The three month Trademark Opposition period is calculated from the day it starts

July 31, 2018

288045

The three month Trademark Opposition period is calculated from the day it starts

On 3rd June 2018, Israel Trademark Number 288045 to R & S Food Import Export published as issued. The mark is shown alongside.

Barilla Ger Fratelli requested that their trademark opposition submitted on 30 May 2018 be considered.

deadlineThe Israel Trademark Department considered that the final date for opposing the mark was 28 May 2018, three months after the mark published for opposition purposes on 28 February 2018. Furthermore, the Commissioner of Patents and Trademarks does not have the authority to extend the deadline for filing oppositions. So the Opposition submitted on 30 May 2018 was not considered as being timely filed and was ignored.

BarillaBarilla Ger Fratelli, represented by Dr. Shlomo Cohen Law Offices argued that the deadline for filing the opposition was the end of May, and they had until 31 May 2018, so the opposition was timely filed. To support their contention, Barilla’s representatives referred to Section 10b of the Law of Legal Interpretation 5641 and argued that Patent Office Circular M.G. 46 titled “Calculating Deadlines provided in Months or Years” contradicts the law and adversely affects Barilla’s rights. Barilla’s legal representatives claimed that the Opposition was filed after they had consulted with the trademark department and appended an Affidavit of Adv. Talia Punchick, a former employee of Dr. Shlomo Cohen Law Offices.

Section 24a of the Trademark Ordinance 1972 states:

Within three months of the date of publication, anybody can submit an Opposition to a trademark issuing.

Section 23 states that:

If a trademark application is accepted, whether as filed or with limitations, the Commissioner will publicize in the determined manner, that the mark was accepted and any limitations applied.

The date that the mark published under Section 23 for opposition purposes, was 28 February 2018. Since the period for submitting an Opposition is three months from 28 February 2018, and under the Section reproduced above, the final date for submitting Oppositions is 28 May 2018. This is the date required by Section 10b of the Law of Legal Interpretation which states:

A period provided as a number of months or years after a specific event will end on the final month on the day having the same date as the event, and if that month does not have that day, on the last day of the month.

Barilla’s representative’s claim is surprising, as if this law reduces the period given in the law, since the months provided for the opposition (March, April and May) that were at Barilla’s disposal, are all full months. Barilla chose not to take advantage of this time period.

Beyond that required, it is noted that the final date for submitting the opposition, i.e. 28 May 2018, was noted in the publication of the notice of allowance in the journal and also on the second page of the journal itself.

To remove any doubt, it is noted that Section 10(a) of the Law of Legal Interpretation which states that where a period is provided in days or weeks, the day that the period starts is not included in the calculation is not relevant to the present case, since it relates to days and weeks and not to a number of months, unlike Section 24(a) of the [Trademark] Ordinance. Thus the claim that the number of months starts from the 1 March 2018 (and should therefore finish on 1 June 2018), rather than starting on 28 February and finishing on 28 May is groundless.

This conclusion would be changed if, for example, an allowance was published on 30 November of some year, and thus the final day does not exist since February has only 28 (or 29 days). In such a case, the deadline would be 1 March.

In light of the above, the example given in Circular M.G. 46 is correct, and the final date for publishing an opposition to something that publishes on 28 February is 28 May.

There is no request to extend the Opposition period, which in any event is not within something that the Commissioner of Patents has the authority to do as is evidenced in a long list of Patent Office decisions. Commissioner Ofir Alon’s ruling in the request for extending the Opposition period in re Israel TM Application number 283942 Mindspace ltd vs Merkspace Europe BV from 28 June 2017:

As explained in the Decision of then adjudicator of IP concerning the Opposition to Israel Trademark Application Numbers 182779 and 182780 for stylized marks to Baltika Breweries vs. S & G Intertrade ltd from 5 November 2006:

Retroactive extensions of opposition periods is what Section 7 of the fifth amendment to the Ordinance was designed to prevent, as can be learned from the words of explanation of the Proposed Law 34 from 16 June 2003, on page 492:

It is proposed to cancel the Commissioner’s authority to extend the Opposition period. This step is intended to increase the efficiency of the consideration of the registerability of trademarks.  

