Copyright in Numerology

December 12, 2017

numerologyNumerology is any belief in the divine, mystical relationship between a number and one or more coinciding events. It is also the study of the numerical value of the letters in words, names and ideas. It is often associated with the paranormal, alongside astrology and similar divinatory arts.

gamatriya chartIn gamatriya, each letter of the Hebrew Alphabet is assigned a corresponding number. the first nine letters are numbered 1 to 9, and the next nine are assigned the numbers 10, 20, 30, etc. The final four letters are assigned the values 100, 200, 300, 400.

The word alphabet comes from the Greek Alpha Beta, and the word gamatriya comes from Gamma – t(h)reeya. That said, the Greek alphabet was based on the Hebrew and Phoenician precedents. The Latin letters were derived from the Greek ones.

The issue in question here, is whether copying sections of verbal lectures and publishing them in writing is considered copyright infringement.

In coming to their verdict, the Supreme Court has reviewd the differences bwetween the onld and new, law, what fixation requires and in what circumstnaes a publisher or distributor can be considered as innocently infringing.

The Case

Sharon Ron is a numerology lecturer. In 2002 Ela Shonia attended his numerology course at the Association for Promoting Awareness in Haifa. At the lectures, handouts and exercises were distributed by Ron. In 2003, Shonia and a fellow student called Sarah Vakhnin attended private lessons given by Ron at his home in Kfar Sava.

Numerology 3rd milleniumIn 2004, Shonia published a book titled “Numerology for the third millenium” which went to three editions, the last one in 2010. In 2010 Shonia published a second book titled Combined Numerology. Both books were published by Astrologue Publishing LTD.

Mishkal Publishing & Distribution LTD received the rights for both books in 2010, in a deal between Shonia, Astrologue and Mishkal dated 03/02/2010 [I am writing the date in numeric form is it may portend something – MF]. Ron sued Shonia, Astrologue and Mishkal in the Tel Aviv District Court in Appeal 8822/15, and counter Appeal 8822/15. [No doubt these file numbers have some mystical significance-MF].

On 20 March 2004 and on 3 February 2010, Shonia signed declarations Read the rest of this entry »


Black Box Trade Dress

December 12, 2017

2525230Sea of Spa Laboratories have submitted Israel trademark application number 285230 for a three-dimensional stylized trademark as shown alongside, for Mineral bath salts and mud masques (not for medical purposes), body butter, body peeling aromatherapy cream, body cream, Aloe Vera cream, Cosmetic creams and lotions, moisturizing cream for the face and baldpate, shampoo, soap, liquid toilet soap, shower gel, toothpaste, deodorant, perfumes, after shave balm (not for medical purposes), all being produced from or enriched with minerals from the Dead Sea; cosmetic soaps; cream soaps; liquid soaps; perfumed soaps; soaps for body care; soaps for personal use; essential oils; Cosmetic creams for skin care; Hair care creams; Hair care preparations; Hair care lotions; Lotions for face and body care; Nail care preparations; Body and beauty care cosmetics; Cosmetic creams; Cosmetic preparations; Cosmetics; Body oils; Hair coloring preparations; Hair styling preparations; Hair shampoos and conditioners; Baby oils; Shampoos for babies; Bath and shower gels and salts not for medical purposes; Bath oils; Bath soaps; Bath foam; Massage oils; Cosmetic massage creams; Sun screen preparations; Sunscreen creams; Sun-tanning oils and lotions; Sun block preparations; Tanning and after-sun milks, gels and oils; Beauty gels; Beauty creams; Body creams; Face creams for cosmetic use; Beauty lotions; Body lotions; Skin lotions; Make-up; Cosmetics and make-up; Make-up for the face and body; Make-up removing preparations all in class 3 and for on line advertising on a computer network; online retail store services for the sales of cosmetics, body care products, soaps, perfumery, essential oils, hair lotions, toothpaste and deodorants; direct mail advertising; Organizing and conducting trade fairs, events and exhibitions for commercial or advertising purposes; dissemination of advertising and promotional materials; distribution of products for advertising purposes; product merchandising; commercial business management; business management of wholesale and retail outlets; retail or wholesale services for cosmetics, toiletries, dentifrices, soaps and detergents in class 35.

