Joad Puttermilech owned Israel trademark number 183243 for Onnuri covering paper, cardboard and goods made from these materials, printed matter, instructional and teaching materials, printing blocks in class 16. He also owned Israel trademark number 190390 for SUJOK covering alternative medicine clinics and services in class 44.
Zvi Elfisher challenged the marks by filing a cancellation proceeding under Section 39 of the Trademark Ordinance 1972 alleging that the marks were not being used.
This ruling finds the claim of non-use inadmissible since the marks were registered for more than five years. However, the claim that the marks were registered in bad faith was considered by the Deputy Commissioner who ruled that there is no statute of limitations for instituting trademark cancellation proceedings on the grounds that their original registration was in bad faith.
The Onnuri mark had lapsed anyway due to non-renewal, rendering a decision with regard to that mark moot. However, the Sujok mark was renewed in October 2015. The reason why Zvi Elfisher challenged the validity of the marks was because Joad Puttermilech sued him in the Tel Aviv District Court in Civil Case 25921-02-14 before Judge Dr Avnieli, alleging infringement of various IP rights including these trademarks. That case is ongoing.
It transpires that Sujok is a portmanteau of the two Korean words SU and JOK meaning palm of the hand and sole of the foot respectively. Sujok is an alternative medicinal technique developed by South Korean Professor Jae Woo Park in the 1970s. Professor Jae Woo Park not only created the technique but also established that International Sujok Association (ISA) that is responsible for the worldwide teaching of the technique.
Professor Jae Woo Park died in 2010 and Dr Michul Park, his son, claimed to have inherited the father and testified on behalf of Joad Puttermilech (There are some other registered Israeli trademarks that relate to Sujok in Hebrew or English. These include 180908 for SUJOK in class 41, covering education, exercises, entertainment, sport and culture which was also filed by Joad Puttermilech, but Professor Park was added as a joint owner in December 2007 and on 17 May 2016, the son was added as a further joint owner and Joad Puttermilech’s name was removed. Israel Trademark Application Number 180909 also for SUJOK was submitted on 22 May 2005 and registered on 2 May 2007 in class 16. That mark covers paper, card, paper and card goods, printed matter, education materials, instructions and packaging all in class 16 which was also transferred from Joad Puttermilech to Professor and Dr Park over time.
The Applicant for Cancellation (Elfisher) was the founder of the Tehila Institute in 1973. The Tehila Institute teaches various alternative therapies including Sujok.
Zvi Elfisher claims that the mark Sujok is descriptive of the therapy method and is therefore generic, cannot be registered and should not have been registered. It is taught in Israel and abroad and one should not prevent others from teaching it.
Elfisher further alleges that the trademark registration was submitted in bad faith, and, unlike the other marks which are now in the name of Professor Park this mark is solely owned by Joad Puttermilech who registered it to try to monopolize the therapy and to prevent others, including the Tehila Institute, from teaching it.
At the time the mark was filed, Elfisher was already teaching the therapy with the help of external lecturers via the Moscow Sujok Institute which was founded by Professor Park, and that his contract from 2003 was still in force. Indeed, Joad Puttermilech was aware of the connection between Professor Park and the Tehila Institute since Puttermilech himself learned the technique there.
Elfisher noted that Puttermilech did not take an active part in these proceedings. He neither filed an affidavit nor attended hearings. Furthermore, he did not appear in the District Court Proceedings and after not attending a hearing, the District Court ordered his statement of case cancelled.
To support his claims, Elfisher filed an affidavit himself, one from Mr Moshe Shurin, a translator who helped him with correspondence with the Moscow Institute, and another affidavit from Mr Shmuel Ven Horin who taught the technique at the Tehila Institute. A further affidavit was filed by a Mr Yossi Feikin. However, this was struck from the evidence as Feikin failed to attend the hearing.
Mr Puttermilech’s Claims and Evidence
Mr Puttermilech claimed that the combination SU and JOK are not descriptive or meaningful in languages spoken in Israel. The portmanteau word was created by Professor Park and is registerable.
Mr Puttermilech further claimed that the marks were registered in good faith and with the consent of Professor Park; that he was the official representative of Professor Park when the marks were applied for, and that he ran the Israel Branch of the International Sujok Association (ISA) which he claimed has the exclusive rights to learn, teach and disseminate the SUJOK techniques and to manage Professor Park’s Intellectual Property in Israel.
Mr Puttermilech submitted an affidavit from Dr Michul Park (the son and heir) and from Dr Zohar Yagil as representative of the ISA, and a further affidavit from Mr Sammy Bitan, who has practised Sujok over the past five years.
The proceeding before the Deputy Commissioner
The witnesses were cross-examined at a hearing before the Deputy Commissioner Ms Jacqueline Bracha on 2 November 2016 and they filed summaries on 24 November 2016.
On 27 October 2016 a request to transfer the mark from Mr Puttermilech to Dr Michul Park was submitted. Despite Circular 015/2011, a copy of this request was not sent to Mr Elfisher who claims that transferring ownership does not make amends for errors in filing.
On 21 November 2016, after hearing the evidence and before receiving written summaries, Mr Puttermilech requested to submit some confidential evidence. On that day, Ms Bracha ruled that:
It is unacceptable for one party to submit confidential evidence in an inter-partes proceedings without consent of the opposing party. Consequently, the request is transferred to the opposing party for their response, but without the appendices that the request for submission was about. The parties are reminded that a similar issue was considered regarding Israel Trademark Application No. 258112 “KALE”, from 23 June 2016.
After hearing the parties’ claims on this matter, Ms Bracha ruled that the evidence could not be used to strengthen one party’s arguments, whilst remaining confidential.
The Mark owner considers that revealing the evidence to the challenger would cause him commercial damage since the challenger is a business competitor. Without ruling formally on whether the evidence is a trade secret in the sense of the business laws, Ms Bracha does not consider that one party should be able to rely on evidence that is kept confidential from the opposing party, so that its veracity cannot be challenged. This has been considered in the past, and Ms Bracha relies on the District Court ruling Civil Appeal 6416-05-10 T.M.N. Constructions LTD vs. A.Z.M. Apparatus and Car Accessories LTD (24 April 2013).
“My opinion is that the legal system of this country does not allow the submission of evidence that is kept secret from the opposing party (at least this is true for civil matters.”
“It is found that acceptance of a request to submit evidence that is concealed from the opposing party prevents the opposing party from challenging that evidence and this would deprive the opposing party of his main tool for challenging or contradicting the opponents version of events”
Cancelling the Marks
The requester for cancellation has claimed that the marks are non-registerable. These are not grounds for cancelling a mark that has been in force for five years since issuance. Section 39 of the Trademark Ordinance limits the grounds for cancellation as follows:
39. (a) An application under section 38 for the removal of a trade mark from the Register regarding some or all the goods or classes of goods in respect of which it is registered on the ground that it is not eligible for registration under sections 7 to 11 of the Ordinance, or on the ground that the mark creates an unfair competition in respect of the applicant’s right in Israel, must be made within five years of the issue of the certificate of registration under section 28. (a1) Notwithstanding the provisions of sub-section (a), an application for removal of a trade mark on the grounds that the application for registration of the mark was filed in bad faith may be filed at any time; (b) Notwithstanding the provisions of subsection (a) (1) a trade mark of a non-resident registered in the country of origin shall not be removed from the Register save on grounds which under section 16 preclude registration; (2) a trade mark of a non-resident which is not eligible for registration under the provisions of sections 8 to 11 and which has been registered under the provision of section 16 may be removed from the Register at any time on any of the grounds precluding its registration under the provisions of sections 8 to 11 when it is no longer registered in the country of origin; nothing in this provision shall prevent the proprietor of the mark from providing that at the time of application for removal the mark would have been eligible for registration upon application by a resident of Israel.
The mark in question was registered in 2008 and the request to cancel it was only filed in 2015. Since more than five years have passed, the only grounds open to the challenger are equitable behavior regarding the registration. See the Versace case.