Similarly, see for example, the decision regarding the Request to extend the Opposition for Israel Trademark Application Number 245038 Dynasoi Elastomeros, SA de CV bs. SK Global Chemical Co. Ltd, from3 October 2013.

From examination of the Opposition file, it transpires that a notice of the untimely filing of the trademark Opposition was sent to Barilla’s representatives on 30 May 2018, immediately after the opposition was filed. The Adjudicator does not accept that the opposition was submitted after consulting with the Trademark Department. The Affidavit by the attorney states that the matter was told to her to the best of her knowledge. No details of when and how the alleged conversation was supposed to have taken place are provided, the identity of the Examiner who allegedly gave the wrong advice is not provided. Nor are the exact contents of the alleged conversation. Due to this lack of clarity, the Adjudicator is unable to rely on this affidavit to support Barilla’s contention. Anyway, the Law itself over-rides any other guidance. Any attorney, and particularly one with trademark expertise, is expected to refer to and rely on the Law and not on vague guidance to the extent that such existed.

It is noted that Barilla still has legal options, and can request that the mark be cancelled under Sections 38 or 29 of the Ordinance. In such a cancellation proceedings, all their arguments and contentions will be fully considered.

The request for accepting the Opposition as timely filed is refused.

Decision by Ms Yaara Shoshani Caspi re Barilla’s Opposition to Israel Trademark No. 288045 to  to R & S Food Import Export.   

COMMENT

This is not the first time that the Patent Office has ruled that the three month trademark opposition period is not extendible. See here for another example.


Panama Jack Cancellation Proceeding – Proving Something Did not Happen

July 1, 2018

Panama JackOn 30 November 2016 Panama Jack International Inc  filed a request to cancel Israel TM No. 79829 for Panama Jack in class 25. The registered trademark, then owned by Grupp Internacional S.A.,  is shown alongside.

Back in March 2017, the Adjudicator of Intellectual Property Ms Yaara Shoshani Caspi issued an interim ruling  that since Grupp Internacional S.A., though represented by an Israel Law firm, did not file a response to the cancellation proceedings instituted by Panama Jack International Inc., Panama Jack can supply their evidence and she would rule on the cancellation proceeding if the arguments were persuasive.

On 2 April 2017, Panama Jack International submitted an Affidavit from Mr Erez Drucker, director of Access (Xes? Axes? Excess?) Private Investigators, to support their allegation that the mark was not in use by Grupp. Again Grupp failed to respond, despite having legal representation back then.

On 21 August 2017, Panama Jack International requested a decision despite the lack of response.  On 28 March 2018 they requested to add a further Affidavit, this time from Mr Ronen Menashe, director of “”Information Services of Israel”.  Again, the owner failed to respond.

(On 2 October 2017, Grupp’s attorneys requested to cease representing their client for various reasons that Ms Shoshani Caspi considers justified. On 10 October 2017 they submitted an affidavit to the effect that the client’s local attorney in Spain knew about the hearing. On 23 October 2017, Ms Shoshani Caspi assented to the request).

Now, on 23 May 2018, a hearing was held before Ms Shoshani Caspi, which Grupp and their representatives did not bother attending, despite knowing about the date thereof. Panama Jack International requested to withdraw the Affidavit by Mr Erez Drucker and to replace it with that of Mr Ronen Menashe who was available for questioning at the hearing. This request was granted. During the hearing, a recording of conversations between Mr Menashe and the Spanish office that was referred to in the Affidavit was also listened to.

Discussion and Ruling

The question in this instance is whether there is justification to cancel the issued mark. Section 41(a) of the Trademark Ordinance states:

  1. [a] Without prejudice to the generality of the provision of indicate sections 38 to 40, application for the cancellation of the Registration Madrid of a trade mark regarding some or all of the goods or classes of amendments goods in respect of which a trade mark is registered (hereinafter – goods regarding which the cancellation is requested) may be made by any person interested on the ground that there was no bona fide intention to use the trade mark in connection with the goods for which it is registered in connection with the goods regarding which there is a request to cancel the registration and that there has in fact been no bona fide use of the trade mark in connection with those goods in connection with the goods regarding which there is a request to cancel the registration, or that there had not been any such use during the three years preceding the application for cancellation. [b] The provisions of subsection (a) shall not apply where it is proved

Thus the relevant period regarding usage of the mark by Grupp is from 30 November 2013 to 30 November 2016 when the cancellation request was submitted.

