Israel Supreme Court Upholds Decision Re Appellation of Origin

November 26, 2017

cheese and wineIsrael is a member of the Lisbon Convention for the Appellation of Origin. This is an international convention beloved of the French and frowned upon by the common law countries. Essentially food and drink associated with certain places is entitled to wider protection than mere trademark protection, so that only Scotland can make Scotch Whiskey. Only France can make Champagne and Cognac. Parmesan cheese and hams must come from the Parmesan region of Italy, and so on.

There are now two Israeli whiskey producers. Israel makes Kosher bubbly wine and brandy and a very wide range of cheeses that mimic English, French, Italian, Dutch and Greek types. The labeling is carefully controlled in accordance with the rules.

Israel boasts one Appellation of Origin: Jaffa for citrus fruits.

jaffa orangeCalling something Jaffa, Jaffas, or in Hebrew יפו, יבא, יפאס is not merely a trademark infringement, but also infringes the special law governing this appellation of origin “The Law for Protecting Origins and Indication of sources 1965” gave special protection for Jaffa and variant spellings for citrus fruits. Subsequently, special amendments to the Trademark Ordinance in 1968 widened the protection of the Jaffa mark to prevent its usage for a wider range of goods, and forbade marks that include the word Jaffa as only part of the mark. The amendment to the trademark ordinance takes this protection very seriously, and instead of merely providing financial remedies, prescribes incarceration for infringers.

126 EL AL Poster, Two Flight Attendants in Orange Uniforms by 747, Marvin G. Goldman Coll'nelal posterBack in the Sixties, Israel was a banana an orange republic. The largest export sector was fruit and vegetables and oranges were the flagship product. The posters alongside, used by ELAL – Israel’s national airline gives an indication of the importance and symbolism of the orange in that era.

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin.

Yehuda Malchi tried to register Israel Trademark Application Numbers 20542 and 220581 for OLD JAFFA, for preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively. Israel trademark no. 237678 covering soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 had previously issued without opposition. In an action combined with an opposition by the Council for Producing Plants and Their Marketing to Israel Trademark Application Numbers 20542 and 220581 , the Israel trademark 237678  (Old Jaffa) was canceled. The ruling may be found here.

Having appealed the Israel Patent Office ruling and that of the District Court, Yehuda Malchi appealed to the Israel Supreme Court.

EtrogJudge Hendel’s ruling included an interesting side comment in which he noted that Chief Rabbi Kook, who was the Chief Rabbi of Jaffa and the surrounding agricultural villages from 1904 until the outbreak of World War 1, had backed a campaign to promote using Jaffa etrogs (citrons) for the Sukkot ritual, rather than those from Korfu and Italy, which held much of the European market. Judge Handel thus argued that Israel was traditionally blessed with citrus fruit and that Jaffa was the hub of the trade a hundred years ago.

Hendel also noted that very little of the sprawling urban conurbation around Jaffa is devoted to agriculture today, but since the amendment to the Trademark Ordinance explicitly prevents use of Jaffa as part of a mark, the phonetic or visual similarity between JAFFA and OLD JAFFA is not relevant. He thus upheld the District Court’s ruling.

COMMENT

I am naturally formalistic (which is considered a dirty word in Israeli legal circles), and generally think that where the democratically elected legislative passes a clear law, the judges should follow that law. I am against judicial activism which I see as undermining the Knesset. (That is not to say that recent government attempts to prevent charges being brought against active ministers, to prevent the Prime Minister from being indicted for corruption are the finest examples of parliamentary legislation).

Nevertheless, I think that Judge Hendel could have and should have struck down this law providing wide and special protection for Jaffa oranges. The reason why is not merely that the brand does not indicate oranges from the Jaffa region grown by Jewish agriculturists on Kibbutzim, but rather that it does not indicate oranges grown in the contested region of Israel – Palestine at all! In order to provide year round supplies to world wide markets, oranges grown in South Africa and Australia are sold under the Jaffa brand. Thus the unique and distinctive taste of Jaffa oranges is not a result of the terroir of the Holy Land at all.  This travesty means that BDS supporters are not merely depriving Arab orchard owners with Thai foreign workers of their livelihood in an attempt to harm Israel politically, but are also harming the black workers in townships around Johannesburg.

Since the Council for Producing Plants and Their Marketing does not restrict usage of the mark to Israel grown oranges, why shouldn’t the special designation be cancelled?

