Boris Simnovsky attempted to file Israel Trademark Application Number 243663 for “Alpha Dent Implants”.
Alpha Bio-Tech LTD successfully opposed the registration, presumably on grounds of Alpha being laudatory, Dent Implants being descriptive, and the combined mark being providing a likelihood of confusion with Alpha Biotech as to the origin of the goods.
The Opposer requested costs of $5694 so The Commissioner, Asa Kling, related to the items in the list for costs in dollars as well, whilst noting his disapproval that the costs were not submitted in Shekels which is the currency that they should be billed and settled in Israel.
Alpha Bio-Tech LTD opposed the mark On 25 December 2013, the sides filed their statements and counter-statements and on 9 July 2014, after the period for filing evidence had passed, The Applicant, Boris Simnovsky, requested to withdraw the mark without a decision on costs, as he had “lost special interest in the Israel market”, and was no longer interested in the mark.
On 14 July 2014, Commissioner Kling ordered the mark withdrawn and the proceedings closed, but gave both sides the opportunity to file for costs, and on 14 September 2014, Alpha Bio-Tech LTD applied for costs.
A party that gives up during contentious proceedings such as an opposition is considered as losing, see Israel TM 171160 “Pine” in KT&G Corporation vs. Dunhill Tobacco of London LTD, and Israel TM 156955 Avon Products vs. Dean L. Rhoades. The Arbitrator of TM proceedings has the authority to rule costs from Section 69 of the Trademark Ordinance 1972. When ruling on actual costs, the adjudicator is required to determine if the costs claimed are reasonable, proportional and were incurred by necessity, See Basgatz 891/05 Tnuva vs. Input Authority P.D. 60(1) p. 600-615, Nevo 30 June 2005. The relevant considerations are the legal and factual complexity of the file, the amount of work done, especially in filings to the court, the behavior of the parties with respect to each other and to the patent office, equitable behaviour, etc.
As ruled in Tnuva Section 25, the parties must detail the basis of charges and the work done, and whether these were actually collected, and then the onus moves to the loser to explain why such costs should not be paid.
The Opposer’s costs of $5694 consisted of $1298 for preparing and filing the statement of opposition including official fees, $2926 for preparing evidence and $1500 for preparing the petition of costs.
The first two actions were supported by an affidavit and receipts but the charges were the charges were global and not itemized. There was no support for the final charge, and there was not even a framework agreement with the client to do this work.
The Opposer claimed that the applicant did not submit papers in a proper manner which resulted in additional work being incurred. Furthermore, the applicant requested that the opposer withdraw the last submission and the applicant would pay $4000, but this attempt to reduce expenses was unsuccessful.
The Commissioner accepted the Applicant’s allegations that the request for costs was laconic, but did not consider that the Opposer was therefore not entitled to reasonable costs and therefore decided to rule by thumb estimation based on the actual submissions.
After relating to all the relevant considerations (but at least as laconically as the Opposer) the Commissioner ruled total costs of 18000 Shekels ($4500).
Ruling of costs awarded to Alpha Bio-Tech LTD for successfully opposing Israel Trademark 243663 “Alpha Dent Implants” to Boris Simnovsky, costs awarded by Asa Kling 15 March 2015.