Israel Supreme Court Overturns Ruling Forbidding Copying Fashion Designs

February 21, 2018

necklines

Back in December 2016 Israel fashion designer Gadi Elemelech sued Renuar, a chain of selling women’s clothing for selling clothing that was confusingly similar to his haute couture dress. The dress in question appeared in Elemelech’s 2013 collection, and in Renuar’s 2014 range. The legal grounds for the action were the Israel Trade Related Torts Act 1999. Judge Gidon Ginat ruled that a chain-store that copied a range of designer clothing should cease and desist, and that Renaur should pay damages of 55,000 Shekels and a further 35,000 Shekels legal costs.  Civil Tort 5366-12-14 Elimelech vs. Renuar Ruling by Gidon Ginat, 22 December 2016.

The ruling was appealed to the Israel Supreme Court which overturned it, canceling Judge Ginat’s ruling without costs to either side. Instead of a long detailed ruling, the three judge panel ruling is barely two lines, and simply states that simply copying a product is not enough to obtain a legal sanction against the copier, with a reference to paragraph 18 and citations of the Apropos 945/06 General-Mills vs Meshubach ruling (Bugles).

COMMENT

This ruling essentially means that non-registered designs are in the public domain and cheap copies of various articles, from foodsnacks to fashion clothing can’t be litigated unless the design is registered, apart perhaps from specific cases where there is some additional issue (A.Sh.I.R.).


CORRECTION Re – Third International Conference on the Economics of Innovation

February 13, 2018

mistakesI try to be factually accurate and helpful to my readership. However, occasionally mistakes happen. A couple of days ago I posted about the Third International Conference on the Economics of Innovation to be held in Israel under the auspices of the AIPPI in Israel between 30 April and 1 May 2018.

I received a press-release from the Israel Patent Office with a link to the website of the conference, so took details from there. I noted that the opening speakers were two Israel Nobel Laureates:

  • Prof. Ada Yonat, The Martin S. and Helen Kimmel Professor of Structural Biology.
  •  Prof. Aaron Ciechanover, Technion

I commented that both were certainly eminent scientists in their fields, but if the conference organizers want Nobel Laureates to talk about the Economics of Innovation, one or both of Israel’s Nobel Laureates in Economics would be a better choice.

mistake EinsteinI’d like to think that the conference organizers follow my advice, and I do note that some of my criticisms of the first and second International Conferences have been addressed this time around, but I doubt that within a couple of days of my posting my criticism, the organizers would disinvite two such distinguished speakers. Nevertheless, they are not coming.

francis gurryInstead the current program as advertised has a video greeting from Mr. Francis Guri [sic], WIPO president – a gimmick I enjoyed at a premiere cercle IP conference last year. Watching a VIP on-screen is not that exciting as in the flesh, and to be honest, I don’t think there is a major demand for autographs from WIPO presidents. (Indeed, when I was Guest of Honour at the AIPPI International Conference in Paris a few years back, I don’t recall anyone asking me for my autograph). Nevertheless, we assume that Francis Gurry (which is the correct spelling and should be corrected in the program) is perfectly competent to give an informed lecture on various aspects of IP. We suspect however, that his words of welcome will be more platitudes than substance.

ASHER_D._GRUNISThe opening session is instead being given by Judge (retired) Asher Grunis, President of the Supreme Court of Israel 2012 – 2015 on “Judge made law in the field of intellectual property”. Judge Gronis gave several IP decisions over his long and illustrious career, such as Toffiffee, Adidas, Dior, Shemesh restaurantsBalugan – Spinmaster, etc.

aharon aharonJudge Grunis’ talk is being followed by one by Mr. Aharon Aharon, CEO, Israel Innovation Authority. The title of Mr. Aharon Aharon’s talk is not published in the program, but it is clear that he has some influence over Israel govt. policy regarding promoting innovation.

I view the change of opening speakers favorably, as both should have something to say that is relevant to IP issues which may well not be the case with Nobel laureates in science, despite their eminence in their fields.

For reviews of the first Israel AIPPI conference From IP to NP (net profit) see here and here. For a review of the Second Israel AIPPI conference here.

The second mistake in Sunday’s post, noted by both IP KAT and leading Israel Trademark Attorney, Neil Wilkof, and by Patent Attorney David Silver, was that I put the price for Israelis which is 1600 Shekels down as $1600 by mistake. I have corrected that typo is Sunday’s post.