In fairness to Judge Hendel however, we note that Yehuda Malchi was not represented and suspect that the sad state of affairs described above is unknown to him.

For the record, we note that it is ill-advised to appeal to fight legal battles, including submitting Appeals to the Supreme Court without legal representation.


Israel Supreme Court Rejects Appeal from Shukha Trademark Infringers

June 9, 2017

shukhaThere are two branches of the Shukha family that market oil and other food stuffs: Sons of George Shukha ltd. and Antoine Shukha and Sons ltd.

Sons of George Shukha ltd, which also imports and distributes rice, have 27 registered trademarks including the name Shukra in English, Hebrew and Arabic.  The earliest registered mark is from 1984 but one mark is for Sons of George Shukra from 1930.

Over a six-year period, the Sons of George Shukha ltd attempted to enforce their marks through the courts with the parties reaching an agreement that allowed Antoine Shukra and Sons to use labels that include the name Shukra in a font size no larger than that for Antoine and Sons and together with a logo. The settlement, though ratified by the court, was not fulfilled and so Sons of George Shukha ltd. appealed to the Supreme Court. Antoine Shukra and Sons submitted various creative arguments arguing that since the size of their oil containers was larger, the agreed size of the label was no longer reasonable. They also claimed that the ruling only related to the name Shukra in Arabic. They submitted that two weeks to recall and remove all infringing products from the shelves was too short a period, and the penalty of 2500 Shekels for every day delay would cripple them.

Supreme Court Judge Amit pointed out that unless the penalty for failing to enforce was crippling, infringing parties would simply continue to prevaricate. He noted that in two of the three counts of continued infringement, Antoine Shukra and Sons acknowledged that they were infringing, and in the third case, where the issues that received court endorsement related to the size used for the name Shukra and to it being used together with a logo, even if there was some grounds to consider the Appeal based on font size, the infringers were not displaying the logo prominently. He refused to reconsider issues ruled on by District Judge but noted that the District Court judge had stated that the Appellants had made various claims in affidavits but withdrew them during the hearing, and had generally acted in bad faith.

Judge Amit noted that with financial penalties for failing to enforce, staying a ruling during Appeal was generally not appropriate since a monetary ruling could rectify any issues. Judge Amit refused to stay the enforcement, but granted a 30 days instead of 14 days for it to be enforced.  By the end of this period, the Appellants have to provide a full record od what was done to recall or relabel the infringing goods. Costs of 5000 Shekels were awarded to Sons of George Shukha ltd.

Appeal 4113/17 Sone of George Shukra ltd. vs. Antoine Shukra and Sons ltd. and various members of the Shukra clan and related companies. 8 June 2017


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.


More Coffee!

March 23, 2017

EdenFollowing on the heels of the Izhimis family feud, we now report on a competing marks proceeding between Abu Shukra Import Export and Marketing Ltd and Strauss Coffee B.V.

Again, this relates to Turkish coffee. On 2 May 2013, Abu Shukra filed Israel TM application number 255526 in class 30 shown alongside.

This ruling relates to all over packaging designs being used as trademarks and to branding concepts. To my mind, it also raises issues of monopolies and market abuse, but this is beyond the competence of the adjudicator and commissioner to relate to, although I think judges might see things differently.

22263EliteOn 16 July 2014, but before Abu Shukra’s mark was examined, Strauss filed Israel TM Application No. 266680 for Coffee, roasted coffee, roasted and ground coffee and coffee substitutes, all in class 30, and also Israel TM Application No. 266683 for Turkish coffee, roasted Turkish coffee, roasted and ground Turkish coffee and Turkish coffee substitutes, all in class 30. Strauss Coffee’s marks are shown alongside.

[At this stage we note that Strauss Coffee owns the Elite brand among many others. Strauss employees 14,000 people in 20 countries. The empire was built on their Turkish coffee brand, but they also now own Sabra, the leading hummus brand in the US, are partners with Yotvata dairies and Yad Mordechai Honey – MF]. Read the rest of this entry »


Are methods of calculating rediculous alleged legal costs trade-secrets?

