Become Ill? Been Injured? – ? חלית? נפצעת

October 17, 2017

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. Read the rest of this entry »


An Attempt to Cancel Patent For Breaking GSM Standard Algorithm

September 27, 2017

GSM logoDr Elad Barkan invented or discovered a cryptology method for breaking GSM coded communications and filed a patent application on 30 April 2003 titled “Cryptanalysis Method and System”, which was awarded Israel Patent No. IL 155671 in June 2005. The method was based on the discovery of a fundamental coding flaw in the GSM protocol which caused quite a stir among both telecommunication experts and the cryptology community.

DiscoveryOn 23 June 2015, Rontal Engineering Applications 2001 Ltd applied to have the patent cancelled on various grounds including that it was a discovery and not an invention; that the supplementary tests of inventiveness were met so that there was no inventive step, and that the patent was never implemented. In a long and detailed decision, Deputy Commissioner Ms Jacqueline Bracha considered the various allegations and ruled on the validity of the patent registration.

After the statements of case and the evidence were submitted, a three-day hearing was scheduled in December 2016, and the parties then submitted written summations.

Complicating matters, during the summation stage, the Opposer, Rontal Engineering Applications 2000 Ltd, filed for bankruptcy. Dr Barkan submitted a request that Rontal Engineering post a bond for 200,000 Shekels, to pay his legal fees should he prevail against them. The Deputy Commissioner agreed with his request and a bond was posted duly on 15 July 2017.

Somewhat unusually, the ruling starts with a list of definitions of various words relating to the GSM protocol. Then the decision goes on to rule if the invention relates to patentable subject matter.  In a 46 page ruling with 165 paragraphs, the Deputy Commissioner found that the invention is patentable per se. Furthermore, the invention described is substantially different to the closest prior art so the patent was upheld.

In my conclusions at the end of this article, I conclude that the Opposers could probably have successfully obtained their real objective by negotiating a claim restriction to exclude brute force attacks which were never intended to be covered by the claims anyway.

A summary of the Decision follows.

Glossary

The patent relates to GSM encryption, and to understand the case, a number of terms need to be defined.

GSM NETWORKGSM is an acronym for Global System for Mobile Communications. It is a standard for cellular phone networks developed in 1987 and available since 1992. The standard was published before the priority date. The standard is a digital telecommunication standard and voice is digitized, transmitted and then converted back into sound. GSM is encrypted to prevent third parties from eavesdropping. The communication takes place via base stations.

Read the rest of this entry »


Oppostion to Smartbike Trademark

September 17, 2017

268138El-Col Electronics (Nazareth Illit) Ltd submitted a trademark application for Israel Trademark No. 268138 in class 12.

The mark is a graphical image bearing the words Smart Bike as shown.

On 7 March 2017, an opposition was filed by Smartrike Marketing Ltd and Smart Trike MNF PTE LTd under section 24a of the Trademark Ordinance 1972, and Regulation 64a of the 1940 regulations.

On 30 April 2017, the Applicants requested an extension of time for submitting their Counter-Statement of Case in Response to the Oppositions. On 20 June 2017, the Applicant submitted their claims in accordance with Section 35 and requested that the Opposer deposit a bond for covering costs.

Section 38 of the Regulations provides the Opposer with a period that ended on 20 August 2017 to submit their evidence. In addition, the Opposer should have responded to the bond request within 20 days. However, until the time of writing this Decision, it appears that the Opposer chose not to submit evidence in an Opposition they themselves initiated. Nor did they respond to the request to deposit a bond.

Consequently, under Regulation 39, Smartrike is to be considered as having abandoned the Opposition:

If the Opposer does not submit evidence, he is considered as having abandoned the Opposition unless the Commissioner rules differently.

Since the Opposer did not submit  evidence and also failed to contact the court secretary, and since she saw no justification to rule differently, Adjudicator of IP, Ms Shoshani-Caspi ruled that the opposition be considered closed, and that Israel Trademark Application No. 268138 be immediately registered.