In this instance, as stated above, the mark owner failed to respond to the cancellation request, and did not even request extensions. Panama Jack International, did however, submit their evidence.

During the hearing, Mr Menashe’s integrity was examined and from his evidence and responses, Ms Shoshani Caspi was assured that he was trustworthy. Mr Menashe’s opinion included a survey and investigation of the relevant markets in Israel (i.e. clothing and footwear) in an attempt to find stores that sold goods bearing the Panana Jack man in the relevant time-period. In addition, his office searched the Internet for evidence that goods bearing  the mark were available in Israel at the relevant time. He determined who owned the mark and the identities of the leading employees of the company to contact them directly to determine usage of the mark in Israel. Within the framework of Mr Menashe’s investigation, neither he nor his investigators found any indication of sale of goods under the Panama Jack trademark in the relevant time period.

It is established case-law that a registered trademark is a property right for all intents and purposes, that cannot be whittled away without cause. The burden of proof that a mark was not used lies with the challenger of the mark. See for example, Bagatz 476/82 Orlogd ltd vs. the Commissioner of Patents p.d. 39 (2) 148. During a proceeding, the burden of proof passes back and forth. Thus the requester for cancellation of a mark has to bring evidence that a mark is not in use. If this is proven, the burden of proof then falls on the mark owner to attack the challenger’s evidence and to establish that the mark is indeed in use.

The challenger has more than met the initial level of proof required to establish a prima facie case that the mark is not in use, and the mark owner failed to even attempt to rebut this position, and thus the apparent lack of use remains unchallenged.   The Adjudicator considers the evidence that the mark has not been in use for three years prior to filing the cancellation submission and thus it is fitting to cancel the mark.

In light of the above and in like of claims made at the hearing, it is clear that the mark owner has intentionally ignored the challenge to the mark and the cancellation proceedings submitted to the Israel Patent and Trademark Office.  In addition to concluding a lack of usage, one can only conclude that the mark owner is simply holding the mark for no purpose. One would expect the mark owner to acknowledge and respond to the cancellation proceedings by abandoning the mark, thereby rendering this proceeding unnecessary.

The mark is therefore cancelled. Using her authority under Section 69 of the Ordinance, Ms Shoshani Caspi has also issued relevant costs in the proceeding, based on the work done by the challenger, and rules 9000 Shekels costs, which the mark owner is informed of via the address in the register.


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.

 


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


ENVY

December 20, 2017

276449Bacardi & Company LTD filed Israel Trademark Application Number 276449 consisting of a stylized mark comprising a pair of wings and the words ANGEL’S ENVY, the mark is for alcoholic beverages, except beers in class 33. They also filed Israel Trademark Application Number 275692 for North American whiskey; alcoholic beverages based on, or flavoured with North American whiskey.

ENVYLa Fée LLP filed Israel Trademark Application Number 278588 for ENVY as shown. The mark covers Spirits; absinthe; alcoholic beverages containing spirits; alcoholic beverages containing absinthe in Class 33.

(Absinthe  is an anise-flavoured spirit derived from botanicals, including the flowers and leaves of Artemisia absinthium (“grand wormwood”), together with green anise, sweet fennel, and other medicinal and culinary herbs. In other words, it seems to be a type of Arak,

angel's envyBacardi’s marks were filed on 31 March 2015, and La Fée’s marks were filed on 27 July 2016, before Bacardi’s marks were examined. As the marks were co pending, a competing marks proceeding ensued. On 26 June 2017 the parties were given three months to submit their evidence regarding their rights to the marks.

On 13 September 2017, La Fée LLP submitted an unclear communication that related to priority. On 14 September 2017 the Israel Patent Office requested clarification and asked if the submission was a type of evidence. However, La Fée did not respond. On 26 October 2010 after requesting and obtaining extensions, Bacardi submitted their evidence. In view of the lack of response from La Fée, on 7 November 2017, the patent office sent them a letter giving a grace period of a week to submit their evidence. However, La Fée LLP did not respond.