From clarifications with the Applicant, it appears that the mark is meant to be a black box, with silver edging to the panels. The Applicant clarified that the requested protection is for boxes of different shapes and sizes, but which are all black with silver trim along the vertices.

The request for registration was submitted on 25 May 2016 with a request for expedited examination based on alleged unauthorized usage by third parties.

circularThe trademark department refused the Application. In a first Office Action on 29 August 2016, the Examiner considered that the mark was not registerable as a trademark, being a three-dimensional package or container, lacking the required distinctiveness under Section 8a to be registered as a trademark. The Examiner considered the mark as contravening Circular 032-2015 “Trademarks: Requests for Three Dimensional Marks”, from 18 March 2015. The Examiner also considered that the correct way to protect such marks is as registered designs.

black pearlOn 12 January 2017, the Applicant responded with the argument that the mark had acquired distinctiveness due to wide usage. This contention was supported with an Affidavit from MR Avitar Glam, the CEO of the company who claimed that the Black Pearl series of products were packaged in such boxes from 2013 onwards, and that the Applicant had spent tens of thousands of Shekels in rebranding. Supporting evidence was appended to the Affidavit.

On 2 March 2017, the Trademark Department wrote that the response of the Applicant was insufficient to conclude that the silver trimmed black boxes without the addition of additional elements on the package were sufficient to be considered as having the acquired distinctiveness required for registration as a trademark.

The Applicant responded by requesting a hearing.

Applicant’s Claims

The Applicant considers that the registration of the requested mark will provide appropriate protection against competitors using similar packaging to theirs. The Applicant considers that the registration will not adversely affect competition in the market place since there are very many different ways of stylizing packages.

The Applicant considers that when considering three-dimensional marks for packaging the Examiner should differentiate between the basic shape and the requested mark. The Applicant considers that Circular 032-2015 fails to make this distinction and is thus deficient.

With this, the Applicant considers that the applied for mark still fulfils the basic conditions outlined in Circular 032-2015, since it is uniquely identified with the Applicant due to continuous usage since 2013, with investment in advertising and promotion of the mark. The Applicant denies that the packaging has a real functional or aesthetic purpose, but rather serves to make the product stand out on the shelf, and is thus a registerable mark.

Discussion

toffiffeeThree dimensional marks that are the shape of the package are registerable if the owner can prove acquired distinctiveness through use. See 11487/03 August Storck et AL.. vs. Alpha Intuit Foodstuffs ltd et al. (23 March 2008) “Toffiffee”. In that matter, the Supreme Court pointed out a difference that can occur between allowing trademark registration of the shape of a product itself, and allowing a three-dimensional registration for its packaging. However, the Supreme Court left open the question of registration of packaging as a trademark on the basis of inherent distinctiveness:

It appears that the risk of preventing competition by allowing registration is bigger, when registering the shape of the product, than when registering the shape of the good itself.  (See re Phenician Glass, paragraph 17). Consequently, I have decided to leave open the question of registration of three-dimensional marks consisting of the package on the basis of inherent distinctiveness.

Circular 033/2016 –Trademarks: Emphases when Examining Trademarks, from 15 December 2016, is the third reincarnation of Circular MN 61 which relates to the registerability of three-dimensional trademarks. The Circular applies the tests developed in Toffiffee, and does not relate to the difference between the shape of the product, and the shape of the package. Since this distinction was left open in the Toffiffee case, a Commissioner’s circular is not the right place to determine this. To complete the picture, when the Application was examined, the Circular in effect was 032/2015 – Trademarks, and so that was the Circular that the Examiner referred to in the Office Action. That said, all three circulars state that when considering the registerability of three dimensional trademark applications:

One can consider the registerability of three-dimensional marks in cases where it is proven by evidence that the following three conditions are fulfilled:

  1. The requested shape serves as a trademark
  2. The requested shape does not serve a real aesthetic or functional purpose
  3. Through usage, the shape has acquired distinctiveness

The wording of the Circular is problematic. It relates to shapes or forms, and not to colour schemes on packages.

