Trademark Cancellations – Jumping on the band wagon

the herbsMichael Noy-Meir owns Israel TM No. 106994 for “Supherbs”. He is represented by Chani Rosenberg and Associates.

Ambrosia Supherb LTD filed a cancellation request and Peretz Gan, represented by Chani Roenberg and Associates wishes to join the case as a third-party. Peretz Gan claims to be a partner with Noy-Meir the mark owner for 20 years and that both of them used the mark over a twelve-year period.

The Cancellation request was submitted on 3 November 2016 and on 27 November 2016, Peretz Gan requested that the mark be assigned to him, based on an agreement from 19 September 2016.

On 4 January 2017, Deputy Commissioner Jacqueline Bracha ruled that if the mark survives the cancellation process, it may be assigned, but cannot be assigned whilst under attack.

Ambrosia Supherb LTD object to Peretz Gan being added as a third-party. They claim that there is insufficient evidence that he was rights in the mark as required by Regulation 72 of the 1940 trademark regulations. The Supplicant for Cancellation has also requested that following submission of an Affidavit, a date for a hearing be set.

Regulation 72 states:

Any person other than the registered proprietor who claims to have a benefit in a registered trade mark in respect of which an application has been filed under regulation 70 may apply to the Registrar for permission to allow him to join the proceeding and the Registrar may refuse or grant such permission after hearing the parties concerned and to set the conditions that he shall deem necessary. Before the application is heard in any manner whatsoever, the Registrar may demand that the applicant make an undertaking to pay the same expenses that the Registrar shall award to one of the parties in the circumstances.

The Deputy Commissioner does not see justification to reject the request. Section 72 sets a low bar for adding third parties to cancellation or opposition proceedings. It is adequate for a third-party to declare some interest to be cojoined to the proceeding. The Deputy Commissioner does not consider that the third party has to prove standing and refers to the Patent Office Ruling concerning 216,916 Danny Argon vs. Strauss Culture Factories LTD (11 November 2012):

Where the Third party claims apparent rights to a mark and excluding him from the proceeding would have negative consequences, it seems appropriate to include him in the proceedings as it seems improper to prevent him for stating his case.

A hearing is set for 20 April 2017 at 2 PM and the third-party may submit his supporting affidavit by 6 April 2017.

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