Cancelling a Trademark – K Washer

August 8, 2018

This is an interim ruling regarding whether a sole distributor in Israel of trademarked goods has standing to request cancellation of a mark that is confusingly similar to the trademark covering the goods they distribute, and under what conditions can the owner of the trademark that is the basis of the challenge join the proceeding? Do they need to post a bond for costs? Does the counter-statement of case need substantive amendment and can the owner of the challenged mark requests costs for so doing?

KWASHER

Kärcher is a French company that has requested the cancellation of Israel Trademark No. 258749 to B.M. Peled-Technical Supplies LTD for the stylized “K-Washer” mark shown.

The basis for the cancellation request is that the K-Washer mark is confusingly similar to the Kärcher Mark.

Karcher

The request for cancellation was submitted by Dan Sheldon Ltd, which claimed to be the sole distributors of Kärcher in Israel. The Applicant for cancellation informed Kärcher about the issue and that they intended taking steps against the mark holder.

A letter of consent and a POA from Kärcher was attached to the cancellation request. In the letter of consent, Kärcher noted that they were not a party in the cancellation request but they agree to it occurring. In the POA it was emphasized that Dan Sheldon is the sole distributor of Kärcher products in Israel and that Kärcher delegates the right to take legal steps against K-Washer.

In response to the cancellation request, the trademark owner claimed that the party requesting cancellation of the mark had no connection to the registered Kärcher mark and no rights in the mark. In particular, the mark owner claimed that Sheldon had no standing and no legitimate interest that could serve as a basis for the cancellation request. Furthermore, he argued that the letter delegating authority showed that Kärcher had no interest in defending their mark in Israel.

In counter-response, to remove any doubt, Kärcher requested to be a party to the cancellation proceeding.

The cancellation request was submitted together with evidence from the requesters for cancellation and after the parties had submitted their statements of case. The mark owner has not yet submitted his evidence, and has already received an extension of time to do so.

The claims of the parties

Kärcher claims that their joining the cancellation request is essentially the same as if they had been a party from the beginning. It would not create damage, delay or affect the proceeding that has already started in any way, and their joining the proceeding does not in any way change the cancellation request.

Kärcher explained that their joining is merely a precaution to avoid the mark holder’s allegation that they have no interest in this proceeding, or in an infringement proceeding, Appeal 38680-11-17 in the District Court.

The mark holder counter claims that the fact that Kärcher has requested to join the proceeding is not a reason for them to do so, and Kärcher does not claim to be a necessary party in the proceeding. Furthermore, the mark holder notes that Kärcher has not explained how they would be hurt if their request to join the proceeding is refused, and the only reason why they requested to join the proceeding is that the respondent alleged that the party requesting cancellation has no rights in Kärcher’s mark and thus cannot themselves be a party to the proceeding.

Discussion and Ruling

First the Commissioner, Ofer Alon notes that he doesn’t think that the cancellation proceeding submitted by Dan Sheldon was submitted without right of standing. Section 38 of the Trademark Ordinance 1972 states that:

38.(a) Subject to the provisions of this Ordinance, any person aggrieved by the non-insertion or omission from the Register without sufficient cause, or by any entry wrongly remaining on the Register, or by any error or defect in any entry in the Register, may make application in the prescribed manner to the Supreme Court or may, at his option, make such application in the first instance to the Registrar.

The term any person aggrieved has been broadly interpreted, see Seligsohn “Trademark and Related Laws, 1973, page 105 and Appeal 94/05 The Vineyards of Rishon L’Zion and Zichron Yaakov Cooperative vs. The Vineyard Company ltd. P.d. 61(3), 350 (2006) and paragraphs 9 and 10.

The term “who is aggrieved” has been explained very liberally in the case-law, and includes all business competitors who lose out by a competitor benefitting from a trademark that he does not have rights to. This explanation is based on the explanation of the term Person Aggrieved in the English Law.

This was cited in Bagatz Klil vs. Commissioner of Patents and Trademarks, p.d. 42(1) 309 on pages 316 and 317 where the court related to the fact that the mandatory authority amended the term “person interested” that appeared in the original law to “party aggrieved” in  the 1938 Ordinance, and the term remained broad as explained above.

