Brooks vs. Speedo – Cancelling a Hearing at the Last Minute

Brooks logo

Brook’s logo

Speedo logo

Speedo’s Logo

Brooks Sports filed Israel Trademark Application Number 238375. The mark is shown above. The actual representation filed was for the outline without colour. On allowance, the mark published for Opposition purposes and Speedo Holdings represented by Pearl Cohen Zedek Latzer Baratz (Pearl Cohen) opposed the mark on 30 September 2014. We’ve also shown Speedo’s mark. Whilst different, one can understand why Speedo had a problem with Brook’s mark.

Brooks Sports Inc. represented by Dr Shlomo Cohen Law Offices filed a counter statement of case on 20 November 2014, and by 10 July 2015,  the evidence stage was finished with Speedo declining to file evidence in response to the Applicant’s evidence. On 8 October 2015 the Patent and Trademark Office scheduled a hearing for 21 January 2016 and informed the parties. However, on 29 December 2015, Speedo Holdings submitted an urgent request to substitute a new affidavit instead of  one from a Mr Long, where the identity of the new witness was not yet known. Furthermore, they requested to conduct the hearing by video conference.  Alternatively they requested to postpone the hearing.

In a ruling of 31  December 2015, the Adjudicator of IP, Ms Yaara Shoshani Caspi, refused the request to allow an unidentified witness to attend a hearing by video conference, but noted that Mr Long was not required to come to Israel and could be cross-examined by video conference.

Speedo’s attorneys Pearl Cohen Zedek Latzer Baratz (Pearl Cohen) submitted a request that the Adjudicator of IP, Ms Yaara Shoshani Caspi, reconsider her refusal and alleged that the new witness was a British single mother and that Her Majesty’s Government was advising against visiting Israel, however the request was not backed up with any affidavits. Mr Long’s affidavit was unsigned and was not legalized. Brooks’ representative was not happy with this, and after his comments and Speedo’s response, Ms Shoshana Caspi ruled that there was no justification to reconsider her interim ruling, particularly as no reasons were given for both the change of witness and for cross-examination by video, and because of serious flaws in Mr Long’s affidavit,a lack of an alternative affidavit from the British alternative witness and lack of notice to make these changes prior to the hearing.

Unaccountably, Speedo represented by Pearl Cohen (PCZL) did not see fit to address the flaws, and did not submit a new affidavit for the new witness to support claims made on her behalf. Furthermore, Mr Long’s affidavit was not corrected and no other witness was found who could be cross-examined by the Applicant. On 17 January 2016, a mere three days before the hearing, Speedo represented by Pearl Cohen filed a request to cancel the hearing on the basis that there were no factual differences of opinion and the burden of proof lies with the Applicant.

Brooks responded to this on Ms Shoshani Caspi’s request and noted that the unilateral request to cancel the meeting was filed without the Applicant’s consent and without even bothering to consult the Applicant. This behaviour not collegial and is not acceptable, particularly when the request is an urgent one to cancel a hearing. This is particularly serious since the party at fault is the opposer who initiated the proceedings. This is tantamount to contempt of court.

The Applicant’s representative stands by his right to cross-examine the witnesses, and cancellation of the hearing will substantively damage the applicant’s rights. In this instance there was no agreement to cancel the hearing, merely a last minute request by the Opposer. One cannot force an Applicant to accept affidavits and statements without an opportunity to cross-examine, and to force them to agree to a ruling based on evidence submitted.

Ruling

The Law allows a party to a proceeding to forgo the right to cross-examination the other party’s witnesses but this does not cancel the hearing. The hearing may only be cancelled if both sides forgo the right to cross-examine. Only then is a decision issued on the basis of the written evidence. Regulation 44a states in the plural that where the parties forgo the right of cross-examination, the Commissioner will rule on the basis of the evidence before him.

The Opposer cannot unilaterally declare that the hearing should be cancelled as there are no factual issues in question. If that were the case, the Opposer would not have submitted affidavits stating the facts. Furthermore, examination of the statements indicates that there are factual issues in question.

As to the burden of proof, whilst it is true that this is on the Applicant to prove that a mark may be registered, in order to do so, he may need to cross-examine opposer’s witnesses who challenge this.In light of this, Me Shoshani Caspi rejected the request to cancel the hearing and announced that it would occur as scheduled on 21 January at 9 am. Since the Opposer has announced that they are not interested in cross-examining the Applicant’s witnesses, these are not required to attend. The Opposer is obliged to ensure that their witness is in attendance.

Finally, as a swath of unilateral intermediate requests by Pearl Cohen on behalf of Speedo to switch affidavits and to postpone or cancel the hearing were submitted and since the Applicant has had to address these issues, costs of 1500 Shekels +VAT are awarded to the Applicant and should be  paid within 5 days.

COMMENT

There is no doubt that Speedo are in their rights to oppose Brook’s Application. Filing Oppositions and responses on the last day is common practice for the Opposer who is in no hurry. This is procrastination within the law and is allowable. Switching witnesses and attempting to cancel proceedings at short notice, without regard for the Applicant, their legal representative’s busy schedule or the over-stretched legal resources of the Patent Office is unnacceptable. This Opposition has been handled with arrogance and it is good that the Adjudicator has put her foot down.

 

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: