A ballsy trademark ruling

January 30, 2018

SodKGaA & Henkel AG filed a series of Israel trademark applications (Nos.  258658, 258797, 258798 and 259500 as shown alongside.258658

The marks cover Bleaching preparations and other substances for laundry use, rinsing agents for laundry and tableware, stain removing preparations; cleaning, polishing, scouring and abrasive preparations, chemical agents for cleaning metal, enameled sheet metal, wood, cork, porcelain, ceramic, glass, plastic, leather and textiles; spot remover; soaps not for personal use, perfumery, essential oils in class 3, “Disinfectants and deodorants other than for humans and animals”. In class 5, and Sponges, brushes, cleaning cloths, cleaning purposes, hand-operated cleaning appliances, devices for dispensing sanitary cleaning and fragrance products, partially with the addition of disinfectant, included in class 21.

The Israel Trademark Department refused to register the marks on the grounds that they lacked inherent distinctiveness as indication of source, since they were the shape of the products themselves. The marks were also refused under Section 8(b) of the Ordinance 1972, as not having acquired distinctiveness through use.

The Applicant claimed that the marks are registerable since they serve in practice as a trademark, have acquired distinctiveness through use, and the choice of shape is not a result of real aesthetic or practical considerations. The Applicant requested a hearing, and submitted the following evidence:

  • An opinion by Mr Oshik Roshnik, marketing consultant, who held a public survey regarding how well known the marks were. Mr Roshnik attended the hearing and the survey and his conclusions are detailed below.
  • An affidavit from Ms Danielle Rabinowitz who is the product manager for Henkel Sod ltd, which is fully owned by the Applicant. Her testimony affirmed the sales in Israel and abroad and the investment in advertising and promotional activity. Ms Rabinowitz also attended at the hearing.
  • An Affidavit of Ms Cecile Leroi the International Marketing Manager of the Applicant, who testified regarding sales.

A large quantity of marketing material was appended to the affidavits.

sod balls.jpg

From the evidence it appears that the products are sold in Israel in blister packs that have transparent fronts. The mark Sod appears clearly on the packaging, which is the brand for these and other products of the Applicant in Israel. The Sod mark is recognized as being a leading brand in Israel.

juggling four balls

The Applicant claimed that since January 2014 they have invested 15 million shekels in advertising and marketing in various telecommunication channels, including point-of-sale. As a result of this intense marketing, some 6 million units have been sold, which is 30% of the market. These statistics support the Applicant’s contention that the marks have acquired distinctiveness.

The Applicant’s legal counsel emphasized that the marks were registered in a number of countries, including the EUIPO. The Applicant is also prepared for the mark to be registered under Section 16.

Discussion

toffiffee

The tests for validity of a trademark registration for the shape of an article was given in the Supreme Court ruling 11487/03 August Storck KG vs. Alfa Inuit Food Products LTD, of 23 March 2003. These tests are summarized in Circular 033/2016 Trademarks: Emphasis on Examining trademarks from 15 December 2016 as follows:

  1. The requested shape has to serve as a trademark in practice
  2. The requested shape cannot be significantly aesthetic or practical.
  3. The shape has acquired distinctiveness through use

This topic has been widely discussed in the case-law and literature in Israel and abroad. The tests have been largely adopted due to comparative law, and so we can use foreign rulings to aid us in coming to a conclusion.

Nevertheless, the Deputy Commissioner does not consider that the applied for mark fulfils the Supreme Court’s criteria.

The Mark Does Not Serve As a Trademark in Practice

The question asked in this context is whether the public and the applicant see the shape of the mark separately from other marks that are applied to the product to indicate the source, thereby serving as trademarks. As clarified in Berkeley “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 197, from a UK decision regarding the registerability of the shape of a container:

The relevant question is not whether the container would be recognised on being seen a second time, that is to say, whether it is of memorable appearance, but whether by itself its appearance would convey trade mark significance to the average customer.”

The things are stated regarding containers, but this is also true regarding the shape of the products themselves, since these are not generally considered as being trademarks by the public, and the packaging includes the well known word mark Sod as a trademark indicating the source of the goods. It is true that sometimes a single object will have more than one trademark on it, each being independently registerable. However, in such cases it is difficult for the manufacturer to demonstrate that the public afford each element weight as a trademark: See J. Thomas McCarthey in McCarthey on Trademarks and Unfair Competition (2011), pages 7-12:

“When a label or advertisement contains a cluttered morass of claimed marks in many words, slogans and designs, no one of these things is likely to make a significant trademark impression on customers. If a given designation is a trademark, that should be immediately evident to the ordinary buyer. If it takes extended analysis and legalistic argument to attempt to prove that a designation has been used in a trademark sense, then it has not.”

kitkatThe need for the public and the manufacturer to rely on the shape of the product as an indication of the source of the product is required for it to be registerable has been discussed recently in the UK decision [2017] EWCA Civ 358 Société des Produits Nestlé SA  v. Cadbury UK Ltd. (Kit Kat). In this ruling, the court affirmed the ruling of two lower courts that the shape of the KitKat snack bar is not registerable. In that case, the issue of the burden of proof for registering a product shape was referred to the CJEU:

The judge thought that the answer to this question was not clear and depended upon what was meant by “use of the mark as a trade mark”. As he put it: does it require the applicant to show that, as a result of the use of the mark, consumers rely on the mark as a trade mark, or is it sufficient that consumers recognise the mark and associate it with the applicant’s goods?”

The UK court considered that the European Court’s position was that the public have to rely on the product shape as a source of origin, and not merely to recognize the product shape:

“Accordingly, I agree with the judge that it is legitimate for a tribunal, when assessing whether the applicant has proved that a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether such person would rely upon the sign as denoting the origin of the goods or services if it were used on its own. Further, if in any case it is shown that consumers have come to rely upon the mark as an indication of origin then this will establish that the mark has acquired distinctiveness”

Deputy Commissioner Jacqueline Bracha does not consider that the survey and publicity material in the present case proves the Applicant’s contention.

In all cases, the word mark Sod clearly appears in the publicity material, and the advertisements all include the word Sod a large number of times. So it does not appear that the applicant is relying on the visual appearance of the product to indicate the origin thereof.

The extent in which the shape of the package is capable of serving as a trademark depends on the degree that they are different from that typical in the field. See for example, Israel Trademark Application No. 174402 Diageo North America, Inc. from 13 April 2011. The Applicant notes that they chose the mark to distinguish themselves from their competitors. The Applicant submitted a lot of material that shows that cleaning materials intended to be hung in the toilet bowl come in different shapes, however all of these include a hook and a perforated plastic case so that they can serve their function of hanging over the rim and allowing water to reach the cleaning material on flushing. The product in question is not sufficiently distinctive that it is recognized by the public as being a trademark. From the material submitted and from a personal search of the Internet it appears that such products come in various shapes and sizes including five flowers, three crescents three rectangles and so one. Most of the products are coloured and two colours are combined in a single product… Many are sold in transparent packages that have the manufacturer’s logo on the upper part.

The mark has not attained distinguishing character through use

There is a connection between the question of whether a mark serves as a trademark in practice and whether it has acquired distinctiveness. The Applicant has to demonstrate that through sales, etc., there is public awareness of the mark.

First and foremost, the Applicant has to show that the goods have a reputation, meaning that the public identifies the goods with the applicant or at least with a specific source, even if not identifying the applicant by name.
….
Continuous significant usage is not what is important, but rather the type of use:  if it is a use that identifies the product with the Applicant, see Appeal 18/86 Israel Venetian Glass Factory vs. Les Verries de Saint Gobain p.d. 45(3) 224, 238.

To prove a relationship between the product and supplier, the Applicant submitted Mr Roshinak’s survey. The questions were directed to respondents who admitted to being the purchasers of domestic hygiene goods for their homes. The respondents were first asked if they were familiar with the products for which the trademarks were sought (specifically the product having Israel TM Application No. 258658). It is noted that the respondents were not asked if they had purchased the product and so those who had seen the advertisements also responded positively and some 67% were familiar with the product. Mr Roshnak explained at the hearing that this is significant. In this regard, it is noted that the publicity campaign was conducted close to the survey and may well have affected the results. See Complaint 31706-01-12 Dan Design Center ltd vs. B.R.A.P. Projects ltd 19 June 2012.

survey3.JPGThose respondents  that responded positively to the first question were asked if the product was known in Israel. The Deputy Commissioner considers this is less relevant since it surveys what the respondents thought and not how well known the product was. In the next stage, the respondents were asked if they were familiar with other products of the same manufacturer and 65% were unaware of any other products or were not sure in their response.