Before discussing whether the mark fulfills the requirements of the case-law and the Circular, there is a preliminary question to be addressed, in whether the colour scheme can be considered a mark since the proportions of the box, and thus of the surface panels varies. A similar issue was dealt with by then Commissioner Dr Noam with regards to Israel Trademark Application Numbers 182676, 182677 and 182679 to MANN+HUMBEL GMBH from 19 August 2008. There a mark was requested from a green and gold box with a white line separating the green and gold, in all shapes, i.e. without providing a ratio between the colours. There the Commissioner ruled:

From that written, it seems that we are referring to a mark that is so fluid that it is doubtful whether it is a mark at all. From consideration of Mr Ivor’s Affidavit, together with screen prints from the website of the Applicant, it seems that we are dealing with a concept, with a design idea that combines green, gold and a dividing white line that is expressed in different ways in the website, the packaging and the company’s catalogues.

A basic known principle throughout the branches of intellectual property law is that intellectual property does not protect ideas, but rather embodiments of those ideas.

So the then Commissioner ruled that the registration of insufficiently defined marks is inappropriate.

The applications as filed, if they issue, will totally remove from the public domain the use f two colours on any box. This is an unreasonably wide monopolization that creates legal uncertainty.

The Deputy Commissioner Ms Jacqueline Bracha opined that in this instance, we have a “design concept” , which is too broad to be a trademark. In this regard, it is worth considering the definition of a mark in James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkeley Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011) p. 17.

black pearl 4However, even if we consider the mark as sufficiently defined, one has to assess acquired distinctiveness on the basis of whether the public recognize the mark. From the evidence it appears that the Applicants do not brand themselves only with the applied for mark, but always together with the term “Black Pearl” and a picture of a pearl. These always appear clearly on the packaging. The public do not merely not recognize the applied for mark as being a trademark, but the Applicant itself does not consider it to be a trademark. From Appendix 7 which lists the sales, it is clear that the series is referred to as “Black Pearl”.

black peral 3In the website of the Applicant, (appendix 1 to the Affidavit), the series is referred to as the Black Pearl Line, and in the US website is www.blackpearlusa.com most of the products are shown without packaging at all, which shows that the requested mark is not being used as a mark [and therefore cannot have acquired distinctiveness –MF].

The Applicant did not submit any evidence as to how the consumer considers the requested mark, but does note that sometimes the package on the shelf is viewed from the back. The Deputy Commissioner does not consider the fact that a consumer could return a box to the shelf such that the front is obscured as sufficient justification to consider the mark as being identified as trademark by the consumers. (see paragraph 13 of Appeal 59175-12-12 Stokke AS vs. Commissioner of Patents and Trademarks, 26 November 2013.

In light of the above, the Deputy Commissioner does not consider that the Application serves as a trademark.

Although not necessary, the Deputy Commissioner continued to consider the other conditions for registerability outlined in the Circular.

The Applicant submitted data regarding the branding, which included the design of the packaging and information regarding sales. The Deputy Commissioner noted that it is not enough to show sales but one has to show a link between sales and the mark to show that the requested mark to show that the requested mark generates sales and the burden of proof is significant. See 18/86 Israel Glass Factory Phoenicia ltd. vs. Les Verries de Saint Gobain, p.d. 45(3) 224, 238 and Appeal 2776/06 Ein Gedi Cosmetics vs. Commissioner of Patents and Trademarks, 12 May 2008.

Where a product has several trademarks alongside each other, it becomes even more difficult to show that one or other them has individually acquired distinctiveness. See Deputy Commissioner’s ruling regarding the Trademark Application Nos. 216872, 216873 and 216874 Proctor & Gamble (2012):

We are considering marks serving as backgrounds for words such as “Herbal Essences” and the flower image around the neck of the bottle. (see Appendix D of Ms Rosnell’s affidavit). Furthermore, the applied for marks do not include all the background elements, since it was filed in grey.

