In the past, we’ve reported the Habitat case wherein an Israeli store used the name Habitat after the Israel trademark filed by the UK based international design chain was canceled due to lack of use.
On 17 December 2018, a triumvirate of the Supreme Court threw out an appeal and upheld a ruling of the Tel Aviv District Court to the effect that the trademark for Habitat in Hebrew letters הביטאט)) be canceled, but that both parties could use the mark.
More details of this decision can be found here.
The parties have now requested a further hearing, arguing that the previous ruling created five new solid legal precedents which they consider is sufficient justification for a further discussion.
According to the Appellants, the first new case-law is the striking of a registered mark under Section 39(1a) due to the existence of a foreign mark that is not registered but is also not a well known mark in Israel, and that knowledge of the foreign mark by the local applicant is in and of itself sufficient to establish that the registration was in bad faith for the purposes of canceling the mark. The Appellants consider this finding new and hard since it contradicts the Trademark Ordinance and its underlying rationale, and that it blurs the difference between well known marks in Israel and those not well known in Israel, thus contravening the concept of territoriality of the law.
The Appellants further contend that Section 39(1a) of the Ordinance is subject to the general statute of limitations of 1958 and challenge the idea that there is a right for perpetuity to challenge the validity of a mark on grounds of it having been registered in bad faith. They suggest that a more appropriate interpretation of the law would be that the bad faith grounds under Section 39(1a) would over-ride the five year limitation for challenging trademarks provided by the trademark Ordinance, but would not over-ride the general Statute of Limitations. They argue that the precedent in Appeal 1595/06 Estate of the Late Edward Eridor vs. Petakh Tikveh Regional Counsel, p.d. 61(2) 58 (2013), requires the removal of any statute of limitation to be explicit, and this is not the case with Section 39(1a) of the Trademark Ordinance.
The Appellants believe that the (allegedly new) law of not applying the Statute of Limitations to Section 39(1a) is being applied retrospectively to a trademark application which was registered years before this Section was legislated in 1999. They consider that the refusal of the Supreme Court to deal with issue that was first raised in the Appeal, fatally wounds the fundamental principle of the legal process on a procedural matter. They consider that this is a pure legal issue and so consider the Supreme Court’s refusal to consider the Appeal is a new and hard law.
They further allege that the court has issued a ruling that substantively minimizes the application of the issue of tardiness with respect to Section 29(a1) and instead make it subject to being revocation under Section 39(1a). Finally, they allege that the ruling by the Court that there is no estoppels regarding the lack of faith issue, itself is a new and hard law.
The Respondent considers that the request for a further ruling should be thrown out, since it does not have the basic requirements for a further consideration. They argue that this is an attempt to have a further Appeal of a Supreme Court ruling by raising five legal issues that were all part of the original appeal, were considered and rejected in the previous ruling. Substantively, the Appellants believe that the determinations of the ruling in question regarding Section 39(a1) do not create a new law that justifies a further hearing; the decision of the court not to address the retroactivity of the ruling at the appeal stage does not contravene any law, and no new law was established with regards to tardiness in civil proceedings or with regards to the lack of estoppels by this decision to cancel the trademark.
The President of the Supreme Court, Esther Chayot reviewed the request and response and decided that the request for a further Appeal should be rejected. The further consideration of a Supreme Court ruling is a rare and exceptional development that is reserved for cases where the Supreme Court contradicts its previous rulings, or where there is a significant public interest, complexity or novelty that it a further consideration is warranted. (Section 30b of the Law of the Courts 1984; Appeal 7161/17 Shani vs. Shleider paragraph 17 (3 February 2018). It is further ruled that the newness of a ruling is not in and of itself grounds for a further hearing (See Appeal 249/18 Ofer Tender ltd vs. Estate of Aharoni Shlomo, paragraph 7 (23 April 2018). The Applicants consider that the appeal created no less than five difficult new laws that justify a reconsideration.
The President of the Supreme Court Esther Chayot disagrees.
The Decision indeed included a ruling concerning Section 39(a1) of the Ordinance where, based on their application of general principles of Israel Law, the court found against the Applicants’ interpretation limiting the Application of Section 39(1a) to marks well known in Israel., and similarly rejected the various ideas relating to the Statute of Limitations. These conclusions were reached by the court after considering the wording of the Law both objectively and subjectively, whilst referring to rulings of the District and Supreme Courts; the rulings of the Commissioner of Trademarks, and scholarly articles from Israel and abroad. “In such cases, the general rule guiding the legal system is that the law is determined by the first hearing of the Supreme Court, whether as a tribunal of three judges or a wider forum, without the need for ratification by a second hearing. This is certainly the case, where, as in this instance, the new law is directly derived from the wording of the written law, and is a natural development of earlier rulings of this court. This development is a based on application of existing principles.” – Appeal 6519/05 Issa vs. State of Israel, paragraph 8, 2 September 2005; Appeal 4813/04 McDonald vs. Eloniel ltd paragraph 15 (29 November 2004) and Appeal 1032/18 Alder Possessions ltd vs. the Manager of Land Taxation for Tel Aviv paragraph 8 (18 September 2018).
As to the claim regarding the retroactive application of the Section 39 (1a) In this instance, the court ruled explicitly that it did not see fit to deal with this claim, when these were raised in the Appeal (mumbled without details”. Without discussion on this matter, it should be clear that there is no grounds for further discussion. The other claims of the Applicants have an appeal character and relate to matters of fact analyzed by the district court. There is no prima facie reason to justify a further discussion (Appeal Sharon Shmuel 2000 ltd vs. Shafir – Civil and Marine Engineering, paragraph 5, 1 March 2019. And in conclusion, the fact that the decision was unanimous also carries weight when considering whether to hold an appeal (see Adler Properties, paragraph 9. The Request is rejected and the Appellants (as a group) with bear costs of 40,000 NIS
Ruling by President of Supreme Court not to allow a Further Hearing on Supreme Ruling by Judges Solberg, Kara and Eldron) 5 May 2019