Third International Conference on the Economics of Innovation

February 11, 2018

aippiThe Israel Chapter of the AIPPI is hosting their third Conference on the Ecomomics of Innovention between 30 April and 1 May 2018, which is a few weeks after the 6th Best Practices in Intellectual Property Conference organized by Kim Lindy and the In-House Forum, and three weeks before the 140th INTA conference in Seattle (which coincides with Shavuot.

I am posting this to give those interested in attending advanced notice of the event. However, as the program at the link is labeled not for distribution, it may be premature to comment on the topics covered and the speaker list.

NobelWhat is impressive, however, is that the opening addresses include two Israel Nobel Laureates:

  • Prof. Ada Yonat, The Martin S. and Helen Kimmel Professor of Structural Biology.
  •  Prof. Aaron Ciechanover, Technion

what-is-economicsNobel Prizes are not given out like sweets, and being able to hear presentations by two Nobel Laureates without having to go to the Swedish Academy of Sciences is no-doubt an impressive draw. It occurred to me, however, that if this conference was really about the economics of innovation, It would make more sense to invite Professor Daniel Kahaneman or Professor Robert Aumann. It seems to me that these laureates, being economists, would have more of value to say about the subject of the conference.

I have read Professor Kahaneman and watched interviews of him on television. I have also heard Professor Aumann lecture (and been bird watching with him in the Golan – but that’s a different story). Both are accomplished speakers and apart from their subjects actually being economics, their fields of expertise are less specialized and more accessible to a wider audience than those of the keynote speakers.  Except the Conference on the Economics of Invention is not about the economics of invention. The title is simply a form of branding that enables the organizers to bill it as the third conference.  That said, the sessions as currently advertised do look interesting and varied, and one expects that participants will not be disappointed.

Like any two-day conference that is held every couple of years, the subject matter of the tentative program is a reasonable attempt to cover a wide range of topics and to try to ensure that there is something for everyone. As there appears to be parallel sessions, one assumes that most people will be find something of interest most of the time, and one can’t really ask for more.

The conference costs 1600 Shekels for two days ($480) which seems good value for money when compared to similar conferences overseas. For Israelis there is both less traveling and Kosher food. For overseas visitors, Israel is a great place to come for a conference and to tag on a pilgrimage to the holy sites and/or trips to the various Roman archaeological remains that are as impressive as those in Italy or elsewhere. it is also a great destination for ornithologists or simply for those looking for a beach holiday and good restaurants.


Passed Off Pasta?

February 8, 2018

barilla pastaBarilla is an Italian pasta brand that is on sale in Israel.

Oddly enough, pasta is made of duram wheat (Triticum durum or Triticum turgidum subsp. durum), which is a tetraploid species of wheat which is hard to milling due to the starchy endosperm.Dough made from its flour is weak or “soft”. This makes durum favorable for couscous (semolina) and pasta, and less practical for flour. It is actually grown in Israel and exported to Italy!

Rami LevyRami Levy (Shivuk HaShikma) is an Israel chain of supermarkets that, as well as selling commercial brands, negotiates with manufacturers and packages its own brand labels which are usually cheaper.

 

Recently, Rami Levy started stocking their own label dried pasta.

Rami Levy pastaAs you can see, Rami Levy’s pasta, like Barilla, uses a blue box, albeit a slightly different shade, and has the type of pasta contained viewable through a cellophane window. The make of the type of pasta (penne, spaghetti, canaloni, etc.) is written in white, albeit on Barilla, the name is in English letters and on Rabbi Levy’s own brand, it is in Hebrew. Rami Levy Shivuk Hashikma us written across the top and on the side of the box. The name of the brand, written in yellow seems to be a face with a hat on and wide mouth, but is actually a stylized O followed by lla in italics giving Olla. However, Barilla also ends with an lla.

Barilla sued Rami Levy in the Tel Aviv District Court for a million shekels (about $300,000 US, 250,000 Euros) and obtained an injunction ordering Rami Levy to take their own brand pasta and sauces off the shelves. Rami Levy filed a counter-suit and the cases are pending.

Rami Levy claims that Barilla waited for over 14 months since Rami Levy introduced their own-label and so the case should be thrown out. He claims that his competition is fair and Barilla should respond by advertising, discounts and special offers. He dismisses allegations of passing off, and argues that there is an overwelming weight of precedent from the District and Supreme Court that indicates that the similarity is not excessive and that the case is baseless. The name Rami Levy, the Italian series is clearly written in white on blue in large letters.

