Opposition to IL 201320 to Pfizer & limits to amending the Statement of Case

July 2, 2018

Patent Application IL 201320 to Pfizer is titled “CRYSTALLINE FORMS OF 6-[2- (METHYLCARBAMOYL) PHENYLSULFANYL]-3- E -[2- (PYRIDIN2- YL] ETHENYL] INDAZOLE SUITABLE FOR THE TREATMENT OF ABNORMAL CELL GROWTH IN MAMMALS”.

On allowance, it published for Opposition purposes, and Unipharm submitted an Opposition.

Prior to publication following allowance, Applicants have very wide discretionary powers to amend claims or submit new claims, provided the claimed mater is supported from the specification. After publication, in response to Oppositions, or even after grant, the Applicant/Patentee is only allowed to correct obvious typographical errors or to narrow the scope of protection by cancelling claims or by amendments that clearly narrow the scope of protection. Nothing that protects matter previously not within the ambit of the claims can be allowed.

In this instance, during the Opposition proceeding, Pfizer requested a narrowing amendment to the specification to clearly define the term ‘substantially pure’ that appears in claim 2. Commissioner Alon allowed the amendment in a ruling of 5 March 2018, and gave the parties a window to amend their Statements of Case to take the amendment into account.

Unipharm, who had already submitted their evidence, decided not to amend the statement of claims, but Pfizer submitted an amended Statement of Claims that was wide ranging.  This included background to the development of the invention and eleven appendices.

Unipharm then requested that Pfizer’s amendment be struck from the record, arguing that amendments to the claims following amendments to the specification should be based on those amendments to the specification. Pfizer disagrees. They note that the Law does NOT require that amendments to the counter-statement of claims be related to the earlier amendments to the statement of claims at the start of the Opposition proceedings, or that they be based on the amendments to the specification. Furthermore, the interim ruling allowing amendments to the statement of case did not include such limitations.

The Applicant drew a parallel to civil court proceedings, however the Commissioner does not accept this since in civil court proceedings, when the plaintiff amends his Statement of Case, he can expect the defendant to be allowed to amend their Statement of Case, whether in direct response, or to broaden their position, and this is the risk taken when amending the Statement of Case once the proceeding is underway.

In contrast, in Patent Opposition proceedings, it is the Applicant that has a right to amend the specification, not the Opposer. In this instance, it is the Applicant that causes the Statement of Case to need to be amended, and he can therefore expect that the Opposer will also amend his Statement of Case , and will not restrict himself to amendments resulting from the Applicant’s amendment. If the Opposer does amend their Statement of Claims, the Applicant can make their amendments.

So what is the appropriate Law if the Opposer does NOT amend their Statement of Case? The Commissioner reasons that the Applicant can certainly correct their Statement of Case with respect to anything that needs correcting. Whenever the specification is amended, the main points of disagreement often shift. The Opposer deciding not to amend the Statement of Claims does not prevent the Applicant from relating to new issues raised by the amendment to the Specification, and to redirect his allegations to these issues. This serves the procedure and focuses the Statement of Case on the real issues. The Commissioner considers that the term “issues arising from the amendment” should be interpreted broadly, in light of the relevant case-law.

Nevertheless, where the amendment to the Statement of Case is totally disconnected to the amendment to the specification, it becomes a regular amendment to the Statement of Case which should be subject to the regular criteria. The submission should be accompanied with a statement justifying the amendments and explaining why they could not have been included originally, and why they should be allowable. This is necessary to prevent the amendment to the Specification becoming a technical tool for allowing unlimited amendments to the Statement of Case whenever the Specification is amended.

In this instance, the amendment to the Statement of Case was the addition of background relating to the development of the XLI formulation. From Examination of the amended Statement of Claims, the Applicant did not indicate any connection, even minimal, between the amendments to the specification and the amendments to the Statement of Case. Furthermore, the Applicant did not justify why the amendment was required now, and was not part of the original Statement of Case, or why the Statement of Case was not amended earlier.

In these circumstances, the Commissioner considers that the Opposer is correct, and the amendments as submitted should not be allowed. The Applicant is given 15 days to refile an amended Statement of Case whose claims are related to the amendment to the Specification, or to state that they do not wish to file an amended Statement of Case. Alternatively, the Applicant may submit a request to amend the Statement of Claims justifying the amendments submitted.

The deadlines for submitting evidence that were given in the interim ruling of 5 March 2018 are canceled. New deadlines will be given once the Applicant files his Statement of Case.

Costs for this will be considered when ruling costs for the main ruling.

Interim ruling by Commissioner Ophir Alon Concerning Unipharm’s Opposition to IL 201320 to Pfizer


New Patent Commissioner overturns Patent Term Extension decision by Predecessor

June 28, 2018

Manufacturers_Association_of_Israel.pngThe Manufacturers Association of Israel opposed an ex-partes decision to allow a patent term extension for Dexlansoprazole, and New Commissioner Ofer Alon has disallowed the extension accepted by his predecessor.

Background

Dexlansoprazole.pngDexlansoprazole is used for treating gastro-reflux and for treating or preventing digestive ulcers.

IL 145996 to Takeda is a patent for Dexlansoprazole that claims various crystalline forms of the salt, a pharmaceutical preparation including the forms, and methods of treatment or prevention of digestive ulcers.

After Takeda successfully obtained regulatory approval for Dexilant™. (Dexlansoprazole) which is the R enantiomer of Lansoprazole, they applied for a patent term extension, which was refused by the Deputy Chief Examiner on 30 June 2016 on the grounds that the registration of Dexlansoprazole is not the first approved medical usage of the active ingredient in Israel, as the racemic mixture of the same active ingredient (Lansoprazole) is already registered.

Left and right antiomers in a lattice arrangement.jpg

Racemic Lattice for Shoes

In a response filed on 28 August 2016, the Applicant acknowledged that the racemic mixture Lansoprazole includes the R-enantiomer Dexlansoprazole, but the R-enantiomer cannot be separated from the racemic mixture since the crystals themselves contain both the right and the left enantiomers within the same lattice, creating a new complex that is different from the separate enantiomers.

The Applicant submitted that previously registered Lansoprazole is thus not a racemic mixture but rather a racemic compound and consequently the Dexlansoprazole crystals are substantially different from those of Lansoprazole and should, therefore, be registerable.

The Applicant distinguishes between racemic mixtures and racemic compounds with reference to Mitchell AG, Racemic drugs: Racemic Mixture, Racemic Compound, or Pseudoracemate? J. Pharm Pharmaceut Sci 1(1):8-12, 1998).

