Russian Documentation in Trademark Cancellation Proceedings

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The Roshen Confectionery Corporation has filed a request to have Israel Trademark Numbers 182763, 184179, 182759 and 182758 canceled due to lack of use. The contested marks are a Russian language word mark and a graphic including the Russian language word mark and are owned by the Joint Stock Company Krasnyi Octybar and the Open Type Joint Stock Company Rot Front.

The marks cover waffles; confectionery for decorating Christmas trees; cakes; pastries; peanut confectionery; almond confectionery; pasty; cocoa; cocoa products; caramels [candy]; sweetmeats [candy]; liquorice [confectionery]; peppermint sweets; coffee; crackers; meat pies; farinaceous foods; candy for food; fruit jellies; marzipan; custard; honey; ice cream; sherbets [ices]; muesli; mint for confectionery; cocoa beverages with milk and coffee beverages with milk; coffee-based beverages, tea-based beverage, chocolate beverages with milk, chocolate-based beverages, cocoa-based beverages; lozenges; petits fours [cakes]; biscuits; pies; fondants; pralines; gingerbread; chewing gum, not for medical purposes; sugar; cake paste; confectionery; rusks; sandwiches; almond paste; tarts; cakes (Edible decorations for -); halvah; bread; tea; all included in class 30.

The mark owners requested submission of missing documentation by the applicants for cancellation. The missing documents are:

  • Exhibition 13, which is a translation of documents 4, 9-12, 18-20, 25, 27-28 from Russian into Hebrew.
  • Appendix 4 pages 330, 326 and 327
  • In the Opinion regarding the foreign law, many documents appended are in Russian and were not translated into Hebrew.

The mark owners have requested that this evidence be submitted in Russian or struck from the cancellation request.

The Applicant for cancellation note that the mark owners are Russian and they and their legal adviser are Russian. They therefore accused them of being niggardly and of inequitable behaviour for requesting the documents to be translated. As for the various appendices to the Opinion on Russian law requiring translation, this was similarly considered a heavy, unreasonable and illogical request.

In her ruling, Ms Yaara Shoshani-Caspi noted that at present, Russian is not a recognized language in the State of Israel. The fact that the mark owners are Russian speakers does not change the requirement for papers to be in Hebrew (or in English) to enable a correct, organized and appropriate hearing. Nevertheless, as to the appendices, these only require translation if they are necessary evidence.

As to Exhibit 13, Ms Shoshani-Caspi accepts the mark owners claim that it is inappropriate to refer to the visual appearance of the Russian marks without contextualization as to the meaning and appearance of the marks. That said, she accepts that to determine that a particular phrase appeared in a Soviet era document does not require the whole document requiring translation, only the relevant section. This is certainly the case when the applicant for cancellation  provided an English language key (exhibit 5). Consequently, she ruled that only where there is disagreement regarding a document, does it require to be translated or withdrawn.

As to Appendix 4, the Opposer claims to have provided translations four times in different parallel legal proceedings between the parties. They provided dates and that the translations were provided and stated that if any pages were missing the mark holder could complete the copy themselves. The Adjudicator of Intellectual Property rejected this as one cannot tell for certain that these papers were provides it does provided and  there is no reason to challenge the mark holder’s request for copies of documents not provided. If the mark holder wants a copy of various pages that it claims were missing, the party filing for cancellation has to provide same.

As to Russian language appendices relating to the Foreign Law, the party requesting cancellation claims that these appendices include legal papers, copies of legislation, court rulings and decisions of official bodies of the Russian Federation. The Adjudicator cannot see how she or the mark owner can examine the expertise of the legal expert without being able to navigate the appendices. She cannot see that the parties consent is sufficient for her to relate to the foreign law and its explanation.

Ms Shoshani Caspi thus ruled that the mark owner should challenge the documents of the fourth appendix at least 30 days before the hearing or they would be considered accepted.

Prior to 1 December 2015, the Application for cancellation should:

  • provide the missing pages of Appendix 4 and ensure that the court has a full copy.
  • Either inform the court that they would provide copies of the appendices relating to the foreign law in which case they would have until 8 December 2015 to provide these copies. Otherwise, whether or not they state that they would not be providing these documents the court will consider the evidence value of the Opinion regarding foreign law without these.
  • The parties are granted an extra month for making their submissions of evidence. This may be extended on submission by the parties.
  • Costs are not being awarded at this stage but may be requested on filing summations.

Intermediate Ruling by Ms Yaar Shoshani Caspi concerning cancelation request for Israel Trademark Numbers 182763, 184179, 182759 and 182758., 23 November 2015.

COMMENT

There are no shortage of Russian speakers in the Israel Patent Office but Ms Shoshani Caspi is correct that all evidence should be in an official language. Thankfully English is acceptable and not everything needs to be in Hebrew. Russian is not acceptable however. Regardless of whether the parties are comfortable conducting their affairs in Russian, once the company filing to have marks cancelled approaches the Israel Patent Office to rule on the validity of marks, they cannot complain that the other party requests that they provide documentation in Hebrew. If Ms Shoshani Caspi is wiling to also accept documents in English, that is her right. I don’t think it would be proper to hold a hearing and to issue a ruling based on documents in other languages, even if the parties agreed and the adjudicator had no personal problem.

 

 

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