November 1, 2016

novartis    teva

Teva successfully opposed IL 184027 to Novartis titled “COMPOUND TRISODIUM [3-((1S,3R)-1- BIPHENYL-4-YLMETHYL-3- ETHOXYCARBONYL-1- BUTYLCARBAMOYL)PROPIONATE-(S)- 3¶METHYL-2¶PENTANOYL{2¶¶ TETRAZOL-5-YLATE)BIPHENYL- 4¶YLMETHYL}AMINO)BUTYRATE] HEMIPENTAHYDRATE, ITS PHARMACEUTICAL COMPOSITIONS, METHOD FOR ITS PREPARATION AND USE THEREOF IN THE PREPARATION OF MEDICAMENTS.”

The application was filed on 18 June 2007 as the national phase entry of PCT/US2006/043710. A divisional application was filed as IL 219782. The application published for opposition purposes on 30 November 2014, and on 25 February 2015 Teva Pharmaceuticals LTD filed an opposition. One day later Unipharm also filed an Opposition. Subsequently, since there was a pending divisional application and because the opposer had not filed their statement of case, the Opposers filed for suspension of the Opposition proceeding for 18 months as per Commissioner Circular 020/2012 “Opposition to a divisional patent or to a patent that is divided” from 18 November 2012. The Applicant opposed the request to stay the opposition. However, on 9 August 2014, the Commissioner agreed to stay the opposition proceeding.

On 7 September 2015, the applicant abandoned the divisional application and requested that the Opposition against the parent application be renewed and that the Opposer file their statement of case. The commissioner accepted this, and on 9 September 2015 gave the Opposers 60 days to file their statement of cases.

On 8 November 2015 Teva announced that they were withdrawing their opposition for “pure business reasons”. On 30 November 2016, the Commissioner ruled that the Teva opposition be closed and that the Unipharm opposition continue.

detailed-costsOn 11 January 2016, Novartis requested costs from TEVA. The costs request was supported by a statement from Liad Whatstein, Novartis’ counsel, but with many details thereof blacked out as they are allegedly business secrets and some are pertinent to the ongoing Opposition by Unipharm. They also requested a confidentiality order with respect to the blacked out data.

The Commissioner decided that Novartis had failed to make a case that the data should remain confidential, and issued a ruling on 4 February 2016 rejecting the confidentiality clause. Novartis’ counsel chose not to provide a time-sheet detailing the work done, considering this also as being a trade-secret.

Novartis’ Claims

The Applicant considers that TEVA’s withdrawing from their opposition puts them into the category of a party that loses their case. They do not think that the ongoing opposition by Unipharm should release TEVA from having to bear costs in a proceeding that they initiated. Thus Novartis alleges that TEVA should have to pay half the actual costs incurred by Novartis from when the opposition was filed until when it was abandoned, which comes to $17,136.72.

The Applicant claimed that due to the tight deadlines and the complicated scientific data they had to prepare for the opposition prior to the statement of case being filed. The complications are evidenced by Unipharm’s opposition and by the corresponding opposition filed in Europe. Furthermore, the Applicant claims that TEVA’s behavior and the time passed from when the opposition was filed until when it was withdrawn after the continuation was abandoned, created a state of affairs wherein TEVA could reasonably expect that Novartis would work on the opposition and incur costs thereby.

Novartis also claimed that TEVA had abused the opposition process by filing a baseless opposition simply to delay the patent issuing and to cause the divisional application to he withdrawn. Consequently Novartis considered that TEVA should pay costs.

 TEVA’s Claims

TEVA considers that Novartis is NOT entitled to costs at all and the cost request should be denied and Novartis should be charged for Teva having to respond to their costs claim. Alternatively, each side should bear their own costs.   Since the Opposition was terminated early it is by no means clear that were it to have continued, Novartis would have prevailed and would be entitled to costs for the preliminary part where Teva was involved. Teva alleges that if the Novartis application is refused, not only would Teva not have to compensate them, but conceivably Novartis would have to pay the costs  that Teva incurred in filing the statement of case.

Additionally, Teva considers that the Applicants actions and the costs incurred thereby in preparation of an anticipated opposition were needlessly incurred. Teva considers that from studying other statements of opposition, there is nothing to justify the preliminary and anticipatory actions that Novartis took, and certainly one cannot hold Teva responsible for such actions. Furthermore, the actions taken by the Applicant preceded the time when Teva had to submit their statement of case – which, in the event, were never submitted.

Teva went on to allege that the claimed expenses were unreasonable when considering the stage that the opposition procedure had reached. Furthermore, these so-called expenses were, in the main, not supported by an affidavit.