Dexasportshoe Lattice Arrangement

Dexasportshoe Crystalline Structure

On 27 October 2016, the Deputy Chief Examiner understood the argument as stressing that the enantiomer is more efficacious than the racemic mixture and rejected the request for the patent term extension citing former Commissioner Meir Noam’s ruling concerning Unipharm’s opposition to IL 90465 to A/S Lundbeck (3 February 2009), which ruled that the higher efficacy of enantiomer with respect to the racemic mixture was patent worthy, but did not provide a new material in the sense required for a basic patent that is eligible for patent term extensions.

On 24 November 2016, the Applicant appealed this decision to the Commissioner of Patents, reiterating the arguments that were rejected. Then Commissioner Asa Kling accepted that the enantiomer was not found in the racemic compound and agreed to a patent term extension of 959 days until 30 January 2023 (see ruling re IL 145996 to Takeda from 12 Feb 2017:

In paragraphs 24 to 26 of his decision, then Commissioner Kling stated:

I have been convinced that Lansoprazole is a compound of the enantiomers and it is not possible to isolate Dexlansoprazole from the racemic compound, in contradistinction to the state of affairs in Unipharm vs. Lundbeck where the racemic mixture could be separated into the enantiomers.

Where the relative efficacy is different, Applicants assertion that Lansoprazole is NOT a racemic mixture but rather that the enantiomers share the crystalline structure, one cannot isolate the R enantiomer.

Opposer’s Argument

On 25 May 2017, the Association of Israeli Industrialists opposed the ex-partes decision to issue a patent term extension, based on Section 64g(a) of the Israel Patent Law 1967 for the following reasons:

  • the registration in the register of medical formulations which was the basis for the patent term extension was not the first registration for the active ingredient, contrary to Section 6d(3) of the Law.
  • The Applicant concealed significant relevant facts from the Patent Office. So the Application for a Patent Term Extension is contaminated with inequitable behaviour and is contrary to Section 64b(1) of the Law.

These claims were supported by an expert opinion from Professor Menachem Kaftori dated 24 May 2017.

The Opposer relies on the Lundbeck ruling (Appeal 223/09 Lundbeck vs. Unipharm ltd from 25 May 2009 which asserted that the various terms for material in Section 64a include enantiomers, and wherever the material is an active ingredient or form of the active ingredient that is found in a prior medical formulation that is listed in the register, it cannot be considered as being a first registration under Section 64d(3) of the Law.

The Opposer further alleged that the applicant had already acknowledged that the active ingredient Dexlanoprazole is included in the racemic Lansoprazole in the pharmacology report for Kapidex in a request to market a formulation including Dexlansoprazole in the US (NDA 22,287) which was appended to the ex-partes submission.

Based on Professor Kaftori’s opinion, the Opposer further alleged that coupling between the different molecules in the crystal were inter-molecular bonds and not intra-molecular bonds, so that on dissolution into water a racemic mixture of the enantiomers results.

DexilantThe active ingredient of Dexilant™ is Dexlanoprazole and not the crystal, and the morphological structure of the crystal has no relevance to the issue of patent term extensions. The racemic compound is no different to a racemic mixture as has as the difference between its components, apart from the crystal structure of the raceme. The inclusivity of the re Lundbeck decision does not relate to the isolation of the material by separating the basic cell of the crystalline structure whilst in a solid state, but to the possibility of any separation.

The Opposer further argues that the efficacy of the enantiomers when considered separately or as part of the racemic mixture is not relevant to the question of whether the application in question relates to the first formulation that allows the material to be used for medical purposes in Israel.

LansopropazoleThe Opposer further claims that the Applicant concealed the fact that the material was previously registered in the Lansoprazole registration, and the experimental evidence used to justify the registration were those using Lansoprazole which the Applicant had asked to be relied upon. Similarly, the Applicant had concealed the fact that Lansoprazole had been defined by themselves as being a racemic mixture and not, as they now claimed, a racemic compound, for example, before the Canadian Federal Court of Appeal.

Applicant’s Argument

Takeda reiterated the arguments submitted in the ex-partes hearing by former Commissioner Kling, his ruling of 12 February 2017, and an Opinion of Professor Avi Bino of 19 September 2017.

Furthermore, Takeda rejected the allegation of inequitable behaviour noting that the racemic material Lansoprazole was disclosed and related to in their submission for a patent term extension, and reiterated that it was a different material.

optically active.jpegFurthermore, in their response of 28 August 2016, they clarified that Lansoprazole is racemic compound that is optically active in a different manner to that of the enantiomer. The XRay diffraction pattern of Dexlansoprazole is different, and it is a different chemical entity. The Applicant further claims that the request for a Patent Term Extension is based on a registered product and not on a material after subsequently undergoing any type of process within the human body [apparently dissolution is intended – MF].

The Applicant alleged that the Opposer did not provide support for the contradiction in Mitchell’s paper, and did not provide scientific textual support, experimental evidence or research to challenge the validity of the evidence submitted by themselves in the ex-partes proceeding.

In the pharmacology submission for Kapidex which includes Dexlansoprazole there was experimental evidence relating to pregnant women which included one test conducted with Dexlansoprazole and one test conducted with Lansoprazole. Thus contrary to Opposer’s assertion Dexlansoprazole was examined, and the testing of Lansoprazole was additional data.

Although the therapeutic results themselves are insufficient to prove that a patent term extension is justified, they do teach that there is a difference between the materials that allows a patent term extension.

raceme.jpgTakeda referred to the definitions of racemic mixture, raceme and racemic compound in the IUPAC gold book which is the definitions used by the International Union of Pure and Applied Chemistry and which they claim accords with Mitchell’s paper.

Finally, Takeda submits that the Commissioner is not able to sit in judgment and rule on a ‘kind of appeal’ of his own decision, or that of his predecessor.

Discussion and Ruling

For sake of clarity, the Commissioner notes that the term raceme relates to racemic mixtures of S and R molecules in equal amounts, or to racemic compounds where there is a repeating arrangement of the two enantiomers in different proportions within a crystal,

The legal authority of the Commissioner to rule on the Opposition

legalCommissioner Alon dismisses the allegation that he cannot hear this case. Section 64f of the Law allows anybody to oppose patent term extensions or their duration. Under section 64g, ANY reason that the Commissioner should not grant a patent term extension is a valid reason for opposing the extension. The right of the Opposer is independent of whether the extension was the result of an ex-partes ruling or otherwise.

The logic is clear. In the ex-partes hearing, one side presents THEIR arguments, evidence and documentation supporting the issuance of the PTE. The opposition is an adversarial proceeding whose purpose is to allow third parties to challenge the granting of the PTE, Once an Opposition is filed, the Commissioner is obliged to consider the issues raised and to reconsider the determination that a PTE is justified in light of the claims and evidence of the parties.

