On 29 December 2014, in Civil Dispute No. 21740-03-11, the Haifa District Court ruled that design registration Number 53151 to S.H.L. Alubin be struck from the design register.
The design relates to a profile. S.H.L. Alubin have requested that this order be suspended pending appeal. Silver Hong-Kong Israel LTD and Extel LTD oppose the suspension.
S.H.L. Alubin argues that the ruling by the Haifa district court is not final in that he can appeal against it and intends to do so. Since the ruling could be overturned, it makes more sense to stay the ruling than to cancel the design and possibly reinstate.
Silver Hong-Kong Israel LTD who requested the cancellation on the basis of the court ruling, considers that there is no basis to stay the decision as there is a court ruling from 31 December 2015 that the design is void, and the Commissioner cannot maintain a voided mark pending any future development. The jurisdiction appropriate for suspending a cancellation ruling pending appeal is the District Court that issued the ruling. The request to suspend the decision was further defective as it neither detailed the expected damages from carrying out the ruling nor included a personal obligation from S.H.L. Alubin.
Extel LTD who won the case in the District Court concurs with Silver Hong-Kong Israel LTD that the forum responsible for granting a suspension is the Haifa District Court, and the Commissioner does not have the jurisdictional authority to relate to the request.
There is nothing in the Design Ordinance or the 1925 regulations that relates to suspending a cancellation of a design pending appeal. However, with the nature of rulings before the Commissioner it is doubtful that suspending such a ruling is beyond his Authority. In the cancellation proceedings regarding IL 157925 Moshe Lavie et al. vs Tzach Maoz Mazganim LTD (21 June 2015) and in numerous trademark rulings, the cancellation of the patent / trademark was suspended pending appeal, including after such an appeal was filed or notice of filing of the appeal was received. The Commissioner cannot see justification for design cancellations to be any different. Consequently, the Commissioner can simply draw a comparison form similar patent and trademark rulings.
As a general rule, however, Section 466 of the Rules for Civil Procedure, filing an appeal does not stop a decision being carried out. Section 467 gives the court authority to suspend a decision subject to appeal or to effect any other temporary arrangement as it seems fit. However both sections are applicable to the court that issues the ruling – See Zusman on civil procedure, page 862.
In this instance, the Haifa Court vacated the mark and the Commissioner as head of the Design Department of the Israel Patent Office is being asked to suspend this decision. It is not clear that the Commissioner has authority in such instances, and even if he had, Section 466 would imply that he should not stop such as action.
Suspension of a ruling is justified where the applicant has a reasonable likelihood of prevailing in an appeal and that the damage caused by suspending is estimated to be less than that of implementing the decision and then having to restore the design following successful appeal. See the Supreme Court Ruling 3158/91 concerning Flatto Sharon.
Thus it is for the Commissioner to decide if and to what extent reversing an action will be problematic.
Although he has claimed that implementation won’t harm third parties and that not suspending will cause problems, Alubin has failed to make a reasonable case that implementation of the ruling should be suspended. Section 466 states that the general state of affairs is that rulings should be implemented and the onus is on the design owner to provide convincing arguments to justify acting differently.
Alubin’s argument that if the appeal is successful he would have to refile his design is not the case. The Commissioner can simply restore the design registration as being in force. Damage may be compensated for by court ordered costs. Irreversible damage needs to be shown not merely claimed.
In conclusion, request for suspending the cancellation is refused and the cancellation of design number 53151 will publish in the next design journal.
Ruling by Asa Kling, Concerning Cancellation of Design 53151, 27 January 2016.