See also the comparative law for packaging serving as backgrounds for other marks, in 180843 Baltika vs. S&G Intertrade ltd (2012):

The mark before me is merely a generic background for a beer bottle. There is no problem per se with registering a label as a trademark, if it fulfills the conditions of the Ordinance, and in comparison with the US Law, and Jerome Gilson “Trademark Protection and Practice”, p. 2-162 (2002):

“It should be noted, however, that packaging design which is primarily background for a word trademark must make a separate commercial impression in order to be eligible for separate protection.””

With regard to  registering bottles as trademarks, it is sometimes worth considering whether the applied for mark is has a form that is typical for the field – see Adjudicator of IP in re Israel TM Application 174402 Diageo North America, Inc. from 13 April 2011, and the Cointreau bottle ruling from 2 April 2013. It seems that the more unusual a bottle is, the more easily it can be considered as having acquired distinctiveness, and so can be registered as a trademark.

From an Internet search it transpires that there are other companies using a black box with a frame (Commissioner’s discretion to search independently is discussed in the Rishon L’Zion Winery vs. the Vineyard ltd. (4) 338, 2006. See for example:

AromaThese packages are just a couple of examples of the many black packages that appear on the Internet, which are decorated with gold or silver,  and are used for packaging cosmetics. Although they are NOT identical to the Applicant’s packages, they do indicate that the applied for mark does not stand out from other cosmetic packages on the market.

The Deputy Commissioner did not see fit to consider the question of whether the packages serve a functional or real aesthetic purpose, but it seems that they were designed as part of a branding exercise designed to give a quality image, together with the black pearl. However, this is beyond that required.

Since it is not cealrs that the application is a mark, and in light of the conclusions, that is tis not clearl y a trademark that has acquired distinctiveness through use, the application for registration is rejected.

Ruling re Black Pearl Package Trademark by Deputy Commissioner Ms. Jacqueline Bracha, 1 October 2017.

COMMENTS

It is difficult to argue that a cuboid or brick shaped box is anything but a functional package. It is also difficult to argue that the black and silver choice of colouring is not designed to be aesthetic. However, I am not sure that the Circular is properly worded, and this cased seems to me to be more a question of a flat trademark applied to a box, rather than a three-dimensional mark.

The issue here is NOT one of three-dimensional marks, but is rather one of trade-dress. A single colour trade-dress is probably not sufficiently distinctive. In most places, Cadbury’s distinctive purple was not considered sufficiently distinctive to be registered itself. ‘Laline’ makes beauty products and has simple white packaging, which is a brilliant attempt to  market themselves as pure, but can plain white boxes be considered distinctive? Here, there are two colours, and one is a frame. In other words, it is a little like the National Geographic yellow frame on their magazines. However, there is a second colour; the basic black as well.

national geographicThen again, National Geographic has a very long history, massive circulation, and back copies seem to lurk indefinitely in waiting rooms at doctors and dentists. I suspect many kids first saw photos of naked human bodies in National Geographic magazines that seem to be more favoured by school libraries than men’s magazines.

Also, the dimensions of the National Geographic magazine is standard, and the company is using the yellow frame as a trademark on videos, their TV channel, and various merchandise.

So in this case, there is really a two-dimensional mark of a silver frame on around a black rectangle. Since the dimensions change, it is really a trade dress and is not constant enough to be registered as a mark. Even if not registerable as a trademark, it may still enforceable under the tort of passing off and unjust enrichment. Since accelerated examination was requested for the mark on the basis of a competitor using it, one wonders if it really is exclusively associated with the Applicant. As the Deputy Commissioner has shown, the colour scheme is not unique to the Applicant.

If one examines the website, there are boxes that are all black with a silver label, and gold boxes with the writing Black Pearl on them. There are also black squeeze tubes with silver writing. In other words, the trade-dress is not used consistently. There are other cosmetics using silver on black, particularly but not exclusively designed for usage by women of colour (or whatever the current politically correct term is).