Registration of Lansoprazole allowed usage of Dexlansoprazole

Section 64d of the Law sets out the conditions for obtaining a Patent Term Extension. Inter alia, it states that one can only obtain an extension for a material listed in the pharmaceutical register, and only if that registration is the first registration of the material for medical use.

It does not appear that there is any dispute between the parties regarding the following facts:

  • The crystal of the Lansoprazole raceme is a racemic compound, which is difference from the enantiomer of Dexlansoprazole (Cross-examination of Professor Kaftori page 12 lines 12-18).
  • When the raceme Lansoprazole is in a crystalline form, one cannot separate the enantiomers into Dexlansoprazole and Levolansoprazole.
  • One can separate a solution of Lansoprazole into its enantiomers by known and established procedures for separating enantiomers. (Opinion of Professor Bino, paragraphs 13-14).
  • When Lansoprazole is separated into its enantiomers one obtains the R-enantiomer Dexlansoprazole and the S enantiomer Levolansoprazole.

As to the possibility of separating the enantiomers. Under cross-examination, Opposer’s expert Professor Bino agreed:

Attorney Tal Band:  Take, let’s repeat this, take a crystal of Lansoprazole, dissolve it in water and what do you get? I suppose you will allow me…

Professor Avi Bino: With pleasure

Adv. Band: You will obtain a solution that includes the R-enantiomer

Prof Bino: the R-enantiomer and the S enantiomer

Adv. Band: and the S enantiomer, which is the active ingredient if we now know that the active ingredient is the R enantiomer? It is the R enantiomer, right?  

Prof Bino: the R-enantiomer in solution

Adv. Band: the R enantiomer I solution is the active ingredient?

Prof Bino: Correct.

Protocol of 9 January 2018, page 53 lines 17-26.

In a different stage of the cross-examination, 9 January 2018, page 46 line 6:

Attorney Tal Band:  It can, that means to say, it can dissolve into the solution…

Professor Avi Bino: Yes

Adv. Band: And this change from crystalline to solution is not a chemical change but a physical one, correct?

Prof Bino: True.

Adv. Band: Good. So in the two states the chemical compound maintains its identity, correct?

Prof Bino: Correct.

See also paragraph 60 of the Applicant’s claims from 19 September 2017 and paragraphs 9-15 of Professor Bino’s Opinion.

right hand.pngThus there is no argument that the R-enantiomer included in Dexilant™ is the same R-enantiomer included in Lansoprazole.

In the Lundbeck ruling, the District Court ruled that registration of a raceme would be considered the first registration for the enantiomers.

The Applicant considers that the Lundbeck case is different since there one could separate the enantiomers as the patent covered a racemic mixture. However, in the present instance, one cannot separate the enantiomers whilst solid, but have to dissolve them in water first, and only then can the enantiomers be separated.

To clarify the point, the Applicant submitted the following schematic illustration on 28 August 2016 to the Deputy Chief Examiner:

Lansopropazole imageThe Applicant claims that the law relates to the active ingredient of the medical formulation, which is crystalline and so should be considered in this form.

lefty.jpgIn re Lundbeck, a mixture was considered, and the unit cell of r-enantiomer structure is found in the mixture (right side) and in the enantiomer (center top), whereas in the present case, (illustrated on the left), there is no r-enantiomer unit cell so one has to dissolve the crystal and then separate and recrystallize to obtain the separate enantiomers in crystalline form.

Applicant claims that the Law relates to the active ingredient of the medical formulation. The medical formulation includes the crystalline structure, and so it should be [examined for patent term extension purposes] in this manner.

The Examiner considers that the fact that one cannot separate the R and L enantiomers whilst crystalline is irrelevant. In paragraph 17 of the District Court ruling in re Lundbeck the court differentiates between inter- molecule bonds and intra-molecular bonds.

Even if we were to accept the Applicant’s claim that the Lansoprazole is a racemic molecule, there are no intra-molecular bonds, but only bonds connecting the molecules to each other, and each enantiomer molecule maintains its identity within the crystal. The attractive forces between the S and R molecules creates the crystal by inter molecular bonds (see paragraph 18 of Professor Kaftori’s opinion and Professor Bino’s remarks on page 48 lines 6-12 of the protocol. As Commissioner Alon clarifies below, it is incorrect to consider the material at the crystalline layer, and so the R-enantiomer is NOT to be considered a new material as far as Patent Term Extensions are concerned.

If one were to consider the crystalline form of the pharmaceutical formulation as being a new material as far as Patent Term Extensions are concerned, the consequence would be that one could dissolve Lansoprazole and consider the solution as being a pharmaceutical formulation, the solution contains both enantiomers in solution would be considered as a different formulation and thus subject to a Patent Term Extension, and it is difficult to accept this result.

Furthermore, the definition of material in Section 64a of the Law is:

“Material” – the active ingredient of the medical formulation or its salt, ester, hydrate or other crystalline structures of the same component.

Commissioner Alon considers that one should read Section 64a as all the forms of the active ingredient being considered the same material. This definition implies that the identity of the material is NOT considered in terms of its form in the formulation. The case-law has ruled that the fact that different enantiomers and crystalline structures have different physical properties does not make them considered as being different materials as far as patent term extensions (PTEs) are concerned – see District Court ruling in re Lundbeck, section 20.

This interpretation sits well with the rationale of the Law as stated in the Patent Term Extension ruling concerning IL 124123 to Bayer Healthcare LLC, 16 April 2018:

With regards to active chemical ingredients, one can claim that the legislator defined enantiomers that, although not structurally identical, can be considered as being the same active ingredient, since the experiments on the active ingredient will shorten the way or help develop drugs based on the same active ingredient. So different salts of the same active ingredient are defined as being the same active ingredient with respect to Section 64D(3) of the Law (it is noted that in other jurisdictions, a different conclusion was reached).

Additionally, there is an explicit connection between the breadth of patent protection under Section 64h(d) of the Law and the interpretation of the term ‘material’. Section 64h(d) states:

  1. d) If the Registrar granted an extension order, then the holder of the basic patent may – during the period in which the extension order is in effect – prevent any person from marketing or from producing in order to market without his permission the medical equipment or the medical preparation that incorporates the material, as far as the material, the process of its production, its use or the medical preparation or the process for its production were claimed in the claims for the basic patent.

Recognizing all forms of the active ingredient as being a new material as far as Patent Term Extensions are concerned would result in Patent Term Extensions being granted, not for all forms but only for the form of the active ingredient in the medical formulation. Commissioner Alon considers that proper policy is to provide wide protection for the party developing a new drug, and recognizing the physical form of the material as being different would result in narrowing the breadth of the patent term extension.