Based on the various considerations, she ruled that the Opposer should pay costs of 1000 Shekels + VAT within 14 days.

Opposition to Israel TM Application No. 268138, Ruling by Ms Shoshani Caspi, 28 August 2017


Apple and WhatsApp’s Apps for Apps

September 14, 2017

272109 apple watch appOn 9 February 2015, Apple Inc submitted Israel trademark application no. 272109 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular background as shown.

280669

Before Apple’s trademark application was examined, WhatsApp Inc. filed Israel trademark application number 280669 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular speech bubble shaped background as shown.

 

 

Apple’s application was for Read the rest of this entry »


MANDO

August 24, 2017

MANDOHalla Holding Corporation filed two Israel Trademark Applications Nos. 257747 and 257748 for the word mark MANDO and for the stylized Mando mark in classes 12 and 35.

The marks covered Horns for motor cars, Anti-theft devices for motor cars, Wheel rims for motor cars, Cycles, Parts and accessories for cycles, Cycle rims, Wheels for motorcycles, Cycle spokes, Cycle stands, Cycle frames, Cycle handle bars, Cycle hubs, Two-wheeled motor vehicles, Air bags{safety devices for automobiles}, Steering wheels for automobiles, Reversing alarms for automobiles, Parts and accessories for automobiles, Electric cars, Tandem bicycles, Mopeds, Touring bicycles, Delivery bicycles, Bicycles, Bicycle rims, Wheels for bicycles/cycles, Bicycle spokes, Frames{for luggage carriers}{for bicycles}, Bicycle stands, Bicycle frames, Bicycle handle bars, Parts and accessories for bicycles, Handlebars, Shock absorbing springs for motor cars, Spiral springs for vehicles, Shock absorbing springs for vehicles, Spring-assisted hydraulic shock absorbers for vehicles, Air springs for vehicles, Suspension Shock absorbers for vehicles, Shock absorbing Springs for vehicles, Suspension shock absorbers for vehicles, Shock absorbers for automobiles, Brakes for motor cars, Brake linings for motor cars, Brake shoes for motor cars, Brake segments for motor cars, Disk brakes for vehicles, Band brakes for vehicles, Brakes for vehicles, Brake facings for vehicles, Brake linings for vehicles, Brake shoes for vehicles, Brake systems for vehicles, Braking systems for vehicles and parts thereof, Brake segments for vehicles, Brake Shoes for vehicles, Block brakes for vehicles, Conical brakes for vehicles, Non-skid devices for vehicle tires[tyres], Braking devices for vehicles, Cycle brakes, Band brakes{for land vehicles}, Block brakes{for land vehicles}, Brake pads for automobiles, Brakes for bicycles/cycles, Bicycle brakes, Gearboxes for motor cars, Crankcases for components for motor cars{other than for engines}, Clutch mechanisms for motor cars, Torque converters for motor cars, Gears for cycles, Reduction gears for land vehicles, Gears for land vehicles, Gear boxes for land vehicles, Transmission shafts for land vehicles, Gears for vehicles, Cranks for cycles, Bearings for land vehicles, Axis for land vehicles, Couplings for land vehicles, Axle journals, Trailer couplings, Electric motors for motor cars, Motors for cycles, Alternating current[AC] motors for land vehicles, Driving motors for land vehicles, Motors for land vehicles, Servomotors for land vehicles, Motors{electric}{for land vehicles}, Direct current[DC] motors for land vehicles; All goods included in Class 12, and Import-export agencies, Administrative processing of purchase orders, Wholesale services for freezers, Retail services for hot-water heating apparatus, Wholesale services for automobiles, Commercial intermediary services in the field of bicycles, Retail services for tires[tyres] and tubes, Wholesale services for antifreeze, Retail services for liquid fuels, Commercial intermediary services in the field of parts of vehicles, Commercial intermediary services in the field of articles of vehicles, Commercial intermediary services in the field of renewal parts of vehicles, Trade agency, Trade consultancy, Trade brokerage, Offer services [trade]; All services included in Class 35

On 23 November 2015, the marks were allowed and on 29 February 2016 an Opposition was submitted by MAN Truck & Bus AG under Section 24a of the Trademark Ordinance and regulation 35 of the regulations.

