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.


Bon Bon

November 3, 2016

Israel Trademark Application No. 267718 is for the mark Bon Bon showed alongside this paragraph. The mark covers Cocoa; sugar; flour and preparatiobon-bonns made from cereals, namely cereal-based snack food, high-protein cereal bars; pastry; confectionery made of sugar, namely candy, sweets, pralines, chocolate, pastilles [confectionery], halvah, waffles; honey in class 30, and was filed by Open-Type Joint Stock Company “ROT FRONT”, a Company registered in the Russian Federation.

The registration included the following limitation: The mark is limited to the colours word Purple, dark purple, light purple and white. as shown in the mark.

The application is a national stage entry of International Application Number 1213719 that included Israel as one of the designated countries.

On 14 February 2016, and in accordance with Section 56f of the Israel Trademark Ordinance 1972, a notice of acceptance was sent to the International Office of WIPO, conditional on no oppositions being filed prior to 29 May 2016.

On 19 May 2015 an opposition was filed by ARCOR S.A.I.C. and on 26 May 2016, a further opposition was filed by Colombina S.A., both in accordance with Section 24 of the Ordinance and with regulations 35 to 46 of the Trademark Regulations, 1940. Consequently, a memorandum regarding the Oppositions was sent to the International Office under Section 56f(ii) of the Ordinance. As per Section 56e(ii) of the Ordinance, copies of the Notices of Opposition in Hebrew were attached to the memorandum.

The Applicant has two months to file a counter-statement in response to the Notices of Opposition, i.e. until 19 September 2016 and 26 September 2016 respectively. Until today, no response from the Applicant has been received. Since the time period defined in regulation 37 has passed and in accordance with Section 24e of the Ordinance, the Applicant is considered as having abandoned the application. Therefore the mark is considered as abandoned and the 267718 file is closed. The Trademark Division will inform WIPO accordingly.

 Re Israel Trademark 267718, Closure of File by Ms YaaraShoshani-Caspi, 7 September 2016


Gentlefile – Trademarking Portmanteau Words

November 2, 2016

Gentlefile is a portmanteau of ‘gentle’ and ‘file’. An Israel trademark application was filed for the GENTLEFILE covering flexible soft dental files. Ill-advisedly, the pending application was then used as the basis for an International application under Madrid.

Medic NRG Ltd filed Israel trademark application No. 255358 for the word Gentlefile. The application covers surgical, medical, dlogoental and veterinary apparatus and instruments; parts and accessories for the aforementioned products; all included in class 10.

The Application was filed on 1 May 2015 and was the basis for subsequent International Application No. 1189965 under the Madrid Protocol in accordance with Section 56(c)(1) of the Trademark Ordinance 1972.

On 17 September 2014 the Trademark Department of the Israel Patent Office refused the Application under Section 8(a) and 11(10) of the Ordinance as lacking inherent distinctiveness and being descriptive of the goods covered. The Examiner considered that the word was a portmanteau of gentle and file, and implied a filing implement that was mild or tender, and consequently the term was descriptive of dental filing apparatus. The Examiner stated that the term implied:

Devices and equipment that are smooth or soft, mild tender to the touch and which deflect on use or gentle touch medical equipment that gives a pleasant and good feeling to patients.

Furthermore, after reviewing the Internet website of the Applicant, the Examiner concluded that since the main activity of the applicant is to provide dental equipment, the term file is descriptive by its nature.

little-shop-of-horrorsThe Applicant claimed that the mark is distinctive and the goods to be protected are not soft, smooth or pleasant dental equipment and so the mark is not descriptive. The Applicant further alleged that a reasonable person would not associate the mark with dental equipment since smooth, soft, mild instruments can be used in a variety of fields, and at the Examiner’s request the Applicant appended examples of usage of the mark in its publicity material and the description of goods accepted on its basis by the United States trademark office on 12 August 2014.

mr-bean-dentistThe Examiner was not convinced and issued a second Office Action. In response the Applicant claimed that the applied for mark had many alternatives meanings and none of them described the goods covered. The Applicant claimed that the word file meant case, computer document, line or rasp, and that the Applicant had developed the mark and used it for years and had now began registering around the world, including the European Community, the United States, China and Russia.

The Examiner dug in her heels and continued to hold the mark non-registerable.  She claimed that the term file was a rasp-like instrument that was used in root canal treatment and the term “gentle file” is descriptive in that it relates to a flexible hand tool. The Examiner provided examples of dentists referring to such a tool as being a file and noted that it only requires one of the meanings to be a generic description to make a mark non-registerable.

oral-proceedingThe Applicant requested a judicial ruling based on the arguments on record and an oral proceeding.

RULING

The Deputy Commissioner Ms Jacqueline Bracha summed up the legal question as whether GENTLEFILE is inherently distinctive, and, if not, whether it can be considered as having acquired distinctiveness.

Section 8 of the Ordinance makes registerability dependent on distinctiveness:

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

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

A trademark having distinctive character enables distinguishing the goods of one company from another. See the Bible Seligsohn “Trademark Laws and Related Legislation” page 20 (1973).