The Applicant argues that from the ruling of former Commissioner Noam regarding the Patent Term Extension for IL 97219 Novartis AG (26 December 2005) one can conclude that two active ingredients acting together could be considered as being a new material that is different from the two ingredients considered separately.

Commissioner Kling does not agree. In re Novartis, Commissioner Noam considered the eligibility for a Patent Term Extension for a formulation including two active ingredients that were previously separately recorded in the pharmaceutical register, and concluded that even were there to be a synergetic effect and not merely an additive effect (aggregation), this is only relevant for the question of patentability but not for the question of eligibility of Patent Term Extension, nothing further is stated.

It appears that Commissioner Kling’s ruling of 12 February 2017 was largely based on the conclusion that one cannot separate the enantiomers of the racemic compound. As shown in the Opposition by the statements of case and evidence, is that the compound can be separated into its enantiomers, and that the form is not significant. In other words, the factual basis for Commissioner Kling’s ruling has been eroded and we can thus change the decision.

In light of above, Commissioner Alon rules that the R enantiomer is found in Lansoprazole and the registration of Lansoprazole is the first registration of the R-enantiomer Dexlansoprazole which is the active ingredient of Dexilant™.

The Allegation of Inequitable Behaviour

The Opposer’s allegation that Takeda’s behavior was inequitable, contrary to Section 64b(1) of the Law, is supported by two props. One is the statement appended to the request for a patent term extension that was written by Miyuki Hora which states that Dexlansoprazole is the first registration that allows the use of the product for medical purposes in Israel, without going into details, which comes later.

In addition, the Oppose claims that the Applicant concealed the fact that the examination of the request for registration in the pharmaceutical formulation register relied on tests performed on Lansoprazole, and that the Applicant itself relates to Lansoprazole as being the racemic mixture in a proceeding before the Federal Court of Appeal in Canada, and regarding the date of the claim that Lansoprazole is a racemic compound.

The Applicant’s response to these claims was that the experiments were clearly indicated in the pharmacology report mentioned above, and Commissioner Kling even related to it in his ruling of 12 February 2017. As to the Canada decision, the Applicant acknowledges that they were inaccurate in their terminology regarding mixtures and compounds, but this was due to the fact that case related to a different issue and not to something relevant to the issue of whether the Lansoprazole raceme is a compound or mixture. The same inaccuracy is found in the FDA regulatory approval in the US.

When considering Miyuki Hora’s affidavit, it is true that it relates to the Lansoprazole raceme:

“… Although racemic Lansoprazole was previously approved for medical use, enantiomerically pure Dexlansoprazole has never been approved …”.

Additionally, it seems that the Applicant themselves muddled up the terms in the definition of the raceme, and sometimes referred to it as a mixture and sometimes as a compound, however the Commissioner does not consider that this is indicative of inequitable behaviour. Furthermore, in light of the above ruling, it is irrelevant whether we refer to the raceme as a mixture or a compound, since the question of whether the molecule were previously registered exists in the raceme, which we have established to be the case.

Conclusion

In light of the above, the Commissioner accepts the Opposition and cancels the patent term extension. The Applicant will pay 15000 Shekels costs and 100,000 Shekels legal fees to the Manufacturers Association of Israel.

Opposition by the Manufacturers Association of Israel  to Patent Term Extension for IL 145996 to Takeda, ruling by Commissioner Ofir Alon, 24 May 2018  

COMMENT

I think this decision is completely correct and is also well written and whilst comprehensively addressing the issues raised, is relatively concise.

Since the racemic compound dissolves into the free molecules, the discovery that the R-enantiomer is active may be inventive, but the clam that this is a new material that warrants a patent term extension is ludicrous in light of the previous cases related to by the Commissioner and linked to above.


Can Non-Israelis be Subpoenaed to testify in Opposition Proceedings?

June 10, 2018

novartis

Israel Patent Application No. 176831 to Novartis is titled “COMPRESSED PHARMACEUTICAL TABLETS OR DIRECT COMPRESSION PHARMACEUTICAL TABLETS COMPRISING DPP-IV INHIBITOR CONTAINING PARTICLES AND PROCESSES FOR THEIR PREPARATION”. It is the national phase entry of PCT/EP2005/000400.

Unipharm

On allowance, Unipharm filed an Opposition to the patent application being granted.  Within the Opposition proceeding, Unipharm, who for this case, have dispensed with the services of Adv. Adi Levit, their legal counsel and have been handling the Opposition unaided by attorneys, have requested that the Israel Patent Office subpoena  John Hutchinson and Mr Kowalski, workers at Novartis to give testimony.

This request follows an earlier request to reveal documentation regarding testing that was appended to the Expert Witness testimony of Professor Davies, Novartis’ expert witness, which was ordered in an earlier interim ruling of 3 January 2018.

Discovery

In response to the discovery request, Novartis submitted an Affidavit with various appended papers. In light of this, Unipharm now alleges that the Affidavit implies that Novartis has not revealed all documents it should have. Unipharm further indicates that the explanation proffered by Hutchinson, who is signed on the Affidavit, “appears to be odd”. Therefore, Unipharm wish to Subpoena him to cross-examine him on this.

lab bookUnipharm further claims that a document titled “Certificate of Authenticity” was included with respect to the laboratory notebook, parts of which were included in the appendices attached to the affidavit. According to Unipharm, Mr Kowalski, who was one of the named inventors, is signed on this document. Consequently, Unipharm requested to cross-examine him as well.

Novartis requests that Unipharm’s request be rejected. They claim that the Commissioner does not have the authority to subpoena witnesses not within the judicial territory of the State of Israel, who are not direct parties in a proceeding. Novartis also notes that Mr Hutchinson’s signature on the Affidavit accompanying the discovery documents was done in the framework of his employment as a patent attorney in the Legal Department of Novartis. Novartis claims that ALL information regarding the management of the proceeding is subject to legal confidentiality and may also be considered as being a trade-secret.

As to Mr Kowalski, he never signed an Affidavit of Evidence in the process and is not a party to it. Similarly Novartis claims that Unipharm has not stated why they need to cross-examine that inventor who was one of three named inventors.

Discussion

The witnesses that the Opposer wished to interrogate are beyond the territorial jurisdiction of Israel and are not parties in the case. Thus the Applicant is correct that Section 163b of the Patent Law 1967 that Unipharm referred to is not a legal basis for their being subpoenaed. The references that Unipharm related to in their request, dealt with witnesses that gave Affidavits or expert witness testimony, and thus could be subpoenaed for cross-examination purposes.