Although relating to a ruling concerning colour schemes which is essentially a trade dress related decision, the Deputy Commissioner has essentially examined the mark in light of the Circular governing three-dimensional marks. To my mind this is the wrong approach. A better starting point would be to consider the ice-cream, coffee and energy drink rulings.


Cumulative Innovation in Patent Law

December 6, 2017

Veteran IP lecturer at ONO Academic College, Dr Ofer Tur-Sinai has written a book called Cumulative Innovation in Patent Law or rather אמצאות עוקבות בדיני פטנטים.

Apparently the subject matter is inventions that are based on patented inventions, and the need to prevent the patent system hindering rather than promoting technological development.

Intrigued? I am. I therefore intend going to the launch on 2 January 2018 at ONO Academic College.

The speakers include Judge Professor Grosskopf and various IP lecturers. It looks like a thought provoking program.

ONO conference

Registration may be achieved via this link.


Israel Supreme Court Upholds Decision Re Appellation of Origin

November 26, 2017

cheese and wineIsrael is a member of the Lisbon Convention for the Appellation of Origin. This is an international convention beloved of the French and frowned upon by the common law countries. Essentially food and drink associated with certain places is entitled to wider protection than mere trademark protection, so that only Scotland can make Scotch Whiskey. Only France can make Champagne and Cognac. Parmesan cheese and hams must come from the Parmesan region of Italy, and so on.

There are now two Israeli whiskey producers. Israel makes Kosher bubbly wine and brandy and a very wide range of cheeses that mimic English, French, Italian, Dutch and Greek types. The labeling is carefully controlled in accordance with the rules.

Israel boasts one Appellation of Origin: Jaffa for citrus fruits.

jaffa orangeCalling something Jaffa, Jaffas, or in Hebrew יפו, יבא, יפאס is not merely a trademark infringement, but also infringes the special law governing this appellation of origin “The Law for Protecting Origins and Indication of sources 1965” gave special protection for Jaffa and variant spellings for citrus fruits. Subsequently, special amendments to the Trademark Ordinance in 1968 widened the protection of the Jaffa mark to prevent its usage for a wider range of goods, and forbade marks that include the word Jaffa as only part of the mark. The amendment to the trademark ordinance takes this protection very seriously, and instead of merely providing financial remedies, prescribes incarceration for infringers.

126 EL AL Poster, Two Flight Attendants in Orange Uniforms by 747, Marvin G. Goldman Coll'nelal posterBack in the Sixties, Israel was a banana an orange republic. The largest export sector was fruit and vegetables and oranges were the flagship product. The posters alongside, used by ELAL – Israel’s national airline gives an indication of the importance and symbolism of the orange in that era.

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin.

Yehuda Malchi tried to register Israel Trademark Application Numbers 20542 and 220581 for OLD JAFFA, for preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively. Israel trademark no. 237678 covering soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 had previously issued without opposition. In an action combined with an opposition by the Council for Producing Plants and Their Marketing to Israel Trademark Application Numbers 20542 and 220581 , the Israel trademark 237678  (Old Jaffa) was canceled. The ruling may be found here.

Having appealed the Israel Patent Office ruling and that of the District Court, Yehuda Malchi appealed to the Israel Supreme Court.

EtrogJudge Hendel’s ruling included an interesting side comment in which he noted that Chief Rabbi Kook, who was the Chief Rabbi of Jaffa and the surrounding agricultural villages from 1904 until the outbreak of World War 1, had backed a campaign to promote using Jaffa etrogs (citrons) for the Sukkot ritual, rather than those from Korfu and Italy, which held much of the European market. Judge Handel thus argued that Israel was traditionally blessed with citrus fruit and that Jaffa was the hub of the trade a hundred years ago.

Hendel also noted that very little of the sprawling urban conurbation around Jaffa is devoted to agriculture today, but since the amendment to the Trademark Ordinance explicitly prevents use of Jaffa as part of a mark, the phonetic or visual similarity between JAFFA and OLD JAFFA is not relevant. He thus upheld the District Court’s ruling.