Once a mark is registered, one cannot simply threaten it. The onus of proof is on the challenger, but it transfers from one party to another throughout the proceedings. See Bagatz 144/85 Klil Non Ferrous Metals vs. The Israel Patent Office p.d. 42(1) 309:
The burden of proof that a mark is registerable is on the applicant, but the burden of proof in a cancellation proceeding is on the third party. The fact that a mark is registered provides a rebuttable assumption of validity (see Section 64 of the Ordinance), and so the burden of persuasion to the contrary is on the challenger. This statement by Dr Cheishin is accepted by all. However, as with all such cases, the burden of proof shifts from one party to the other; if a party brings evidence that a mark was wrongfully registered, the onus is transferred to the mark owner to contradict this evidence. However, cases that remain in doubt work in the mark owner’s favor.
There is no doubt that the Requester for Cancellation is the ‘person that is aggrieved’ that is referred to in Section 38, and he is thus eligible to request that the mark be canceled (for an explanation regarding third parties that are considered as competitors to the mark owner, please see Appeal 941/05 The Cooperative Association of Wine Growers of Rishon L’Zion and Zichron Yaakov. vs. The Vineyard Company LTD p.d. 61(3)).
The reason for the registration is given in the examination file and in the submission for cancellation.
The parties agree that Professor Park invented the therapy and coined the term Sujok as a name for the technique. The question is whether the Applicant acted in good faith when he submitted the trademark application in that he registered it in his own name and not jointly with Professor Park.
The Application was submitted on 18 May 2006 in class 44 for clinics and alternative medicine services. From the application file it is clear that prior to filing this application, the Applicant filed additional marks for Sujok, including Israel Trademark Registration Number 180908 in class 41 for education, exercises, entertainment, sport and culture. The 180908 mark was also filed by Puttermilech alone, as evidenced by the application form, and only later was Professor Park added as a joint owner. During the Examination of that mark, the Applicant was asked what the mark meant, and following a response from 18 May 2006 that the mark related to a technique involving acupuncture that wa taught by books, courses, lectures and the like, the Examiner asked on 9 August 2016 (presumably 2006) to more accurately describe the services and to register in class 55. In response to this request, the Applicant wrote that mark 1909390 was submitted in class 44 for clinics and health services. That letter and its appendices were included in the mark-owners evidence as an appendice to Dr Yagel’s affidavit.
In an Appendix to Dr Yagel’s testimony is an affidavit by Adv. Kehat titled “Authorization letter of Trademarks to Yoad Puttermilech, Trade Mark: Onnuri in classes 16 and 41, dated 16 August 2006, which relates to marks 182343 and 183244. However, Dr Yagel cannot testify about this letter since it was not submitted by its author, and not by the recipient or by anyone who can put it into context. This makes it hearsay (see Y. Kedmi on Evidence, 2009).
The practical test for identifying evidence as hearsay is if the witness is able to defend it under cross-examination to personally swear to its authenticity? If this is not the case, the material may be considered as being hearsay (page 553).
Hearsay can even apply to testimony which is in writing:
Hearsay, may be oral – where the witness testifies to what he has overheard, and may be in writing, where the witness testifies to a document written by another (page 555)
Even if we assume that the document was written by Professor Park, despite the lack of evidence that this is the case, it is, nevertheless, open to interpretation, particularly since it does not explicitly give the Applicant the right to file the Sujok marks in his name. It is emphasized that at the time the letter as written, there were already three Sujok marks registered, including the mark under discussion at present – none of these are related to at all. The letter only relates in general terms to additional marks, as follows:
“All other trade marks internationally registered in other countries will be authorized for Joad Puttermilech as my representative in Israel to use and to register in Israel territory as well.”
Furthermore, in the application file related to in the letter, there is a further letter that carries the mark owner’s signature on a paper with the heading ‘Smile College’ which states that Professor Park visited the Patent Office on 17 May 2006. If this letter is true, the challenged mark was only submitted the following day, on 18 May 2006 and it is not clear why the registered owner went specially the following day.