A party that wishes to subpoena a citizen or foreign resident to testify must do so under the International Inter-State Legal Assistance Law 1998. See Appeal 3810/06 Dori and Zacovsky Building and Investments Ltd vs. Shamai Goldstein, paragraph 17, 24 September 2007.

Section 47 of the Legal Assistance Law states:

The Authority is allowed to request from another country, that testimony be collected, including that physical evidence be transferred for display in Israel, if the court allows that the evidence is required to hold the trial in Israel; regarding this law, and where the case is pending, the term court refers to the tribunal that is hearing the case.

From the wording of this Section, it transpires that the court will open a proceeding to summon foreign witnesses to a hearing only if it is convinced that their testimony is necessary to conduct the proceeding. In this instance, the Commissioner considers that there is significant doubt as to whether the presence of the witnesses for cross-examination purposes is really required.

Unipharm has requested to cross-examination Mr Kowalski regarding an Affidavit for discovery that he is signed on. The purpose of the discovery process is to enable the main proceeding to be handled efficiently; legal proceedings with face-up cards where each party knows what documents the other parties hold to prevent surprises at the hearing. By this means, unexpected delays are prevented, allowing the court to reveal the truth. Appeal 4235/05 Bank Mizrachi United vs. Ronit Peletz, 14 August 2015.

Opposite the principle of discovery, there are other interests such as efficiency of the court proceeding, defense of the legitimate interests of the party revealing documents, and preventing damage to the interests of third parties – See Appeal 2534/02 Yehuda Shimshon vs. Bank HaPoalim ltd. p.d. 56(5) 193. So the case-law has ruled more than once that it will not allow cross-examination of affidavits of this kind, if they are properly presented (see Appeal 2376/13 Rami Levy Shikma Marketing Ltd vs. Moshe Dagan 8 July 2014, and Zusman Civil Procedures 7th Edition, page 436.

This general rule has two exceptions: The first is that where reading of the Affidavit alone or with reference to its citations, that the Affidavit is defective, the court can order the party revealing documents to file a further Affidavit. Second, where the issue of confidentiality is used, the court can examine the document and decide if this claim is reasonable (see for example, Appeal 240/73 Baruch Vilker vs. Dov Tishler, 205, 2 December 1971 and Appeal 6823/05 Abraham Roimi vs. Bank Leumi of Israel, 12 January 2016.

In this instance, Unipharm did not append an Affidavit, detail or justify why they considered that the current case is one of these exceptions. Thus the Commissioner cannot rule that this is the case, and so the request is rejected.

As to the evidence of Mr Kowalski, Unipharm did not claim that there was any connection between the documents appended to the Affidavit of the Discovery and to the experiments that were appended to Novartis’ evidence, which was the basis of the original discovery request. Note, Mr Kowalski’s signature is only on the Certificate of Authenticity taken from the lab-book that was appended to some pages therefrom that were submitted in the discovery documents. In these circumstances, it is not clear what value Mr Kowalski’s testimony has, even were he to be subpoenaed.

In light of this, the Commissioner does not consider that the requirements of Section 47 of the Law of Legal Assistance are fulfilled with regard to Mr Hutchinson or Mr Kowalski.

The Request is refused. Unipharm will cover Novartis’ costs and their legal expenses to the tune of 2000 Shekels + VAT. These costs will be paid within 30 days.

Interim Ruling in Opposition to IL 175831 Ofer Alon, 30 April 2018.

Comment

It is possible that Mr Tomer has indeed bitten off more than he can chew by handling legal issues procedural issues such as requesting subpoenaing witnesses without legal counsel. However, the costs ruled against him are trivial when considering the issue in question. The Unipharm’s Expert Witness cannot testify to things that he does not know such as what else was in the lab-book, and in Opposition proceedings there is no assumption of validity of the patent. Thus it would be premature to write this request off as a strategic or even a tactical error.


Kerem

June 10, 2018

CEREMKerem Natural Foods Industry A. L. ltd applied for Israel Trademark Application Number 266067 for Jellies, jams, dried fruit, coconut oil, , black cumin oil, sesame oil, almond oil and other edible oils; Coconut milk, cream and butter; spreads, soup powders produced by cooking and preparing extracts of meat and vegetables, and soup powders for seasoning; all included in class 29, Date syrup, molasses; Coconut sugar and flour, molasses, honey, date syrup, crisp cakes, crackers, spreads and sauces; sweeteners made of stevia or other plants extraction; coconut flour and coconut flour baked products; all included in class 30 and for Fresh and unprocessed Coconut and other tropic Fruits and its products; all included in class 31.

Kerem is Hebrew for vineyards.

On 28 February 2017, HaKerem – Alcoholic Beverages ltd  opposed the registration. On 8 June 2017, Kerem Natural Foods submitted their counter-statement. HaKerem – Alcoholic Beverages ltd had until 11 August 2017 to submit their evidence, but this deadline was extended twice, to 12 November 2017, but the evidence was not forthcoming and instead HaKerem – Alcoholic Beverages ltd withdrew their opposition.

Kerem Natural Foods Industry then submitted a request for costs of 62,450 Shekels accompanied by an agreement with their attorneys regarding their hourly rate and various receipts evidencing payment in practice.

HaKerem – Alcoholic Beverages objected to the costs requested. They prevailed in the Opposition proceeding and are entitled to costs under section 69 of the Ordinance which states that

In any hearing before him, the Commissioner is entitled to award reasonable costs.

The right of the prevailing party to receive actual costs incurred depends on the amount requested, that it is properly documented, and that it is reasonable, necessary and proportional. See for example, Bagatz 891/05 Tnuva vs. Ministry of Trade and Industry p.d. (1) 600, 615 (30 June 2005). However, the arbitrators are required to consider the case specifics and legal policy, and are not obliged to award full costs – see Appeal 6793/08 Loar ltd. vs. Meshulam Lewinstein Engineering and contractors LTD. 28 June 2009, at paragraph 19.

The case specific considerations do not form a closed list and each case should be considered on its merits. These include the behaviour of the parties. The way the case was handled, the complexity of the case, the time invested in the case, whether the case requires specific expertise, the importance to the parties, whether the case has public interest ramifications, and the like.

As to judicial policy considerations, as previously ruled in Patent cancellation procedures against Israel Patent numbers 179379  and 142896 Alkermes Pharma Ireland Limited Novartis Pharma Services vs. MEDICE Arzneimittel GmbH & Co.KG from 28 March 2018, the patent office has an obligation to serve the greater public interest. In this framework, when addressing cost requests, the patent office has to find the right balance between the encouraging trademark submissions – both to protect property rights in brands and to prevent misleading the public regarding sources of goods, and not to discourage the submission of oppositions against unreasonable trademark applications. Awarding high costs to applicant or opposer could create an obstacle to filing that shifts from this balance.