COMMENT

I am naturally formalistic (which is considered a dirty word in Israeli legal circles), and generally think that where the democratically elected legislative passes a clear law, the judges should follow that law. I am against judicial activism which I see as undermining the Knesset. (That is not to say that recent government attempts to prevent charges being brought against active ministers, to prevent the Prime Minister from being indicted for corruption are the finest examples of parliamentary legislation).

Nevertheless, I think that Judge Hendel could have and should have struck down this law providing wide and special protection for Jaffa oranges. The reason why is not merely that the brand does not indicate oranges from the Jaffa region grown by Jewish agriculturists on Kibbutzim, but rather that it does not indicate oranges grown in the contested region of Israel – Palestine at all! In order to provide year round supplies to world wide markets, oranges grown in South Africa and Australia are sold under the Jaffa brand. Thus the unique and distinctive taste of Jaffa oranges is not a result of the terroir of the Holy Land at all.  This travesty means that BDS supporters are not merely depriving Arab orchard owners with Thai foreign workers of their livelihood in an attempt to harm Israel politically, but are also harming the black workers in townships around Johannesburg.

Since the Council for Producing Plants and Their Marketing does not restrict usage of the mark to Israel grown oranges, why shouldn’t the special designation be cancelled?

In fairness to Judge Hendel however, we note that Yehuda Malchi was not represented and suspect that the sad state of affairs described above is unknown to him.

For the record, we note that it is ill-advised to appeal to fight legal battles, including submitting Appeals to the Supreme Court without legal representation.


November 8, 2017


LES Israel and IPAA invite you to an event on Wednesday, November 15, 2017, 09:00-
12:30 at ZOA House (אמריקה ציוני בית ,(26 Ibn Gabirol St. (corner of Daniel Frisch St.), Tel
Aviv (The presentations will start at 9:30).
The event will be dedicated to the topic:
Patent Term Extension Peculiarities
Israel and Europe
The topic will be presented by distinguished speakers, as follows:
 Mr. Liad Whatstein (Liad Whatstein, Adv.), Founding Partner of the Israeli law firm Liad
Whatstein & Co.:
Patent Term Extensions under Israeli law – The Eccentricities of The Local System
 Mr. Tjibbe Douma (Tjibbe Douma, Adv.), Senior Associate at the law firm of De Brauw
Blackstone Westbroek NV, The Netherlands; and
Ms. Tessa Malamud-Cohen (Tessa Malamud-Cohen, European and Israeli Patent Attorney),
Director, Patents, Global Intellectual Property of Ferring Pharmaceuticals/Bio-Technology
General (Israel) Ltd.:

SPC Squatting: SPCs Based on Third Party Marketing Authorization
 Mr. Tal Band (Tal Band, Adv.), Head of the IP Practice Group in the Israeli law
firm S. Horowitz & Co.:
Patent Term Extensions in Israel – When is it “Game Over”?

We will allocate some time at the end of the event for discussion and welcome comments
from the audience.
The event is free to LES Israel and IPAA members.
Non-members: NIS 70 charge.

Kindly confirm your participation by return email to les_israel@yahoo.com.

COMMENTS

The speakers are considered distinguished by IPAA and LES. I’ve cut and pasted their notification verbatim. I do not disagree, but merely wish to note, that the adjective is not one I chose. The speaker list is balanced in that Tal represents TEVA who usually are generics opposing patent term extensions (although recently trying to reinvent Copaxone to keep it evergreen). Liad works for the patent developers who try to obtain patent term extensions, and Tessa works in-house in the industry. I do not remember meeting Mr. Tjibbe Douma and suspect with a name like that, I would.

counting-sheepMy extensive practice has not involved patent term extensions since I split with Jeremy Ben-David, whose father, Dr Stanley Davis, drafted the Neurim patents for Circadin, whose UK Patent Term Extension went to the European Court of Justice, see here, here, here, etc, so the event has little interest to me personally, although is clearly important for the pharma crowd. Perhaps we should let sleeping sheep lie.