At a later time, on 28 November 2011 the trademark office was requested to add the name of Dr Park as a joint owner of three marks: 180908 (class 41), 180909 (class 16) and 183242 (for twist therapy in class 41). The assignment was registered on 18 December 2007.
No reasonable explanation was put forward to explain why Professor Park was not added a co-owner of the mark under cancellation proceedings, why this mark was not explicitly mentioned in the Permission (appendix viii), and why it was submitted the following day after Professor Park was at the Patent and Trademark Office, and these facts do create an indication of a lack of equitable behavior on the part of the mark owner.
The suspicions are amplified by the mark owner absenting himself from the hearing. Although Dr Yagel was asked about appendix viii and suggested explanations, (see pages 104-106 of the hearing from 2 November 2016), it is clear that his suggestions are no more authoritative than those of any other person who was not a party to the document. In this regard it may be noted that Mr Puttermilech’s absenting himself from the proceedings at the District Court resulted in his name being removed as a plaintiff.
Furthermore, in the evidence stage it transpired that contrary to the various statements that the mark owner could not be cross-examined as he no longer lived in Israel, Mr Puttermilech participated in a public Sujok seminar during October – November 2016, and was in Israel on the day of the hearing (see evidence 42/1 and Dr Yagel’s testimony on page 105 of the protocol from 2 November 2016.
As a general rule, failure to submit evidence may be used against the party that could have brought it (See Appeal 9656/05 Naftali Schwarz vs. Raminoff Trade and Building Equipment LTD (Nevo 27 July 2008).
Furthermore, occasionally the way in which a party manages his affairs in the court may be of significance as evidence, similar to circumstantial evidence, and one can attribute evidence value to the failure to submit evidence. This type of behavior, without a believable and reasonable explanation, acts against the one who behaves in this manner, as it creates a presumption based on logic and life experience, that failure to submit evidence is like an admission that were it to be brought, it would serve the interest of the opposing party. In this manner, one can give evidentiary weight to a piece of evidence that is not submitted. However, it the party can provide a satisfactory explanation for not presenting a witness or piece of evidence, it removes the presumption that the evidence was withheld. (see 55/89 Kopel (Self Driving) LTD. vs Telecar Company LTD, p.d. 44 (4) 594 (1990). As to the evidentiary weight that may given to a party for behaviour during a proceeding, the court has related to this in the past and asserted:
“It is a long established principle that parties will not withhold evidence that furthers their case, and if they fail to present evidence that is relevant and available, without adequate explanation, once can conclude that were it to be presented it would be contrary to their interests. This is applicable and established in both civil and criminal matters, and to the extent that the evidence is significant, the courts may conclude more definitive and extreme conclusions against the party that failed to bring the evidence” See 549/78 Jane Doe vs. John Doe., p.d. 35 (1) 736, 760 (1980) cited in 2275/90 by Binyan Dor LTD. vs. Rosenberg, p.d. 47 (2) 605, 614 (1993).
This problem is strengthened in the present proceedings which themselves relate to an accusation of inequitable behaviour by the applicant and an attempt to raise the mist clouding the reasons for the filing of the mark. Mr Sammy Bitan learned of the technique in 2008 and went to study in the mark holder’s Smile Institute. However, Mr Sammy Bitan does not have any personal knowledge of regarding the registration of the mark beyond the fact that he heard a lecture from Professor Park when he came to Israel.
Dr Michul Park who claims to have inherited his father’s interests in the international rights for Sojuk, was not in contact with his father at the time the filings were made. Dr Michul Park admitted that he was not involved in his father’s business and that his father was only in contact with the family when he needed something (see page 46 of the protocol from 2 November 2016). Consequently, Dr Michul Park’s testimony cannot shed light on the circumstances surrounding the registration.
Mr Yagel testified that he’d started to learn Sujok iun 2007 and that his knowledge regarding the registration were rooted in Professor Park’s visit to Israel that year until his death in 2010. Mr Yagel testified that he had a recording that indicated that Professor Park had appointed the mark owner to represent him in Israel. When asked why he didn’t present the recording, he testified that the proceeding before the Deputy Commissioner seemed ridiculous to him, and so he didn’t see it as appropriate to submit the recording (page 88 of the protocol from 2 November 2016):
The witness, Mr Yagel: Yes, registration of the trademark. Since this whole proceeding appeared ridiculous, I didn’t bother. One has to just listen to the recording and find the relevant bit in 12 hours of recording.
