Coffee Whitener Trademarks in the Gaza Strip

November 6, 2017

city creamerClients sometimes ask about whether or not it is worth registering trademarks in the Gaza Strip. Recently, we’ve been handling the destruction of fake plumbing goods destined to Gaza, that were stopped at the Israel Port of Ashkelon. Delivering papers in Gaza is not easy. It can, however, be done.

Qumsieh is a Jordan firm of patent attorneys that handles IP registration across the Middle East. On 20 May 2014, Qumsieh submitted a Gaza Trademark Application for City Creamer, a coffee whitening milk substitute that comes in powder form, on behalf of their client, Bilal Mohammad AL Hamwi, in class 29. The application was assigned number 18963, then published in the Official Gazette number 54 on 28 May 2015.

coffee mateSociété des Produits Nestlé S.A. (“Nestlé”), the owner of trademark “Coffee Mate” filed an opposition against our AL Hamwi’s mark based on their earlier registrations for “Coffee Mate” based on the following grounds:
An alleged Similarity between “City Creamer” and “Coffee Mate” in terms of appearance and general look;
Coffee Mate is a well-known trademark worldwide;
Registration of the opposed mark will mislead the public about the origin of the products and will confuse the consumers between both products, and
Due to the above, allowing the registration of “City Creamer” contradicts local Trademark Law.

In their response, Qumsieh noted that “City Creamer” has no counterpart “mug design” mark to that of Nestlé’s mark, however Nestlé argued that this was irrelevant. Opponent dismissed as irrelevant. Qumsieh also argued that the figurative elements illustrated the differences in the imagery, which far outweighed the alleged similarities.

The Gaza Registrar ruled that the “City Creamer” mark could be registered. Apparently Nestlé appealed said decision before the Gaza Supreme Court, which affirmed the decision of the Registrar.

COMMENT

The colour schemes of the two marks are similar, but coffee is a product that is generally drank warm and the orange-red colour implies a warm cosy feel. The term creamer, like coffee, is generic. Showing a powder additive for coffee as a spoon for adding to coffee seems to me to be descriptive, and despite the similarities which are probably not coincidental, I think that the Gazan authorities made the right decision. It is worth comparing this ruling to the Israeli rulings concerning energy drinks and the Eden Turkish Coffee.


Aluminium Profile Trademark Ruling Survives Appeal to Supreme Court

June 7, 2017

On 16th November, we reported that the District Court has upheld Deputy Commissioner Ms Bracha’s Decision not to allow registration of Israel trademark application 240319 filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co or NAPCO) following an opposition proceeding by  Extal LTD.

240139

Not content, NAPCO appealed to the Supreme Court and Extal filed a counter-appeal.

Judge Meni Mazuz has upheld the ruling and Appeal. He does not consider the issue of general public interest.

NAPCO lost their mark for failure to pay the renewal fee. Judge Mazuz does not consider that a now non-registered mark has to be a well-known mark to prevent registration of a confusingly similar mark, and that Deputy Commissioner Bracha was acting within her discretion in her ruling to not allow the mark to be registered.

Judge Mazuz did not consider that any fundamental rights were lost by requiring a different extrusion marking to be applied to profiles.


Statutory Damages for Reproducing Photographs

August 2, 2016

copyrightUnder the Israel Copyright Law 2007 there are statutory awards available for copyright infringement of up to 100,000 Shekels without proof of damage. There is a separate statutory award for damage to the moral right to be acknowledged as an author of a creative work that is up to an additional 100,000 Shekels .

Photographs are considered creative works and it is the photographer, not the subject of the photographer that owns the rights.

However, the would-be-plaintiff should be aware that although the courts can award up to 200,000 Shekels for copyright infringement by a photograph being reproduced without permission, they generally make much smaller awards.

Whether one sues under copyright infringement or under the Law of Unjust Enrichment the statutory damage despite lack-of-proof merely enables the court to grant compensation for estimated damages where the plaintiff has trouble proving the damage. Not every photograph is considered as automatically worth tens of thousands of shekels.

