Suprene Reconsidered

missing the boat

SK Global Chemical Co. Ltd. were awarded Israel trademark no. 245038 for Suprene, for Synthetic rubber; styrenebutadiene rubber; butyl rubber; polyisoprene rubber; polychloroprene rubber; isobutylene-isoprene rubber; ethylene-propylene rubber; ethylene-propylene diene rubber; all included in class 17. Dynasoi Elastomeros S.A. de CV represented by Dr. Shlomo Cohen & Partners – Law Offices, filed an opposition to the mark. However,  due to a human error, the opposition was filed two days past the deadline of three months allowance.

In her original decision, the Deputy Commissioner, Ms Jacqueline Bracha ruled that she has no authority to grant a retroactive extension to the three month trademark opposition period.

Following this previously reported decision, Dynasoi Elastomeros S.A. de CV requested a reconsideration on the following grounds:

  1. They alleged that the Commissioner of Patents and trademarks DOES have the authority to grant retroactive extensions.
  2. The deadline was only missed by a very short time
  3. the refusal was not balanced and contravenes the Basic Law of Freedom of Occupation
  4. Failure to allow the error to be corrected does a misjustice to the Opposer
  5. The opposition has a high likelihood of success.

In response, Ms Jacqueline Bracha first noted that the mark in question has now issued and so any discussion on the topic is purely theoretical. She went on to rule that even if she had made a mistake, the Opposer had provided no evidence that this was the sort of decision that could be reconsidered, and there were certainly no changes of circumstances that warranted the reconsideration. Nevertheless, due to the serious issues raised, Ms Bracha felt it was correct to address the issues, albeit briefly.

Opposer alleges that Section 24 of the trademark ordinance does not directly address the issue of authority and therefore the Commissioner does have the authority to allow retroactive extensions. This position is supported by the ruling in the Appeal to Supreme Court no. 49990/05 Maman and others vs. Herzliya Municipality, where the court’s authority to extend legislated deadlines is discussed. Ms Bracha responded that regulation 82 grants the commissioner authority to extend deadlines within the regulations, but not deadlines within the ordinance itself. She does not consider that there is a lacuna in the Law, but rather that the Law restricts the commissioner from extending deadlines apart from cases where he is explicitly authorized to, or at least implicitly authorized to.

In Baltika Breweries (Nov 2006) the state of affairs before the fifth amendment to the trademark ordinance was discussed at length, and, under that regime, Section 24 of the ordinance could be interpreted to allow such an interpretation. However, after the fifth amendment, she considered that such an understanding is no longer tenable. Furthermore, Ms Bracha ruled that Section 26 also supports her understanding that she does not have discretion in this matter.

The deadline was only missed by a couple of days due to human error. The Opposer argued that if such a consideration could be used to justify NOT allowing the opposition, it could certainly be used to allow the opposition on its merits. The Deputy Commissioner holds that where such authority and discretion exists, there is room to debate how it is applied. Here she does not consider that she has discretion to grant the extension so the issue is moot.

As to the alleged constitutional right, Ms Bracha acknowledged the basic right of access to the Courts, but noted that Appeal to Supreme Court no. 49990/05 Maman and others vs. Herzliya Municipility as cited by the Opposer itself admits that the constitutionality of this right has not been determined.

She further considers that even if, after legislation of the basic Law, and the sweeping powers that Barak had ruled that courts have to overturn unreasonable laws, the ordinance had to be reasonable to be considered a valid law, she does not agree that restricting the Commissioner from extending such a deadline is unreasonable.

Furthermore, Oppositions are not the only option open to the Opposer. The Opposer is also able to institute cancellation proceedings under Sections 38 and 39 of the Ordinance and has at least as much leeway in so doing as available in Opposition proceedings. In this regard, she (perhaps snidely) notes that there is a time limit for cancellation proceedings as well (five years from grant), and so the Opposer has an opportunity to have his case heard by officers of the Patent and Trademark Office.

As to correcting the flaw by allowing late filing not hurting the mark owner, Ms Bracha notes that the Mark owner also has a constitutional property right under the same Basic Law. Although the mark may be subject to cancellation proceedings, the owner deserves the assumption of validity. She fails to understand how a mistake on the part of a third party should jeopardize this basic right of the trademark owner, and considers this to be the underlying rationale explaining why she does not have jurisdiction. Furthermore, the Patent Law has similar provisions.

She goes on to repeat that the correct procedure for the Opposer is for him to initiate cancellation proceedings, and to challenge the validity of the mark in such proceedings.

As to the reputation of the Opposer’s mark and likelihood of confusion, if the Opposer files an opposition, she will be more than happy to consider these issues.

The request for reconsideration stands rejected.

COMMENTS

It seems a little hypocritical to try to have a cancellation proceedings voided since the brief was too wordy and thus illegal in one case, and then to argue that a clear missed deadline should be retroactively extended in another, but I suppose this is what litigators do.

Apart from filing a cancellation proceeding, presumably , Dynasoi Elastomeros S.A. de CV can appeal this ruling to the courts. I think they would be ill-advised to do so, however, as even if informed that she has the authority to grant a retroactive extension, I suspect that the Deputy Commissioner would rule that it would be inappropriate to do so.  She seems correct that the issue is now moot.

I am a little surprised by the tactic argued on behalf of the Opposer here. By arguing that the basic rights of Dynasoi Elastomeros S.A. de CV to possessions are harmed as a result of a human error on the part of Opposer’s counsel, it seems to me that Opposer’s counsel are thereby flagging this molehill of an error that could be rectified by initiating a cancellation proceeding.

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