Adv. Zochowisky: You are saying it wasn’t sufficiently important?
Adv. Kehat: It is appendix viii of our evidence.
Deputy Commissioner Bracha: This 12 hours of recording was a meeting?
The witness, Mr Yagel: This is a video of Professor Park’s lectures.
Deputy Commissioner Bracha: The lectures. I understand.
Adv. Zochowisky: It was important enough to bring?
Deputy Commissioner Bracha: And this was from when? From the 2007 visit?
The witness, Mr Yagel: 2007, yes. He repeated it in 2008 and 2009 so that afterwards it was clear.
Adv. Zochowisky: Do you have support for this? Do you have support for this?
The witness, Mr Yagel: I didn’t append it.
Sh. Why? This was allegedly significant evidence that could have closed the case.
T. In truth, we thought this was very simple, and that your proceeding was brought merely to annoy.
It is stressed that the same recording was not submitted to the district court either, despite that case being brought by the mark owner together with Mr Yagel.
Only occasionally will a party bringing a cancellation proceeding have direct evidence of inequitable behaviour (see the Versace case). In that matter, the lack of a reasonable explanation and the party avoiding questions testified that the filing was inequitable.
The evidence of the party requesting cancellation relate to their activity associated with Sujok. This activity dates back to 2000 when the mark owner himself studied the technique at the Tehila Institute. During 2003 the party requesting cancellation signed an agreement with the Moscow Sujok Institute. This agreement, in Russian, was submitted as evidence in this proceeding. A translation from a translation agency and an invoice for the translation were also submitted. The mark owner alleges that since this is an official translation it cannot be used as evidence. Regulation 43 of the Trademark Regulations 1940 states:
When mentioning a notice or an affidavit not written in Hebrew or Arabic in an opposition proceeding, the Commissioner may request a translation into Hebrew, Arabic or English.
Under Section 71 of the Trademark Regulations, this regulation is also applicable to these proceedings. What transpires from this is that there is no requirement to submit official translations unless requested to do so by the Commissioner, and the absence of such a requirement leaves the Hebrew translation considered both acceptable and accurate.
The agreement concerns organizing Sujok related seminars at the Tehila Institute under the supervision of the Moscow Academy. From the testimony of the Applicant for cancellation, it appears that the mark holder was aware of the seminars at the Tehila Institute since he himself attended the Sujok seminars there. The other witnesses of the Applicant for cancellation support this factual claim.
The submission of a trademark application only in the name of Joad Puttermilech to prevent other institutions from teaching the technique, when he himself studied the technique at the Tehila Institute, is indicative of inequitable behavior when considered with the other evidence that does not support the claim that this was authorized by Professor Park’s.
Now, the mark owner wishes to transfer the mark to Dr Michul Park and considers that this will rectify the problems of the original submission for registration. The mark owner considers that to the extent that the mark should have been registered in the name of Professor Park, since Professor Park died in 2010, it should now be registered in the name of his inheritor. The Deputy Commissioner is doubtful that an assignment can rectify the submission in bad faith, since the good faith is fundamental to the right to file. The legislative ruled that a registration in bad faith could be cancelled at any time.
Furthermore, there is insufficient evidence that Dr Michul Park is the inheritor of Professor Park’s estate to the extent that he can become the owner by inheritance since even if the documents submitted to that effect are persuasive, they have to be filtered through the Israel Courts. Section 39 of the Inheritance Law 1965 states that:
One cannot claim rights under a will or enforce a will unless it is ratified in accordance with chapter 5.
Section 136 of the Law of Inheritance gives the Israel Courts jurisdiction over assets in Israel at the time of death:
The Israel Court is authorized to deal with the estate of anyone domiciled in Israel at the time of death or one who leaves assets in Israel.