The Deputy Commissioner considers this the most significant part of the survey. The purpose of a trademark is to link a product with other products of the same supplier. See Seligsohn Trademark Law and Similar Law 1973 page 1. If this connection does not exist, the shape of the mark does not serve as a trademark in practice.

In this instance, the majority of the public does not consider the product as associated with a particular supplier and this is clear from the fact that they did not know if the supplier sold other goods. In other words, the public surveyed were unaware of the source of the goods and did not connect the balls with other products marketed under the Sod mark. Since the Applicant acknowledges that Sod is a well known mark associated with a wide range of hygiene products, had they associated the product with Sod, they would have made a connection and mentioned other products.

The Applicant claimed that the acquired distinctiveness exists where the public associate a product with some supplier and not necessarily with a supplier by name. This is true. The principle was established in Appeal 18/86 Israel Venetian Glass Factory vs. Les Verries de Saint Gobain p.d. 45(3) 224, 238. However, in this instance, it is claimed that Sod is a ‘quality brand’ and so it is not reasonable to claim that the majority of the public do not know the brand. Furthermore, from the response to this question, it appears that the majority of the respondents do not relate the product with ANY supplier and for this reason cannot answer whether the supplier supplies additional products.

survey.jpgIn the final survey, the respondents were asked who manufactures or markets the product. This was a multiple choice question with the options Henke, Sod, some other supplier SPECIFY and do not know/not sure. This is a closed-ended leading question similar to that discussed in Opposition 112645 Mei Zach (Clear Water) Shlomo Zach vs. Teneh Industries 1991 ltd from 12 July 2007. Two of the four answers were correct. The others required the respondents to admit to not knowing or to suggest an alternative themselves. It is hardly surprising, therefore, that most respondents answered correctly. Furthermore, the respondents who answered correctly were not even required to remember the manufacturer/supplier’s name themselves….

leading questionMr Rohnak was asked about this during the hearing and responded that respondents are not ashamed to answer that they do not know, and so their choosing a correct answer is significant and indicates knowledge. Mr Roshnak did not think that wording the question differently and giving names of other manufacturers of hygiene products would have led to a different result. This response is speculative and is beyond his competence since it does not relate to making surveys and drawing results but rather to anticipating responses to questions not asked. The fact that most respondents elected “Sod” and not “Do not know” certainly raises the suspicion that the respondents answered that way as the question led them to do so, or because the way the survey was constructed led them to believe that this was the desired response.

Deputy Commissioner Bracha concludes that the survey does not prove that the public identifies the product with the source. Furthermore, it really indicates a lack of identification with any source.

By way of comparison, in the KitKat ruling, most respondents recognized KitKat as being an image of the snack without the name being suggested to them. Nevertheless, the court held that the manufacture does not rely on this recognition and the shape is not eligible for registration. In this instance, the public could not identify the source without leading questions that posed the correct response.

In evidence of acquired distinctiveness, the Applicant submitted an affidavit of the product manager. It is not denied that the Applicant invested large sums in promoting the product to the result that they captured a significant 30% of the market. However, this does not show that the public identifies the product with the supplier without the Sod mark clearly shown.

In light of the above, having concluded that the mark does not have distinguishing characteristics, it cannot be registered under Section 16 either.

The mark is therefore refused.

Ruling by Ms Jacqueline Bracha re 4 Balls Shape Mark to KGaA & Henkel AG 258658, 258797, 258798 and 259500, 18 December 2018.


Transcendental Meditation

January 11, 2018

meditationThe Maharishi Vedic University Ltd. submitted Israel TM Application No. 249554 for מדיטציה טרנסנדנטלית which is Transcendental Meditation transliterated into Hebrew. The mark was submitted on 21 September 2012 and covers:

Education services relating to health; conducting of courses relating to business management; production of video tapes for corporate use in management educational training; providing training courses on business management; provision of instruction courses in general management; conducting workshops and seminars in personal awareness educational services, namely, providing motivational and educational speakers in the field of self and personal improvement; personal development courses; personal development training; provision of training courses in personal development; meditation training; teaching of meditation practices; all included in class 41.

The mark is a simple word mark without stylistic or graphic elements.

Background

Maharashi

Transcendental Meditation is a technique for avoiding distracting thoughts and promoting a state of relaxed awareness. The Maharishi Mahesh Yogi (1918–2008) derived Transcendental Meditation from the ancient Vedic tradition of India. He brought the technique to the U.S. in the 1960s. The technique is a specific form of silent mantra meditation that is often referred to as TM. Since TM also stands for trademark I considered relating to TMTM for the Transcendental Meditation Trade Mark, TMTMA for the Transcendental Meditation Trade Mark Application, but have decided not to use the abbreviation altogether.

In an Office Action dated 9 February 2015, the trademark examiner ruled that the mark could not be registered as, with respect to the services covered, it lacked a distinguishing character as required by Section 8(a) of the Trademark Ordinance 1972.  The Examiner also considers that the requested mark is not registerable since it is descriptive and directly relates to the type or quality of the services provided which are transcendental meditation exercises and the training of transcendental meditation counselors contrary to Section 10(11).

maharishi book

In the Office Action, the Examiner noted that the organization teaching the Transcendental Meditation is called the International Meditation Association, and that hundreds of schools around the world use the technique. Consequently, one cannot allow the Applicant to monopolize the words making up the mark and thereby prevent other service providers from passing on and teaching the Maharishi’s teachings.

In response to these objections, on 30 December 2015 the Applicant responded by submitting an Affidavit of Adv. Macraman Oleh Oyser who is the general manager of the Maharishi Vedic University Ltd., a teacher of Transcendental Meditation and the head of the Legal Department of the Global Transcendental Meditation Organization, and the worldwide IP manager of the Applicant.

In their response, the Applicant claimed that the mark was not descriptive of the services provided and maximally may be considered as hinting at the services. Similarly, they claimed that the phrase Transcendental Meditation was a combination of words that is identified with the Applicant and only with them, since the combination was coined by the Maharishi who established the Maharishi Vedic University Ltd.

The Applicant further asserted that the Global Transcendental Meditation Organization and all its branches was established by the followers of the Maharishi which the Applicant is associated with and is part of the same organizational structure as the Applicant. To support this assertion, the Applicant referred to exhibition 2 of Adv. Oyser’s Affidavit, where the definition of Transcendental Meditation taken from the Oxford Dictionary Online was reproduced.

In addition, the Applicant claimed that the mark was in use in Israel since 1973 and had acquired distinction by virtue of extensive usage, advertising and marketing in Israel and abroad. The Applicant considers that the mark has become a well known mark that is identified with them alone. Similarly, in the years 2009 to 2014 since the application was filed, the Applicant has earned $874,000 from its activities in Israel. These assertions were supported by Adv. Oyser’s Affidavit.

The Applicant failed to convince the Examiner that the mark was registerable and the Trademark Office rejected the mark on 28 January 2016.

yogic fliers

On 2 May 2016, a hearing was held before the then Commissioner of Patents and Trademarks Asa Kling at the Applicant’s request. During the Hearing, the Applicant’s representative argued that the mark was unique and was a compound mark consisting of the combination of two opposites: meditation which is inward looking, and transcendental which is outward looking into the distance. During the hearing, the Applicant also claimed that the registration was requested to avoid misleading the relevant public interested in studying Transcendental Meditation, noting that the Applicant was one of the bodies authorized to train Transcendental Meditation counselors and this would enable quality control which is an underlying justification of the trademark system.

In that hearing, the Commissioner requested that the transfer of rights from the Maharishi himself to the Applicant be fully documented and substantiated by the 14 August 2016.

On 14 August 2016 the Applicant submitted supplementary evidence including an affidavit of Neal Peterson who was the manager of the Maharishi Vedic University Ltd. the following is the transfer of rights as detailed in the Affidavit.

Maharishi started to teach meditation in 1954 in Southern India, and on 1 January 1958 he established the Spiritual Regeneration Movement SRM in one of India’s capitals. In time, the Maharishi opened 1000s of SRM centers across India where he taught Transcendental Meditation.

meditation profitAfter conducting travels to disseminate his teachings across Asia, in 1959 the Maharashi taught in New York and London and set up the International Meditation Society whilst in London. As he visited more countries, the Maharashi established more local organizations to spread the teachings and to collect tuition fees.

