Trademark Trolling? Proctor & Gamble’s Actipearls Mark Opposed

actipearls

The Proctor & Gamble Company submitted Israel trademark application No. 250720 “Actipearls”. The mark covers feminine hygiene and menstruation products, including sanitary napkins and tampons, panty-liners, internal absorbents and pads for feminine protection; all goods included in class 5. They are used as a deodorizing additive to Always products.

Super Medic (Medic Lite) LTD who apparently use the mark for toothpaste, opposed the mark. Proctor & Gamble have asked that Super Medic post a bond of 100,000 Shekels to cover costs should they lose their opposition.

The request for this sum was backed by the fact that in another proceeding, an expert witness for the defendant testified that Super Medic (Medic Lite) LTD is a straw company held for fighting legal battles only. The request related to an earlier decision concerning 243678 and was supported by an affidavit from a Ms Ben Naftali, a pre-article clerk (I suppose this is more interesting than photocopying and collating documents).

Super Medic (Medic Lite) LTD counter claimed that the timing of the bond request, which is after the filing of evidence by the opposer is indicative of inequitable behavior. The affidavit has been held by Applicants for over a year and only now is it being pulled out. Super Medic (Medic Lite) LTD also asserted that the request was not properly supported by an opinion regarding the likelihood of success, since the pre-article clerk was unqualified to opine on the subject. Super Medic consider that their chances of prevailing in this instance are high and therefore the request for bond should be rejected. Super Medic further noted that they had only recently deposited 400,000 NIS in the court’s coffers in another case where they were suing for 42,000,000 NIS. In that case they claimed that there was a ruling of over 8 million shekels in their favour. They further provided an accountant statement that their annual tax returns were regularly filed and taxes were paid, and a bank statement that they settled their debts. Finally, they filed an affidavit of the opposer to support their claim of liquidity.

Applicants countered that Super Medic has not yet lost a case and the financial status was based on an assumption of winning, and that anyway, the likelihood of success was only of relevance in the proportionality of the bond if it were to be considered excessive.

Ruling

The starting point is that limited companies initiating legal proceedings are required (if requested) to place a bond to cover expenses should they fail, see Section 353a of the company Law 199, and Supreme Appeals 10376/07 L.N. Engineering vs. Bank HaPoalim LTD, and 857/11 Beer Tuvia Municipality vs. Noris Development and Haulage LTD.

For a company to be exempt having to post a bond, the onus is on them to show financial resources or other reasons that might justify not requiring a bond. In this instance, Super Medic claims that such other reasons exist, i.e. a very high likelihood of success, proven liquidity and inequitable behaviour on the part of the Applicant.

Proctor & Gamble consider that Super Medic’s mark is not sufficiently close for there to be a case to answer to. Super Medic have submitted their evidence, but Proctor & Gamble are yet to do so. In the circumstances, Deputy Commissioner Ms Bracha considered it too early to ascertain the likelihood of success.

Ms Bracha rejected the argument that Super Medic are suffering loses from Proctor & Gamble’s use of the mark and therefore should not have to post a bond, noting that in another case Super Medic bankrupted an opposer.

As to the 8 million expected in the other case, Ms Bracha noted that there was no such ruling yet. Furthermore, she accepted P&G’s contention that the 400,000 Shekels bond in that case may have been a loan and does not indicate that Super Medic has resources. Documents provided by Super Medic did show other financial activity but did not indicate liquidity of a solid financial footing. Furthermore, their own witness had, in another case, indicated a lack of seizable assets.

The arguments of inequitable behaviour were also rejected.

Ms Bracha concluded that requiring a bond was reasonable in the circumstances as there was insufficient reason to deviate from the norm. Noting, however, that such bonds have to be reasonable, and in view of the fact that in a different pending case she had ruled that a bond of 20,000 Shekels was appropriate she ordered Super Medic to deposit a bond of 15000 Shekels to cover legal costs, if ruled against them within 30 days a s a prerequisite of continuing the proceeding. The Applicant will have two months to file their evidence from the payment of the bond.

Interim ruling on posting a bond in opposition to TM 250720 to Proctor & Gamble, opposer Super Medic, Ms Jacqueline Bracha, 21 December 2014.

Comment

Pearls are created by shellfish such as oysters to isolate and coat over natural irritants. It seems that Active Pearls is a trademark used by Fa’s Deo Stick Deodorant which is owned by Henkel. It is used by a company called Physioderm as a brand for high-performance skin cleanser with dirt-binding castor-oil wax pearls for the removal of heavy dirt, e.g. oil, soot, metallic dust and graphite. Dr Tim sells active pearls as an additive to aquariums.

There seem to be many women who object to the actipearls marketing exercise of Proctor & Gamble, and consider it misogynistic. They find the concept of artificially perfumed sanitary pads offensive and likely to increase risk of infection or late detection of same. One example is here .

Getting back on subject, if Super Medic is indeed a legal entity without assets, posting a bond seems reasonable. In general, there has to be some consequences of losing law suits and against filing frivolous law suits. If the US courts adopted this position, much of the problem of trolling would disappear.

On the other hand, the story of Naboth’s Vineyard, and indeed, that of Bat Sheva amply demonstrate the problem of power players riding roughshod over smaller parties. If a company like P&G should decide to use a trademark registered to a small company or in owned by the small company by virtue of the Common Law, the smaller parties should have access to the courts and shouldn’t have unnecessary barriers put in their way, such as having to pay inflated bonds.

One Response to Trademark Trolling? Proctor & Gamble’s Actipearls Mark Opposed

  1. Bruce E Lilling says:

    You wrote
    “In general, there has to be some consequences of losing law suits and against filing frivolous law suits. If the US courts adopted this position, much of the problem of trolling would disappear.”
    In point of fact for several decades the US District Court Judges do have power under Fed Rule 9 and also a statute (whose # I forget off hand) to aware attorneys fees and/or costs if an action is frivolous.
    The problem is that the judges do not like to make the award and do not want to be bothered making a decision on the subject
    The Pearl-Cohen case was an exception because there the judge did make the effort (it makes you wonder what the attorneys did that so annoyed the judge that he took the step of awarding fees which is only very rarely done, but that is a different issue for another day).
    Right before I moved here I had one case which was entirely frivolous and the Judge referred to the Complaint as a train wreck. When I asked for attorneys fees, he looked at me like I was crazy and reminded me we were not in Europe.

    The problem is the perception and attitude of judges. Rules are already in place, The judges just need to wake up and use them

    So it is not correct to see if the US courts adopted this position. The fact is the rules are in place, so nothing more is needed to be adopted
    The more accurate thing to say is to educate judges so they apply the rules when appropriate

    You are correct that if these rules were applied against trolls who start frivolous cases, it would certainly cut down the trolling

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