Judicial Review Officer Rejects Request for Summary Dismissal and Clarifies Requirements for Same

HaIR Halvanah LTD. (White City LTD.) filed a request to cancel a number of trademark registrations filed by Biyanei HaIr HaLevanah Achzackot LTD. (White City Buildings Holdings LTD.).

white city

The marks in Hebrew or English, are for העיר הלבנה White City and for White City Buildings.

In response, Adv. Aryeh Reif, representing the trademark applicants applied for Summary Dismissal, claiming that the opposer was acting in bad faith as there was ongoing negotiation between them to settle the issue, and that the request was by way of arm twisting. 

BACKGROUND
Tel Aviv, built on the sand dunes north of the ancient port city of Jaffa, is the first Hebrew city in modern times.  Founded in 1909, its style was innovative, tailored to the needs of its residents, to their life styles and the climatic conditions of the region.

“The White City”, the world’s largest grouping of buildings in the International Style, also known as Bauhaus, was planned by the famous Scot, Sir Patrick Geddes. About 4,000 buildings were constructed in this area, beginning in the 1930’s until the establishment of the State of Israel. The “White City” is located between Allenby Street in the south, Begin Road and Ibn Gvirol Street in the east, the Yarkon River in the north, and the Mediterranean Sea in the west.

The buildings of “The White City” were designed by Jewish architects, who had studied in Europe before their immigration to Palestine, which later became the State of Israel. This group created a new architectural language, which is rich and diverse, characterized by its asymmetry, functionality and simplicity. The balconies, building pillars, flat roofs and “thermometer” windows became the trademarks of the city.

other Bauhaus style buildings in Europe were destroyed in the Second World War and the style only survives in Israel. In July, 2003, UNESCO, the United Nations Educational, Scientific and Cultural Organization, proclaimed ” The White City”, the unique urban and historical fabric of Tel Aviv-Jaffa, as a World Cultural Heritage site. thereby bestowing international recognition of the special architectural qualities of the buildings, streets, squares and avenues of historic Tel Aviv.

DECISION

The parties argued whether or not there was an issue of bad faith or not, and whether that was relevant. Additionally, the applicant claimed that opposer was pursuing the summary dismissal route as he was estoppeled from arguing substantively against the distinctiveness of the marks as they were pursuing similar marks themselves.  

The Judicial Review Officer, Yaara Shoshani Caspi neatly side-stepped the discussion, and, following the precedence of a cancellation proceedings relating to TM 162949 Banana Beach, ruled that, in the absence of IP specific regulations applicable to proceedings before the Israel Patent and Trademark Office, it was appropriate to adopt the relevant Civil Procedure Ordinance as used by the courts. In this case, the relevant ordinance is Regulation 100 from the 1984 Civil Procedure Ordinance.

Consequently, as far as trademarks inter parte proceedings at the patent office are concerned, like at the courts,  summary dismissal is only appropriate where one of the following is true:
(i) there is no case to answer for;
(ii) there is a prima facie case that the proceeding brought is baseless and brought for the sake of aggravation;
(iii) there is a missing figure (damages, etc.) that hasn’t been filled by the plaintiff, or
(iv) an insufficient fee was paid to the court and this wasn’t put right

Based on the well established principle that parties are entitled their day in court (see Civil Case 2452/01  Adv. Dror Oren vs. Migdal Insurance LTD),  Caspi Shoshani threw out the request for summary dismissal and awarded legal costs of 5500 NIS against the applicants to the opposer of the marks.

This interim decision was published hard-on-the-heels of the Jerusalem Colony Hotel decision by the Jerusalem District Court. However, in this case, we believe that the timing is coincidental. No doubt that precedence will have some impact on the final trademark ruling.



Categories: Intellectual Property, IPO, Israel, Israel Patent Office Rulings, Israel Related, Israel Trademark, Jewish, News, trademarks, Uncategorized

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