As stated, the first organizations were established under the names SRM or IMS and subsequently these names were less widely used and the movement became better known as GTMO or the Maharishi Movement.

In the early Sixties, Maharishi opened a program for training teachers of the Meditation method under the name Transcendental Meditation. The program is offered by organizations licensed by the GTMO leadership.

To ensure the exclusive connection between the name Transcendental Meditation and the Maharishi Movement and to ensure quality, prior to being accepted to the Transcendental Meditation Counselor Course, the students are required to sign a number of papers in the presence of the Applicant. These include Non-Disclosure and Non-Compete Agreements.

To explain how the rights were transferred from the GTMO to the Applicant, the Deputy Commissioner Ms Jacqueline Bracha referred to the ruling concerning Israel Trademark Applications 29619 and 253899 to the Maharishi Vedic University Ltd. published on 30 October 2017. In that ruling the mark MAHARISHI in English and Hebrew was considered. There, in an ex partes decision, Ms Bracha ruled that the marks could be registered after the Applicant proved that they were the only party using the name MAHARISHI as a trademark to indicate their services.

RULING

Section 8 of the Ordinance states that the basic condition for trademarks to be registerable is that they have a distinguishing nature, as follows:

Marks Eligible for Registration

8.—(a) No mark is eligible for registration as a trade mark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).

(b) In determining whether a trade mark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.

Section 11(10) of the Ordinance describes one of the categories of marks that is not considered as having a distinguishing nature.

(10) a mark consisting of numerals, letters or words which are in common use in trade to distinguish or describe goods or classes of goods or which bear direct reference to their character or quality, unless the mark has a distinctive character within the meaning of section 8(b) or 9;

The evidence appended to the Application indicates that the term Meditation relates to an ancient tradition that is in element of many religions.

“Meditation has been practiced since antiquity as a component of numerous religious traditions.”

In paragraph 13 of Adv. Oyser relates to Transcendental Meditation as Mantra Meditation that indicates holy sounds or the names of God. In Hinduism and Buddhism the practitioner of Mantra Meditation attempts to unify himself with the God.

Similarly, in the same section of definitions, the Applicant explains that the source of Transcendental Meditation is the Guru Dev and that according to Maharishi this is a development of Vedic writings and old books that are adapted for the modern world.

Furthermore, as part of their evidence submitted for registering 29619 and 253899 for the mark MAHARISHI in English and Hebrew, the Applicant submitted an Affidavit by Alexander Oded Kotai who is the Israel Director of the International Meditation Association Israel, of the Maharashi International School and of the Israel Institute of the Science of Creative Intelligence. In the framework of his Affidavit, he also explains what Transcendental Meditation is, and in paragraph 21 states that:

Thus Transcendental Meditation is the name chosen by Maharishi to indicate and mark the meditation technique that he learned from Guru Dev and developed in India in the fifties. Maharishi developed the technique and adapted it for the modern world, and attributed it to his spiritual mentor, Guru Dev. Maharishi explained that the technique is a revelation of the principles found in Vedic writings, which is a collection of religious texts considered the oldest in Hinduism. According to Maharishi the Vedic writings have been misunderstood in the past hundreds of years. Maharishi teaches that Vede is knowledge of the science of awareness and, according to this science, there is an awareness of the formation of the material of the universe.

Atharva-Veda_samhita_page_471_illustration-56a483c15f9b58b7d0d75d06

From this it appears that the basis of Transcendental Meditation is found in the Buddhist religion and Transcendental Meditation is the Maharishi’s interpretation of Vedic literature. Nevertheless, the requested mark does not appear in the ancient Vedic literature. We are dealing with a phrase that the Maharishi coined for the technique he developed.  Adv. Oyser states this explicitly. Neal Peterson states that when he started out in Southern India in 1954, Maharishi called this Transcendental Deep Meditation and shortened this to Transcendental Meditation as the years went by.

This raises the question of whether this is enough for the Applicant to be granted a trademark or whether it should be left open to the public for reasons of public interest.

Section 11(5) of the Trademark Ordinance excludes from registration:

(5) a mark which is or may be injurious to public policy or morality;

In this regard, see paragraph 46 of the Ruling concerning Israel Trademark Applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English) from 2 May 2016:

The purpose of the Ordinance is not to limit freedom of speech or freedom of religion – Section 11(5) of the Ordinance does not allow registration of marks that adversely affect the public order.

The conclusion that Maharishi (who transferred his rights to the Applicant as described above), coined the term Transcendental Meditation which is the applied-for mark, but this does not give the Applicant the right to register the mark. In this regard one may compare copyright with trademark law as per Neil Wilkof and Shamnad Basheer in their book “Overlapping Intellectual Property Rights”  2012) page 148, which relates to R Griggs Group Ltd and others v. Ross Evans and others ECDR 15,para 20 [2004]:

“…copyright is intended to protect creative skill and labour whereas the function of trademarks is to distinguish the goods or services of one provider from those of another. Trade mark law he said ‘has nothing to do with protecting any creative skill and labour in coming up with a trade mark‘, rather it is meant to prevent potential confusion among members of public.”

The Applicant claims that the purpose of the trademark registration is to protect the public from unregulated teaching of the technique since the technique relates to the mental health of the patient and there is thus a danger that it being applied by someone not qualified will damage the patient’s wellbeing. This is clear from the protocol of the discussion.

Freud

It is noted however, that the list of services for which the trademark is applied for does NOT include mental health, presumably since treatment of mental issues requires an appropriate education and license from the Israel Ministry of Health. It is noted that the services defined as ‘educational services relating to health’ are related to the psychology profession and is regulated by the Law for Psychologists 1977 which defines Psychology as

Working in Psychology is a profession related to diagnosing and quantifying issues and problems of mental health education and behavior of people and the treatment, rehabilitation, consultancy and training related to these issues and problems is generally to be performed by psychologists.

Since it is unreasonable to register the mark, Ms Bracha did not see fit to rule on whether this service should be allowed. It is brought merely to discredit the claim that the mark should be registerable since it relates to mental health and is in the public interest that its counselors are licensed by Maharishi Vedic University Ltd.

Transcendental Meditation is a process that anyone can learn and teach and this does not require the agreement of the inventor or creator of the technique. Consequently, the technique must remain available for anyone to learn and teach. It is not fitting to prevent the public from expounding a meditation technique. Even if there is a contractual arrangement that prevents a person from spreading the technique he has learned, it is not clear that the limitation would be enforced by the relevant legal authorities.

In this regard, the words of then Deputy Commissioner Noach Shalev Shmulovich in paragraphs 29and 30, of the Trademark Ruling concerning Israel Application No. 178707 Ori King vs. Adi Shanan I.P.E.C.

I am not certain that one can protect a method of treatment, even temporarily when those that developed it are teaching and disseminating it, since there is no trade secret here. One cannot register a patent for a method of treatment. Although there may be copyright on educational materials, this does not extend to the technique itself or and the right to provide treatments or to teach others. That as may be, one cannot register a trademark to provide protection for a method of treatment by virtue of the registration.

Furthermore, the claim made before me that the application does not deal with the trademark protecting the method, but only its teaching and dissemination, lacks substance. Where the technique is available to the public its teaching should be available to the public, unless the law provides some limitation, however, the way to provide a monopoly on the technique is not via the trademark register, since registration cannot be used to protect the technique.

Albert_Einstein_Head.jpg

In a similar manner, it appears that if the Hebrew University had tried to register a trademark for “Relativity”, it would be rejected. [MF – The Hebrew University holds the Einstein Archives and owns the name Einstein as a trademark which they license as a source of income.] One also cannot register Transcendental Idealism as a trademark for an institute teaching Kantean Philosophy. Teaching that doctrine also requires some sort of agreement since one cannot say that everyone is capable of understanding this and teaching others.

The question that arises is whether a coined phrase for a philosophical or religious teaching, such as the application in question which combines transcendental and meditation, that arguably can obtain copyright protection, should be protected under trade laws.

anne frank

The beginning of an answer to this question is found in decisions that relate to names of creations. In a decision given by the court of appeal of the OHIM as it was known, and is now known as the EUIPO, relating to a trademark for “Le Journal d’Anne Frank”, inter alia, for books and newspapers, theatre productions, video tapes and fims on electronic media. See Re 2401/2014-4  Anne Frank Fonds (31.08.2015).

The Court of Appeals considered that the mark does not lack a distinguishing nature with regards to the goods and that the public can use the mark to differentiate between goods and services originating with the mark holder and those originating elsewhere. Furthermore, the European tribunal considered that the wide publicity of the mark as the name of the book was insufficient to prevent it being registered.

