Can a 3D perfume Bottle be Registered as a Trademark?

April 24, 2017

christiandorChristian Dior submitted Israel Trademark Application Number 264427 for a 3-dimensional perfume bottle as shown.

The Application was submitted on 16 April 2014 for perfumes, perfumery products, eau de parfum, eau de toilette, eau de cologne, extracts of perfumes; perfumed body milk, body oils and body lotions, perfumed body lotion and shower gel, perfumed bath lotions and gels, soaps, perfumed shampoo; make-up products for the face, the eyes, the lips, cosmetics products for the nails and nails care; all included in class 3.

In the first Office Action of 9 August 2015, the Examiner considered the mark as non-registerable under Section 8(a) of the 1972 Trademark Ordinance in light of Circular MN 61 which was then in force, since the mark relates to the three-dimensional package or container for the goods in question.

In that letter, it was stated that the Commissioner could consider allowing a three-dimensional mark in exceptional circumstances where the following three conditions are all fulfilled:

  1. The mark serves as a trademark in practice
  2. The mark does not have any real aesthetic or functional purpose
  3. The mark has acquired distinctiveness through use

In a response from 8 December 2015, the Applicant explained that Christian Dior was a fashion house founded in 1946 for quality goods such as haute couture, perfumes, jewelry and fashion accessories. An affidavit from Riccardo Frediani the General IP Counsel for perfumes was included as part of the response.

The Applicant listed various points that were endorsed by the Affidavit, which were claimed to provide the required distinctiveness:

  1. The perfume associated with the requested mark was a flagship product
  2. The perfume was sold under the mark continuously since 1999 and was sold in 130 countries
  3. The perfume was sold in Israel since 2000 and much effort had been expended in branding and marketing in Israel.

The Applicant explained that the bottle was inspired by the jewelry worn by Masai women, and by 19th century wedding dresses. The bottle design had not changed since it was first introduced.

In addition, the Applicant claims that the fragrance associated with the mark was Dior’s most popular fragrance in Israel and was the fifth most popular fragrance in Israel. These claims were supported by various write-ups and market analysis. Together with the response submitted in December 2015, the Applicant requested that part of the evidence submitted remain confidential as it relates to specific sales and financial data. This confidentiality was granted in a December 2015 interim ruling.

The response of 30 December 2015 was considered sufficient to establish acquired distinctiveness as required by Section 8(b), but the Examiner held that since the applied for mark have previously been registered as a design, it could not be registered as a trademark. The design in question is 3293, registered by Christian Dior in class 9(01) under the titled Perfume bottle on 30 April 2000, which termination on 26 March 2014.

The Examiner considered that the fact that the mark had been registered as a design implied that it was an aesthetic creation and as such could not be registered as a three-dimensional mark in view of paragraph 5.2 of Circular 032/2015 “Trademarks – Requests for Registering Three Dimensional Marks” which regulates the registration of three-dimensional toffiffeemarks that are the objects themselves or their packaging. The Circular states that where the evidence indicates that a product or packaging design serves as a trademark and is neither very aesthetic or very functional; and, through usage has acquired distinctiveness it may be registered (these requirements are inherited from the earlier Circular MN 61), but updated in light of the Supreme Court’s Toffiffee ruling 11487/03 August Storck.

The Applicant requested to appeal the Examiner’s decision and a hearing was held on 28 June 2016.

The Registerability of the Desired Mark

The Commissioner Asa Kling considered that the weight of evidence submitted does indeed show that the bottle mark has acquired distinctiveness. This is evidenced by the sales data, the amount of advertising and exposure of the mark in Israel and abroad, and Frediani’s affidavit is persuasive. The question that remains is whether the mark has a real aesthetic or functional purpose that prevents it from being registered, and if this is not the case, then it is necessary to consider if the shape serves as a trademark in practice.

Circular 032/2015 states that three-dimensional representations of goods or their packaging are not registerable as trademarks if they are inherently distinctive. In such cases they are properly protected as registered designs. It then goes on to give the three conditions detailed above.