Here are four recent cases:

  • A website for an aluminium factory used an image taken from a competitor’s website without permission. The damages awarded were 3,500 Shekels.
  • A photographer took pictures of landscaped gardens, and the landscape architect reproduced these without permission. The name of the photographer was not mentioned. The compensation awarded for copyright and moral rights infringement was 10,000 Shekels.
  • A beautician and her husband sold cosmetics via eBay from a virtual shop. The cosmetics were made by Holyland Cosmetics. The beautician and her husband used photographs and text taken from  Holyland Cosmetics’ website and were fined 65,000 Shekels.
  • amir-peretzVery few photographs become iconic images. One that did was the famous picture of then Israel Defense Minister Amir Peretz looking interestedly at military maneuvers through binoculars without noticing that the lens caps were still in place. A journalist called Ephraim Shrir took the photo, and has since been busy suing every newspaper and media outlet that failed to acknowledge his moral rights to be recognized as the photographer, and that failed to pay him copyright compensation.  We have written about his claims in the past, see here and here, where both his copyright and moral rights were recognized by the courts. In a recent ruling however, Shrir sued HaAretz for reproducing the photograph, but they claimed that they had obtained the image legally from Associated Press (AP) who was acknowledged. The case was thrown out.

 

 


Costs in Aminach vs. Gabai

February 10, 2016

SIDS
Aminach is a large mattress manufacturer. They opposed a patent application No. 179840 filed by Moshe and Anat Gabai that allegedly reduced likelihood of Sudden Infant Death Syndrome (SIDS). Theyir invention was a foam mattress with holes punched out so that a face down child could not be suffocated by rebreathing trapped exhaled carbon dioxide.

The Israel Patent Office refused the patent by accepting Aminach’s submission that the mattress did not have proven efficacy. The Applicants appealed this ruling to the courts and the whole thing went to the Supreme Court and back down, and eventually the patent was registered but with a narrower claim set which specified that the the mattress may help in cases of SIDS attributable to rebreathing the same air.

Our report on the original ruling is here. Our report on the Supreme Court ruling is here.

Aminach, represented by Colb, filed for costs of 444,615.99 Shekels for all actions. As a fall-back position, they requested costs of 300,796.37 Shekels for the costs from when the Gabais appointed legal counsel, and as a further fall back position, costs of 113,841.36 Shekels from when the case was referred back to the Patent Office.
The Gabais, now represented by Glazberg, Applebaum & Co, opposed this. The courts decided not to rule costs and this was an active decision and not a lacuna and the issue was therefore moot. As to the patent office costs, the Gabais claimed that essentially they had won, and all Aminach had achieved was a claim narrowing. The Gabais alleged that the costs were incurred because Aminach and their lawyers had leveraged their greater resources.

The Gabais claimed that the costs were unnecessarily incurred. For example, Aminach did not need to compare their products with the patent claims. Aminach argued that where the courts had not ruled costs, they could be ruled, and where actual costs were considered excessive, the patent office could award what they considered to be reasonable.
Aminach were awarded 40,000 Shekels legal fees and 5,597 Shekels costs for the original opposition. They were awarded a further 20,000 Shekels by the District Court who upheld the Patent Office Decision and was not prepared to review additional experimental evidence. The Supreme Court didn’t award costs (arguably declined to do so), and nor did the District Court when ruling that the case should be returned to the patent office. This decision was also appealed to the Supreme Court as was a request to stay the ruling until the end of the process. No costs were awarded for this either.

The Deputy Commissioner then accepted new evidence and the Applicants corrected the specification. Costs of 5,500 Shekels were awarded to Aminach.

The Deputy Commissioner noted that all courts had addressed the costs issue, even if to rule that costs were not granted. She also noted that Section 162B of the Israel Patent Law 1967 only empowers the Patent Office to rule costs for proceedings before it. Unless the courts specifically delegate the awarding of costs to the Patent Office, it has no authority to rule costs for appeal proceedings before the courts. Further support for this was found in section 462 of the Civil Court Procedure and in the cost ruling regarding IL 165705 Israel Aircraft Industries vs. Rafael Advanced Warfare LTD, 12 July 2012. Furthermore, Circular MN 80 if these have already been awarded.