As noted in the decision regarding the Opposition to Israel Trademark Application No. 247693 for DEMART PRO ARTE B.V and Fundacio Gala-Salvador Dali vs. V.S. Marketing (Israel 2005) ltd. (31 May 2016) it appears that the European ruling does not sit well with the US Law, nor with the Israel Law regarding registering the names of creative works as trademarks. Seligsohn related to this in his magnum opus Trademark Laws and Related Legislation, Shocken 1973, page 7:

“Regarding Goods”… a trademark cannot exist where a symbol relates substantively or technically with trade. The title of a book cannot be a trademark where there is a link between the title and the content of the book such that the title indicates its content and character.

In a similar matter, the US Supreme Court refused to accept a tort of Passing Off or misleading regarding the origins of a product where a television series was based on a book whose copyright had terminated after ruling that passing off under the Lanham Act was not intended to protect original creations and this was different from copyright. See re Dastar v. Twentieth Century Fox Film 539 US at 37 (2003).

Basheer and Wilcoff relate to this on page 155 of their book:

“…in its decision, the Supreme Court went further, holding that the US trademark laws ‘were not designed to protect originality and creativity and that to hold otherwise would be akin to finding that§43(a) [of the Lanham Act] created a species of perpetual patent and copyright, which congress may not do‘”.

Similar to the US Law, in Israel the protection granted by Copyright Law is given for a limited period, whereas trademarks may be renewed indefinitely. Consequently, prior to allowing a trademark to be registered, one has to balance between the rights of the author and the public good. See page 144 of Basheer and Wilcoff:

“Copyright subsists for a finite period, after which the work falls into the public domain where it can be used by anyone without attribution of authorship, whereas trademark rights can endure for as long as the indicia are used and associated with the owner’s offerings- potentially hundreds of years or more.”

As stated in her decision of 30 October 2017 regarding the registration of the name Maharashi in Israel, Ms Bracha noted that the Maharishi Foundation Limited had splintered from the Applicant’s organization and had given up on registering “Maharishi” in Hebrew or English but still taught the Transcendental Meditation discipline in various territories around the world. She did not think that it was correct to limit the teaching to one organization or another by trademark registration.

Furthermore, one cannot ignore the fact that a registration for Transcendental Meditation Programs exists in Israel TM No. 47738 that was submitted on 17 April 1979 by the Applicant. Without relating to whether this mark should have been registered back then, it is noted that the evidence submitted by the Applicant indicates that the International Association for Transcendental Meditation Israel, which is the local representative in Israel, markets and publicizes their services under a stylized mark that includes the registered trademark “Transcendental Meditation Programs”. It seems therefore that the mark cannot be registered in Israel without appropriate regulation.

Israel Trademark Application No. 249554 is thus refused.

Ruling by Ms Bracha re Israel Trademark Application Number 249554 for “Transcendental Meditation”, 20 December 2017.

COMMENT

The former Chief Rabbi of the United Synagogue and Peer of the Realm Dr Jonathan Sacks has a joke that appears in Not in Heaven:

Beatles and Maharishi

When I was a student at university in the late 1960s – the era of student protests, psychedelic drugs, and the Beatles meditating with the Maharishi Mahesh Yogi – a story went the rounds. An American Jewish woman in her sixties travelled to north India to see a celebrated guru. There were huge crowds waiting to see the holy man, but she pushed through, saying that she needed to see him urgently. Eventually, after weaving through the swaying throng, she entered the tent and stood in the presence of the master himself. What she said that day has entered the realm of legend. She said, “Marvin, listen to your mother. Enough already. Come home.” 

 


New Israel Patent Commissioner Makes Purpose Driven Interpretation of Patent Term Extension Legislation to Transfer Protection from One Drug to Another

December 21, 2017

Wyeth submitted a request for a patent term extension for Israel Patent Number 120701 titled “2 – PHENYL – 1 – [4 – (2 – AMINOETHOXY OR PROPOXY) ) – BENZYL] – INDOLE COMPOUNDS AND PHARMACEUTICAL COMPOSITIONS CONTAINING THEM ” The patent issued on 26 December 2005 and the basic 20 year protection period will run out on 18 April 2019.

CONBRIZAOn 17 June 2012 Conbriza was registered in the Israel register of drugs. Conbriza contains bazedoxifene acetate. This was the first Israeli registration of Bazedoxifene for medicinal purposes and so, on 19 October 2015, a patent term extension order issued for Conbriza, until 14 April 2022.

DuaviveOn 16 November 2016, the drug Duavive which contains bazedoxifene acetate together with conjugated estrogens was registered in the Israeli register. The Applicant explained that Duavive is a more modern version of Conbriza which Pfizer (which owns Wyeth) had developed and is marketing in Israel.

The treatments are both for treating the symptoms suffered during menopause, such as the so-called hot flushes.

calculation

On 22 May 2017, the Wyeth informed the patent office that Conbriza was taken off the drug register and Duavive was registered. Wyeth claimed that the change should not affect the patent term extension since both drugs contained bazedoxifene, and that the patent term extension should be calculated from the first of the registrations.

Following this notification, the Applicant was invited to attend a hearing under section 149 before a ruling issued. The Applicant did want to attend such a hearing and on 5 July 2017 the Commissioner Ophir Alon indicated that in the hearing, which was held on 31 July 2017, the Applicant would explain why they felt that the provisions of Section 64(vii)(3) should not apply in this case.

Ruling

Section ii(1) of Chapter D of the Law deals with patent term extensions. Inter alia, Section 64D of the Law states that:

64D. The Registrar shall not grant an extension order, unless the following conditions have been met:

(1) The material, the process for its production or its use, or the medical preparation that incorporates it or the medical equipment was claimed in the basic patent and the basic patent remains in effect;

(2) In respect of a medical preparation—a medical preparation that incorporates the material is registered in the Register of Medical Preparations under regulation 2 of the Pharmacists Regulations (Medical Preparations) 5746—1986 (hereafter: Pharmacists Regulations);

(3) The registration said in paragraph (2) is the first registration that allows the material to be used in Israel for medical purposes;

(4) No extension order was granted previously in respect of the basic patent or in respect of the material.

From here, it is clear that the condition for giving a patent term extension is that there is a registration of a drug that includes the active ingredient and it is the first registration that allows the active ingredient to be prescribed in Israel, which was not previously subject to a patent term extension.

Section 64L states the cases where a patent term extension lapses. In 64L(3) it is stated that:

64L. An extension order shall laps in each of the following instances:

(3) If registration of the medical preparation that incorporates the material was cancelled—on the day on which the registration was cancelled;

Thus the wording of the black letter law seems to be that if the registration including the active ingredient is cancelled, the Patent Term Extension is cancelled as well.

The Applicant’s claim is that in cases where the company that registered the first drug has a number of registrations for different drugs containing the active ingredient, the Legislators did not intend that the protection period would lapse simply because one of these was cancelled. Rather, the legislators intended that only in cases where at some time after the issuance of the extension period, there are no registrations of drugs including the active ingredient in Israel, the extension period would lapse. In such an instance, where there are no drugs on sale in Israel there is no legitimacy in keeping the patent term extension active and so Section 64L(3) applies.

The Applicant claims that since Duavive contains the active ingredient and was registered before the registration of Condiza was cancelled, one or other preparation containing the active ingredient was continuously registered in Israel and so the patent term extension remains in force.

The Purpose of the Patent Term Extension Regime

As known, the term of a patent is 20 years from filing in Israel [or from the PCT filing date – MF] subject to paying extension fees. This period is the accepted balance between the desire to encourage inventors on one hand, and to enable the population to benefit from technological advances on the other.

balance

This balance has a special regime for pharmaceuticals and medical devices that is given by Section B1 of Chapter 4 of the Law. This regime compensates patentees for delays in registration but allows the generic drug industry to prepare for market entry to the benefit of the population as a whole. Where the conditions of the Law are met, it is possible to extend patents for pharmaceuticals and medical devices by up to five years.

This is how things were presented on page 18 of Appeal 8127/15 Israel Association of Industrialists vs. Mercke Sharpe and Dohme Corp, 15 June 2016:

The purpose of the extension period is to compensate the patentee for the period of patent protection that is de facto lost due to the amendment of the patent law. The period of protection in Israel and other countries having patent term extensions takes into account the period that the patentee takes to register the drug which is longer than the period lost by the patentee. However, in the Draft Amendment by the Committee for Constitution, Law and Justice it is stated that the extension is for the period that the patent for the drug is registered but regulatory approval by the Ministry of Health has not yet occurred, and so the extension is identical to this period. Either way, the main purpose is to provide fair compensation to the patentee.