Barilla has a trademark on their brand name and not on the design of the package or on the blue colour. Rami Levy accuses Barilla of ignoring their own branding and trying to monopolize the blue colour. However the case-law does not support claims of passing off where packages are similar but the trade name is clearly written and there is no likelihood of confusion in such cases. The courts do not recognize rights in a packaging colour. Rami Levy further claims that with over half a billion shekels in sales of “the private brand” in 2017, his sales outstrip those of Barilla. His prices are much lower and this also distinguishes them, and there are a number of accumulative differences.

COMMENT

taaman 1taaman 2We note that Taaman (pun on taam which means both taste and reason) is an Israeli importer and distributer of staples such as flour, pasta, chocolate, etc. that also has a red logo with white text in an oval. Their name, in Hebrew, is written in a backwards leaning italic font, however as Hebrew is written from right to left, the sloping is the same as that of Barilla. Their pasta is packaged in blue cellophane with  window showing the content. Thus Barilla’s packaging is perhaps less unique than they claim, although Taaman uses cellophane bags and not boxes.

In a recent decision the Deputy Commissioner refused to register a black box with silver trim as a trademark. Back in 2014, Judge Ginat refused to recognize a trade-dress in blue energy drink cans. Judge Binyamini threw out a claim that one ice-cream manufacturer was entitled to a monopoly on gold ice-cream tubs. Then again, Abu Shukra were unable to register their application for a trademark for a coffee package that is similar to Elite’s turkish coffee.

 

 

 


Chinese Year of The Dog

February 6, 2018

CanaaniWe wish our Chinese associates and clients success in the coming year. This is the Year of the Dog, and the image posted is of a Canaani – the wild but relatively easily domesticated breed that is apparently indigenous to Israel.


Supreme Court Weighs in Trademark Feuds in Extended Arab Families

February 6, 2018

shukhaBack in June 2017, we reported on the Shukha family feud wherein the Sons of George Shukha ltd attemped to enforce their mark against Antoine Shukha and Sons.

Then, the Supreme Court threw out an Appeal by Antoine Shukha and Sons who argued that a penalty of 2500 Shekels a day until they removed infringing labels would be crippling. Judge Amit rejected the Appeal and awarded 5000 Shekels costs to Sons of George Shukha ltd.

The case went back to Judge Weinstein of the Haifa District Court who ruled on 29 November 2017, that Antoine Shukha and Sons should pay 510,000 Shekels as a fine for contempt of court.

Antoine Shukha and Sons appealed this, and requested that the ruling be stayed pending the appeal. Judge Mintz of the Supreme Court refused to stay the ruling as the State could refund the money in the unlikely event that Antoine Shukha and Sons win the Appeal.

120722165652Another case we reported back in March 2017 was Izhiman Coffee  against brothers Maazen and Shapik Izhimian. This is again a family feud, but this time over coffee rather than oil and rice. The Israel Trademark Department refused to cancel the mark for non-use due to the fact that insufficient time had passed. The Adjudicator, Yaara Shoshani Caspi was not convinced that there was sufficient evidence of equitable behaviour to warrant canceling the mark since the Applicants are not required by law to inform the trademark office of other users of the mark. (in this regards, Trademarks are different from patent applications, where the Applicant is obliged to report prior art).

The requesters for cancellation appealed to the district court where Judge Romanov ruled overturned Adjudicator Shoshani-Caspi’s decision, ruling that in this case, where there was an ongoing family feud, the Applicants were obliged to inform the Israel Patent and Trademark Office of the users of the logo. Judge Romanov ruled that determining which branch of the family owned the mark was not trivial, and the trademark registration was not the correct forum. (See the Chabad ruling and the Transcendental Meditation).

The Applicants for the mark appealed this ruling, claiming that Judge Romanov had invented a new reason for cancellation and that requiring trademark applicants to perform exhaustive inquiries into other users of similar marks was not good policy and would require the trademark examination department to adopt new rules.

They further claimed laches based on Opposers’ conduct with the Israel Patent and Trademark Office, and that their conduct was known to the Israel Patent and Trademark Office due to other records in the database.

Judge Meny Mazuz ruled that the Appeal to the District Court should be thrown out. He accepted that Section 39a ruled that there was a 5 year period for registered marks to be cancelled, but noted that Section 39b states that in cases of inequitable behaviour, complaints can be submitted at any time.

 


Palestinian Autonomy Adopts Nice Classification

January 30, 2018

70px-Coat_of_arms_of_Palestine_(alternative).svg.pngRAMALLAH – The Ministry of National Economy of the Palestinian Autonomy has adopted the 10th Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification).

From 1 January 2018 applicants may submit trademark applications for registration designating items from this edition.