In this regard, it is noted that Circular 032/2015 that the Examiner relied upon and which has subsequently been cancelled, was subsequently merged into 033/2015 “Emphases for Examining Trademark Registrations”, which entered into force on 15 December 2016, and since Section 5.2 is included in the new regulation, the cancellation of 032/2015 does not render this discussion moot.

The registerability of three-dimensional marks has been much discussed in the case-law. The basic ruling is the 2008 decision 11487/03 August Storck vbs. Alpha Intuit Food Products ltd. published on 23 March 2008 (the Toffiffee case).

Following this ruling, the Patent Office updated its policy regarding the registerability of three-dimensional marks, resulting in the various Circulars and in a number of rulings.

croccrocFor example, the 212302 and 212303 Crocs Inc decision of January 2013, the 228232 and 228233 Seven Towns SA decision cube-in-handof November 2012, the 184325 Coca Cola ruling of September 2012 and the 238633 Absolut decision of September 2013.

The problem with deciding whether three-dimensional trademarks are registerable is particularly apparent when considering liqueur or perfume bottles. liqueurs, spirits and perfume do not have a shape and the shape in question is that of the container.

The Applicant claims that the act of registration of the bottle as a design does not prevent it being or becoming a trademark. The Applicant relates to the Toffiffee ruling and understands the Supreme Court as stating that when a product is launched, the three-dimensional shape of the product or package cannot serve as an indication of the manufacturer. At the registration stage, the only protection available is that of a design registration. However, the design may subsequently acquire distinctiveness through use that is identified with the supplier and can therefore subsequently be registered as a trademark.

The Applicant considers that the Supreme Court differentiated between products and packages and that it is not necessarily true that one can draw comparisons between the two categories.

The Applicant claims that there is no bar to the same product being protected both as a design and as a trademark. In the present instance, there is an overlap between the two types of protection. The ‘real aestheticness’ that the Commissioner’s circular considers as preventing registration is different from the aesthetic requirement that is necessary for design registration under the patent and design ordinance; otherwise something registered as a design could never be a trademark.

However, Section 5.2 of the Circular does, nevertheless, refer to something ‘serving a real aesthetic or functional purpose’.  The applicant considers that the effort expended in promoting the product that is identified with the bottle has borne fruit, and despite there being no word mark attached to the bottle, the mark is well-known.

Frediani notes that section 1 of the Trademark Ordinance clearly states that three-dimensional marks may be registered:

“Mark” means letters, numerals, words, devices or other signs, or combinations thereof, whether two-dimensional or three-dimensional

And defines a trademark as follows:

“Trade-mark” means a marked used, or intended to be used, by a person in relation to goods he manufactures or deals in;

When considering the registerability of a mark, one should bear in mind the purpose of registration which is to be a means of protecting the manufacturer and seller and of preventing unfair competition, and also to protect the public. See 3559/02 Toto vs. Sports Gambling Authority p.d.. 49 (1) 873, and 3776/06 Ein Gedi Cosmetics vs. Commissioner of Patents May 2008, and also Seligsohn.

Section 2 of the Patents and Design Ordinance states:

“design” means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to, and are judged solely by, the eye, but does not include any mode or principle of construction or anything which is in substance a mere mechanical device.

The registration of a design requires that it is new or original, and not previously published. The purpose of the design is to give an identity or form to a product, it is that which gives it its uniqueness. As the Supreme Court ruled in 7125/98 Mipromal Industries Jerusalem vs. Klil Industries p.d. 57(3) 702:

The protection given to the unique shape of an article is that which the eye is able to comprehend… the form needs to attract the eye of the relevant consumer in a manner that influences the specific choice.

If so, when exposed to a trademark, the consumer’s right is to know the source of goods, whilst respecting the mark owner’s rights to prevent unfair competition. A design right is based on the lines of form of a good and a design that draws the eye of the consumer.