Explaining section 64L(3)

As stated previously, there are two possible interpretations to Section 64L(3) of the Law. In the first explanation the words “registration of the medical preparation that incorporates the material was cancelled” relates only to the first registration, as defined in Section 64D(2), so that when the first registration is cancelled, the patent term extension ends.

The second explanation, proposed by the Applicant, is that one should understand the words “registration of the medical preparation that incorporates the material was cancelled “ as relating to all drugs that include the active ingredient and not merely the first one to be registered, so that there are no drugs including the active ingredient on the register.

Ofir Alon

The New Commissioner Ophir Alon considers that the interpretation is in line with the rationale of the Law proposed by the Applicant. As stated previously, the intention of the legislator was to compensate the patentee for the period required to register the drug. Section 64D of the law refers to the conditions for granting a patent term extension. The purpose of 64D(2) of the Law is to ensure that the active ingredient has undergone registration, and that of 64D(3) to ensure that that this was the first instance of the active ingredient being registered.

Since these conditions are fulfilled, it does not seem that there is much significance in the first registration specifically, that its cancellation requires cancellation of the patent term extension and cancelling the compensation that the law provides the patentee, whilst the active material remains registered, albeit with other active ingredients.

Registration of more advanced or better drugs that include these active ingredients is desirable.  Such registration is likely to require additional registration by the Ministry of Health. Adopting an interpretation under which the cancellation of the first registration for which the patent term extension period was calculated automatically results in the cancellation of the patent term extension will lead to a situation in which the patentee who has several registrations will have to keep the registration of a drug not being sold in force merely to keep the patent extension in force. This is artificial and not desirable.

However, accepting the second interpretation allows the patentee to cancel or not renew the first registration whilst keeping the patent term extension in place to protect additional drugs subsequently registered. This prevents circumstances where a patent term extension is in place but no drugs are registered for sale in Israel.

In summary, it appears that the correct interpretation of the Law is to compensate the patentee for the period he could not exploit his patent whilst waiting for regulatory approval, which includes protecting the public interest by promoting development of new treatments, and these aims are achieved by the interpretation allowing the extension to stay in force as long as there are drugs that include the active ingredient.

This interpretation serves the purpose of the Law and the public interest as it provides an incentive for the patentee to develop new versions of its drugs, that are more advanced or more efficacious than the original treatment, and allows the cancellation of registrations that are n longer marketed.

The Commissioner is aware that linguistically, the objective pronoun “the medical preparation” apparently relates to the medical preparation mentioned previously. Nevertheless he does not think that a literal reading helps to clarify things in this instance. For example, if we were to take a literalist approach to understanding section 65L(3) we would wonder what the legislator intended by “including the ingredient” at the end of the section, since it is clear that the medical preparation whose registration was the basis of the patent term extension includes the active ingredient, as stated in Section 64D(2):

(2) in respect of a medical preparation—a medical preparation that incorporates the material is registered in the Register of Medical Preparations under regulation 2 of the Pharmacists Regulations (Medical Preparations) 5746—1986 (hereafter: Pharmacists Regulations);

FROM THE GENERAL TO THE SPECIFIC

The cancellation of the Conbriza registration occurred after Duavive was registered, and so in one form or another the active ingredient was continuously registered from when Conbriza was registered until today.

So, by applying a purpose-driven interpretation to Section 64L(3), the registration was never cancelled and from when the patent term extension was issued until today, the medical preparation was under continuous protection.

The medical preparation Duavive includes the bazedoxifene ingredient together with conjugated estrogens. In other words, to create continuity in the registration, the active ingredient has to be identical to the one for which registration was granted. The Patent Term Extension for Israel Patent No. IL 120701 will remain in force subject to the Applicant submitting an Affidavit that the combination of the bazedoxifene ingredient together with the conjugated estrogens does not create a new material. This affidavit must be submitted within 30 days of this ruling.

Ruling concerning the Patent Term Extension for Israel Patent No. IL 120701 for bazedoxifene (Conbriza and Duavive), Ophir Alon, 15 October 2017

COMMENT

This ruling could be a baptism of fire for the new Commissioner.

The main question that the appointment of a new commissioner generates is whether he will favour the drug development industry or the genetic drug industry. The sums of money generated every day of a patent term extension and in supplementary patent protection for variants such as changes in dosage regimes is enormous. In this regard, Israeli companies are involved as both generic players and as drug developers. Despite TEVA being the world’s most successful generic drug provider, It was Teva’s Copaxone falling over the so-called patent cliff that caused the massive drop in share prices and layoffs, rather than lost sales of generics.

Here the Commissioner has taken an analytical approach to the law, trying to understand the rationale rather than the most literal interpretation. This is in line with guidelines penned by Former Chief Justice Aharon Barak who was known for such interpretations, which perhaps less charitably and more formalistically could be described as subverting the Law as legislated to further lofty aims as he saw them. Such creative interpretations coupled with him declaring that Basic Laws were constitutional and reading into them powers that the Knesset never intended, has led to judicial activism that those on the right see as undermining the Knesset as legislator, and those on the left see as saving democracy from the people’s elected representatives.

I remember litigators that represent the drug developing companies saying during Dr Meir Noam’s term as Commissioner, that, until he was replaced, their clients could not get justice. I do not know if this was fair. Dr Noam was a chemist, and generally where he accepted Unipharm’s arguments that an opposed patent application lacked novelty or inventive step, their arguments were persuasive, or at least seemed so to me. Nevertheless, in practice, he did rule in favour of the generic companies, but his rulings held up on Appeal.

At the start of his term in office, the previous Commissioner, Adv. Asa Kling, could not rule on cases where one side was represented by Reinhold Cohn or Gilat Bareket because of a perceived conflict of interest. Centocor Ortho Biotech Inc. received regulatory approval for a pharmaceutical preparation described in IL 154325.

From the affidavits submitted by employees of the agents for applicant (Reinhold Cohn Patent Attorneys) it is clear that, despite the firm being organized and having procedures in place to cover patent term extensions, there was human error. The deadline was missed and this was discovered seven months later.

Section 164 A1 of the patent law states that:

164.—(a) The Registrar may, if he sees reasonable cause for doing so, extend any time prescribed by this Law or by regulations under it for the performance of anything at the Office or before the Registrar, except for…section 64… …unless he is satisfied that the application in Israel was not submitted on time because of circumstances over which the applicant and his representative had no control and which could not be prevented;

The Deputy Commissioner Jacqueline Bracha threw Reinhold Cohn a life-line by ruling that mistakes were unavoidable, thereby allowing a missed deadline for requesting patent term extensions to be retroactively extended despite the Law being unequivocal that the deadline was not extendible. For more details, see here.

The patent term extension legislation has been amended several times, in the third, seventh and eleventh amendments to the Israel Patent Law.

The third amendment was ambiguous and in an ex-partes ruling affecting three patents in what is now known as the Novartis ruling, Then Acting Commissioner Israel Axelrod understood that the amendment was designed to give a real advantage to the drug development companies and they could choose the country to base their patent term extension on.  This was not what the Knesset intended and the amendment was again amended in what was the Seventh Amendment of the Israel Patent Law, to tidy up this and other ambiguities of the original amendment. Israel Axelrod, who was widely expected to be appointed as Commissioner but instead, was side-ways promoted to the Beer Sheva District Court.

In 2006, under intense pressure from the US who put Israel on their special 301 Watch List of countries not properly protecting Intellectual Property, the State of Israel amended their Patent Law again.

Arguably the Commissioner is correct that the purpose of the Law is to strike a balance between the conflicting interests. Arguably, however, as in the Novartis ruling and subsequent amendment, the intention of the legislators remains to provide narrowest possible intention to rules governing patent term extensions, to encourage generic competition, thereby favoring local industry over foreign companies, and providing cheap medicine. We should bear in mind that the legislation was the result of heavy US protectionist pressure, and in the same way that the US government tries to benefit US interests, it is (at least arguably) legitimate that the Israel Law is intended to protect local interests as much as possible.