In the present case, the request for costs did not provide sufficient details to substantiate their claim, and did not explain the basis of the costs, the number of hours spent by their attorneys, etc.  Consequently there is a real difficulty to determine whether the costs requested fulfill the considerations laid out in re Tnuva.

The Adjudicator of Intellectual Property, Ms Yaara Shoshani Caspi does not accept the claim of the enormous amount of work preparing evidence immediately on the filing of the Opposition, prior to the opposing counsel submitting their evidence. The Applicant did not explain why the Opposer should have to bear the burden of the Applicant’s obliging himself to pay global legal fees regardless of the work required, and also to provide a ‘bonus’ if the case is dismissed. The Adjudicator does not find this type of arrangement fulfills the ‘reasonable and necessary expenses’ requirement.

In this instance, the Opposition was abandoned at an early stage, after the filing of the counter-statement of case.  The Applicant did not need to file evidence, there was no hearing and no summations were required. In such a case there is no justification to award costs of 62,450 Shekels as requested. Compare for example, the cost request for Cancellation of Israel Trademark No. 140219 BASF Poyurethanes GmbH vs. Pazker ltd, 12 September 2015.

Conclusion, by way of estimation, costs of 7000 Shekels including VAT are awarded, to be paid within 14 days, or interest will be accrued.


Speedo vs. Brooks A Non-Sporting Trademark Opposition

May 29, 2018

Brooks logoBrooks Sport submitted TM Application No. 238375 back in June 2011, for clothing, shoes and headgear in class 25.

speedo-logo

Speedo Holdings BV filed an Opposition the mark under Sections 11(6), 11(9), 11(13), 11(14), 11(5) and Section 39(a1) of the Trademark Ordinance 1972.

The Opposition was based on the alleged similarity to three Speedo marks, registered on July 1993 and shown below.

Opposer’s (Speedo’s) Statement of Case

speedo

The Opposer claims to have been established nearly 100 years ago, and to being one of the leading sports clothing manufacturers, particularly for sea and pool wear. Since the Seventies, the company has used their logo on swimwear, goggles, swimming caps, pool footwear (flip-flops?) and the like, but also for clothing for wearing in fitness centers and during aerobic activities.

The Opposer claims that due to their wide advertising and marketing activities and the quality and reliability of their products and the Speedo image, their logo has received wide acclaim worldwide, including in Israel. Their sports goods all sport their logo which is thus well-known.

Speedo has registered trademarks in classes 25 (clothing) 28 (games and exercise devices) 12, 14, 18 and 5.

In this regard, the three logos depicted above, Israel Trademarks 76627, 76632 and 76637 are cited.  76627 is just for the graphic logo. 76632 and 76637 include the graphic logo with the word SPEEDO. All three logos cover all goods in class 25.

The Opposer alleges that these marks are to be considered well-known marks as defined by Law due to their wide usage worldwide in general and in Israel in particular, and due to the publicity and advertising. The Opposer alleges that their logo is identical or at least very similar to Israel TM application no. 76627 to Brooks Sport, which also covers goods in class 25.

The Opposer further alleges that composite marks including the logo of Israel TM application no. 76627 and wording are also confusingly similar to Speedo’s marks, since the graphic element is dominant. The Opposer considers that allowing Israel TM application no. 76627 to register would cause the mark to be confused with their marks and would thus mislead the public regarding the source of the goods.

Since their mark is a well-known mark, it provides protection for similar but not identical goods, and so the fact that Speedo specializes in swimwear and Brooks in sports shoes, is of no consequence, and the bar for widening the protection is low and Speedo easily overcomes it.

Applicants’ (Brooks) Statement of Case

Brooks claims to be a long established, large and well-known manufacturer of shoes and sports goods, established back in 1914.

brooks earlier markBrooks considers that the pending mark is only minimally different from their registered Israel TM No. 82353 shown alongside.

Brooks submits that, by analogy, the new mark can also coexist with Speedo’s marks.

Brooks also considers that their graphic mark and Speedo’s mark are significantly different and there is no likelihood of consumers being misled. They note that Speedo have not documented any instances of actual confusion due to the alleged similarity and there are thus no grounds for concluding a real danger of misleading.

Brooks further notes that their goods and Speedo’s are very different, are intended for different consumers and are marketed in different ways.

Finally, the Applicant notes that Speedo have failed to establish any reputation in their logo alone (without wording) and so the claim that their mark is well-known should be rejected.

The Evidence

To support their claim, the parties submitted their evidence as follows. On 26 April 2014, Speedo submitted evidence with an affidavit from Mr Andrew Michael Long. On 21 July 2014, Brooks submitted their evidence with an affidavit from Mr David N Bohan and Mr Ilan Benisti. On 10 July 2015, Speedo forewent submitting a counter-statement in response.

Following submission of evidence, a hearing was set for 21 January 2016. Not long before this date, Speedo (represented by Pearl Cohen) submitted various interim proceedings and requests to postpone the hearing. On 17 January 2016, Speedo forewent cross-examining Brooks’ witnesses. In a ruling of 18 January 2016, the Adjudicator, Ms Yaara Shoshani Caspi rejected the interim requests and ordered Speedo’s witnesses to be available for the hearing.

Despite this, Speedo’s representative did not attend the hearing and was thus not available for cross-examination. This raised the question of whether their witness’ statement could remain on file, and what its evidentiary weight should be considered as being. On 1 February 2016, the Adjudicator ruled that the Affidavit should remain part of the file, but should be given low evidentiary weight.

DISCUSSION AND RULING

We are dealing with an Opposition to a trademark registration proceeding in which the burden of proof that the mark IS registerable, is initially on the applicant. However, the Opposer has to bear the burden of proof required to establish their opposition. If they succeed in so doing, the burden of proof moves from one side to the other as the proceeding proceeds. See, for example, Opposition to Israel TM Applicant No. 17051 Orange Personal Communications Services Limited vs. Gemcom LTD. 11 October 2009, and Opposition to Israel TM Application Numbers 175808 and 175809 Gizeh Manufacturing Company Greek Cooperative Cigarette vs. Raucherberdarf GmbH S.A. Sekap S.A. 6 February 2012.

Are the marks well-known?

It seems indisputable that the wordmark Speedo is well-known in Israel, and the Applicant and their witnesses do not dispute this. However, the question remains whether Speedo’s logo is now well-known in Israel. Speedo considers this to be case and relies on the long and wide-scale usage and the significant sums spent on promoting the brand around the world.