The only costs to be considered, therefore, are the costs related to the additional evidence submitted by each side after the Supreme Court ruling and the subsequent hearing including cross-examination of the expert witnesses and the correction to the specification for which costs were previously awarded.

The Deputy Commissioner then went through the various invoices and decided which ones related to the proceedings before her and concluded that costs of $21,864.55 were attributable to the proceedings before her. She also noted that the Gabais had chosen to cross-examine witnesses and submit evidence prior to narrowing the claim set which had incurred the costs.

COMMENT

I rather enjoyed this epic battle between the little inventor who was not represented, and an Israel corporation with expensive IP counsel. I suspect that the Israel Patent Profession as a whole found it quite entertaining. I was critical of the original patent office ruling to cancel the patent on appeal and do not think that the patentees can fairly be criticized for conducting tests and submitting and cross-examining expert witnesses, whether or not they could have reached a compromise with Aminach.

In awarding full actual costs for the proceedings before her, I feel that Deputy Commissioner is punishing the patentees for what was originally a poor decision by her. If the Supreme Court felt it could rule on the Appeal against the District Court’s ruling without awarding costs, we think that the patent office could have as well.

Although it is detailed and not obviously unreasonable, maybe the Gabbais and Glazberg will appeal the cost ruling anyway?

Obviously apparently healthy babies could die for a number of reasons, some of which doctors may not yet understand. Nevertheless, it would be interesting to see if baby mattresses with air holes become common place and if this has a statistically significant effect on SIDS which is very distressing for the families concerned.


Long Division

January 24, 2016

Herceptin

IL 234696 to Genentech relates to the antibody that is the active ingredient in its blockbuster drug Herceptin.

The Application is a divisional application of IL 214084 which is itself a
divisional application of 136201.

Section 24 of the Israel Patent 1967 states that: (a) As long as the application has not been accepted, the applicant is entitled to demand that it be divided into several applications.”  (b) If the application includes more than one invention, then the Registrar may, as long as he has not accepted the application, direct the applicant to divide his application.”

Back in February 2010, in Circular MN 81, then Israel Commissioner Dr Meir Noam creatively interpreted this statute to mean that although a first filing into Israel may be divided into divisional applications, those divisional applications could not be further divided once the parent application had published. This new interpretation was a departure to 40 years of established practice and did not seem compatible with the wording of the Law.

As we noted back then, the logic for the new interpretation of the statute was that Israel was getting ready to automatically publish applications 18 months from priority and not just make allowed patents open to inspection. Nevertheless, the new interpretation issued in an Israel Patent Office circular and overturned common practice dating back to when the statutes were legislated. Back then I commented that

With the proposed amendment allowing for 18 month publication, this measure is clearly required. Nevertheless, I am not convinced that this is interpretation of the law, but rather amendment thereof.Arguably this measure requires a formal amendment to the Law by the Knesset and goes beyond the authority of the Commissioner. It should be included in the proposed amendment for 18 month publication (second reading) and it would be fun if someone challenges this Circular on procedural grounds.

It was a different and also timely circular, not to require publication of printed journals, but to rely on on-line publication, and subsequent Knesset criticism of this as beyond the legal competence of the commissioner, that caused Dr Noam to retire.

The current commissioner Asa Kling seems to be more wary about changing substantive law by creative interpretation and prefers to rely on the Knesset and Ministry of Justice.

After IL 234696 to Genentech was filed, Genentech challenged the circular and in January 2015 an ex parte hearing before the Current Commissioner of Patents and Trademarks was held. Genentech noted that the Circular did not institute a new law or regulation but merely provided a new interpretation to an old law.  Genentech argued that the new interpretation in the Circular was based on an untenable reading of Section 24a and was thus ultra vires.  If this was indeed interpretation of the Statute, it should apply retroactively and invalidate a number of issued divisional-of-divisional applications. If, however, the Circular was to be considered as new law, it was ultra-vires and thus void. Notably, the former commissioner himself postponed application of the Circular which was odd if it is to be considered as interpretation. Without needing to force the issue of the validity or otherwise of the Circular, Genentech asked for at least an exception to be made for their case, i.e. that their divisional be considered as a legitimate application despite being a divisional of a divisional.  In a ruling that issued in January of this year, the present Commissioner noted that in the U.S., In re Ernest Johan Jens Henriksen, 55 C.C.P.A. 1384; 399 F.2d 253; 1968 CCPA LEXIS 273; 158 U.S.P.Q. (BNA) 224 the Court of Customs and Patent Appeals found somewhat similar guidelines of the USPTO unlawful. The EPO who also initially banned secondary divisional applications, has changed its practice and reinstated the possibility of filing secondary divisional applications. Filing secondary applications is also allowed in Australia and Japan.