Teva is not, of course, the only Israel company to bring a drug to market. Neurim managed to patent Circadine which is a treatment for insomnia based on melatonin, and also obtained patent term extensions around the world. In the UK, the patent office refused to grand a patent term extension arguing that the active ingredient was used in a treatment for sheep.  Judge Arnold upheld the patent office’s position, see patent term extensions for Neurim which was appealed to the House of Lords, and Lord Robin Jacobs referred it to the European Court of Justice ECJ in his last ruling on the bench. The ECJ took a similar position to that of the current commissioner, preferring an interpretation that considers the rationale behind the law to a literalist ruling.

The main problem with ex-partes rulings is that arguments of the other side are not heard.  It is not inconceivable that Duavive works and Conbriza didn’t, not because of a new material being developed but because of some symbiotic effect between the bazedoxifene ingredient and the conjugated estrogens. In this instance, Duavive was developed by Wyeth/Pfizer but it is not inconceivable that such a drug could be developed by a third party. If the Conbriza formulation is not on sale and no other drug by the patentee, should Wyeth-Pfizer be entitled to a drug term extension past the main patent lapsing? Another hypothetic question worth considering is that an active ingredient protected by a patent term extension could actually not be so active at all, and could be co-dispensed with a drug that itself is active, but cannot be patented. The combination could be protected by the patent term extension in a scam designed to defraud the public. I am not alleging that this is the case here. I have no ideas what conjugated estrogens do or how they work. I am merely highlighting a slight logical flaw in the Commissioner’s reasoning.

That as may be, this ruling is a brave but reasonable one. Being ex-partes it cannot be challenged directly, but could be challenged by TEVA, Unipharm or some other generic company launching a Bazedoxifene containing formulation during the extension period.  The Knesset could also decide to amend the Patent Extension Law to rule out this interpretation if they deem fit to do so.


Cost Ruling in Moshe Lavi vs. Zach Oz – A failed attempt to get a poorly written patent canceled.

December 20, 2017

Figs for ACMoshe Lavi owns Israel Patent No. 157035 titled “MODULAR SUPPORT BRACKET” which describes  a support bracket for an air-conditioner unit. He’s tried to enforce it in the past against Zach Oz Airconditioners LTD, and the parties came to an out-of-court settlement.

Lavi then sued again, and Zach Oz countered by applying to have the patent cancelled. This attempt was unsuccessful and a ruling upholding the patent issued on 5 March 2017.

Lavi then applied for costs under Circular MN 80. According to Lavi and his attorneys, Pearl Cohen Zedek Latzer Brats, the costs incurred in fighting the Opposition were a fairly massive 526,750.058 Shekels!? We assume that there is a typo here, and the costs requested were just over half a million Shekels and not just over half a billion shekels, as that would be ridiculous even for Pearl Cohen. It seems that they charge in dollars and not Shekels, and are unaware of the need to round up to the nearest 5 agarot.

Lavi claims that he is entitled to the real costs incurred, which are reasonable, necessarily incurred and proportional in the circumstances. He accuses Zach Oz of acting in bad faith by challenging the validity of the patent. His counsel appended a list of legal counsel’s hours, invoices, and an affidavit by Moshe Lavi.

The Respondents Zach Oz, confusingly represented by an Adv. Pearl (not Zeev, even he is aware that fighting both sides of an opposition proceeding is not acceptable) claimed that the costs were unreasonable and some were unnecessary or disproportional. They also claimed that it was Moshe Lavi who acted inequitably. They note that the case-law states that costs are not meant to be a punishment, and the costs in this case were unreasonable and were incurred due to unnecessary wariness by the patentee. Furthermore, the adjudicator is supposed to take into account the public interest and importance in maintaining the integrity of the patent register. Awarding inflated costs in cases that they lose, would discourage people from challenging the validity of patents and would prevent access to legal recourse.

Ruling

The winning party is entitled to costs incurred in legal proceedings. However, the arbitrator is not obliged to rule actual costs, and is required to consider the specifics of the case and judicial policy. See paragraph 19 of Appeal 6793/08 Loar LTD vs Meshulam Levinsten Engineering and Subcontracting Ltd. 28 June 2009.

In the case-law it was ruled that for the Applicant for actual costs to prove that they are reasonable, proportional and necessary in the specific circumstances. See Bagatz 891/05 Tnuva Cooperative for Marketing Agricultural Produce in Israel Ltd. et al. vs. The Authority for granting Import licenses et al. p.d. 70(1) 600, 615 from 30 June 2005. The limitation of costs to being necessary and proportional is:

To prevent a situation wherein the costs awarded are too great, and will discourage parties from seeking justice, will create inequalities and make court proceedings unnecessarily costly, limiting access to the courts. (Appeal 2617/00 Kinneret Quarries ltd. cs. The Nazareth Ilit, Planning and Building Committee, p.d. 70(1) 600, (2005) paragraph 20.

The amount of work invested in preparing submissions, their legal and technical complexity, the stage reached in the proceedings, the behavior of the parties before the court of the patent office and with regard to opposing party, inequitable behavior of the parties, etc. All these are considerations that should be taken into account when considering “the  specifics of the case”.

In this instance, the patentee did win his case and is entitled to recoup costs, and the losing party does not dispute this. However, in this instance, the patentee is not entitled to the requested costs for reasons detailed below.

Firstly, after consideration of the case and the submissions, none of the parties appear to have acted inequitably. It is not irrelevant that neither party has related to the decisions made in this instance, including the main ruling. This is because there is no evidence of inequitable behavior by the parties. Similarly the affidavits are acceptable. In this regard, it is not reasonable to accept the patentee’s allegation that the challenge to their patent was baseless. The file wrapper shows that the challenger made a reasonable and fair attempt to show that the patent was void, based, inter alia, on prior art.

Furthermore, as to the costs requested, the adjudicator, Ms Shoshani Caspi did not think that they were reasonable, essential or proportional, as required by the Tnuva ruling.

The expert opinion of the expert who attended the hearing, costs of 29,685 Shekels including VAT were incurred. This was considered reasonable. It also appears to have been necessarily incurred. However, the Applicants did not need to use lawyers to prepare the expert opinion’s opinion for him, whilst claiming costs for him preparing his opinion as well. This is a double request for costs and should be eradicated.

In his Affidavit, Mr Lavi claimed that the challenge to his patent caused him to spend $137,901.37 including VAT. This is the 499,065.058 Shekels requested by the Applicant, excluding the expert opinion. The Affidavit explains that this sum includes his legal counsel’s work, couriers, printing, etc., however, no evidence of couriers and printing costs were given, and it appears that these incidentals were included in the invoices from his legal representative. To provide evidence for the legal costs incurred, invoices from PCZL were appended which included the hours spent by attorneys working on the case.

One cannot ignore the fact that the list of work done included demanding extensions, attempts to negotiate an out-of-court settlement, interim proceedings that the opposing party won, an appeal of the refusal to throw the case out, https://blog.ipfactor.co.il/2015/03/08/il-157035-if-one-accused-of-infringing-a-patent-does-not-challenge-its-validity-is-the-accused-estoppeled/

and other costs that are not essential and thus not reasonably chargeable to the other side.

double dipThe attempt to roll these unnecessary costs to the losing side and the double charging for the expert witness are inappropriate to use an understatement, and one assumes that these requests were made inadvertently as they were signed by educated attorneys that are well versed in the relevant legal processes.

Furthermore, after a detailed review of the file, Ms Yaara Shashani Caspi concluded that the case was relatively simple and there were neither particularly complicated legal or factual questions. Consequently, it is difficult to accept that the request for costs of 499,065.058 Shekels [sic] including VAT is reasonable, essential or proportional in the circumstances. It will be noted that as ruled in the Tnuva case (paragraph 19). The real costs that the patentee incurred is only the starting point and not the end point of the costs ruling.

It transpires that the time spent in each round was very large. For example, 65 hours was spent on a request to cancel an expert opinion, and 44 hours on the request for costs, etc. The Applicant did not provide an acceptable justification for these figures.

In light of the above, legal costs will be awarded by estimation, and in addition to the 27,685 Shekels (including VAT) to the expert witness, a further 150,000 Shekels (including VAT) are awarded in legal fees.

The deadline for paying the costs is 30 days, then interest will be incurred.

Legal Costs Ruling by Ms Shoshani Caspi in cancellation proceedings of IL 157035 Moshe Lavie vs. Zach Oz, 25 October 2017.

Comment

The whole case was mishandled by Zach Oz, who could and should have won the original infringement case in court, but decided to accept a poorly worded out-of-court settlement. By any reasonable attempt to construe the claims so that the patent was not anticipated by support brackets for shelves, Zach Oz’ supports were not infringing. In other words, they could have used the Gillette defense.

