Scratch Those Marks

240139

Back in February we reported on an Opposition to Israel trademark application 240319 and 253416 both filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co.).

The Opposition was filed by Exstal who succeeded in opposing the marks, claiming that they were the true owners, despite their allowing their registrations to lapse.

The marks are for a single 60 degree triangular protrusion or indentation along an aluminium profile, and both were rejected as confusingly similar to Exstal’s earlier registered marks.

The opposition is under Appeal.  Napco turned to the District Court for an extension to Oppose Exstal’s marks. This was not granted since the Court could not understand why an Opposer to a mark known to be published for opposition purposes in January, waited until April to request a time extension.  Substantively, the Opposer had 3 months to file an opposition and had a remaining two week window. The Courts considered that the Opposer should file their opposition and then would start the process giving them an opportunity to have their case heard. In addition, since the Commissioner would be a party to such an extension, various guarantees would be required.

The Commissioner accepted the Courts position.  NAPCO had a window of opportunity to oppose the marks and this does not create irreversible damage to them. During that window, they could make any claims they saw fit to submit.  If NAPCO felt that with a pending court case, the IPO should suspend the proceeding before it, the onus was on NAPCO to submit a appropriate request.

Central to this issue is the fact that NAPCO is petitioning to cancel a decision that followed the Commissioner accepting Exstal’s opposition, and no request was made or given to suspend implementation of that decision. The Commissioner did not consider that any mistakes were made in granting the marks, not under the Israel Trademark regulations 1967 and not under the Law of Interpretation 1981. Consequently the request is denied.

The marks published for opposition purposes on 31 January 2016 and the request to cancel the notice of allowance was made on 10 April 2016, three weeks before the deadline for filing oppositions. Exstal filed their response and Napco requested permission to answer and did so a day before the Pesach break when the Israel Patent Office was closed. Napco’s behaviour put unnecessary pressure on the patent office and on Exstal.  Consequently, regardless of the outcome of the wider issues, Napco should pay 5000 Shekels costs for this request.

Interim ruling re Israel TMs 240319 and 253416 by Jacqueline Bracha, 21 April 2016.

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