The term well-known mark is defined in the Ordinance as follows:

“Well-known trade mark” – a mark that is well-known in Israel as a mark owned by a person that is a citizen of a member state. A permanent resident of such state or who has an active business or factory in such state, even if the mark is not a trade mark registered in Israel or if there are no users of the mark in Israel; for the purposes of determining whether a trade mark is a well-known in public circles relating to it and the extent to which it is known as a result of marketing, shall be taken into account, inter alia;

As known, the sight and sound test is the central test of the three, and it considers the appearance of the marks in their entirety, emphasizing the first impression made by the comparison. The importance of the first impression is due to the simple reason that consumers do not stop to consider marks in their entirety. See for example, Appeal 6658/09 Multilock ltd. vs Rav Bareakh Industries ltd. paragraph 9 (12 January 2010).

In the Opinion of the Adjudicator, the graphic symbol of the Opposer is Israel TM No. 76627 which is very similar to the applied-for mark.

The Adjudicator does not consider the fact that Opposers’ mark is filled and the Applicant’s mark is defined by an outline as sufficient to create distinctiveness and to prevent confusion between them, particularly as it seems that Brooks uses the filled-in symbol. Nevertheless, she does not consider that one can fairly consider the combination marks of symbol and word Speedo of the Opposer with the symbol of Brooks.

Distribution Channels and Customers

In this instance, the Applicant argues that the applied for mark and the Opposer’s marks are not used on the same goods. Their position is that although both Applicant and Opposer manufacture sports goods, their goods are nevertheless in different categories since the Applicant’s goods are for running, whereas the Opposer’s goods are for swimming and water sports. It would appear that there is no need to give this further consideration since the Adjudicator has already ruled that these are goods of the same type. However, since we are considering the likelihood of misleading under Section 11(9) one has to consider the details of the mark. From this consideration it transpires that the Opposer’s (Speedo) marks are registered for the entire class 25, covering clothing per se, whereas the Applicant (Brooks) have applied for only some of the goods in class 25. From this it is clear that there IS overlap between the applied for range of goods of the Applicant and the range of goods covered by the Opposer’s mark. Because of this, the Applicant’s point that the marks are used for a different range of goods in practice is not acceptable.  Any consideration of the goods bearing the mark HAS to relate to the range of goods covered by the mark.

As to the customers, it seems that both Applicant and Opposer market their goods to the entire spectrum of people who engage in sporting activities, both professionals and amateur. So the customer base is identical. Nevertheless, it is likely that professional sporting people will be careful about what goods they purchase and will know the logos well. They will be more alert as the matter is of importance to them, so it is not reasonable to assume that this population will be misled. See re Bank Igud page 676, 673. However, this is not the case with amateurs, who purchase goods without much consideration, particularly when dealing with sports goods. For these consumers, it is not inconceivable that they will not be sufficiently attentive and could be confused or misled. In this instance, due to the similarity in goods for which the Speedo mark has been registered, it is not inconceivable that the Opposer will widen the scope of their business and only use the graphic element without the word Speedo. This could create misleading regarding the origin of the goods of Opposer and of the Applicant, which are both for class 25 and for the same family of goods.

As to marketing channels, the evidence shows that the Applicant’s goods are sold in both brand stores and general retail stores; however Speedo’s products are ONLY sold in Speedo stores. However, the Opposer, having a registered mark, could widen their distribution and sell in regular stores as well. So this test does indicate a danger of consumer confusion. See Appeal 4116/06 Gateway Inc. vs. Soundtrack Advanced Technologies ltd. 20 June 2007.

 Other considerations and Common Sense

This test includes the other case-specifics that should be considered when determining the likelihood of consumers being mislead by the similarity between the Applicant’s and the Opposer’s marks.

In this regard, the Adjudicator was not persuaded that the Applicant’s mark had acquired such significant recognition that overcome the risk of confusion with the Opposer’s graphic mark. There is a strong similarity between the visual appearance of the marks and between the goods covered, the customers and distribution channels.

Furthermore, the Adjudicator does not accept that the mark should be registerable since the sports field includes other marks that are very similar. This claim contradicts the Opposer’s other claim that the graphic marks of the Applicant and Opposer are distinctive and different.

A further claim raised by the Applicant was that their mark and the Opposer’s mark carry a different conceptual message. See paragraph 21 of Bohan’s affidavit. Whereas Speedo’s mark conveys the message of hydrodynamics, the Applied for mark is like a path and is more rounded and gives a sensation of flexibility, solidity and movement. The comparison of marks in light of subliminal messages was discussed at length in Appeal 8441/04 Unilever Plc vs. Eli Segev 23 August 2006 (Dove). The Opposer considers that this difference, even if acceptable, is not sufficient to overcome the similarities between the marks.

The Adjudicator does not accept the claim that the marks conjure up different messages. As the court ruled in the Dove decision, such messages are of value to the extent that they create a linkage between the product and the idea in the eye of the customer. In this instance, the Adjudicator is not convinced that the consumer would identify the Applied for mark with flexibility, stability and motion, and certainly this is not proven to be the case.

The Adjudicator also does not accept the Applicant’s claim that in this instance there is no likelihood of confusion since, despite the usage of both companies, there has never been a complaint of being misled in practice. The Adjudicator does not consider this lack of a complaint to be significant in establishing that there never was confusion or that there never will be confusion.

In light of the above, the triple test leads to the conclusion that there is a likelihood of confusion similarity between Speedo’s graphic mark and the applied-for mark. So Brook’s mark is refused under Section 11(9) of the Ordinance.

It is noted that to reach the conclusion of non-registerability under Section 11(9), the Adjudicator did NOT rely on the evidence supplied by the Opposer.  The burden of proof of registerability lies with the Applicant. The Adjudicator did not consider that the Applicant supplied sufficient proof, and so the onus was not transferred to the Opposer who did not need to demonstrate that the mark could not be registered.

The grounds of Opposition under Sections 11(5) and 11(6) and section 39a1 are moot.

Conclusion

In light of the above, the Opposition to Israel TM No. 238375 is accepted.

COMMENT

In general, the Adjudicator would be correct to give little weight to the fact that in the past, there has been not a single recorded case of customer confusion. However, in this instance, both Speedo and Brooks have a hundred year history.

nike

Not taking into account other marks has some validity, but in this instance, Brooks earlier registered mark is far closer to Speedo’s. Furthermore, there are a whole slew of other somewhat similar marks, such as Nike’s mark shown alongside.