The Ruling

True, Teva filed an Opposition which was then abandoned early on. The Application is, however, still being opposed by Unipharm and has not issued as a patent. In this specific case, following review of the claims and counter-claims of the parties, Commissioner Kling concluded that the request for costs to be awarded to Teva should be deferred until the Unipharm opposition runs its course, depending on the outcome thereof.

The Commissioner has the authority to delay cost ruling under section 162b of the Law:

162b The commissioner is authorized to rule reasonable costs, to determine which partner should pay costs and how they should be paid.

Generally, the Commissioner rules costs in favour of the winning party. As a general rule, the side that abandons their case for whatever reason, and consequently a patent issues, is considered as having lost the proceeding and is to bear costs of the opposing party. (See 133957 cost ruling Pfizer Products Ltd vs. Teva Pharamaceuticals 14 February 2008). Nevertheless, the awarding of costs is left to the commissioner’s discretion and this is certainly the case where the abandoning of an Opposition does not necessarily lead to a patent issuing.

In this instance, despite Teva abandoning the Opposition the proceedings are ongoing. Unipharm’s opposition is still being fought and one cannot consider Novartis as being one who has won their battle. It is thus not the time for Novartis to claim costs. Consequently, at this stage the Commissioner is refraining from determining what costs the Applicant is entitled to, and what costs the Opposer is or may be entitled to. These will be determined once the fate of IL 184027 us known.

As an afterward and without final determination of the costs themselves, the Commissioner noted that it is rather difficult to rule on costs in the manner that they were submitted, with certain facts blacked out and no support for other contentions. This makes the reasonableness, necessity of and proportionality of the alleged expenses difficult to substantiate and makes it difficult to award real costs (see Supreme Court Ruling 891/05 Tnuva Cooperative for Marketing Israeli Produce vs. The Authority for Granting export Licences of the Department of Trade and Industry p.d 60(1) 600 (30 June 2005). This is particularly the case when considering the enormous costs claimed and the early stage at which the Opposition was abandoned by Teva, prior to submission of any substantive arguments.  See the ruling of the Then Deputy.  Commissioner re IL 113433 Smithkline Beecham Corporation (SKB) vs. Teva Pharmaceuticals (30 May 2005).

Interim Ruling re Costs in Il 184027 Teva vs. Novartis Oppostion Asa Kling 19 September 2016.

COMMENT

Whilst filing an opposition and then suspending until a divisional application issues or is abandoned could be considered as a delaying tactic, often filing such divisional applications is simply a means to keep an applications pending through parallel opposition proceedings, enabling a new claim approach not conceived at the time of filing to be considered. Since Unipharm is rather good at successfully opposing patents, it is a reasonable tactic for Teva to leave it to them to challenge the validity of the allowed claims. One suspects that Teva will have made relevant prior art and arguments available to Unipharm.

The successful opposer is entitled to claim costs from the applicant. Nevertheless, I am flabbergasted that Whatstein could make a claim for over $17,000 for costs incurred by having an opposition filed against his client prior to even having a statement of case requiring analysis being submitted. There were no patents or other prior art or other evidence that needed to be analyzed and no claims that needed consideration. Apart from informing Novartis that an Opposition had been filed, it is difficult to see what work was necessarily incurred.  Submitting a blacked out statement simply flags the fact that this is unreasonable. In desperation, I went to his website and discovered that as part of patent litigation “The firm orchestrated and designed complex experiments in patent infringement and opposition proceedings and uses a network of internationally acclaimed experts and external laboratories. In addition, the firm is involved in a large number of multi-jurisdictional patent proceedings.” This certainly goes some way to explain how $17,000 worth of costs could be accumulated, but one wonders if it was proportionate, reasonable and neccessary in response to an opposition being filed prior to relevant prior art and arguments being made of record.


Israel Patent Office Rules Costs for ‘Unnecessary’ Design Cancellation Proceeding

September 11, 2016

costs-awardThere are very few Israel Patent Office rulings or Israel court rulings relating to designs. However, they do occur.

Israel Design No. 53151 to SHL Alubin ltd relates to a profile. It was submitted for registration on 6 September 2012, and issued on 19 December 2013. On 31 December 2015, it was canceled following a Court Order obtained by Silver Hong Kong Israel, who then requested real and actual costs to be awarded.