In Toffiffee the Supreme Court stated that the three-dimensional shape of a product may be registered if the owners can prove that it has acquired distinctiveness through use. However, this is with the proviso that it does not have real aesthetic or functional value:

In contrast, the considerations for registering a three-dimensional mark based on the shape of a product is on the basis of acquired distinctiveness. When referring to a good as having a shape that has acquired distinctiveness, we means a shape that causes the consumer to identify the product with a specific source. If it is proven that a good has acquired distinctiveness, it is not important that rarely will the shape be inherently distinct…this means that in those cases where it is proven beyond doubt that the shape serves to distinguish the product – the shape may be registered.

In the Toffiffee case, the court related to the differences between trademarks and other types of intellectual property, including designs, which can coexist in the same product:

It is stressed that where the shape of a good serves as an identifier and differentiator, it serves the function of a trademark. It therefore deserves the protection accorded by trademark laws. It is possible that the same shape is protectable by other types of intellectual property such as designs, or has indeed been protected in this manner. However, since the purpose of trademarks is different from that of other types of intellectual property, the fact that this the shape has already been protected does not prevent it from being protected as a trademark. Furthermore, we are aware that generally the functionality of a mark prevents its registration as a trademark even on the basis of inherent distinctiveness but rather under acquired distinctiveness. We have raised the question of whether this difference between passing off and trademark laws is desirable. That’s as may be, as far as three-dimensional marks consisting of the shape of a product are concerned, there is no choice but to conclude that where the mark is functional (or aesthetic), it prevents it being registered, even if it may be proven that it has acquired distinctiveness. Unless we say this, one may provide an everlasting monopoly for a functional (or aesthetic) shape. This could be very damaging for the market in question. 

From here it is clear that a three-dimensional registered trademark can coexist with a design registration for the shape of a product, so long as this does not provide a monopoly to an aesthetic shape that would create an obstruction to marketing in the relevant market. (this accords well with the background in the Toffiffee case.

Based on this, and in light of the guidelines adopted by the Patent and Trademark Office, the shape of a product having a functional or aesthetic nature may not be registered as a trademark where its form serves a major functional or aesthetic purpose, and under these considerations the mark was refused.

The rationale behind this is to prevent the widening of trademark protection beyond its classical purpose and preventing competition. Since a consumer choses a product for its shape, and this is protected with a trademark, he is doing so out of aesthetic considerations based on what attracts the eye and not as an indication of origin. This is clarified by the Absolut vodka case where the design is neither particularly functional nor aesthetic, but is inherently distinctive and is identified with a particularly spirit, and this is the case with spirits and perfumes in general. It appears therefore, that bottles and jars may acquire distinctiveness and be considered as trademarks by the public, however only after years of use.

Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 199 explains that marks of this nature acquire distinctiveness after years of use.

The European Court of Appeal came to this conclusion in Case T 178/11 Voss of Norway ASA v. OHIM,(28.5.2013) “Absolut”:

“…Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any verbal or graphic element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a verbal or figurative mark (see Freixenet v OHIM, paragraph 38 above, paragraph 46 and the case-law cited).”

More specifically, as a liquid product must be in a container in a bottle in order to be marketed, the average consumer will perceive the bottle above all simply as a form of container. A three-dimensional trade mark consisting of such a bottle is not distinctive unless it permits the average consumer of a product of that kind, who is reasonably well-informed and reasonably observant and circumspect, to distinguish the product in question from that of other undertakings without any detailed examination or comparison and without being required to pay particular attention (Case C‑218/01 Henkel [2004] ECR I‑1725, paragraph 53, and Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle) [2004] ECR II‑1391, paragraph 24, upheld on appeal in Case C‑286/04 P Eurocermex v OHIM [2005] ECR I‑5797).”

Since we are not considering something that it aesthetic per se, but rather what is primarily a shape that serves the commercial purpose of linking a good with its supplier, the aesthetic aspect is secondary and less significant.

From here, if the Applicant manages to provide that the commercial considerations for choosing the product are dominant and that the shape of the product or the packaging actually serve as a trademark far beyond the aesthetic aspects, it may be registered.

