Glide Talk LTD filed Israel Trademark No. 252076 for the stylized mark glide as shown below:
The application covered Optical apparatus; apparatus for recording, transmission or reproduction of sound, images, or video; computer application software for mobile phones, tablets, computers, notebooks, and handheld computers, namely, software for voice, text, picture and video messaging; computer software for internet and telecommunications messages; computer and video game software for mobile phones, tablets, computers, notebooks and handheld computers; Computer software for providing access to computer and video games through online social networking websites; all the aforesaid excluding blank and pre-recorded USB flash drives and Telecommunication services, namely, providing online and telecommunication services between and among users of desktop and tablet computers, mobile and handheld computers, and wired and wireless communication devices concerning topics of general interest; enabling individuals to send and receive messages via online messaging in the field of general interest; providing online communications for registered users to share information, photos, audio and video content about themselves, their likes and dislikes and daily activities, to get feedback from their peers, to form virtual communities, and to engage in social networking; broadcasting over the Internet, electronically transmitting, posting, displaying, and tagging information of audio, video and textual content; transmission of greeting cards over the Internet or other communications network; all included in class 38.
SanDisk Corporation opposed the mark. In this instance, the parties came to an agreement under which Glide Talk LTD would amend the list of goods in class 9 and SanDisk Corporation would abandon the Opposition.
The Israel Patent Office does not rubber stamp such agreements automatically, since in addition to the interests of the parties, there is a public interest so where such agreements leave a situation where there is a reasonable likelihood of confusion, the Israel Patent Office may decide not to ratify such agreements and can continue an Opposition in the shoes of the Opposer becoming inquisitional instead of merely observing and adjudicating.
In this instance, Glide LTD undertook to add the following to the list of goods in Hebrew and English:
and excluding software used (a) for security and encryption of data stored in blank and pre-recorded USB flash drives, and (b) to facilitate, enable and manage flash storage of electronic data and electronic files stored in blank and pre-recorded USB flash drives; all included in class 9.
Since this is a disclaimer that limits the range of goods, it was allowable under Regulation 22(a)2 of the regulations and accorded with Section 21 of the Ordinance granting the Commissioner authority to amend the list of goods to disclaim and clarify.
Ms Yaara Shoshani Caspi allowed the amendment and closed the opposition, ruling that each side should bear its costs.
Coming to a mutually acceptable resolution in a fairly amicable way is generally in the interest of all parties. Some attorneys are adversarial and fight uneccessary battles. In this case, the attorneys representing the parties have saved the parties time and money by identifying the problematic issue and bringing this to a quick resolution.
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