The Israel Supreme Court ruled on Inheritance Orders in 970/93 Government Legal Counsel vs. Iris Agas p.d. 49(1). There they stated that an Inheritance Order is like a court ruling:
The question that we should first address is whether a foreign ruling concerning an inheritance (i.e. an Inheritance Order or an order to uphold a will ) can be implemented under the Implementation Law (page 566). As Judge Cheishin states:
A court ruling from a foreign court is not enforceable in Israel in the same way as an Israeli Court ruling is. The bailiffs and the land registry will not act on the authority of a foreign court ruling. To enforce such a ruling in Israel requires it to be ratified by an Israel Court to transpose the foreign ruling into an Israeli ruling. This courts perform this function under the Law of Implementation of Foreign Court Rulings 1958.
In the Agam case, Professor Goldberg considered the two options that the Law of Implementation of Foreign Court Rulings 1958 offers: application and transposition, and since inheritance creates in rem property rights and not mere in personam rights, they cannot be implemented and may only be ratified.
A foreign court ruling is not binding in Israel, even if totally fitting and that foreign court is authorized to give it. The foreign court ruling has to be absorbed (like an immigrant – MF) by an Israel Court, if it requires enforcement or recognition (page 565).
Consequently, all the enforcement process can achieve is to give the foreign ruling the status of an Israel decision so that it becomes enforceable. By the nature of things, a ruling that creates personal obligation (in personam) is enforceable. This is not the case for property and quasi-property rulings. Direct recognition is the best route to give applicability to property relating foreign rulings and to status rulings – which don’t have a personal component and are therefore not enforceable. (S. Menhaeim “Direct Implementation of Foreign Rulings Under the Law, Legal Inquiries 7 (1978) 704-705 on page 566.
What transpires from the above, is that the Law of Implementation of Foreign Court Rulings 1958 does not allow property of quasi-property rulings to be implemented, apart from inpersonam aspects. Since the Inheritance Laws are not personal , the court of first instance erred in deciding that it could implement the foreign ruling in this instance (page 567).
Section 26 of Commissioner Circular 015/2011 Trademarks which requires submission of an Israel Court ruling to implement foreign wills is in accordance with this ruling.
From the above it is clear that the Deputy Commissioner is not authorized to rule on whether Dr Michul Park inherits his father when there is doubt as to whether the documents are an Inheritance Order from a Korean Court, since they were not ratified by an Israel Court.
The mark owner argues that the request to cancel the mark was submitted after the passage of time. Ms Bracha rejects this since the Versace ruling makes it clear that there is no statute of limitations for trademark cancellations on the grounds of registration in bad faith:
Although the mark owner can rely on historical delays and lack of interest by someone attempting to cancel the mark to create a reputation in the mark, a mark owner who acts inequitably cannot benefit from his inequitable behavior. In Appeal 4682/92 the Salim Ezra Estate vs. House of Taltash LTD, p.d. 54(5) 252, 282 it was ruled that where property is misappropriated from the legal owners, the claim of the thief that the owners were tardy is inadmissible. Although the circumstances surrounding the Salim Ezra Estate was more extreme than in this instance, this ruling is applicable here since it was proven that the marks were registered in bad faith.
I accept the Applicant for cancellation’s assertion that he was unaware of the registered mark prior to receiving a Cease & Desist letter in 2009, when he consulted with a lawyer and concluded that the claim was frivolous. It is emphasized that the Applicant for cancellation responded to the Cease & Desist letter and peace was restored. Only several years later was a second letter which preceded the complaint filed in the District Court. There is no doubt that the submission to the District Court was the catalyst for the present proceeding being initiated and the Deputy Commissioner does not see this as damaging the case for cancellation of the mark.
The Deputy Commissioner accepts the cancellation request and gives the Applicant for cancellation 14 days to submit a detailed request for costs. The mark owner will have a further 20 days to respond to the cost request.
Ruling on Cancellation of the 183243 and 190390 marks for Sujok and Onnuri, Ms Jacqueline Bracha, 29 November 2016.