As a general rule, as stated in the Toffiffee ruling, in some cases a product may benefit as both a trademark and as a design. As explained by Derclaye and Leistner- Intellectual Property Overlaps- A European Perspective (2011), p. 61:

Since a design is the appearance of a product and can be in two or three dimensions, there can be overlap with two and three dimensions trademarks; for instance, packaging, get-up and graphic symbol, which the Design Directive cites as examples of possible products in which design right can subsist, as well as logos, can also be signs that can be registered as trademarks.

Thus, design right can be acquired first, and then trademark applied for later when the public has been educated to recognize the packaging as a trademark, ie consumers only see it as indicating the origin of the goods as coming from a single company”.

This case relates to a trademark application for a perfume bottle that has a wide base, a narrow neck and a round stopper. The neck is coiled, and, as the Applicant noted, it was inspired by the Masai women’s jewelry.  There is no name or other element that says Christian Dior. The bottle has aesthetic elements that have some weight but the shape has acquired distinctiveness which should be given more weight.

The J’Adore perfume bottle has been widely advertised in various media in Israel and abroad and has been in constant use since 1999. The consumer does not purchase the perfume because of liking the shape of the bottle so much as because he identifies the bottle with the contents which is the product.

As a distinctive shape, the bottle was registered as a design, but over time, it has acquired distinctiveness as a container for the specific fragrance and thus serves as a trademark. The commissioner does not think that allowing the mark to be registered prevents competition in the field.

The application is returned to the Examiner for registration, with the proviso that it is clearly labeled as being a three-dimensional mark.

Ruling re Israel Trademark Number 274427, J’Adore 3D Perfume Bottle, Asa Kling 26 February 2017. 

COMMENT

I have a friend and neighbor who is genealogically half Masai and half Jewish. To me, David is tall and black. However, I am told that in Kenya where he was born, he was considered short and Jewish looking. He explained to me that the coiled gold extended necks of Masai women was a method of controlling them. If they misbehaved, their husbands could remove the jewelry and their neck bones would be unable to support their heads. The husbands could then take new and more obedient wives. I find this jewelry sinister and would not personally want to use it as inspiration for a perfume bottle. That said, I don’t see a problem in providing long-term protection for distinctive bottle shapes as trademarks, so long as functional shapes are not monopolized in this manner. The ruling is a correct one.

I don’t think that a judge would accept arguments that the Dior registration should prevent Tia Maria being sold in a long stripy necked bottle. This case is not analogous to Disney taking characters that are copyright protected and converting into trademarks to keep them from entering the public domain. It does raise interesting questions regarding the iconic Croc beach sandal that was registered as a trademark. Croc should be able to continue using their clog design as a trademark for branding purposes, but should  not be able to act against other manufacturers of substantially identical beach clogs. I think that the less said about the Seven Towns cube decision, the better.


ECOSYSTEM ECONOMICS

April 23, 2017

ecosystem economicsThis ruling considers whether a combination of two dictionary words can have aquired distinctiveness and serve as a trademark where neither word is itself distinctive.

Israel Trademark Application No. 263789 is for the word mark ECOSYSTEM ECONOMICS.

The application is publications that can be downloaded and electronic services in Class 9; printed Matter; printed matter; books, exercise books, magazines and journals in Class 16; business services; business management assistance; business management services; Business intermediary services; non-financial business sponsorship services; management consultancy services; business research services; strategic consultancy in Class 21; market research questionnaires; publicity services; organization of trade shows; business advising consultancy services; personnel services; executive search services; personnel management services; advertising services; marketing services; organisation of trade fairs; mergers and acquisitions, namely, introducing clients to potential partners with a view to potential mergers and acquisitions; business consolidation sendees; information and advisory services relating to all the aforesaid services; advice and consultancy relating to the industrial framework network orientation of businesses in industrial development and advice and assistance relating to the launch and. growth of new business in Class 35 and financial sponsorship services; financial business sponsorship services; advisory services relating to financial aspects of mergers and acquisitions; investment services; venture capital services; portfolio management services; corporate finance services; risk assessment and risk management services; fund services; financial partnership services; information, advisory and consultancy services relating to all the aforesaid services in Class 36, and organisation of lectures and tutorials, seminars and workshops; organisation of conference and events; publishing services and electronic publishing services; information and consultancy and advisory services relating to all the aforesaid services in Class 41. Read the rest of this entry »


Freshly Squeezed

April 19, 2017

שחוטThis ruling concerns a cancellation request by the originator of a mark against a registered owner who bought the mark with other assets from a company that the originator had sold his business to that had subsequently gone bankrupt.

