Become Ill? Been Injured? – ? חלית? נפצעת

This ruling concerns a Trademark Opposition filed by the Israel Bar Society against an Israel trademark application submitted by the Center for Realizing Medical Rights LTD, and follows a High Court Ruling on the legality of the services provided and a court ruling on alleged Contempt of Court. The ruling is of relevance to the IP community in light of unlicensed IP practitioners (cowboys) and this is discussed by me after reporting the ruling.

Livnat Poran.jpgThe Center for Realizing Medical Rights LTD filed a trademark application for “Become Ill? Been Injured?” on 2 January 2012 in Class 36 for “consultation services relating to tax attributes; consultation services relating to rights bestowed by insurance policies; all included in class 36, and for consultation services relating to realization of rights for health deficiencies or injury; consultation services relating to realization of social security rights; all included in class 45”.

On 17 September 2014, and after the mark was refused by the Examiner, the applicant appealed and a discussion was held with the Deputy Commissioner who, after considering the claims and evidence, agreed to allow the mark to be published for opposition purposes on 1 December 2014.

Israel BarOn 19 March 2015, the Israel Bar Association filed an opposition, and on 24 April 2015, Zechuti-Experts Regarding Medical Rights LTD also filed an Opposition. In an earlier ruling, Ms Bracha ruled that the Oppositions could be combined. However, on 1 November 2015, Zechuti withdrew their opposition, and the Israel Bar continued alone.

District Court.jpgIn parallel to the Trademark Opposition, the parties also fought a battle in the Israel Courts with the Israel Bar Asssociation filing 9279/07 Israel Bar Association vs. the Center for Realizing Medical Rights LTD with the District Court (Jerusalem), claiming that the Center was invading the legal space by providing legal services. The District Court decision was appealed to the Supreme Court in 4223/12 the Center for Realizing Medical Rights LTD vs. the Israel Bar Association.

After the claims and counter claims were submitted, the Opposer submitted the District Court ruling, the Supreme Court Ruling, a further decision regarding wasting the court’s time, and a couple of Affidavits submitted by Adv. Feldman as part of the legal proceedings. The Applicant submitted an Affidavit of their CEO as evidence.

Opposer’s Claims

OppositionThe Israel Bar Association submitted that the applied-for mark lacks distinctiveness and thus contravenes Section 8(a) of the Trademark Ordinance 1972; was against the public order and thus non-registerable under section 11(5) and was misleading and encouraging unfair competition contrary to Section 11(6). They also claimed that it was descriptive of the services provided and thus non-registerable. After a hearing on the issue, the Opposition became more focused.

The Opposer acknowledged that since the Center for Realizing Medical Rights LTD had been using the mark extensively (in radio advertising campaigns) it was widely recognized and had acquired distinctiveness, but argued that since the High Court had ruled that the Center for Realizing Medical Rights LTD should cease to offer its services, two grounds for opposition remained.

  1. The Israel Bar Association considered that the Center for Realizing Medical Rights LTD was still providing legal advice and so allowing them to register the mark would be against the public order, and
  2. The Center for Realizing Medical Rights LTD was no longer offering the services it had a reputation in, and so the marks had lost their distinctiveness and so could no longer be registered.

The Opposers also claimed that the public links the services provided to Ms Livnat Poran whose name appears in the advertisements, and not to the Center for Realizing Medical Rights LTD, so considers the mark as misleading.

The Applicants Claims

applicantThe Applicant refutes the Opposer’s allegations and affirms that the marks are distinctive, not misleading and not against the public order. They accuse the Israel Bar Association of fighting a campaign to prevent them from benefiting from their trademark and for misusing the Opposition proceeding. As to the two main claims, the Center for Realizing Medical Rights LTD considers that the alegations that the mark is no longer linked to Ms Foran, and that the Center for Realizing Medical Rights LTD is continuing to offer legal services, are both widening of the grounds for the Opposition.

Widening the Grounds of the Opposition

wideRegulation 36 of 1940 Trademark Regulations requires the Opposition Notice to list the grounds for the Opposition. The rationale for this requirement is to prevent the plaintiff from changing course, and to protect the defendant from miscarriages in justice. It is designed to enable the defendant to clearly address the legal and factual issues as they appear in the Statement of Case – see 8871/07 Yodfat agricultural Worker’s Settlement vs. Neguhot Ltd., 12 July 2011.

The Statement of Case does not relate to Ms Livnat Poran, and since this is a factual issue that is first related to in the hearing held after the submission of evidence, and since the defendant has not allowed the widening of the grounds, this issue is moot.

Nevertheless, without needing to do so and simply to satisfy the Opposer, Ms Bracha notes that to establish that a mark has a distinctive character does not require the identity of the mark owner to be known. It is enough for the mark to merely indicate the source of the services – see 18/86 Israel Glass Factory, Venetia vs. les verres de Saint Gobain and the Closed joint stock company with 100% foreign investments Rounst Incorporated ruling from 21 December 2011. Since the Opposer dies not dispute the fact that Ms Livnat Poran is identified with the Applicant, this claim is irrelevant.

Furthermore, the claim that the Applicant was providing illegal services (i.e. those that should be provided by licensed Attorneys) was also not mentioned in the Statement of Case. In the Statement of Case, the Opposer (Israel Bar Association) simply mentioned that in light of the High Court ruling the Applicant will cease and desist from providing illegal services. In the summations, the Applicant stated that at the time the Opposition was filed on 19 March 2015 the Opposer (Israel Bar Association) already had materials that related to the services being provided by the Applicant after the High Court ruling and which was the basis of the Opposition, and that a mere month later (26 April 2015) they filed their Contempt of Court proceedings. The Opposer did not dispute this. In these circumstances, where the Opposer did not raise this issue in their Statement of Case, subsequent arguments relating to the alleged illegal nature of the services provided, is an illegal widening of the grounds for Opposition.

Furthermore, the Deputy Commissioner considers that this claim does not actually help the Opposer. The starting point of the Opposition is that the Applicant was acting in accordance with the High Court Ruling: it is not the function of the Patent Office Court to clarify whether or not the Applicant was acting in contempt of court. The Opposer has the right to pursue this claim in the appropriate court.

Furthermore, it appears that this claim is irrelevant to the Opposition proceedings. In contradistinction to the US Law, where one of the conditions of registerability is previous use (see §1(a) of the Trademark Act, 15 U.S.C. §1051(a)),  in Israel prior usage is not a requirement for registerability (see Section 8 of the Trademark Ordinance). The Applied for mark is considered in light of the services listed. If the company offers additional services, that are considered illegal for them to provide by the High Court, such services are anyway not covered by the mark. In other words, to the extent that the Applicant is providing illegal services, the Israel Bar Society can pursue them in the appropriate manner, as they have already done. However, to the extent that the list of goods and services does not cover such illegal services, this is not a relevant consideration to the issue which is under consideration, which is whether the mark has acquired distinctiveness for the listed services.

Damaging to Public Order

public orderThe Opposer considers that registering trademarks for services that it is illegal for the Applicant to provide is against the public order. The Deputy Commissioner considers this claim has substance.

Public order is a flexible term that allows the judge the freedom to interpret it in various ways to prevent the legal system from being undermined. See 10487/07 Amidar Israel National Housing Company vs. Zohar Chai  paragraph 21, 5 May 2010, and Bagatz 2911/05 Moshe Elchanti vs. the Finance Minister Benjamin Netanyahu 15 June 2008.

At a time when the legislators forbid an Applicant from providing a particular service to the public and the High Court has related to the issue, analyzed the Applicant’s actions and issued a ruling, it is improper for the Registrar of Trademarks to provide the Applicant with a monopoly to use a trademark with regard to such services that the written law, endorsed by the High Court, considers it illegal for them to provide.

Registering such a mark would be illogical since the Applicant could not use it, and failure to use within three years of registration would render the mark void (See Section 41 of the Ordinance). On the other hand, use of the mark for such services if registered by the Registrar under his authority to do so, would be contrary to the Supreme Court ruling.

jaffaAn analogous decision can be found in the Jerusalem Court ruling 28180-02-15 Yehuda Malchi vs. the Board for Developing and Marketing Plants – Citrus Division, paragraph 22 (29 December 2016):

In this instance, on one hand we are not only relating to the fact that labeling the goods “Jaffa” is a false description, but rather to the fact that having found this to be false, it is criminal (Section 3(1) of the Trade Ordinance) to use the term, and it is inconceivable that the Registrar will record a trademark that the legislators have legislated a prison sentence for using.

Having determined that the mark cannot be registered for services that are illegal under black letter law and a High Court ruling, it is necessary to examine if the list of goods does indeed cover such services.

The High Court ruled that the applicants cannot determine the rights of customers using their services, or to provide advice regarding the appropriate routes for them to pursue their claims, which the Supreme Court concurs with the Legal Advisor as being forbidden under Section 20(4) of the Israel Bar Association Law 1961.

In paragraph 59 of the ruling, the Court stated:

The summary of this section is that there is no place to allow the workers of the Center to identify the rights of the customers and to advise them which route to take. These actions include real discretion and are complex, and wrongful advice can expose the public to damages, without providing the protection that the Israel Bar Association Law provides, if this service (noting the costs) can be provided by an alternative to the Israeli lawyers. Consequently, these services were included in Section 20(4) of the Law prohibiting providing legal advice. Alongside this, I will clarify that this should not be seen as prohibiting providing ‘dry’ information to the public, providing this does not include consideration discretion beyond how to edit and present information. For example an Internet website that provides official forms, legislation and rulings relating to a specific legal field such as Labour Law, without any content that is guiding or processing the law in a manner that constitutes providing counseling, will not generally be considered as trespassing on the legal profession. Each case is to be considered on its merits and with reference to the general guidelines developed by the relevant case-law regarding application of Section 20.

The current list of services includes consultancy. This raises the issue whether the registration covers legal consulting. The Applicants claim that the word ‘consultancy’ includes a wide range of services and not merely legal ones. The Opposer considers that the current warning seems to cover providing illegal legal services, with reference to Judge Shacham’s decision in the contempt of court proceeding where it was ruled that the Applicant, does, in practice, provide legal services:

The Applicants provide that the Center transgressed the operative instructions of the Supreme Court by providing the above-mentioned services. Jerusalem Court Ruling 9270/07 Israel Bar Association vs. the Center for Realizing Medical Rights, paragraph 23 8 November 2015.

The current list of goods requested leaves a doubt regarding the services provided. However, the Deputy Commissioner does not consider that the correct way to deal with the issue is by refusing the mark. She considers that the best approach is to correct the list of goods to specify that the consultancy provided is not legal consultancy and rules that the list of services should be amended to state:

non-legal consultation services relating to tax attributes; non-legal consultation services relating to rights bestowed by insurance policies; all included in class 36, and for non-legal consultation services relating to realization of rights for health deficiencies or injury; non-legal consultation services relating to realization of social security rights; all included in class 45″

This solution accords with the advice of the High Court that the possibility of being misleading may be dealt with by a written or oral notice that the Applicant does not provide legal services, and with Section 24(f) of the Ordinance, which allows the Commissioner to issue such restrictions.

Acquired Distinctiveness and Misleading

misleadThe parties agree that there is acquired distinctiveness in light of the widespread usage of the mark over the years. This was also stated in the Deputy Commissioner’s earlier ruling of December 2014. Despite this, the Israel Bar considers that due to the restriction of services that the Applicant can legally provide after the High Court Ruling, this acquired distinctiveness can no-longer be considered to exist.

For the sake of completeness, the Deputy Commissioner brings the Israel Bar Association’s claim in its entirety:

The Opposer does not dispute that the Applicant made extensive use of “Become Ill? Been Injured?” in advertising its business. It does, however, dispute whether this use can be considered as acquiring distinctiveness for the mark.

In its summations, the Opposer claims that the mark had acquired distinctiveness, but for forbidden services. In this instance, the company is attempting to build itself on a trademark acquired before the Ruling.

Therefore, it appears that the Opposer no-longer disputes the fact that the mark has acquired distinctiveness. Now the Opposer claims that the distinctiveness acquired over the years was only for legal services. The Deputy Commissioner does not think that this is true. She considers it generally accepted that the Applicant provides various services including medical help and help with bureaucracy. So it is difficult to accept that the reputation was only for legal services. Additionally, the Opposer did not provide a shred of evidence to back this allegation.

Furthermore, the Deputy Commissioner does not consider that the wider public makes fine distinctions between legal services, medical assistance, bureaucratic services, etc. but rather considers the services provided as a package. The Applicants submitted a survey of consumer awareness which stated that 65% of the public recognized the phrase “Become Ill? Been Injured?” and claimed to know what services were associated, but 22% of these related it to compensation, 10% to suing the National Insurance for rights, 10% with insurance services and 7% with refunds from National Insurance.

The ruling then discussed the Opposers claims relating to services provided prior to the Supreme Court ruling, but the Deputy Commissioner considered that the issue was the services currently being provided and the public perception thereof.

Section 3 of the Trademark Ordinance is included in Section 3(3)(b) of the Trade Marks Act 1994:

(3)A trade mark shall not be registered if it is

(a) contrary to public policy or to accepted principles of morality, or

(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)

As James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling and Iona Berkeley stated in “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p.249 – 250 :

“Section 3(3)(b) of the 1994 Act prevents the registration of deceptive marks, a notion familiar in the United Kingdom from s. 11 of the 1938 Act. The paragraph itself cites some non-exhaustive examples: trade marks which are of such a nature as to deceive the public as to nature, quality or geographical origin of the goods or services. In general, if a mark gives rise to an expectation which will not be fulfilled, then registration will be refused.

Secondly, the paragraph refers expressly to deception caused by the nature of the mark itself. This does not mean that the mark has to be considered in a vacuum. It must be considered against goods or services applied for and in the general context of the relevant trade.”

In this instance, the Deputy Commissioner does not think that there is real validity in the claim that the mark is deceptive. However, since the mark has been limited to non-legal services in the list of goods, and the mark nevertheless has a reputation for the listed services, she does not consider that the mark will mislead.