It is generally considered that marks fall into the following categories: generic, descriptive, indicative, randomly selected and made up. There is a continuum from generic marks to made up ones (See 5792/99 Communication and Religious-Jewish Education Family (1997) Ltd “Family” Magazine vs. SBS Advertising, Marketing and Sales Promotion Ltd. “Good Family” Magazine, Supreme Court Ruling 2001(11) 534 (23 May 2001). At the made up mark end are marks with inherent distinctiveness, whereas at the generic end are marks that cannot be registered.

Section 11(10) of the Ordinance determines that marks that describe the goods that they are to label cannot be registered unless they have acquired distinctiveness:

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

The mere fact that a descriptive mark is not in Hebrew does not make it registerable in Israel since the accepted terms should remain in the public domain, even if they are not in Hebrew. (Seligsohn page 35, and 3552/02 Toto Gold Club Ltd vs. The Counsel for Regulating Sports Gambling (26 September 2004).

Thus the general rule is that there is no place to drag descriptive names from common language and to remove them from the public domain and to relate them to specific goods unless they have acquired distinctiveness. 

The degree of descriptiveness of a mark is determined with respect to the intended goods or services and not in a vacuum. (see Appeal 21488-05-11 Eveready Battery Company Inc.  vs. The Commissioner of Patents and Trademarks 8 December 2011. The mark will be considered in its entirety and not analyzed into its components as this is how the consumer regards the mark (see Appeal 5454/02 Tiv Taam  Teva (1988) Tivoli vs. Ambrosia Superhav Pd 57(2) 438).

No-one denies that the marks are intended for medical usage in general and for dentistry in particular. The consumer in this instance is not the general public but rather dentistry practitioners such as dental surgeons, assistants, dental technicians and the like. So the way the mark is regarded has to be considered from their perspective and not from that of others not in the field.

The applied for mark is a combination of two words without a space so that they are viewed as a single word. The portmanteau word comprises file and gentle which mean mild and a tool that is generally steel that has sharp crevices and is used to smooth and flatten surfaces such as human teeth. In dentistry this tool is used to remove plaque from teeth. The word file also means computer document, divisional arrangement and line.

When considering the words in the appropriate context, that is with regards to medical devices for dental applications, the Deputy Commissioner concludes that both ‘gentle’ and ‘file’ are descriptive terms. That the words have other meanings in different contexts to a different audience in no way detracts from them being descriptive in the relevant field, since one has to consider the marks with respect to the services and goods for which they are to be used. The word file has a specific dental meaning and the word gentle is a qualifier that describes a relevant property whose meaning is well understood in this context. As the Examiner concluded, in this instance, we are dealing with flexible tools and it transpires from the Applicant’s own marketing material that it is their softness/gentleness that describes them.

The mark should be considered in its entirety as this is how the target audience perceives it as a trademark. In this context the combination does add something beyond the sum of the parts which increases the likelihood of the mark being considered registerable.

However, it has been determined that merely joining two words together is insufficient to render a mark distinctive unless the combination provides added value. With reference to Page 38 of Seligsohn:

A complex mark of this type cannot over time and through usage lose the plain meaning of the words from which it is comprised, rather a combination has to inherently include something imaginative that the descriptiveness is no longer revealed.

In this regard, reference is made to the Opposition against Israel Trademark Application No. 202424 “MAXIMUMASP” MAXIMUMASP LLC vs. Sky Net Group Ltd (30 June 2010:

The element that Judge Zilberg refers to as “An invention”, and which the European Court calls “Linguistically Unique” is not separate from the second element, that is having acquired a separate meaning from the original one. This means to say, the creativeness is the originality that changes two known and descriptive words into a third phrase which in turn indicates or describes the original meaning, is tested not just in that the phrase adds something, but that the addition provides the phrase with a meaning that is blatant and is the first thing to jump into the viewer’s brain, and which clouds out the original meaning, even were he to think of the original meaning if contemplating the mark. We can already say that the mere combining of two words into one, and even if a letter is thereby deleted, is no proof that the resultant word has the inventiveness required.

The term ‘Gentlefile’ is indeed a portmanteau of two words rolled into one, but it does not appear that the combination creates a new meaning beyond the literal meaning of the combination. In this instance there isn’t even a letter that has been deleted or changed, merely the space between the noun and adjective has been deleted. Thus the combination lacks the essential element of inventiveness that creates an additional meaning beyond the original meaning of gentle file.

Without ruling on whether the combination is too descriptive to be able to acquire distinctiveness through use (2673/04 Appeal Copy to Go marketing (1997 Ltd. vs Israel Shaqued 15 April 2007) the Applicant has not furnished sufficient evidence to persuade that the mark has indeed acquired distinctiveness as required for registration under Section 8(b) of the Ordinance.

Examining acquired distinctiveness of a mark is done with reference to how long the mark is in use, the amount of publicity gained and the resources invested by the Applicant / Owner in creating a linkage between the mark and the goods in the public perception. (see Toto above). Furthermore, one should examine if due to the mark the public connects the goods and services with the mark Applicant/Owner. (see Appeal 18/86 Israel Class Company Venezia vs. Les Verries de Saint Gobain, p.d. 45(3) 224, 238 (1991).