The grounds for cancellation request were alleged lack of use.

Israel Trademark No. 220623 is for a stylized logo including the phrase “סחוט טרי” transliterated as ‘Schut Tari’ which means freshly squeezed. The mark is owned by Schut Tari 2007 ltd and was registered for nonalcoholic drinks in Class 32.

 

Background

The manager of the Applicant for Cancellation, Mr Ohad Harsonsky set up a factory in the 1990s for producing fruit juices that were marketed under the Schut Tari brand.

orange jewsApproximately in the year 2000, Harsonsky set up the Shut Tari company that continued the activities of the factory. At the beginning of 2005, Harsonsky decided to sell the company and the factory to Pri-fer Natural Marketing and Distribution (2005) ltd. [MF – Pri is Hebrew for fruit. The name is a pun on prefer] which was established by MR Erez Rifkin to make the purchase. Mr Rifkin established Prifer Natural ltd, a company active in the fruit juice industry, in the early 21st Century.

phones-blackberry-orange-phone-fruit-demotivational-posters-1295112418Blackberry on Orange sketch.

After the purchase was concluded, Pri-fer changed their name to ‘Schut Tari Mitz’ Tivi ltd. (Natural Freshly Squeezed Juice ltd), and Schut Tari changed their name to Multi-Pri ltd. The Pri-fer Group started producing freshly squeezed juices and Multi-pri stopped all activities. The Pri-fer Group did not succeed in absorbing all of Schut Tari’s activities, and Pri-fer was late paying the sale price. A business disagreement developed and the Pri-fer Group and Multi-pri agreed to mediation in March 2006. A mediated agreement was given the status of a court ruling by the Ramallah Magistrate’s Court. The mediator was Haim Sodkovitz who represents Eco Alpha, the Applicant for Cancellation.

orange juice squeezerPri-fer and Mr Rifkin were unable to meet the negotiated payment terms that were agreed to in the mediation. Consequently, on 7 March 2007, Harsonsky and Multi-Pri used legal collection means. However, since Rifkin started bankruptcy proceedings and the Pri-fer Group is being disbanded, the bailiffs were unable to collect the debt. Read the rest of this entry »


More Coffee!

March 23, 2017

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

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

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

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

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


Israel Trademark No. 268867 to M Yildiz Saadettin Cancelled Following Challenge by the Polo/Lauren Company

January 8, 2017

The Polo/Lauren Company filed a request for an opposition ruling against Israel Trademark No. 268867 in classes 14, 18 and 25. The mark was filed by M Yildiz Saadettin as part of international application number 11451800 which listed Israel as one of the countries covered.

In accordance with Rule 56vi, on 7 July 2016 the Israel Patent Office wrote to the International Office of WIPO to the effect that the mark was accepted, and indicated that there was a three month period for opposition. A similar letter was sent to the Applicant’s representative.

On 5 October 2016 the Polo/Lauren Company submitted  a detailed opposition to the registration in all three classes, under Section 24 of the Trademark Ordinance and Regulations 35 to 466 of the 1940 regulations. Following this, the Israel Patent and Trademark Office informed the applicant that such a proceedings had been initiated, giving them the deadline for responding.   by filing a counter-statement of case. The Applicant had two months, until 4 December 2016 to respond.

Until the time of writing this decision on 25 December 2016, no response was received.