In conclusion, the present Commissioner has allowed Genentech’s 234696 filing as being a legitimate divisional application despite being a divisional of a divisional.

COMMENT

There was some justification in Dr Noam’s attempt to prevent parties from leaving a divisional application pending to claim around competition in cases of generic competition not literally infringing. I think that preventing this type of activity does indeed require primary legislation. However, what the Commissioner has apparently not done is to rescind Circular M.N. 81. It remains unclear whether Genentech is an exception to the rule, and why this should be so, or whether Patent Office Circular M.N. 81 is now void.

Either way, as the validity of both parent application (IL 214084) and grandparent application (IL 136201) were challenged in Opposition proceedings, we suspect that if the case is allowed, the claims will likely be challenged in a further Opposition and the correct interpretation of Section 24 and whether divisional applications of divisional applications are allowable will be challenged directly. If such an opposer remains unhappy, he may take it up with the courts.  Although I was wary of the original Circular, I consider a situation under which the Commissioner has the discretion to allow or reject the filing of a divisional of a divisional on a case by case basis even more problematic.

 


Inventor Compensation Under Section 134 of the Patent Law

January 13, 2016

compensation       employment-agreement (1)

Section 134 of the Israel Patent Law allows for a committee including the Commissioner of Patents, a judge and one other to decide whether an employee is entitled to compensation for a service invention, and how much this should be.

In Barzani vs. Iscar, the Supreme Court through out Barzani’s appeal of the committee ruling and denied his request for compensation.

The Israel Supreme Court (Appeal 3564/12 Dr Nimrod Bayer vs Florality LTD) overturned a District Court decision that upheld a waiver signed by Dr Bayer and Dr Nimrod Bayer requested that the committee decide on appropriate compensation. The committee chaired by Judge Professor Itzhak Engelard and including the Commissioner of Patents Asa Kling and Professor Shmuel Peleg. issued a ruling on 24 December 2015.

It seems that in this instance, the parties came to an agreement. Consequently the request for compensation submitted to the committee was refused. The ruling clarifies that this decision does not affect Dr Beyer’s moral rights to be considered the technological driver of the company or affect third party rights. It puts an end to the issue and no costs are awarded but the decision is published with the names of the parties at their request.

COMMENT

We suspect that the anonymous suspension procedure we reported in 2014 related to this case. Not much can be learned from this ruling except that the committee does meet. At least occasionally.


Double Jeopardy in A Design Cancellation

January 13, 2016

Double Jeopardy        Hood

Diesel S.P.A. own Israel Design No. 51959 and Hoodies LTD  filed for cancellation of the design claiming that it was published in Israel prior to registration which is contrary to the current Design Ordinance. Diesel requested that the hearing before the Israel Patent Office be suspended whilst the District Court consider the on-going infringement proceeding and where the issue of validity based on prior disclosure is being considered.

As discussed this in a previous posting, the cancellation action in the Patent and Trademark Office was stayed at Diesel’s request, since Hoodies LTD did not file a response.

Hoodies LTD have now appealed this decision, claiming that they were only served the staying request three weeks after it was filed and did not have the statutory window of opportunity to respond.

In the circumstances, Deputy Commissioner Ms Jacqueline Bracha was prepared to reopen the case and reconsider her ruling, but since it was inefficient for two forums (fora?) to hear the same issue and could result in contrary rulings, she again concluded that the case before the patent office should be suspended, and requested an update regarding the progress of the complaint in the district court in three months time. No costs were awarded.