Ms Shoshani Caspi’s criticism of PCZL overcharging and double dipping is appropriate in this instance. The attempt to have the case thrown out on a creative estoppel based on not having challenged the validity of the patent when sued for infringement was ridiculous. Ironically, this patent is not worth the costs spent on litigating it. This is a clear instance of lose-lose by all concerned except the lawyers.


A forest of Sequoias

December 19, 2017

SequoiaBalboa Apps attempted to register Israel Trademark Application Number 271170 for SEQUOIA in class 9 covering Computer software for Internet search and browsing, e-mail, electronic messaging, and application development; computer operating system software and computers. The mark is a stylized word mark in capital letters in a serif font as shown along side.

The Examiner refused the mark on the basis of Section 11(9) of the Trademark Ordinance 1972 due to its similarity to Israel Trademark No. 227696 for SEQUOIA CAPITAL THE OWNER’S CODE and to Israel Trademark No.  227697 for SEQUOIA CAPITAL THE FOUNDER’S CODE both in class 42 and covering technology consultation and research in the fields of computer hardware, computer software, networking, telecommunications, e-commerce, content distribution, financial services, health care, energy, clean technology and outsourcing; all included in class 42.

Sequoia capital

271338

sequoia 271339

271339

A separate issue was a Section 29 (competing marks proceeding) with reference to  Israel Trademark Numbers 271338 for Sequoia Capital and 271339 for Sequoia in classes 35, 36, 38, 41 and 42.

On 2 January 2017, the Applicant responded to the Office Action by noting that the requested mark was successfully registered in many other jurisdictions; that the application was for a different class than that of the cited marks and the services and goods are likewise different, and the difference in the marks are clear and self-evident and not similar enough to cause confusion. These arguments were not considered persuasive by the Examiner and Applicant’s representative requested a hearing before the Commissioner, which was held on 16 July 2017.

In this regard, the Applicant requested under paragraph 8 of Circular 013/2012 to leave the competing marks issue under Section 29 (competing marks) until the Section 11(9) (similarity of marks) issue was ruled on.

Ruling

The Applicant’s mark is the word Sequoia in a serif font, and the registered marks are for SEQUOIA CAPITAL THE OWNER’S CODE and SEQUOIA CAPITAL THE FOUNDER’S CODE in San-serif font. The Applicant’s mark is for computer software under section 9, whereas the registered marks are for consultation regarding computer software and hardware, telecommuniication as and other things in class 42.

Section 11 states that:

  1. The following marks are not capable of registration:

(1)…

(9) a mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;

 Section 2 states:

  1. Save as otherwise provided, the provisions of this Ordinance which apply to trade marks shall apply mutatis mutandis to service marks, and every reference in this Ordinance to a trade mark or to goods shall be deemed to include a service mark or a service.

Thus before considering the similarity of the marks, and whether the registration of the mark in question could deceive with regards to the registered marks, it is necessary to determine whether the various marks are for goods and services of the same type. If it can be established that the requested goods and services are of a different type, Then Read the rest of this entry »


Black Box Trade Dress

December 12, 2017

2525230

Sea of Spa Laboratories have submitted Israel trademark application number 285230 for a three-dimensional stylized trademark as shown alongside, for Mineral bath salts and mud masques (not for medical purposes), body butter, body peeling aromatherapy cream, body cream, Aloe Vera cream, Cosmetic creams and lotions, moisturizing cream for the face and baldpate, shampoo, soap, liquid toilet soap, shower gel, toothpaste, deodorant, perfumes, after shave balm (not for medical purposes), all being produced from or enriched with minerals from the Dead Sea; cosmetic soaps; cream soaps; liquid soaps; perfumed soaps; soaps for body care; soaps for personal use; essential oils; Cosmetic creams for skin care; Hair care creams; Hair care preparations; Hair care lotions; Lotions for face and body care; Nail care preparations; Body and beauty care cosmetics; Cosmetic creams; Cosmetic preparations; Cosmetics; Body oils; Hair coloring preparations; Hair styling preparations; Hair shampoos and conditioners; Baby oils; Shampoos for babies; Bath and shower gels and salts not for medical purposes; Bath oils; Bath soaps; Bath foam; Massage oils; Cosmetic massage creams; Sun screen preparations; Sunscreen creams; Sun-tanning oils and lotions; Sun block preparations; Tanning and after-sun milks, gels and oils; Beauty gels; Beauty creams; Body creams; Face creams for cosmetic use; Beauty lotions; Body lotions; Skin lotions; Make-up; Cosmetics and make-up; Make-up for the face and body; Make-up removing preparations all in class 3 and for on line advertising on a computer network; online retail store services for the sales of cosmetics, body care products, soaps, perfumery, essential oils, hair lotions, toothpaste and deodorants; direct mail advertising; Organizing and conducting trade fairs, events and exhibitions for commercial or advertising purposes; dissemination of advertising and promotional materials; distribution of products for advertising purposes; product merchandising; commercial business management; business management of wholesale and retail outlets; retail or wholesale services for cosmetics, toiletries, dentifrices, soaps and detergents in class 35.

From clarifications with the Applicant, it appears that the mark is meant to be a black box, with silver edging to the panels. The Applicant clarified that the requested protection is for boxes of different shapes and sizes, but which are all black with silver trim along the vertices.

The request for registration was submitted on 25 May 2016 with a request for expedited examination based on alleged unauthorized usage by third parties.

circular

The trademark department refused the Application. In a first Office Action on 29 August 2016, the Examiner considered that the mark was not registerable as a trademark, being a three-dimensional package or container, lacking the required distinctiveness under Section 8a to be registered as a trademark. The Examiner considered the mark as contravening Circular 032-2015 “Trademarks: Requests for Three Dimensional Marks”, from 18 March 2015. The Examiner also considered that the correct way to protect such marks is as registered designs.

black pearl

On 12 January 2017, the Applicant responded with the argument that the mark had acquired distinctiveness due to wide usage. This contention was supported with an Affidavit from MR Avitar Glam, the CEO of the company who claimed that the Black Pearl series of products were packaged in such boxes from 2013 onwards, and that the Applicant had spent tens of thousands of Shekels in rebranding. Supporting evidence was appended to the Affidavit.

On 2 March 2017, the Trademark Department wrote that the response of the Applicant was insufficient to conclude that the silver trimmed black boxes without the addition of additional elements on the package were sufficient to be considered as having the acquired distinctiveness required for registration as a trademark.

The Applicant responded by requesting a hearing.

Applicant’s Claims

The Applicant considers that the registration of the requested mark will provide appropriate protection against competitors using similar packaging to theirs. The Applicant considers that the registration will not adversely affect competition in the market place since there are very many different ways of stylizing packages.

The Applicant considers that when considering three-dimensional marks for packaging the Examiner should differentiate between the basic shape and the requested mark. The Applicant considers that Circular 032-2015 fails to make this distinction and is thus deficient.

With this, the Applicant considers that the applied for mark still fulfils the basic conditions outlined in Circular 032-2015, since it is uniquely identified with the Applicant due to continuous usage since 2013, with investment in advertising and promotion of the mark. The Applicant denies that the packaging has a real functional or aesthetic purpose, but rather serves to make the product stand out on the shelf, and is thus a registerable mark.

Discussion

toffiffee

Three-dimensional marks that are the shape of the package are registerable if the owner can prove acquired distinctiveness through use. See 11487/03 August Storck et AL.. vs. Alpha Intuit Foodstuffs ltd et al. (23 March 2008) “Toffiffee”. In that matter, the Supreme Court pointed out a difference that can occur between allowing trademark registration of the shape of a product itself, and allowing a three-dimensional registration for its packaging. However, the Supreme Court left open the question of registration of packaging as a trademark on the basis of inherent distinctiveness:

It appears that the risk of preventing competition by allowing registration is bigger, when registering the shape of the product, than when registering the shape of the good itself.  (See re Phoenician Glass, paragraph 17). Consequently, I have decided to leave open the question of registration of three-dimensional marks consisting of the package on the basis of inherent distinctiveness.

Circular 033/2016 –Trademarks: Emphases when Examining Trademarks, from 15 December 2016, is the third reincarnation of Circular MN 61 which relates to the registerability of three-dimensional trademarks. The Circular applies the tests developed in Toffiffee, and does not relate to the difference between the shape of the product, and the shape of the package. Since this distinction was left open in the Toffiffee case, a Commissioner’s circular is not the right place to determine this. To complete the picture, when the Application was examined, the Circular in effect was 032/2015 – Trademarks, and so that was the Circular that the Examiner referred to in the Office Action. That said, all three circulars state that when considering the registerability of three-dimensional trademark applications:

One can consider the registerability of three-dimensional marks in cases where it is proven by evidence that the following three conditions are fulfilled:

  1. The requested shape serves as a trademark
  2. The requested shape does not serve a real aesthetic or functional purpose
  3. Through usage, the shape has acquired distinctiveness

The wording of the Circular is problematic. It relates to shapes or forms, and not to colour schemes on packages.