Requesting Enlargement of A Deposit of Costs

January 8, 2017

The Krasnyi Octybar and Rot Front Joint Stock Companies own four Israel trademarks: 184179, 182758, 182759 and 182763. Each covering a long list of goods in class 30, including such things as for waffles; confectionery for decorating Christmas trees; cakes; pastries; peanut confectionery; almond confectionery; pasty; cocoa; cocoa products; caramels [candy]; sweetmeats [candy]; liquorice [confectionery]; peppermint sweets; coffee; crackers; meat pies; farinaceous foods; candy for food; fruit jellies; marzipan; custard; honey; ice cream; sherbets [ices]; muesli; mint for confectionery; cocoa beverages with milk and coffee beverages with milk; coffee-based beverages, tea-based beverage, chocolate beverages with milk, chocolate-based beverages, cocoa-based beverages; lozenges; petits fours [cakes]; biscuits; pies; fondants; pralines; gingerbread; chewing gum, not for medical purposes; sugar; cake paste; confectionery; rusks; sandwiches; almond paste; tarts; cakes (Edible decorations for-); halvah; bread; tea.

Five companies including the Roshen Confectionery Corporation,  Dealer B&D International Ltd, Kjarkov Biscuit Factory, Dolina Group Ltd and Latfood Ltd have filed cancellation requests against these marks.

The marks owners have requested that the sum that the challengers are required to post as a guarantee against legal costs in the event that the mark owners prevail be increased by a further 130,000 Shekels, or by whatever sum the commissioner sees fit. The request was submitted together with 90 pages of appendices and a copy of an Affidavit from the legal counsel of the mother company, however the original Affidavit was not submitted. The challengers opposed the request to increase the guarantee. A hearing has been set for the 17th and 18th of January for cross-examining the various witnesses.

The background to the request for guarantees is two requests for cancellation of the marks. Roshen Confectionery Corporation and  Dealer B&D International Ltd have requested the cancellation of 184179, 182758 and 182759 trademarks, and the Kjarkov Biscuit Factory, Dolina Group Ltd and Latfood Ltd have requested cancellation of the 182763 mark.

Following requests for guarantees that were filed in March 2015, the Adjudicator of IP Ms Yaara Shshani Caspi ruled on 21 June 2015 as follows:

In light of the above, and considering all the circumstances of this case and the general considerations used to determine the magnitude of the appropriate deposit, the first two challengers are to jointly deposit 75,000 Shekels and the second group of three challengers are also to jointly deposit 75,000 Shekels, and this should be done within 21 days.

The present request includes suspension of the proceedings until the deposit is increased.

The Parties’ Allegations

The mark holder claims that increasing the deposit is required because following the original decision there have been changes in circumstances that warrant increasing the deposit. These new circumstances include the expectation of long and complex proceedings and a number of cross-examinations. Furthermore, the case is complex and it transpires that the costs are expected to be higher than originally anticipated. The additional costs are incurred by the two groups of challengers retaining separate counsel and making unnecessary requests. A further claim is that it was not previous clear but now is transparently so, that there will be a massive amount of evidence and documents and a hearing that will be conducted largely in Russian, requiring simultaneous translation. The mark owners nevertheless reiterate their opinion that the likelihood of challengers prevailing and the marks being cancelled are very slim. The amount of the deposit, standing at 150,000 Shekels, is too low and not proportional to the costs that will be requested if the cancellation attempts fail and so this is a classic example of where increasing the deposit is warranted.

Both group of challengers consider the request to increase the deposit should be refused since the ‘new circumstances’ were already fairly obvious when the original request for costs was made. The second group of challengers considers this to be a vacuous request filed in bad faith simply to stretch out the proceedings.

Ruling

Ms Yaara shoshani Caspi did not consider that the circumstances had changed since the original request for a deposit was ruled on. For example, where there are five parties challenging two groups of marks it is not unpredictable that there will be lots of witnesses to cross-examine. Since the challengers are Russian companies, it was always expected that their witnesses would testify in Russian and simultaneous translation would be needed, as is the fact that there are two groups of challengers. The massive amount of evidence was also expected and Ms Shoshani Caspi considered that these grounds were all considered by her in her original ruling regarding the size of an appropriate deposit.

