application Number 1213719 that included Israel as one of the designated countries.

On 14 February 2016, and in accordance with Section 56f of the Israel Trademark Ordinance 1972, a notice of acceptance was sent to the International Office of WIPO, conditional on no oppositions being filed prior to 29 May 2016.

On 19 May 2015 an opposition was filed by ARCOR S.A.I.C. and on 26 May 2016, a further opposition was filed by Colombina S.A., both in accordance with Section 24 of the Ordinance and with regulations 35 to 46 of the Trademark Regulations, 1940. Consequently, a memorandum regarding the Oppositions was sent to the International Office under Section 56f(ii) of the Ordinance. As per Section 56e(ii) of the Ordinance, copies of the Notices of Opposition in Hebrew were attached to the memorandum.

The Applicant has two months to file a counter-statement in response to the Notices of Opposition, i.e. until 19 September 2016 and 26 September 2016 respectively. Until today, no response from the Applicant has been received. Since the time period defined in regulation 37 has passed and in accordance with Section 24e of the Ordinance, the Applicant is considered as having abandoned the application. Therefore the mark is considered as abandoned and the 267718 file is closed. The Trademark Division will inform WIPO accordingly.

 Re Israel Trademark 267718, Closure of File by Ms YaaraShoshani-Caspi, 7 September 2016


IL 221116 – Extending the Period for Reconsideration of a Refused Patent

November 2, 2016

mouth-cleanerIsrael Patent Application No. IL 22116 titled “Mouth Cleaner” was applied for by Yaakov Dichtenberg and Danny Unger who is also a patent attorney.

The Application was rejected. Under Section 21a and 164a of the Israel Patent Law 1967,  within 12 months of a final rejection, the Applicant may request reconsideration by the Commissioner. After that time it is possible to have a closed application reopened, but it is difficult and it is generally necessary to show extreme circumstances resulted in the application becoming abandoned.

weve-movedThis Application was filed on 25 July 2012 and, in accordance with Section 16a of the Law, a Notice of Imminent Publication was sent to the Applicants on 5 January 2014. This notice was sent to the address given on the application form which was the address of the first Applicant, Mr Danny Unger, a patent attorney who represented himself and the his c0-applicant. The Application published on 30 January 2014.

On 2 February 2014 the Applicants received a Notice of Imminent Examination in accordance with Section 18 of the Law and regulation 36 of the patent regulations 1968. Since the Applicants did not respond to this Notice within the period ordained in regulation 36, a reminder was sent on 5 November 2014 to the effect that in absence of a response within 30 days, the Application would be deemed abandoned. Subsequently, on 21 December 2014 a Notice of Rejection issued that also informed the Applicants that they could request reinstatement within 12 months.

On 21 December 2015 a request for reinstatement was received together with a response to the Notice Prior to Examination. The Notice of Reinstatement did not include a signed affidavit as required by Commissioner Circular  026/2014, however the Applicants alleged that they never received the correspondence due to a change of address.

On 15 March 2016 the Deputy Commissioner Ms Jacqueline Bracha requested that the Applicants provide a detailed signed statement of the events leading to the Application becoming abandoned and set a date of 20 April 2016 for a hearing.

On 19 April 2016, one day before the hearing, the Applicants requested a postponement for personal reasons. Despite the lateness of the request and the lack of a doctor’s letter, Ms Bracha agreed to the postponement. Nevertheless, the detailed statement was not submitted.

Applicant and Patent Attorney Unger arrived very late to the rescheduled hearing and claimed that he thought that updating the Ministry of the Interior regarding his change of address was sufficient to automatically update the patent office records. The Applicant was informed that Regulation 16a makes it clear that he should have proactively informed the Israel Patent Office of his change of address and that he still needed to provide an affidavit.

On 25 May 2016 an Affidavit was received in which the Applicant informed the Israel Patent Office that he neglected to inform them of his change of address and consequently never received the correspondence from 2014 to 2016 which was sent to his previous address. He went on to affirm that he never intended to abandon the Application and wanted to continue prosecuting the Application in parallel with the US application.

RULING

Section 21a sets the timetable for requesting reconsideration of a rejected Application as follows:

21A. If the Registrar refused to accept an application under section 21, then he may— on the applicant’s application—reconsider the refusal, on condition that the application be submitted within 12 months after the day on which the Registrar refused to accept it as aforesaid.

Section 164a of the Law enables the Commissioner to extend Section 21a due to reasonable causes:

Where the 12 month period stated in Section 21 has passed, the Commissioner may, nevertheless, reinstate a patent application in exceptional circumstances under Section 164a which states:

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…

As the Deputy Commissioner, Ms Bracha sees it, Section 21a gives the timeline for an Applicant to restore an Application. Section 164a gives the Commissioner sweeping powers to reinstate but has to be applied with consideration of the fine balance between the Applicant’s interest and that of the public; see 2806/04 Commissioner of Patents vs. Recodati Ireland LTD:

The policy regarding different requests to extend deadlines will vary depending on context and the type of proceeding that the extension is requested for.

If the Commissioner agrees to an extension, he is entitled to make the decision dependent on appropriate conditions in the circumstances as detailed in Section 164b:

The Commissioner may make the extension dependent on any conditions as seen fit.

As ruled in the decision concerning IL 157563 ICOS Corporation from 21 October 2013:

Citing Opposition IL 110548 Shmuel Sadovski vs. Hogla Kimberly Marketing LTD. regarding Revivals, the relevant considerations are the time passed and the underlying reasons for the delay. In this regard, the time passed not only provides an indication of the reasonableness of the Applicant’s behaviour, but also affects the likelihood of third parties relying on the case being abandoned, since it is evident that the longer an application remains abandoned, the greater the likelihood that third-parties will have relied upon the invention not having been patented.

In this instance, the period beyond the 12 months automatically  granted by Section 21a of the Law is minimal. The Applicant filed a request on the last day but did not file it properly since no Affidavit was included. The Affidavit was only submitted after the hearing.

However, the behaviour of the Applicant does not conform to that expected of a Patent Attorney, who, in this case, represents not just himself, but also a second Applicant. A Patent Attorney is expected to know that he should provide an address to the Israel Patent Office and that this address will be the one that post is sent to. The Patent Office cannot change the address of record without instruction to do so in a formal request to change the address of record. No such request was submitted. Furthermore, the Applicant found it difficult to conform with the revival instructions after being instructed to provide an affidavit explaining the circumstances leading to the application going abandoned. Nevertheless, it does seem that the Applicant followed the case or he would not have known that he should request revival of the Application.

elephant-and-post-boxIn the circumstances, the Deputy Commissioner ruled that the case should be returned to the Examiner as per Section 21a. However, because of the public interest, the Deputy Commissioner makes revival conditional on anyone relying on the patent lapsing from when it lapsed until when it was reinstated being allowed to continue using the invention, even if a patent should eventually issue.

Notice is given to the Applicant that his address has still not been updated.

Decision by Ms Jacqueline Bracha regarding reinstatement of IL 221116 “”Mouth Cleaner” to Yaakov Dichtenberg and Danny Unger”,  7 September 2016

COMMENT

Apart from being rather surprised that a registered Patent Attorney could forget to update the patent office about his change of address and assume that the Ministry of the Interior would do it automatically, I am at a loss as to why he didn’t bother checking up the progress of the application for his own invention on-line.

Since the request for revival was filed within the 12 month time period, at least, since all yearly and monthly deadlines are to the same calendar day, I think the decision is correct.

chewing-gumI couldn’t resist reviewing the Application as claimed, and note that the first few claims attempt to monopolize apples and chewing gum. Go figure.