use clubs have a consumer club. (I remember a teacher that used to supervise the school chess club and always consumed a Club biscuit with his packed lunch, but I digress).
Anyway, it seems that the Yachad Physician’s Consumer Club LTD had owned Israel trademark No. 145836 for the stylized mark including the word Yachad (meaning together). The mark is shown below.
The mark was for Activities and consumers agreements for members of the consumer club included in class 35 and the separate words together, club and physicians were specifically disclaimed. However, the mark had lapsed and was struck from the register due to failure to pay the maintenance fees. Some tears later, the Yachad Physician’s Consumer Club LTD requested to revive the mark, but the request was refused and the Applicants requested a hearing.
On 8 March 2016 the New Histadrut, the revamped General Workers’ Union requested to join the proceedings and was given 45 days to provide their perspective. On 10 March 2016, the Deputy Commissioner, Ms Jacqueline Bracha refused to allow he third party to join and delay the proceedings and ruled that as far as the Yachad Physician’s Consumer Club LTD considered the New Histadrut’s arguments relevant, they could submit them themselves. A hearing was set for 20 April 2016.
Despite the interim ruling of the 10 Martch, three days later on 13th March 2016, the New Histadrut filed an additional submission to be joined to the proceedings. This additional submission filled up 47 pages and was submitted a mere week before the hearing. According to the New Histadrut, the Patent and Trademark Office has no choice but to add them to the ex partes proceeding due to Section 73 of the Trademark Ordinance which states that:
Prior to exercising their judicial discretion as per the Ordinance or the Regulations, if a decision damages the interests of a third party, if requested to, the Registrar HAS to consider the claims of that third party.
Ms Bracha does not consider that a decision to revive a trademark or to leave it canceled can be considered as using discretionary judgement to the detriment of the New Histadrut. The New Histadrut is relying on the 2196,916 trademark decision which requested adding a third-party of delaying proceedings, where a third party claiming a right in a mark threatened with cancellation may present their case. In this instance, the New Histadrut does not claim rights in the mark but rather is concerned that the revival of the mark could render them liable for trademark infringement due to their usage of the word Yachad meaning together. This question is not relevant since both Section 73 of the Ordinance and the 10 March 2016 decision enable third party submissions and the New Histadrut did indeed file such submissions. Furthermore, despite not receiving an extension as requested, the New Histadrut still chose the moment that was to their advantage to submit their claims, which prevented the Applicants from responding prior to the hearing.
Since the New Histadrut’s submissions are before the Deputy Commissioner anyway, she cannot see justification for adding them as a party to the proceedings. She does not consider being able to submit arguments in an ex-partes proceeding under Section 73 to be comparable to adding them as a party and making the proceedings inter partes. Section 72 is relevant for third parties with some rights to the mark, such as paying a deposit in a cancellation proceedings. In contrast, Section 73 only allows third parties to make submissions with the only limitation being the time-table for submissions decided by the Commissioner. Section 73 allows anyone to submit what they like without risking paying costs if unsuccessful. It is clear that the New Histadrut wishes to have the benefits of Section 72 without any rights to the mark and where the issue is not one of trademark cancellation.
Ms Bracha considers that in making its submissions, the New Histadrut has both utilized and used up its rights and does not have the additional right to join the proceedings as a third-party. Anyway, if the mark is allowed to be revived, the New Histadrut and anyone else may file an opposition to the decision, and could also file cancellation proceedings.
The Applicant should proceed in the ex-partes revival petition according to the schedule ruled, and may relate to the New Histadrut’s submissions if it sees fit to do so. Since the Applicant does not need to respond to this, no costs are awarded.
Interim ruling concerning third-party joining revival request of TM 145836, 17 April 2016.