With regard to the likelihood of the challenges prevailing and the marks being cancelled, there is no way to consider the likelihood or otherwise of the challenges be successful at this stage since the witnesses have not been heard and have not yet been cross-examined. At least this is the theoretical state of affairs. Since the challenges are on the basis of inequitable behaviour in the original filings, there is a high level of proof that the challengers will be required to submit to establish their case since they will have to positively show that many years ago the mark holders intentionally appropriated marks that were not theirs.

Nevertheless, the fact that the challengers have a difficult task ahead is not justification to increase the deposit that they have already placed. There are no unexpected circumstances not considered in the original ruling considering the size of the deposit.

The request to increase the deposit is refused. However, Ms Shoshani Caspi does not see the request as indicative of inequitable behaviour designed to make the trademark cancellation proceedings unnecessarily complicated. that said, the mark owners should nevertheless pay costs to the challengers for requiring them to respond to this request. The mark owners will therefore may 1500 Shekels to the first group of challengers and a further 750 Shekels to the second group and will do so by 15 January 2016 or interest will incur.

In cancellation proceedings concerning 184179, 182758, 182759 and 182763 trademarks, Ruling on increasing size of deposit by Ms Yaara Shoshani Caspi, 28 December 2016.


Costs Where the Agent of Record is Slow but Sure

November 14, 2016

tortoise

On 17 February 2016, Talia Bio-Cosmetics LTD filed Israel Trademark Application No. 282845 for the word Talia covering soaps, ethereal oils and cosmetics in class 3. We assume that the term ethereal oils means essential oils, i.e. oils having a low vapour pressure that are easily vapourized.

The mark was allowed, and then, on 29 May 2016, ARIANDA THALIA SODI MIRANDA, represented by Colb, filed an Opposition.

Talia Bio-Cosmetics LTD engaged Adv. Moshe Goldberg to represent them, and, on 10 July 2016, the Opposition was withdrawn. Then Adv. Goldberg submitted a request for 10,200 NIS costs for 17 hours work spent on the Opposition. The cost request was supported by a detailed list of work done.

The Applicant claimed that the costs requested were exorbitant and unrealistic since the Opposition was withdrawn so early. The Applicant further noted that the request was not accompanied by an Affidavit and alleged that it was insufficiently detailed.

The Deputy Commissioner Ms Jacqueline Bracha noted that Section 69 of the Trademark Ordinance 1972 stated that costs were at the discretion of the Patent Office :

In any hearing before the Commissioner, he is authorized to award the party costs that he considers realistic.

In this instance, the Opposer, by withdrawing the Oppostion, is considered as having lost the proceeding and is obliged to pay costs. See Supreme Court Ruling 891/05 Tnuva Cooperative for Marketing Israeli Produce vs. The Authority for Granting export Licences of the Department of Trade and Industry p.d 60(1) 600 (30 June 2005).

As a matter of principle and as a starting position, the prevailing party is entitled to real costs, i.e. the costs that he has had to lay out. However, this is only the starting position. It is not the end of the matter, since the one sitting in judgement should examiner the costs requested and decide if they are reasonable, proportional and essential,when considering the whole picture. The Attorney’s fees are a relevant but not the only relevant consideration.

The Applicant has requested a rather large costs of 10,700 Shekels for 17 hours work spent on the file. In practice, the Opposer filed an Opposition and then requested an extension for submitting the Statement of Case. The Applicant requested that a bond be paid and also responded to the request for an extension. The Applicant never filed any substantive response since the Opposition proceeding was closed a mere week after it was opened.

To the extent that costs are extreme, there is a greater burden of proof on the Applicant to justify them. See Opposition to Patent Application No. 153109 Unipharm vs. Mercke Sharpe & Dohme 29 March 2011.

Ms Bracha considered the statement of costs sufficiently detailed but nevertheless considered it unreasonable when considering the stage of the proceeding reached, where no statement of case and no evidence had been filed. Consequently she ruled costs of 2000 Shekels to be paid within 21 days.