Onnuri and Sujuk – Bifurcation!

Divide and Conquer

Yoad Potrimelach owns Israel Trademark Nos. 183243 and 190290 for Onnuri and Sujuk. Zvi Alfisher filed a request to cancel the registrations on the grounds of inequitable conduct under Section 39(1a).

Israel Trademark Nos. 183243 and 190290 for Onnuri was filed on 22 August 2005 in class 16, and were registered in May 2007.  On 29 June 2015, the Israel Trademark Department sent a reminder for renewal of Israel Trademark No. 183243 for Onnuri but it wasn’t renewed. The request to cancel the mark was submitted on 9 July 2015.

Israel Trademark No. 190290 for Sujuk was submitted on 18 May 2005 and issued on 9 March 2008 in class 44. The request to cancel the mark was submitted on 18 June 2015.

On 23 August 2015, Yoad Potrimelach requested that the cancellation proceedings be suspended as there was an ongoing court case between the parties before Judge Dr Avnieli (Civil Complaint 25921-02-14 Yagil et al. vs Alfisher. The proceeding was filed against Zvi Alfisher in February 2015 and relates to IP infringement regarding these marks. The plaintiffs claim to have sole Israel rights from the Intenational Sujuk Association and have the sole rights to distribute and teach Sujuk in Israel.

In the hearing before Dr Dafna Avnieli regarding this case, it was ruled that the statement of defense does not undermine the validity of the registrations, and the Court offered the defense the opportunity to correct their statement of defense to raise this issue, however Alfisher declined to claim this and the validity of the marks is not an issue before the District Court.

Alfisher considers the two cases separate and different and does not see a reason to suspend the case before the patent office until the District Court issues its ruling. Alfisher considers that the Patent Office has sole authority to cancel marks and the correct approach is bifurcated attack, challenging the validity in the Israel Patent Office. Support for this understanding is found in 667-01-13 Financial House Y. C. LTD vs. Itzchak Yaakov.

On 28 October 2015, the trademark owner filed his response to the opposition. The mark owner claims that the cancellation request was filed to circumvent the court’s order that the statement of defense be corrected. The court case is at the evidence stage. Although the case before the court is one of infringement, the court may rule on validity of the marks in such cases, and having two courts ruling on the same issues is ineffective and may lead to contrary conclusions.

RULING
The Israel Trademark Office has sole discretion whether or not to suspend proceedings when there is a related case in the courts. The purpose of suspending proceedings is to protect parties and the courts from managing parallel proceedings and efficiency. See 3765/01 Pheonix vs. Alexander Kaplan.

The main issue is to prevent identical factual or legal issues being addressed in two courts which is inefficient and could lead to contrary rulings.

In the District Court, the issues are copyright and trademark infringement, and the Alfisher’s defense is based on tardiness in filing suit and on a contractual arrangement between the parties. Alfisher considers that the Court will have to address validity issues but this is not ideal.  The fact that a mark was registered is indicative of it being valid and raises a high level of proof on him. The Patent Office is better equipped to address this issue.

Alfisher considers the trademark registration was in bad faith and should be canceled under Section 39(1a). This is a different legal and factual issue from the infringement question which is before the courts. Consequently, there is no reason for the cancellation proceeding not to continue. Since the parties are relating to the two marks together and the issues are identical, the two cases are combined. The mark owners are given three months to submit their response to the cancellation request.

Costs of 1500 Shekels are awarded against the mark owners!

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