British American Tobacco (Brands) LTD. or BAT, filed Israel trademark application no. 232537 for the slogan “Click, Switch, Refresh”. The trademark was opposed by Phillip Morris Products, and on allowance, costs of 98,966 Shekels were awarded against Phillip Morris who challenged the costs as exorbitant.
The applicant considered the costs as actually incurred, real lawyer’s fees, as evidenced by invoices from David Colb., and also argued that since the opposer had acted in poor faith and was an international player, there were grounds to award costs as an example and warning.
Phillip Morris considered that the costs were out of all proportion to the amount of work done, the nature of the case and when the opposition was withdrawn. Furthermore, the opposer argued that some of the costs were not sufficiently detailed and should therefore be refused.
The Commissioner is authorized to claim costs under Section 69 of the Tradaemrk Ordinance. As per Supreme Court Ruling 891/05 Bagatz Tnuva, the winning party is entitled to actual costs provided these are reasonable, taking into account the nature of the case, the amount of work, the stage reached, equitable behaviour of the parties and the like.
In this case, there is no difference between pro forma invoices and tax receipts where the pro forma invoices are expected to be settled. The attorney is entitled to set his fees. The opposer failed to point out specific reasons why costs were considered exorbitant, merely complaining about the overall charges.
On the other hand, an extension fee taken was allowed at the official patent office rate of the patent office, and not at $150 as charged. What appeared to be two charges for the same train journey between Rechovot and the patent office was allowed only once. The witness’ expenses of $400 for flight, $71.53 for food and drink and 2655 Shekels for two nights at the Tel Aviv Hilton were not allowed as no evidence was given, beyond general travel agent fees.
Reading between the lines, it appears that the attorneys-of-record, who are known for their hospitality, put up their client and witness at the Colb Farm in Rehovot, and charged the witness’ train ticket and a typical two night hotel package in Tel Aviv to the losing side.
Adv. Kling correctly refused the hotel fee as not a reasonable incidental expense. It seems that the correct procedure is that Colb should either accommodate their witness in a bona fide hotel and keep the receipts, or, could perhaps apply for recognition of their hostelry services as a Ben & Breakfast or boutique hotel, and issue invoices. If my understanding is correct, the Commissioner is correct not to allow them to claim Tel Aviv hotel expenses when putting up witnesses themselves.