Silver Hong Kong Israel filed for cancellation on 10 August 2014. SHL Alubin ltd denied all charges. In parallel to the cancellation procedure, a complaint was filed with the Haifa District Court – Civil Matter 21470-03-14 SHL Alubin LTD vs. Exstel LTD.  Before the Israel Patent Office could hear the case, the District Court issued a ruling on 29 December 2015, canceling the mark.

To complete the picture, the design owner SHL Alubin LTD filed a request to hold the court’s ruling, but on 27 January 2015, that request was rejected and the design cancellation was published in the Israel Patent Office journal.

At that stage, a request for costs was filed, for the work done until that time, including filing statements of case, submitting evidence and counter-evidence. To support the request for costs, the Applicant submitted an affidavit from the CEO of Silver Hong Kong Israel ltd., with receipts for official fees and a breakdown of hours per month spent on the project. The breakdown was created for this request for costs, but was not detailed.

Silver Hong Kong Israel ltd. rather oddly claimed to have invoices that they were not submitting for secrecy reasons unless asked to.  On 10 May 2016, Applicant submitted invoices together with a statement from the CEO. The invoices were for consultation from the agent of record for each stage of the proceedings and totaled $35,567.5 (approx. 140,670 Shekels) for 42.5 hours of senior attorney time and 187.5 hours of junior attorney time, and a further 832 Shekels for official fees and 1500 Shekels for incidental expenses, not previously claimed.

Silver Hong Kong Israel ltd. considered the costs appropriate for the stage reached. They claimed that the court filing was forced on them as Alubin threatened to sue them for registered design infringement. However, since Alubin’s claims and designs were indefensible, their behaviour should be sanctioned, and this should be reflected in the costs ruled.

Silver Hong Kong Israel claimed that Alubin had hidden the functional nature of their design when filing the application, and this was what resulted in the design eventually being canceled. Silver Hong Kong Israel further alleged that Alubin hid the court proceedings from them and made it difficult for them to obtain details of the proceedings before the courts.

Alubin countered that the invoices were made out to a different company, VeMetal ltd., and there was no indication of a connection between that company and the plaintiff here.

There are very few Israel Patent Office rulings or Israel court rulings relating to designs. However, they do occur.

Israel Design No. 53151 to SHL Alubin ltd relates to a profile. It was submitted for registration on 6 September 2012, and issued on 19 December 2013. On 31 December 2015, it was canceled following a Court Order obtained by Silver Hong Kong Israel, who then requested real and actual costs to be awarded.

Silver Hong Kong Israel filed for cancellation on 10 August 2014. SHL Alubin ltd denied all charges. In parallel to the cancellation procedure, a complaint was filed with the Haifa District Court – Civil Matter 21470-03-14 SHL Alubin LTD vs. Exstel LTD.  Before the Israel Patent Office could hear the case, the District Court issued a ruling on 29 December 2015, canceling the mark.

To complete the picture, the design owner SHL Alubin LTD filed a request to hold the court’s ruling, but on 27 January 2015, that request was rejected and the design cancellation was published in the Israel Patent Office journal.

At that stage, a request for costs was filed, for the work done until that time, including filing statements of case, submitting evidence and counter-evidence. To support the request for costs, the Applicant submitted an affidavit from the CEO of Silver Hong Kong Israel ltd., with receipts for official fees and a breakdown of hours per month spent on the project. The breakdown was created for this request for costs, but was not detailed.

Silver Hong Kong Israel ltd. rather oddly claimed to have invoices that they were not submitting for secrecy reasons unless asked to.  On 10 May 2016, Applicant submitted invoices together with a statement from the CEO. The invoices were for consultation from the agent of record for each stage of the proceedings and totaled $35,567.5 (approx. 140,670 Shekels) for 42.5 hours of senior attorney time and 187.5 hours of junior attorney time, and a further 832 Shekels for official fees and 1500 Shekels for incidental expenses, not previously claimed.

Silver Hong Kong Israel ltd. considered the costs appropriate for the stage reached. They claimed that the court filing was forced on them as Alubin threatened to sue them for registered design infringement. However, since Alubin’s claims and designs were indefensible, their behaviour should be sanctioned, and this should be reflected in the costs ruled.

Silver Hong Kong Israel claimed that Alubin had hidden the functional nature of their design when filing the application, and this was what resulted in the design eventually being canceled.

