Wrangling over Procedure vs. Substance

When Israel trademark application number 218503 for Rodeo in Class 25 (apparel) filed by Weiss Brothers Manufacturing and Marketing LTD published, Wrangler Apparel Corp filed an opposition via Shlomo Cohen Law Offices.

The mark in question is pictured alongside.

An interim ruling by the Arbitrator of Intellectual Property, Yaara Shoshani Caspi, has now published. The ruling addresses the issue of whether, once the sides have agreed to a ruling based on the contents of the file, whether the opposer can file additional evidence.

Ms Caspi seems to accept the principle that in certain circumstances, the adjudicator can stray from the ordinances and allow additional evidence to be submitted, but in general, evidence should be submitted in one go, within the time limits. In this case, she noted that the issuance of the mark has been delayed by a couple of years due to the opposition proceeding, and the opposer has tried to submit additional evidence 7 months after the deadline for so doing.

Hinting at procrastination in bad faith, Ms Caspi ruled that there is an onus on the opposer to justify the deadlines and straying from procedure, which hasn’t been met. She considers the request merely an attempt to improve their case and refused to allow Wrangler to submit additional evidence, and has given them 30 days from the issuance of the ruling to submit their summary.

COMMENT

Since Aharon Barak’s presidency of the Israel Supreme Court, there has been a tendency to allow substantive issues to over-rule procedural ones, and one might have expected the evidence to have been allowed with costs awarded to the applicant to compensate for the deviation in procedure.

As a self-confessed formalist (no doubt reflecting my education is England, and having studied engineering, physics and  Talmud before Israel Law) I am pleased that this request was rejected and that the rules and regulations are given due weight. Furthermore, it is possible, as Ms Caspi  suspects, that the opposer or his counsel are indeed guilty of time-wasting shenanigans. However, it is worth noting that the mark is somewhat reminiscent of Wrangler’s who promote rodeos, and in trademark issues, there is no such thing as closure. It does make sense viewing all the evidence and then ruling to avoid cancellation proceedings and parallel motions through the courts.

It is not impossible that the Wrangler or their counsel were simply disorganized and the evidence should be heard.

The moral of the story here is for opposers to ensure that they get their evidence together promptly and submit it all in good time.

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