Before discussing whether the mark fulfills the requirements of the case-law and the Circular, there is a preliminary question to be addressed, in whether the colour scheme can be considered a mark since the proportions of the box, and thus of the surface panels varies. A similar issue was dealt with by then Commissioner Dr Noam with regards to Israel Trademark Application Numbers 182676, 182677 and 182679 to MANN+HUMBEL GMBH from 19 August 2008. There a mark was requested from a green and gold box with a white line separating the green and gold, in all shapes, i.e. without providing a ratio between the colours. There the Commissioner ruled:

From that written, it seems that we are referring to a mark that is so fluid that it is doubtful whether it is a mark at all. From consideration of Mr Ivor’s Affidavit, together with screen prints from the website of the Applicant, it seems that we are dealing with a concept, with a design idea that combines green, gold and a dividing white line that is expressed in different ways in the website, the packaging and the company’s catalogues.

A basic known principle throughout the branches of intellectual property law is that intellectual property does not protect ideas, but rather embodiments of those ideas.

So the then Commissioner ruled that the registration of insufficiently defined marks is inappropriate.

The applications as filed, if they issue, will totally remove from the public domain the use of two colours on any box. This is an unreasonably wide monopolization that creates legal uncertainty.

The Deputy Commissioner Ms Jacqueline Bracha opined that in this instance, we have a “design concept”, which is too broad to be a trademark. In this regard, it is worth considering the definition of a mark in James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkeley Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011) p. 17.

black pearl 4However, even if we consider the mark as sufficiently defined, one has to assess acquired distinctiveness on the basis of whether the public recognize the mark. From the evidence it appears that the Applicants do not brand themselves only with the applied for mark, but always together with the term “Black Pearl” and a picture of a pearl. These always appear clearly on the packaging. The public do not merely recognize the applied for mark as being a trademark, but the Applicant itself does not consider it to be a trademark. From Appendix 7 which lists the sales, it is clear that the series is referred to as “Black Pearl”.

black peral 3

In the website of the Applicant, (appendix 1 to the Affidavit), the series is referred to as the Black Pearl Line, and in the US website is www.blackpearlusa.com most of the products are shown without packaging at all, which shows that the requested mark is not being used as a mark [and therefore cannot have acquired distinctiveness –MF].

The Applicant did not submit any evidence as to how the consumer considers the requested mark, but does note that sometimes the package on the shelf is viewed from the back. The Deputy Commissioner does not consider the fact that a consumer could return a box to the shelf such that the front is obscured as sufficient justification to consider the mark as being identified as trademark by the consumers. (see paragraph 13 of Appeal 59175-12-12 Stokke AS vs. Commissioner of Patents and Trademarks, 26 November 2013.

In light of the above, the Deputy Commissioner does not consider that the Application serves as a trademark.

Although not necessary, the Deputy Commissioner continued to consider the other conditions for registerability outlined in the Circular.

The Applicant submitted data regarding the branding, which included the design of the packaging and information regarding sales. The Deputy Commissioner noted that it is not enough to show sales but one has to show a link between sales and the mark to show that the requested mark to shows that the requested mark generates sales and the burden of proof is significant. See 18/86 Israel Glass Factory Phoenicia ltd. vs. Les Verries de Saint Gobain, p.d. 45(3) 224, 238 and Appeal 2776/06 Ein Gedi Cosmetics vs. Commissioner of Patents and Trademarks, 12 May 2008.

Where a product has several trademarks alongside each other, it becomes even more difficult to show that one or other of them has individually acquired distinctiveness. See Deputy Commissioner’s ruling regarding the Trademark Application Nos. 216872, 216873 and 216874 Proctor & Gamble (2012):

We are considering marks serving as backgrounds for words such as “Herbal Essences” and the flower image around the neck of the bottle. (see Appendix D of Ms Rosnell’s affidavit). Furthermore, the applied for marks do not include all the background elements, since it was filed in grey.

See also the comparative law for packaging serving as backgrounds for other marks, in 180843 Baltika vs. S&G Intertrade ltd (2012):

The mark before me is merely a generic background for a beer bottle. There is no problem per se with registering a label as a trademark, if it fulfills the conditions of the Ordinance, and in comparison with the US Law, and Jerome Gilson “Trademark Protection and Practice”, p. 2-162 (2002):

“It should be noted, however, that packaging design which is primarily background for a word trademark must make a separate commercial impression in order to be eligible for separate protection.”

With regard to registering bottles as trademarks, it is sometimes worth considering whether the applied for mark has a form that is typical for the field – see Adjudicator of IP in re Israel TM Application 174402 Diageo North America, Inc. from 13 April 2011, and the Cointreau bottle ruling from 2 April 2013. It seems that the more unusual a bottle is, the more easily it can be considered as having acquired distinctiveness, and so can be registered as a trademark.

From an Internet search it transpires that there are other companies using a black box with a frame (Commissioner’s discretion to search independently is discussed in the Rishon L’Zion Winery vs. the Vineyard ltd. (4) 338, 2006. See for example:

Aroma

These packages are just a couple of examples of the many black packages that appear on the Internet, which are decorated with gold or silver, and are used for packaging cosmetics. Although they are NOT identical to the Applicant’s packages, they do indicate that the applied for mark does not stand out from other cosmetic packages on the market.

The Deputy Commissioner did not see fit to consider the question of whether the packages serve a functional or real aesthetic purpose, but it seems that they were designed as part of a branding exercise designed to give a quality image, together with the black pearl. However, this is beyond that required.

Since it is not clear that the application is a mark, and in light of the conclusions that it is not clearly a trademark that has acquired distinctiveness through use, the application for registration is rejected.

Ruling re Black Pearl Package Trademark by Deputy Commissioner Ms. Jacqueline Bracha, 1 October 2017.

COMMENTS

It is difficult to argue that a cuboid or brick shaped box is anything but a functional package. It is also difficult to argue that the black and silver choice of colouring is not designed to be aesthetic. However, I am not sure that the Circular is properly worded, and this case seems to me to be more a question of a flat trademark applied to a box, rather than a three-dimensional mark.

The issue here is NOT one of three-dimensional marks, but is rather one of trade-dress. A single colour trade-dress is probably not sufficiently distinctive. In most places, Cadbury’s distinctive purple was not considered sufficiently distinctive to be registered itself. ‘Laline’ makes beauty products and has simple white packaging, which is a brilliant attempt to market themselves as pure, but can plain white boxes be considered distinctive? Here, there are two colours, and one is a frame. In other words, it is a little like the National Geographic yellow frame on their magazines. However, there is a second colour; the basic black as well.

 

national geographicThen again, National Geographic has a very long history, massive circulation, and back copies seem to lurk indefinitely in waiting rooms at doctors and dentists. I suspect many kids first saw photos of naked human bodies in National Geographic magazines that seem to be more favoured by school libraries than men’s magazines.

Also, the dimensions of the National Geographic magazine is standard, and the company is using the yellow frame as a trademark on videos, their TV channel, and various merchandise.

So in this case, there is really a two-dimensional mark of a silver frame on around a black rectangle. Since the dimensions change, it is really a trade dress and is not constant enough to be registered as a mark. Even if not registerable as a trademark, it may still be enforceable under the tort of passing off and unjust enrichment. Since accelerated examination was requested for the mark on the basis of a competitor using it, one wonders if it really is exclusively associated with the Applicant. As the Deputy Commissioner has shown, the colour scheme is not unique to the Applicant.

If one examines the website, there are boxes that are all black with a silver label, and gold boxes with the writing Black Pearl on them. There are also black squeeze tubes with silver writing. In other words, the trade-dress is not used consistently. There are other cosmetics using silver on black, particularly but not exclusively designed for usage by women of colour (or whatever the current politically correct term is).

Although relating to a ruling concerning colour schemes which is essentially a trade dress related decision, the Deputy Commissioner has essentially examined the mark in light of the Circular governing three-dimensional marks. To my mind this is the wrong approach. A better starting point would be to consider the ice-creamcoffee and energy drink rulings.


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 »