Alubin countered that Silver Hong Kong Israel based their case on the District Court case that they were not a party to. Silver Hong Kong Israel were granted access by the judge and this enabled them to file and prosecute the cancellation proceedings with minimal additional work.  Since the case never went to a hearing, this should be reflected in the costs awarded.  The cost request was a random list of hours and persons without details of the work allegedly done on behalf of Silver Hong Kong Israel, and the total amount of hours claimed was grossly inflated.  The invoices were made out in the name of V Metal ltd., not Silver Hong Kong Israel, and there was no link between the invoices and the work done.

Silver Hong Kong Israel countered this by explaining that V Metal ltd. was a sister company with common owners.

Commissioner Asa Kling noted that Section 46 of the Patent & Design Ordinance 1926 provides that:

In any legal proceeding before the Commissioner under this Ordinance, the Commissioner may rule what he considers to be reasonable costs, can decide which party should pay the costs and how they should be paid.

 [MF – there is an Israel Design Law pending legislation, but until it enters into force, design law is covered by this rather archaic ordinance].

The case-law establishes that the losing party should pay real costs. However, the courts can decide if the actual costs were reasonable, proportional and necessarily incurred in fighting the case, in the specific circumstances. The costs must be proportional to the issue being considered, so that the successful litigant recovers his costs but doesn’t punish the loser. See Bagatz 891/05 Tnuva Cooperative for Marketing Israel Produce vs. the Body Authorized to Grant Import Licenses of the Ministry of Trade & industry, 30 June 2005 paragraph 19.  The various considerations have been weighed up in a long list of patent and trademark rulings by the Israel Patent Office, and are appropriate for design litigation as well.

 

To be awarded real and actual costs, the successful litigator must show that the proof, a breakdown of hours and an agreement for compensating counsel.  Once the successful party provides a detailed costs analysis, the onus is on the losing party to pick holes in the costs request. This is stated in Paragraph 225 of the Tnuva ruling:

Once the detailed request for costs is substantiated – the burden of proof switches and the onus is on the loser to show why the costs are exorbitant, based on their being unreasonable, unnecessary and / or disproportional. 

The claim that Silver Hong Kong Israel could have based their case on the District Court filings was a general allegation and was substantiated in any way. Examination of the submissions to the Israel Patent Office dies imply that a significant amount of real work was performed on behalf of Silver Hong Kong Israel.  The case before the Israel Patent Office has a different statement of case, and evidence to support that statement of case. The court proceeding is not a substitute that can be cut & pasted.  Alubin claims that the costs incurred were unnecessary but there are no concrete examples and the company does not back this claim with evidence.

Alubin considers the whole submission was unnecessary since the case was never heard by the Israel Patent Office. Commisioner Kling rejects this position as  something that Silver Hong Kong Israel could not have predicted and the fact that the case before the Israel Patent Office was never ruled on its merits does not render the filing of the case frivolous or unnecessary.

In light of the above analysis, Silver Hong Kong Israel are entitled to real costs. However, Silver Hong Kong Israel did not originally submit details of the actual costs incurred. There is a difference between the identity of the party to the cancellation proceeding and the entity to which invoices were issued and due to the invoices not being submitted in a timely manner, this was not fully explained. This and the fact that the original request for costs was not detailed, can fairly be taken into account in a costs ruling under Regulation 512b of the Civil Regulations 1984, which allows the courts to consider the parties’ behaviour.

 Taking the above into account, costs of 832 Shekels and legal fees of 80,000 Shekels are awarded to Silver Hong Kong Israel , to be paid within 30 days or the sum will be index linked and interest will be incurred.

Costs re cancellation proceeding for Israel Design No. 53151, Ruling by Asa Kling, 3 August 2016.

 


Reconsideration of a Patent Extension Term

August 10, 2016

last minute shopping

In an odd development, but not one that without precedent – see here and here – Dr Shlomo Cohen Law Offices has asked the Israel Patent Office to reconsider a judicial ruling.

In this instance, the original ruling relates to the Patent Term Extension (PTE) of IL 169693 to “Bristol Myers Squibb” and Pfizer that issued under section 64(v)5 of the Israel Patent Law. The original ruling issued in September 2015, and granted a patent term extension of 974 days until 18 May 2025. That ruling followed a challenge by the patentees to Examiner’s decision of 5 March 2015.

The way that Patent Term Extensions (PTEs) are calculated in Israel is detailed in Read the rest of this entry »