Diesel S.P.A. own Israel Design No. 51959 and Hoodies LTD filed for cancellation of the design claiming that it was published in Israel prior to registration which is contrary to the current Design Ordinance. Diesel requested that the hearing before the Israel Patent Office be suspended whilst the District Court consider the on-going infringement proceeding and where the issue of validity based on prior disclosure is being considered.
As discussed this in a previous posting, the cancellation action in the Patent and Trademark Office was stayed at Diesel’s request, since Hoodies LTD did not file a response.
Hoodies LTD have now appealed this decision, claiming that they were only served the staying request three weeks after it was filed and did not have the statutory window of opportunity to respond.
In the circumstances, Deputy Commissioner Ms Jacqueline Bracha was prepared to reopen the case and reconsider her ruling, but since it was inefficient for two forums (fora?) to hear the same issue and could result in contrary rulings, she again concluded that the case before the patent office should be suspended, and requested an update regarding the progress of the complaint in the district court in three months time. No costs were awarded.