Coffee Whitener Trademarks in the Gaza Strip

November 6, 2017

city creamerClients sometimes ask about whether or not it is worth registering trademarks in the Gaza Strip. Recently, we’ve been handling the destruction of fake plumbing goods destined to Gaza, that were stopped at the Israel Port of Ashkelon. Delivering papers in Gaza is not easy. It can, however, be done.

Qumsieh is a Jordan firm of patent attorneys that handles IP registration across the Middle East. On behalf of their client, Bilal Mohammad Al Hamwi, on 20 May 2014, Qumsieh submitted a Gaza Trademark Application for City Creamer, a coffee whitening milk substitute that comes in powder form, in class 29. The application was assigned number 18963, and published in the Official Gazette number 54 on 28 May 2015.

coffee mateSociété des Produits Nestlé S.A. (“Nestlé”), the owner of trademark “Coffee Mate” filed an opposition against Al Hamwi’s mark based on their earlier registrations for “Coffee Mate” based on the following grounds:
An alleged Similarity between “City Creamer” and “Coffee Mate” in terms of appearance and general look;
Coffee Mate is a well-known trademark worldwide;
Registration of the opposed mark will mislead the public about the origin of the products and will confuse the consumers between both products, and
Due to the above, allowing the registration of “City Creamer” contradicts local Trademark Law.

In their response, Qumsieh noted that “City Creamer” has no counterpart “mug design” mark to that of Nestlé’s mark, however Nestlé argued that this was irrelevant. Opponent dismissed as irrelevant. Qumsieh also argued that the figurative elements illustrated the differences in the imagery, which far outweighed the alleged similarities.

The Gaza Registrar ruled that the “City Creamer” mark could be registered. Apparently Nestlé appealed said decision before the Gaza Supreme Court, which affirmed the decision of the Registrar.

COMMENT

The colour schemes of the two marks are similar, but coffee is a product that is generally drunk warm and the orange-red colour implies a warm cosy feel. The term creamer, like coffee, is generic. Showing a powder additive for coffee as a spoon for adding to coffee seems to me to be descriptive, and despite the similarities which are probably not coincidental, I think that the Gazan authorities made the right decision. It is worth comparing this ruling to the Israeli rulings concerning energy drinks and the Eden Turkish Coffee.


Rabbi Yisrael Rosen

November 3, 2017

Rav_Israel_RozenRabbi Yisrael Rosen passed away on November 2, 2017. In general, I only post obituaries for patent attorneys or former Israel Patent Office staff on this blog. However, Rabbi Rosen spoke at an event we held on Intellectual Property in Jewish Law. He was also a client of the firm, or at least his Zomet Halakha and Technology Institute was.

Rabbi Yisrael Rosen was born in Tel Aviv in 1941. After studying Talmud and Rabbinics at the Kerem b’Yavneh Yeshiva, he studied electronics in the Jerusalem College of Technology (Machon Lev) and then in Bar Ilan University. He went on to found the Zomet Halakha and Technology Institute.

Much of the work of the Zomet Institute was dedicated to developing technological solutions to enable electrical and electronic devices to be used on Shabbat by the halakhically observant. In cases where life or limb is at risk, Shabbat laws must be transgressed. However, there are many cases where there is no immediate danger to life and limb, but where there is a public need and arguably there is a requirement to minimize Sabbath desecration. For example, providing hot food in hospitals, keeping army units operational, use of electrical wheelchairs and the like.

