Lost in the Post

Israel Trademark Application No. 254327 is for the word-mark CLICK-LOCK in Hebrew and English. The mark covers Bolting mechanisms for domestic slideable doors and for domestic slideable windows; all included in class 6.

The Application was filed on 12 March 2013, and allowed and published for opposition purposes on 31 May 2015. On 27 August 2015 Assa Abloy AB submitted an Opposition on the basis that the mark was confusingly similar to their mark “CLIQ” which is registered in the Israel Trademark Register and covers goods in the same category.

No Counter Statement of Case was submitted, and on 16 December 2015, the Trademark Division of the Israel Patent Office ruled that that the mark could be considered as one abandoned as per Section 24(5) of the Trademark Ordinance and ordered the mark cancelled and costs paid to Assa Abloy AB.

On 29 December 2015, the Applicants submitted a request to cancel the 16 December 2015 decision claiming that they never received the Opposer’s Statement of Case. They further noted that as they were unaware of the contents of the Statement of Case they could not at that time relate substantively to the Opposition itself, and requested that the costs be awarded against the Opposer.

The Opposer opposed the cancellation request and claimed that the responsibility to inform Applicants of Oppositions was on the Trademark Department and not on the Opposer and it had fulfilled its obligation. The Opposer noted that they had submitted the  Opposition to the address of record and that even when Applicant received the Notice of Cancellation they had not requested a copy of the Opposer’s Statement of Case. Finally, by not submitting a correct address when filing their submission to the court, the Applicant’s honesty and integrity was brought into question.

On 18 January 2016 the Deputy Commissioner, Ms Jacqueline Bracha, ordered the Applicants to respond to the Opposer’s response within three days. On 19 January the Applicants responded. However, instead of addressing the issues raised, they repeated their assertion that they never received the Opposer’s statement of case.

RULING

Unlike the 1984 Civil Procedure Law 1984, the Israel Trademark Ordinance and Regulations (i.e. 1940 Mandate Ordinance with later updates) do not relate to canceling decisions on response to failure to file a counter-statement of case. The Regulation does state that an Applicant that does not respond to a Statement of Case may be considered as having abandoned his mark. That said, the Commissioner does have the discretion to extend the period for filing a counter-statement if a request to do so is filed, and this can even be filed retroactively under Regulation 82 f the regulations and this instance may be regarded in this light.

The Patent Office can assess the request for cancelling a cancellation based on non-response in light of court rulings cancelling rulings given where defendant did not defend himself or rulings given in presence of one party only. There is, however, one difference, in that unlike court rulings, the Applicant for a trademark that is cancelled due to failure to respond to an Opposition may refile the mark after the case is closed.

Thus whereas the courts are concerned that both parties should have their day in court, this consideration is less significant in cases of trademark oppositions. The consideration of the trademark department is one of efficiency, of the opposer not having to file the same opposition twice and the trademark office not having to address the same issue twice.

Based on the above reasoning, the Deputy Commissioner noted that she had given the Applicants a further opportunity to address the issues raised in the Opposition but instead of taking this opportunity, they had simply repeated that they had not been sent a copy of the opposer’s Statement of Case.

Essentially, the Applicants’ position is that their not having received the Statement of Case forces the Israel Trademark Office to cancel their decision.

Citing Y Zussman “CIvil Court Procedure” 1995, Page 736 Ms Bracha noted that rulings given based on a fault in the procedure should be cancelled. Regulation 8(3) states that “a document sent by post should be considered as delivered in the regular time period for deliveries unless otherwise proven”.

The Applicants claim that they did not change their address but nevertheless did not receive the Statement of Case. This claim was backed up with sworn statements and the Opposer did not request to cross-examine them on this point.  Nevertheless, the Applicants were certainly aware that their mark was allowed and had published for opposition purposes and that they had not received the trademark certificate. They should have queried this and failed to do so.

In this instance, Ms Bracha gives the Applicants a further opportunity to respond to the Statement of Case, but in view of their repeatedly claiming costs from the Opposers and failure to submit a counter-statement, costs of 3500 Shekels are awarded to the Opposers.

The Applicants may obtain a copy of the Statement of Case from the Secretary of the Israel Patent Office. They have 30 days to respond to it.

Giving Applicants of Israel Trademark Application No. 254327 “CLICK-LOCK” a further opportunity to respond to Opposition,  Ruling by Ms Bracha 20 January 2016. 

COMMENT
The Applicants are not represented here. The Opposers are represented by Reuven Borchovsky, a veteran patent attorney with a lot of experience in locks. We advise Applicants to employ a patent attorney or lawyer if they intend fighting to defend their mark.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: