Wok and Walk

wokRo.R. Sheli ltd own Israel Trademark No. 233836 for “wok and walk

The mark owner has tried to have some sections of the request for cancellation struck from the record. Sections 18 -22 claim that the registration was in bad faith and so the trademarks should be cancelled under Section 39(a1) of the ordinance 1972. According to the mark owner, it appears that in an Affidavit by Rami Lev opposing expedited examination and registration of TM Application no. 291833, it is claimed that the franchise started trading in 2004. However the owner of the mark in question registered their mark back in 2000. So the trademark owner claims that there is no grounds to accuse them of acting in bad faith since their use of the mark preceded that of the party requesting cancellation.

wok to walk

Wok to Walk Franchise oppose this request and claims that now is not the time to relate to this claim and to do so at this stage is not in accordance with the civil procedure.  Deputy Commissioner Ms Jacqueline Bracha concurs with Wok to Walk Franchise.

In civil proceedings, the right to cancellation of baseless claims is anchored in regulation 100 of the Civil Procedure Regulations 1984. The Patent Office can rely on this, see cancellation rulings regarding TM Nos. 192398, 193299, 301639, 201641, 201645, 201642, 193947, 193948 HaIr Halvanah LTD. (White City LTD vs. Biyanei HaIr HaLevanah Achzackot LTD10 November 2009.

The case law states that:

The test for whether  or not there is a basis for suing  on these grounds is whether “the plaintiff, on the assumption that the factual basis for the claim is proven, is entitled to receive the requested sanction (Civil Appeal 109//49 Engineering and Industry Company vs. Mizrach Insurance Services, p.d. 5, 1585, 1591 (1951). Cancellations of Statements of Case on the basis of lack of case should be allowed only in cases where were the plaintiff to successfully prove all the significant facts of the case, they would still not be entitled to a ruling since the statement of case does not include a legal basis for the claim that obliges the other party   (Yoel Zusman “Civil Procedure 384-385, 7th Edition, edited by Shlomo Levine, 1995). The purpose of this regulation is to prevent purposeless hearings and expenses in unnecessary human resources considering pointless claims.

In this case, the request for cancellation and the sections to be cancelled are concerned with a bad faith allegation due to the mark owner knowing about the competing mark, and registered it to prevent the franchise going international. The franchise argue that
their mark was well known even before the registered mark was applied for in Israel.

If the requester for cancellation is able to prove their claims, they will be entitled to the requested sanction and the registration will be cancelled.  The mark owner’s contention is that this cannot be proven since the franchise only requested a business license in 2000.  It is inappropriate to simply throw out this contention, since to throw out it in a preliminary action one has to establish that there is no legal basis, not that there is no evidence or insufficient evidence. Evidence is considered in the main hearing, and theoretically the bad faith allegation could be proven.

wok and walkThe mark owner also claims that it is appropriate to clarify the issues under contention and to create a list. It is true that the judge has the authority to hold a pretrial hearing and make such a list under Section 13 of the Civil Court Procedures 1984. But under the Trademark Regulations 1940 that apply in this instance, pretrial hearings are not generally conducted as the Trademark Regulations 1940 do not discuss these. As a general rule, hearings are scheduled after evidence is submitted (regulation 44).

That said, the Commissioner has the authority to grant a partial decision under Regulation 45(a1):

At any stage of the proceeding, can rule on any of the issues if it appears that the rest of the proceedings cannot affect the findings based on the evidence or the issues requiring a decision.

The Deputy Commissioner does not consider it possible or efficient to give a ruling requiring a decision on contested facts  before the parties submit their evidence and witnesses are cross-examined on the testimonies.  It appears that there is a difference of opinion regarding when the trademark holder’s activities started and which mark was used at that stage, and it is too early to make a ruling on this matters.

The request to have the issue struck from the Statement of Case Is dismissed. The mark holder will pay the challenger 2000 Shekels including VAT.

Interim Ruling concerning TM  233836 “wok and walk noodle bar” cancellation proceeding,  1 March 2018.

COMMENT

I think the interim ruling is correct. As the main issue is under judicial review I am refraining from commenting on it.

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