In a series of rather boring but thankfully short decisions, Ms. Yaara Shoshani Caspi, the new adjudicator of Intellectual Property, has ruled on legal expenses in a number of opposition cases. I’ve been trying to get a handle on whether her approach is arbitrary, whether she favours compensating for actual expenses and whether she sees legal expenses as a stick to punish parties that give offence.
As a general rule it appears that in the absence of evidence as to real legal expenses incurred and provided the opponent does not exert himself unduly, the fees are typically 4000 NIS. If an invoice is presented for a smaller sum, the adjudicator will rule the actual legal fees. Where actual legal fees as evidenced by an invoice are considered exorbitant, she will happily halve them, but will give more than the 4000 NIS which is about $1000.#
If one does not use legal representation, one will not have legal costs awarded, at least not if the other side capitulates quickly.
Details of the recent decisions on which this analysis is based, are given below:
In Trak Industries, Extreme Ltd, and Extreme Shoes 2002 Ltd. vs. Extreme U S R Elat Ltd., the opponents to Trademark Nos. 17906 and 179027 filed their opposition, which was not responded to. Instead, the mark applicant procrastinated and eventually the Patent Office ruled that the mark was abandoned. The opponents submitted their representatives bill for 3130 dollars. Despite it being ruled by Supreme Court in 8981/95 Tnuva vs. Ministry of Trade and Industry, that where proved, one could claim real expenses, Ms. Caspi has decided that the work actually done was slight and the attorney’s bill was excessive, and went on to award 6,500 NIS – about 50% of claimed damages. The opponents were represented by S.T. Colb who is notorioiously expensive. In Neutrogena vs. Quest TM 201145 the defendant, represented by Shlomo Cohen and Partners did not file a response, and nor did they file a Notice of Intent to abandon. Ms. Caspi ruled 4000 NIS legal expenses, apparently as punishment for poor behavior. Arguably this is reasonable legal expenses as lawyers – in this case Luzzatto et Luzzato – would have to monitor case for longer, but arguably, the expenses are by way of a fine for wasting Patent Office resources. In Zvi Zantovsky vs. Proctor and Gamble 82032, 185995, 131695, 186652, Zantovsky apparently did not respond and behaved improperly towards the Registrar of Trademarks. Legal fees of 4000 NIS were awarded to P G. In this case, it is clear that the legal fees awarded include an element of punishment. In E.M.S. Cosmetics Marketing and Intercosma Ltd. vs. Kap Professional salon Services, TM 119556 – the lawyers fees were 3638 NIS and were considered reasonable, and paid in full. In Opposition proceedings TM 178721 “Abu Shukri Humus”, request for a witness who was himself an advocate, to make himself available for cross-interrogation incurred legal expenses of 800 NIS. In Patent Opposition IL 141764, Zebulun Tomer of Unipharm, the generic drug manufacturer and serial opponent of pharmaceutical patents took on Pfizer R and D represented by Luzzatto et Luzzatto. Being so experienced in such matters, Mr Tomer, an old hand at this game, didn’t bother with legal counsel and Pfizer capitulated 5 days later. In the circumstances, Ms. Caspi did not award costs. The case is an interesting one. The patent, for erectile disfunction, had issued in US 6,964,780 and in Europe, where it was ratified across the continent. It appears that Pfizer decided to forgo the Israel market and to concentrate on preventing Unipharm marketing abroad, rather than to risk file wrapper estoppel that could invalidate the patents elsewhere.