Although Speedo has indeed registered their graphical mark for all goods in class 25 they do not make and have never made running shoes. The graphical mark was registered in 1990. 28 years later, if Speedo have not expanded into running shoes and there is no bona-fide indication that they intend to, Speedo’s registration should be amended to limit the range of goods to exclude running shoes. Possibly this should require Brooks and their representative to request this, but there is no overlap. There is no likelihood of confusion, and the marks are different.

In the circumstances, to rule that Brooks did not make a sufficient case to move the burden of proof to Speedo is frankly ridiculous.

 


Abandoned Patent Opposition Converted into Ex-Partes Procedure

April 20, 2018

Israel Patent Application No. 220476 to Mapi Pharma titled “Long Acting Depot System Comprising a Pharmaceutical Acceptable Salt of Glatiramer” was allowed and published for opposition purposes. Teva filed an opposition under Section 34 of the Law.

glatiramer

The application relates to a dosing regime of Glatiramer and salts thereof. The drug is an immunomodulator medication used to treat multiple sclerosis.

The application is a national stage of a PCT filed on 19 August 2010 which claims priority from an American patent application of 4 January 2010.

The patent was examined and published for opposition purposes on 31 March 2016. On 28 June 2016, Teva filed an opposition. After the parties submitted their statements of case, Teva withdrew their opposition for commercial reasons.

Under Section 34 of the Patent Law 1967, the Commissioner has to decide whether the suspended opposition provides a sufficient basis for the patent to be granted.

In their Statement of Case Teva raised various issues regarding the patentability of the claimed invention. Since no evidence was submitted, the Deputy Commissioner concentrated on the allegation that the publication of WO2005/041933 from 12 May 2005 anticipates the invention and negates novelty.

Claim 1 recites:

“A long acting parenteral pharmaceutical composition comprising a therapeutically effective amount of a pharmaceutically acceptable salt of glatiramer, the composition being in a sustained release depot form which releases a therapeutically effective amount of the pharmaceutically acceptable salt of glatiramer over a period of about one week to about 6 months.”

Paragraph 20 of the Statement of Case which from paragraph 58 of their counter statement, it appears the patentee accepts, construes claim 1 as follows:

  1. A long acting pharmaceutical composition
  2. For parenteral dosing
  3. comprising a therapeutically effective amount of a pharmaceutically acceptable salt of glatiramer,
  4. the composition being in a sustained release depot form
  5. which releases a therapeutically effective amount of the pharmaceutically acceptable salt of glatiramer over a period of about one week to about 6 months.

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A Fresh Trademark Opposition Costs Ruling

March 23, 2018

be fresh

On 14 April 2015, Benny Pauza Sumum (2009) ltd. submitted Israel trademark application no. 273816 in classes 32 and 33 for Be Fresh, as shown. The mark was allowed on 4 May 2017 and published for opposition purposes. On 27 July 2017, a Turkish company called Cakiemelikoglu Maden Suyu Isletmesi Sanay Ve Ticaret Anonim Sirketi filed an opposition against the class 32 registration. On 27 September 2018 the Applicant filed a counter-statement of case. The Opposer chose not to file their evidence and on 1 January 2018, the agent-of-record of the Applicant approached the Opposer directly. In the absence of a response, three weeks later, the Applicant requested that the Opposition be rejected and that costs be awarded.

Ruling

Under Section 38 of the Israel Trademark Ordinance 1940, the Opposer should have filed their evidence by 28 September 2017. Until now, the Opposer has failed to submit evidence in an Opposition proceeding they themselves initiated. Consequently, under Section 39, the Opposer is considered as a party that abandoned a legal proceeding that they themselves initiated.

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

In this instance, the Applicant requested real costs of 21,060 Shekels including VAT for filing the counter Statement-of-Case and also for filing the request to close the file. The request was accompanied by a tax invoice showing that the charges were indeed incurred.

It is true that the winning side is entitled to real costs, i.e. those actually incurred. However, the Arbitrator is not required to award the costs incurred, and should consider the circumstances and legal policy. See Appeal 6793/08 Luar ltd vs. Meshulam Levinstein Engineering and Sub-contracting ltd, 28 June 2009, and particularly section 19 thereof.

The case-law requires the party requesting costs to show that they are reasonable, proportional and necessary for conducting the proceedings in the specific circumstances. See Bagatz 891/05 Tnuva Cooperative et al. vs. The Authority for Import and Export Licenses at the Dept of Industry, 30 June 2005, p.d. 60(1) 600, 615. The purpose of the reasonable, proportional and necessary limitation is:

To prevent a situation where the costs are so high that they will discourage parties from filing suit, create a lack of equality before the law and make litigation too expensive to enable access to the judiciary. (Appeal 2617/00 Kinneret Quarries Partnership vs. the Municipal Committee for Planning and Construction, Nazareth Elite, p.d. 60(1) 600 (2005) paragraph 20).

The amount of work invested in the proceeding and in the preparation of legal submissions, the legal and factual complexity of the case, the stage reached, the parties behavior to each other and to the court and any inequitable behavior are all taken into account in the ‘specifics of the case’.

The reasonableness of actual costs was considered in Re Tnuva on page 18 paragraph 24, and it was ruled that where an issue is significant to a party it is reasonable for him to invest more heavily in the legal proceedings and doing so is likely to be considered reasonable.

That said, the more a cost claim appears exaggerated, the more evidence is required to substantiate it. See for example, the Opposition to IL 153109 Unipharm vs. Merck Sharp & Dohme Corp, cost request paragraph 9, 29 March 2011. 

Section 69 of the Trademark Ordinance 1972 states that:

In all hearings before the Commissioner, the Commissioner is entitled to award costs he considers as reasonable.

The Court of the Patent and Trademark Authority has previously ruled that simply submitting a copy of an invoice is insufficient. The requester for costs should detail the actions performed, and why they were reasonable, and similarly for the other parameters detailed in re Tnuva. From the submission it is apparent that the Applicant has not submitted sufficient evidence to support the cost claim to justify it. Consequently the Adjudicator Ms Shoshani Caspi estimates appropriate costs for the work involved.

In this case the mark holder had to file a counter-statement-of-case and a costs request. The case does not appear to be particularly complicated and the Applicant did not have to file evidence since the case was abandoned. Nevertheless, the Opposer initiated and then abandoned the procedure and didn’t even bother telling the Patent Office that they had done so.

After humming and hawing detailed consideration and by her authority under Section 69 of the Ordinance, the Adjudicator ruled that 4500 NIS + VAT was appropriate and gave the Opposer 14 days to pay this, or to incur interest.

Opposition to Israel trademark no. 273816  “Be Fresh”, cost ruling by Ms Shoshani Caspi, 21 February 2018