On 2 May 2016, the Applicant submitted their counter statement and on 6 October 2016, the Opposer submitted their evidence. The Applicant should have submitted their counter-evidence by 6 December 2016, but on 30 November 2016 and again on 2 February 2017, they requested and received two monthly extensions, and so had to submit evidence by 5 May 2016. Despite the extensions, the Applicant did not, in fact, submit their counter-evidence.

On July 2017, and going beyond the letter of the Law, the Patent Office Court sent the Applicant the following notice:

On 6 October 2016 you were required to submit your evidence under Section 39 of the Trademark Ordinance 1940. After receiving extensions, the deadline was set for 5 May 2017. To date, you have not submitted evidence. You have 10 days to let us know if you intend to proceed with this opposition proceeding. If you fail to respond, the case will proceed to a ruling.

The Applicant failed to respond, no evidence was received and no further extensions were sought. The secretaries referred the case to Ms Shoshani Caspi for a ruling.

In light of the above, Ms Shoshani Caspi considers the Applicant as having abandoned Israel Trademark Applications Nos. 257747 and 257748, and the Opposition is accepted for all opposed goods.

Using her authority under Section 69 of the Ordinance, and considering the fact that the Opposer had to submit a statement of case and evidence, instead of the Applicant simply actively abandoning the Application at their own initiative, Ms Shoshani Caspi ruled costs of 7500 Shekels exc. VAT.

Ruling re two Israel Trademark Applications Nos. 257747 and 257748  for MANDO by Ms Shoshani Caspi, 25 July 2017.

COMMENT

Applicant could have saved themselves fees by withdrawing. Additionally, even without submitting evidence they were entitled to request that Adjudicator consider the Opposition on its merits. It is certainly possible that MAN Truck & Bus AG do not have a strong enough case to prevent the mark being registered.

 

Procrastination can be expensive.


Cobra

August 22, 2017

COBRA.pngKnipex-Werk and C Gustav Putsch KG opposed Israel trademark application nos. 279193 and 283268 in classes class 7 and 8 respectively, which were both filed by Ohev Zion LTD (Ohev Zion, means Love of Zion). The marks are fr the stylized word COBRA shown alongside.

Furthermore, Knipex-Werk and C Gustav Putsch KG themselves filed Israel trademark application no. 289408 in class 8 for the word COBRA, for water pump pliers and pipe wrenches.

On 25 June 2017, the parties submitted a notification to the effect that after long and continuous negotiation, they had reached a coexistence agreement regarding the registration and usage of the marks in Israel, with intent to prevent misleading or confusing Israeli consumers, and the Opposition was thus closed with both parties agreeing to pay their own costs. A copy of the coexistence agreement was appended to the notification.

The parties stated that they were unaware of any actual events of confusion resulted by their usage of the marks in Israel, and that endorsement of the coexistence agreement would protect the public interest, prevent confusion and misleading the public and protect the interests of both parties, acquired through use of their marks in Israel.

cobrasIn the framework of the agreement, the Applicant and the Opposer agree to a number of conditions, designed to protect the Israeli consumers. In addition to restricting the range of goods in the Applications, as detailed below, the Applicant will only use the stylized COBRA mark, and not the word alone. The Opposer will not use the stylized mark. Both parties undertake not to use their marks with respect to goods that the other party has applied for, and thus there is no likelihood of customer confusion.

In accordance with the agreement, the parties have requested that Application number 279193 be restricted to “electric, electro-mechanical or chargeable pliers, wrenches and pipe  wrenches”, and that Application no 284368 will actively disclaim “pliers, wrenches and pipe wrenches”.

