Israel Trademark No. 246664 for “Nanobiotica” was filed by Dieteti Kol LTD. On it being allowed, Nanobiotix filed an opposition.
Nanobiotix have a pending mark of their own, No. 243678 “Nanobiotix” for classes 10, 42 and 44, and they requesting suspension of the opposition pending a decision in the Nanobiotix case which they consider as relating to the same issue. That case was the subject of a competing marks proceeding, but was allowed and is now being opposed.
Nanobiotix argues that the present proceeding should be suspended to save legal resources and to prevent contrary rulings issuing. The Applicant claims that there is ongoing negotiations towards a compromise. However, the Opposer denies that this is the case.
The Applicant does not wish to suspend the proceeding and considers the Opposer’s request as inequitable in light of the negotiations. The Applicant further considers the Opposer’s case is weak, inter alia due to them not yet having products on the market, whereas Nanobiotica is a brand that has already been launched and has clients.
The Deputy Commissioner, Ms Jacqueline Bracha, ruled that the issue at stake is that of a pending proceedings, and that in 9/75 El Okvi vs. Israel Lands Authority, P. D. 29 (2) 477 it was ruled that the authority to suspend proceedings should be used to accomplish two aims: (i) to avoid unnecessary work for the opponent, and (ii) to avoid unnecessarily troubling the courts, which occurs where two courts rule on the same substantive, legal or factual questions and the duplication leads to a danger of inconsistency.
In the present situation the two proceedings relate to identical issues but the tribunal is identical, so there is no reason why the rulings should be contrary. Consequently, there is no rationale to suspend the hearing and Ms Bracha rejected the request.
However, since the two parties acknowledge that this issue is identical, both in terms of law and in terms of the identities of the parties involved, the two cases should be combined and heard together. This is appropriate on grounds of efficiency and to minimize use of court time, and the costs to the parties themselves. The trademark regulations do not provide guidance for combining cases, and guidance may be drawn from Regulation 530 of the Code for Civil Court Proceedings 1984.
The opposition concerning Israel Trademark No. 243678 “Nanobiotix” has reached the evidence stage and on 11 January 2015, the Opposer there, who is the applicant in this case, submitted her evidence. To facilitate combining the two cases, the combination will occur after both sides has submitted their evidence in each case. The parties may submit evidence relating to the two cases separately or in a single submission.
No costs were awarded.
There was an earlier interim ruling regarding posting a bond for these marks. See here. The C.E.O. of Nanobiotica, Zion Yedid, is fighting without legal representation. Nanobiotix is represented by Adin – Liss. We suspect that this has at least passing relevance to the attempt to suspend the proceeding instead of the obvious consideration to combine the cases.