The Opposers also raised Section 11(6) and 11(10) objections, and claimed that the slogan was not a trademark under Section 1 of the Ordinance. Again, since the Opposers ignored these claims in their Summation, it seems that they have abandoned them.

Conclusion

In light of the above, the Opposition is refused but the list of goods must be amended as followed:

non-legal consultation services relating to tax attributes; non-legal consultation services relating to rights bestowed by insurance policies; all included in class 36, and for non-legal consultation services relating to realization of rights for health deficiencies or injury; non-legal consultation services relating to realization of social security rights; all included in class 45″

The Israel Bar was fined 5000 Shekels costs and 25000 lawyer’s fees.

Ruling Re Israel Trademark No. 243620 “?חלית? נפצעת” (Become Ill? Been Injured?) by Ms Jacqueline Bracha, 25 September 2017

COMMENTS

We congratulate Glazberg, Applebaum & Co. on taking on the Israel Bar Association and on winning this case.

It is noted that whereas Section 20 provides a list of services that only members of the Israel Bar Association (Attorneys-in-law) may provide, Section 21 provides a list of exceptions. So, for example, Rabbis may represent clients before the Rabbinic Courts, qualified and registered tax consultants and accountants may represent clients before the tax authorities and Licensed Patent Attorneys may represent clients before the Israel Patent Office and WIPO, and provide various services under the trademark, design and patent laws. Lawyers that are not members of the Israel Bar Association (such as academics) can provide legal opinions if a lawyer or an official govt. body requests them to.

IPAA.pngThe Israel Patent Attorneys Association together with the Israel Bar Association should stamp out illegal IP Practitioners. These include non-licensed professionals, some of whom do not have the basic qualification of a science / engineering or law degree to be qualified to provide services. These also include ex-Examiners, retired patent attorneys from abroad, and US firms that operate illegally in Israel. The profession is regulated to serve the public’s interest. It is in the public interest to prevent non-licensed practitioners. Their services cannot be insured.

There are arguably grey areas, such as whether a US licensed attorney can operate in Israel advising Israeli clients regarding US Patent Law. Nevertheless, I believe that Finnegan and some other US firms are acting illegally by providing the range of services that they do in Israel. Furthermore, Finnegan advertises their services in a manner that Israeli Attorneys-At-law and Patent Attorneys are prohibited to by their codes of ethics.

Some services provided by self-styled patent management firms are illegal. However, it is arguable whether providing renewal services or patent search services without opining is or is not illegal and whether it should be, since it is not clear what the public interest is in such matters.

It is not totally clear what services an Israel Patent Attorney or Attorney in Law can legally provide. It is not clear, for example,  if someone not licensed in the US can fill out USPTO forms on behalf of their clients, such as preparing Information Disclosure Statements (IDS’s) or Powers of Attorney forms. I suspect that Israel Patent Attorneys consider it within their competence to inform clients regarding the Law of Unjust Enrichment and Israel Trade-Laws and not merely IP Laws, although would probably pass a case over to a colleague who is a member of the Israel Law Bar to represent the client in court. Consulting re copyright issues is arguably beyond the legal competence of Patent Attorneys, but our day to day practice requires us discussing these issues.

Then there are Israeli lawyers who are arguably practicing illegally in the US, such as Zeev Pearl who has an Israel Attorney licence but is not licensed in the US, yet manages the US Practice of Pearl Cohen from his Broadway Office as the first named partner.

We also note that the Israel Patent Office website provides Guidance to Applicants. It is not clear that it is within their legal competence to do so. Inventors can and do consult with the Israel Patent Office regarding protecting their inventions. Apart from the legal issues, it should be clear that the Israel Patent Office has an interest in inventors filing in Israel. Objectively, this may or may not be in their interest. I am not sure that a Patent Examiner knows the theory or practice of design law or copyright law. It is not part of his training.

We note that Israel Trademark No. 286043 for the work mark “PATENT CATALYST” covers consulting services in the field of managing intellectual properties; all included in Class 35. The owner is Nif/T, LLC, a Delaware Limited Liability Company. The mark was registered via the IP boutique, S. T. Colb. Presumably neither Colb nor the Israel Trademark Office considered the services provided as illegal. It is not clear to me that such consulting services are legal in Israel, and I am not sure that the Israel Patent Attorneys Association (IPAA) or the Israel Bar knew about this application and considered opposing it.

Some will argue that until the proposed law for regulating the Patent Attorneys is passed, these issues cannot be properly addressed. However, my main criticism of the proposed legislation is that these issues are not addressed by it. The official position of the IPAA is that the law should be amended to ape the outdated Israel Bar Association Law, with its restrictions on advertising and on operating from a shared premises. The substantive issues are not adequately related to.

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