Section 67 of the Trademark Ordinance 1972 states that

Subject to any regulation under this Ordinance, evidence is proceedings before the Registrar shall be by affidavit under section 15 of the Evidence Ordinance (New Version) 5732 -1971, or by declaration made abroad under the law of the place where it is made, so long as the Registrar does not otherwise direct; but the Registrar may, if he thinks fit, take oral testimony in lieu of or in addition of written evidence, and may permit the deponent or declarant to be cross-examined.

In this instance, La Fée did not submit any affidavit and there does not seem to be any justification for them failing to do so.

Consequently, regulation 25(b) applies:

If the Applicant fails to submit a detailed response within three months of the invitation to do so, the Applicant will consider the Application as cancelled under Section 22 of the Ordinance and a notice to that effect will be sent to the Applicant.

Since La  Fée chose not to submit evidence at all, and not to respond in any way to the Queries from the Court of the Patent Office, the Adjudicator, Ms Yaara Shoshani Caspi ruled that filed Israel Trademark Application Number 278588 for ENVY be considered abandoned, and Bacardi’s marks proceed to examination.

Using her powers to rule reasonable costs under Section 69 of the Ordinance, noting that Bacardi did exert effort in responding and Le  Fée’s behavior, she ruled that le Fée pay 15000 Shekels costs (excluding VAT) to Bacardi within 14 days or the costs will be index linked and bear interest until paid.

Competing marks ruling concerning 276449, 275692 and 278588, Yaara Shoshani Caspi , 16 November 2017.


A forest of Sequoias

December 19, 2017

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

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

Sequoia capital

271338

sequoia 271339

271339

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

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

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

Ruling

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

Section 11 states that:

  1. The following marks are not capable of registration:

(1)…

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

 Section 2 states:

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

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


3D Vision – virtual-reality reality

June 8, 2017

3dvision3DVision LTD submitted Israel trademark application no. 273325 for “3DVISION” on 25 March 2015. The mark covers Services of design, construction, building and designing websites; design and development services, namely, development services of technological solutions, software development services, web hosting services and content management services, visual communication design, graphic design services; graphic and architectural simulations design services using computer software; computer services, namely, design services and development services of three-dimensional movies, pictures, motion pictures with sound, audio and visual aids; Creative services, namely, design and development of computer software and consulting services related thereto; design of animated websites; design services of websites for marketing and advertising purposes; design services of graphic illustration services for others; design services of customized multimedia products for educational, marketing, training, demonstrational, presentation, architectural, engineering and development purposes; design services of multimedia products in the form of applications of computer graphics and website hosting services for the exchange of graphics, images, text, computer simulations, architectural simulations, marketing and promotional videos between the parties, all in class 42 .

The trademark department considered the mark as indicating three-dimensional perception and lacking distinctiveness for the relevant goods and services. Since other service providers used the term as well, they refused it under Section 8(a) of the Israel Trademark Ordinance 1972, and also considered it as contravening section 11(10) as being descriptive. Although the mark was filed in a specific font, the Examiner considered the san serif font as not having the minimal styling to render the mark registerable.

Furthermore, the mark was considered confusingly similar to Israel trademark number 191734 for D-Vision in class 34, but that mark lapsed on 30 January 2017 due to non-payment of the renewal fee.

On 28 December 2015 the Applicant argued that the mark had acquired distinctiveness through usage and was associated exclusively with the Applicant and thus was registerable under Section 8b of the Ordinance. The Applicant argued that the mark has been in use for 13 years and the public was exposed to it in various media including via the Internet. The Applicant also noted that since 2003 they had been using the identical Internet domain (not stylized) and had similar pages and channels in various social media including Facebook and YouTube for over five years. This exposure, continued usage and marketing investment had resulted in the mark being well-known for virtual reality and animation in the real estate business [MF – Virtual Reality Reality?]. An affidavit by the CEO was submitted to support these claims. Read the rest of this entry »