The parties request that opposed Israel trademark application nos. 289408 in class 8 for  “water pump pliers and pipe wrenches” be immediately examined and allowed and the Opposition be considered dropped only on publication of the 289408 application as allowed. Should any of this agreement not be acceptable to the Registrar, the parties requested that a hearing to be attended by their legal representatives be scheduled as soon as possible.

RULING

There are three trademark applications. The Applied for marks are stylized and the Opposer’s mark is a simple word mark.

In light of the agreement before her, the Adjudicator, Ms Yaara Shoshani Caspi does not consider that it is sufficient for the Opposer to agree to refrain from using the Applicant’s stylized mark. Also it is insufficient for both parties to refrain from applying for Cobra marks for goods that the other party sells. The Adjudicator considers this insufficient to create the desired difference between the two Cobra marks.

As to correcting the list of goods, the Adjudicator is only partially satisfied.

The list of goods of Israel trademark application no. 279193 in class 7 is as follows:

“Machines and electric and chargeable hand tools, such as electric drills and electric saws; electric and motorized gardening tools, such as choppers, fence trimmers, leaves blowers; air compressors; vacuum cleaners; welding machines; water-pressure washing machines; and electric machines and machine tools for making, processing and cooking food and beverages, namely food processors, meat grinders,  blenders, juice press, vegetable peeling and slicing apparatus; coffee grinders; kneading machines, devices for grinding, milling, crushing and chopping food; electric can openers, electric meat grinders, garbage disposals; vacuum-cleaners; water pressure cleaning devices, steam cleaning devices; and parts and accessories for all the above; all the aforementioned goods excluding electric, electromechanical or chargeable pliers, wrenches and pipe wrenches; all included in class 7.”

The Adjudicator was willing to allow the suggested restriction which disclaims the articles listed by the other party in Israel trademark application no. 289408. However, the agreed list of goods for Israel trademark application no. 284368 in class 8 is not acceptable. That list is as follows:

“Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels, razors, electric and non- electric hair clippers and beard, trimmers, scissors to trim hair, nail clippers, electric irons and steam irons, electric hair stylers; parts and accessories for all the above; all the aforementioned goods excluding pliers, wrenches and pipe wrenches; all included in Class 8.”

This is unacceptable since Israel trademark application no. 289408 also includes: “Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels”, so the amendment to Israel trademark application no. 284368 is not acceptable.

If, however, Israel trademark application no. 284368 is amended to exclude “Manual hand tools, namely drills, hammers, screws, pinchers, corner nibblers, table nibblers, saws, nibble wheels”, the marks will be considered allowable and the coexistence agreement will be endorsed. The parties have until 19 July 2017 to accept this. There does not seem to be a point in holding a hearing whilst the parties are negotiating, and if the parties fail to come to an agreement, the Opposer should submit their evidence within two months, i.e. by 5 September 2017, with the appropriate fees.

Interim Ruling by Ms Yaara Shoshani Caspi re coexistence of COBRA trademark applications, 6 July 2017.

 


Chipsico – a Competing Marks Proceeding Where Both Marks were Refused

July 11, 2017

267474On 13 August 2014, the New Dubak Natsha ltd filed Israel trademark application no. 267474 in class 29 for chips (potato crisps). The stylized mark is shown alongside, and reads CHIPSICO Batates Modalaah – (Chipsico Crinkle-Cut Potato Chips).

The same day, the Halawani Industrial Company ltd filed two trademark applications for coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitute, flour and grain products, bread, wafers, cakes and sweets, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, tomato paste, seasoning mixtures, spices, frozen foods, snacks and crackers. The first application was Israel Trademark No. 267770 CHIPSICO and the second, 267772 was for شيبسيكو, which is Chipsico written in Arabic.

crinkle cutThe trademark department considered the marks as being confusingly similar and the parties failed to reach an agreement, so on 8 May 2016, a competing marks proceeding under Section 29 of the Ordinance was initiated and the parties were invited to present their evidence.

New Dubak Natsha ltd submitted: Read the rest of this entry »