Nanobiotix – requesting the posting of a bond to cover Opposition expenses is standard and not exceptional

It is actually a graphic mark and not merely the word!

(It is actually a graphic mark and not merely the word!)

Nanobiotix filed Israel trademark Application Number 243678 “Nanobiotix” via the Madrid Protocol in classes 10 for Surgical and medical apparatus and instruments especially for the diagnosis and treatment of tumors using radiation treatment; radiotherapy apparatus; apparatus for use in medical analysis; diagnostic apparatus for medical use; radiology screens for medical use; X-ray photographs; radiological apparatus for medical use; X-ray tubes for medical use; filters and lamps for ultraviolet rays for medical use; apparatus and installations for the production of X-rays, for medical use; X-ray protection devices for medical use; roentgen apparatus for medical use; devices for protection against X-rays, for medical use; receptacles for applying medicines; special furniture for medical use; X-ray bulbs for medical use., in class 42 for Scientific and technological services as well as research and design particularly in the field of nanomedicine (nanotechnology applied to medicine); biological research; bacteriological research; scientific and technological evaluations, estimates and investigations provided by engineers, researchers; design and development of new products (for third parties); technical project studies; industrial analysis and research services; chemical analysis; chemical research; chemistry services; research and development of new products for third parties; technical research; research in radiobiology; research in nanoscience and nanotechnology, particularly applied to medicine; and in class 44 for Health services particularly in the field of nanomedicine; medical services particularly in the field of nanomedicine; hospital services; medical assistance; physical therapy.

Super Medic (Medic Light LTD) and Diateti Col LTD, represented by owner Tzion Yadid, opposed the mark.

The Applicant requested that the Opposers post a bond of 80000 Shekels to the courts to cover costs should the opposition fail, and submitted an affidavit to support this request.

The basis of the Opposition was that the mark in question is confusingly similar to their issued marks 241083, 229880 (and to their pending mark 246664), and therefore cannot be registered under Section 9(11) of the trademark ordinance 1972.

The Applicants argued that the allegedly similar marks Actibiotica and Acti-pearl were substantially different. The pending mark 246664 – Nanobiotica is more similar, but being descriptive should not be allowed. Furthermore, the nature of the goods and the distribution channels of Israel trademark Application Number 243678 “Nanobiotix” and Israel trademark Application Number 246664 “Nanobiotica” are significant enough to allow coexistence.  Nanobiotix requires a prescription whereas Nanobiotica does not.

Section 353a of the Company Law 1999 is the basis of the request for a bond. Applicants noted that the Opposers were working out of a private house and had liens on their product which was apparently their only asset. The fact that they were represented by their CEO and did not have legal representation was submitted as further indication of lack of financial assets.

The Opposers considered that the request for them to post bail was inequitable behaviour as it could prejudice them being able to fight their case and have the opposition considered on its merits. They claimed that their financial status was steady and that there were no liens on their assets. Hey considered their case a strong one, and argued that this also strengthened their position against needing to post bail.

Class 5 was deleted from the mark under Opposition, resulting in Israel trademark Application Number 243678 “Nanobiotix” and Israel trademark Application Number 246664 “Nanobiotica” no longer covering a common class of goods.

THE RULING

Deputy Commissioner Ms Jacqueline Bracha held that she had the authority to require a deposit of likely costs and where a plaintiff is a limited company the assumption is that such a deposit is required unless it is clear that the plaintiff has sufficient assets. If the Opposer wishes to be considered an exception to the rule that a deposit be made, they have to provide positive evidence to this effect.

The Opposer did provide evidence of not owing income tax for the years 2009 to 2013. The Deputy Commissioner did not consider that the applicant had successfully showed that the company did not have other assets or that the marks and products were being used as a security. However, the Opposer had not provided sufficient evidence that they did have financial resources to pay costs should they lose. The company is a private one and apart from not owing money to the income tax authority, there was no indication of resources.

As to the chances of the Opposition being successful, the Deputy Commissioner considered it too early to come to a conclusion on the issue as no evidence had been brought.

In light of these considerations, the Deputy Commissioner considered the request for a bond to be posted normative and appropriate. However, after consideration of typical costs of oppositions of this type, even where the applicant is a foreign entity, she considered 20,000 Shekels adequate costs to be posted.

Intermediate ruling re posting bond for future costs concerning opposition to filed Israel trademark Application Number 243678 “Nanobiotix”, Deputy Commissioner Ms Jacqueline Bracha, 11 September 2014.

COMMENT

Nanobiotrix is represented by Adin Liss. Eran Liss, one of the partners, is a grandmaster. The request for a bond to be posted was merely an opening gambit. Whereas there is nothing wrong with an Opposer fighting a trademark without legal representation, one suspects that he might find himself out of his league. We urge Opposer to seek legal advice and representation to avoid a quick check-mate.

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