Judaism (at least Orthodox Judaism) is a religion based on observance rather than abstract theology. Nevertheless, one can fairly argue with the premises behind both the alleged problems and the proposed solutions. However, I applaud the attempts made by Rabbi Rosen to enable the State to run on Shabbat and for religiously observant Jews to be able to contribute. Consequently, I was prepared to work pro bono and draft a patent application for a computer and method of interfacing via special keyboard and mouse that according to Rabbi Rosen’s understanding and interpretation of Jewish law was permissible for the operation of necessary infrastructure on the Shabbat. The application was written and filed prior to Zomet submitting a response to a tender put out by the Israel Defence Force. I am a great believer that the religious should serve in the Israel Army, and considered the project significant. When the application IL 191297 “SWITCHLESS COMPUTER INTERFACE (SHABBAT COMPUTER” came up for examination, the Examiner visited the Zomet Institute website and found a description of the invention linking to a paper that Rabbi Rosen had published in the Techumim Journal of Jewish Law prior to the filing of the Application, so the patent never issued. Furthermore, the patent office did not get to address whether a technological problem to a religious issue is patentable subject matter, which, I believe, is a shame.

Prior to writing up the patent I met Rabbi Rosen in Ramat Gan at a Chinese Restaurant. He had no idea what wonton soup was, and I explained it was a Chinese version of chicken soup with kreplach. Although well-versed with all aspects of Jewish Law and competent in electronics, Rabbi Rosen was far from being a renaissance man of wide knowledge and tastes.

At the event I organized titled “Intellectual Property in Jewish Law” that was co-hosted by JMB Factor & Co together with the Herzog Institute for Talmudic Research, see , Rabbi Rosen’s presentation was titled “The Halachic Obligation on the Individual to Recognize Secular IP Laws” in which he took the position that regulating property rights in a Jewish State should be left to the Knesset to legislate and didn’t think that Rabbis should deal with issues such as copyright, patents and trademarks. Whatever the civil law decided would be considered binding, and if a rabbinic court were to address a case they should rule in accordance with civil law. He also considered the same to be true for Jews living abroad. That is, that they were bound by the civil law of the country where they lived. We were particularly grateful for his attendance as his wife was ill at the time.

Rabbi Rosen was an Orthodox Israeli rabbi.  In addition to being the director of the Zomet Institute for the interface of Halakhah and technology, he was the editor-in-chief of the journal Techumin published by that institute which is a leading forum for discussing contemporary halakhic problems. He also edited the weekly Shabbat b’Shabbaton newsletter which is mainstream Religious Zionist in orientation, and wrote a weekly column therein that was critical and outspoken on events and issues. His scholarly work included super commentaries on different Rabbinic interpretations of the Hebrew Bible.

He founded and served as a Judge on a court dedicated to conversion to Judaism under the auspices of the Chief Rabbinate of Israel.

Rabbi Rosen lived in Alon Shvut and was married with five children. He occasionally served as a matchmaker and set up my brother and trademark colleague Aharon Factor with Ilana Deutch the daughter of a Chazan (cantor) and neighbor of his in Alon Shvut, and subsequently served as the sandek (godfather) for one of their sons.

In April 2008, Rabbi Rosen was awarded the Lev Prize by the Jerusalem College of Technology for outstanding achievement in the field of “Torah and secular knowledge” which is a philosophy of Centrist Orthodoxy.

Rabbi Rosen was a member of the advisory committee of Bayit Yehudi (Jewish Home) political party , Not shying from controversy, in August 2017 he resigned from the party in protest of party’s chairman Naftali Bennett employing an openly lesbian spokeswoman. This was, however, not the first time that he’d resigned from the party on principle, and one expects that he would have returned to the party had he not passed away.

At a conference earlier this year, marking the Yahrzeit (death anniversary) of Talmudist and literature professor, Rabbi Aharon Lichtenstein, Rabbi Rosen reminisced about a meeting of leading Religious Zionist Rabbis held decades earlier that dealt with legislation for promoting Sabbath observance amongst the wider Israel public. He noted that Rabbi Lichtenstein himself wasn’t at that meeting, and that this was not a mere oversight, but reflected Rabbi Lichtenstein’s opposition to such initiatives. Though outspoken and opinionated, Rabbi Rosen was well aware that various colleagues had different perspectives and was generally intellectually honest and respectful.

Rabbi Rosen died in the early hours of November 2, 2017 (13 Marcheshvan 5778). May his memory be blessed.