The Applicant did append examples of advertising material from Israel and abroad showing the mark to their responses to the Office Action, and also submitted examples of registrations for the mark from other countries. The Applicant did  not supply details of sales, investment in marketing, the period over which the mark was in use, and the like.

Where marks are far from the imaginative end of the spectrum and are more descriptive-generic, it is more difficult for the Applicant to meet the burden of proof to show acquired distinctiveness. (see Toto paragraph 9). Since the Applicant did not append sufficient evidence to prove this and relied on foreign advertising and registrations, without additional evidence there is no way to ascertain that there is local acquired distinctiveness.

In conclusion, Ms Bracha ruled that the Application be rejected.

Ruling by Deputy Commissioner Ms Jacqueline Bracha on Registerability of Israel Trademark Application No. 255258 Gentlefile, 21 September 2016

COMMENT
Where a mark is arguably descriptive such as in this case, it is not advisable to use a pending application as the basis of a Madrid filing since central attack on the application voids the Madrid trademark registrations.

What I believe the Applicant should have done in this case is to first register the logo that appears above. The mere addition of the graphic element makes this more than a mere combination of words. Using this as a logo without challenges will be good evidence of acquired distinctiveness when subsequently attempting to register the portmanteau word. It is likely that the company sells dental tools worldwide and does not concentrate on the local market which is small since there are only 8.5 million Israelis for dentists to treat. In a small market it is possible to acquire distinctiveness and to become the market leader but this requires strategically deciding to do so. As always, descriptive names should be avoided.

It is difficult to blame the Attorney of record in this case as it is more than likely that they provided good advice and the client went ahead and chose a poor name and tried to protect it. If they didn’t, there would be little work for trademark attorneys.

 


Dormeo – A mark-owner is entitled to a hearing in a cancellation proceedings, even when failing to show evidence of use of the mark.

October 10, 2016

dormeo

Studio Moderna owns Israel Trademark Numbers 109784, 209785, 209786 and 209787. The mark is for Dormeo, in classes 20 (Mattresses; beds and parts thereof (not included in other classes); slatted frames and bed undersides; cushions; pillows; anatomical pillows not included in other classes; seat cushions; pillow materials), 24 (Textile goods, not included in other classes, including covers, coverlets, mattress covers, covers for cushions, bed sheets, blankets, bedding, bed linen and bed cloths (bedding); textiles, not included in other classes), 25 (Clothing; footwear; headwear; scarves, corsets (belts for warming the lower back), arm sleeves, leggings, elbow bands, wrist bands and slippers) and 35 (for Advertising, marketing and promotion services; advertising agencies; advertising through all public communication means; distribution and dissemination of advertising material; rental of advertising space; demonstration of goods; public relations; marketing studies; presentation of goods on communications media for retail purposes; advertising via electronic media and the internet; publicity services, namely, promoting the goods, services, brand identity and commercial information and news through print, audio, video, digital and on-line medium; advertising and commercial information services, via the internet; advertising services in connection with the commercialization and sale of products for household purposes, furnishing articles, clothing; creating and updating advertising material; distribution and dissemination of advertising materials, leaflets, prospectuses, printed material and product samples).

In July 2015, Aldi GmbH & Co. KG filed to have the marks cancelled under Section 41 of the Trademark Ordinance, alleging lack of local use.

In response, on 12 October 2015, Studeo Moderna submitted evidence of usage and denied that the mark was not in use. Aldi responded with Affidavits of their personnel and of a private investigator, and argued that the marks were not in use in Israel.

Time passed, and Studeo Moderna took various extensions, but failed to submit evidence. On 7 June 2016 Aldi requested that the Patent and Trademark Office rule on the case based on the material in the file. Studeo Moderna opposed this, claiming the right to cross-examine Aldi’s witnesses.

Commissioner Kling reviewed Regulations 71 and regulations 37 to 46 which relate to an opposer and an applicant, as if they relate to a challenger and a trademark holder and noted that once the challenger has provided evidence, the mark holder was obliged to provide evidence, but the time-frame for so-doing was limited and the deadline had passed. He specifically rejected the implicit position taken by the marks holder, that ONLY if the challenger’s evidence is considered compelling, is the marks holder required to submit counter-evidence on the basis of regulations 38-40 which require the parties to submit their evidence in one go.

According to the Commissioner, an Opposer or a challenger of an issued mark who fails to provide evidence supporting a claim of non-use is considered as withdrawing or abandoning the claim. This is NOT the case for the applicant or mark owner, who, though obliged to provide evidence, is not considered as abandoning his marks if he fails to do so. Since the mark owner has requested to cross-examine the challenger’s witnesses he cannot be considered as having abandoned his marks. The right to cross-examine witnesses is fundamental and is rarely denied.  The Commissioner is also obliged to hear the claims of both sides. Consequently, the hearing will go ahead, however the marks owner is warned that he may be laying himself open to high costs of the marks are nevertheless cancelled. The parties are invited to list days that they are available for a hearing in January 2017.