To demonstrate the trend to explain the term broadly, it is noted that in the new UK Trademark Law 1994, the term “person aggrieved” is also deleted, and anyone can request cancellation of a mark.

If there is a risk of misleading the public to think that K-Washer is connected to Kärcher, then Sheldon, who is Kärcher’s distributor in Israel, is within the ambit of a ‘person aggrieved’ and has the right to request cancellation of the mark.

It is noted that the mark owner simultaneously claims that there is no point adding Kärcher to the proceeding, and that only Kärcher has the right to request cancellation, implying that there is indeed a point in allowing him to join the proceeding.

It seems that the parties concur that Kärcher has the right to request cancellation of the mark, since they are also ‘aggrieved” by it being registered (should it be determined that there is indeed a danger of misleading as to the source of the goods).Consequently, if we were to refuse to allow them to join this proceeding, they could simply file a separate request to cancel the mark(which logically would be combined with this proceeding), and this justifies allowing them to join this proceeding at this time.

Regulation 72 of the Trademark Regulations 1940 lays out the conditions for a third-party to join a cancellation or correction proceeding for an issued trademark that are set out in regulation 70:

  1. Any person other than the registered owner, claiming a benefit in a registered trade mark in respect of which an application was made under clause 67, may apply to the Registrar, using the prescribed form, to permit it to intervene in the matter, and the Registrar may refuse or accede to the granting of permission for such, after hearing the parties in respect of the matter, on such terms as the Registrar may see fit. Prior to dealing with such application in whatever manner, the Registrar may demand that the applicant give an undertaking to pay the Registrar’s expenses incurred in deciding to the benefit of one of the parties under the circumstances.

The purpose for Regulation 72 is to allow third parties that claim a benefit in the registered mark, to have their day before the Commissioner. As then Commissioner Asa Kling stated, this is the right to a substantive hearing (see registered Israel trademark no. 216,916 (request to include a third-party) Danny Argon vs. Strauss Culture Factories ltd, 1 November 2012:

Where the third party claims apparent rights to a mark and excluding him from the proceeding would have negative consequences, it seems appropriate to include him in the proceedings as it seems improper to prevent him for stating his case.

As stated above, the cancellation proceedings is based on claims of misleading and unfair competition with respect to Kärcher products.so it seems appropriate to allow Kärcher to join the proceeding, and this accords with Regulation 72. Thus Commissioner Alon orders that Kärcher can join the proceeding as a third-party.

The trademark owner requested on 2 July 2018, that should Kärcher be allowed to join the proceeding, a procedural regime should be introduced wherein amended statements of case and amended evidence be resubmitted in consequence of them being added. Furthermore, the mark owner requests that should Kärcher be allowed to join the case, that they be required to deposit a bond to cover the mark owners costs and should bear the costs of the mark owner correcting their statement of case.

The parties requesting cancellation object to this procedural regime and contend that adding Kärcher does not require making substantive changes to the statement of case, and adding Kärcher does not require moving from where the case has got to and does not introduce new claims. As to requiring Kärcher to deposit a bond, they note that Kärcher is a company with a yearly turnover of billions of dollars and in the court proceedings Kärcher was added as a plaintiff without preconditions.

With respect to the posting of a bond, the mark owner did not provide justification for this request. However, the request to add Kärcher as a plaintiff was also not submitted with justifications for them not to post a bond other than their alleged turnover which was also not supported by any evidence.

In the Commissioner’s ruling of 19 June 2018, the time frame for the mark owner to submit evidence was set to 30 days after the requester for cancellation submit their evidence in a discovery procedure that the Commissioner initiated. It appears from the documents before him, that the requested documents were transferred to the mark owner on 26 June 2018, so the mark owner has until 26 July 2018 to submit their evidence.

In light of the above, the Commissioner rules as follows:

  1. The statement of case of the requester for cancellation of the mark shall be amended only by adding Kärcher as a co-plaintiff. The mark owner will have 21 days to amend their counter-statement of case from the date of this ruling.
  2. The challenger can amend their evidence by adding Kärcher as a plaintiff, and can add any new claims to their statement of case that result from this addition. The additional evidence should be submitted within 30 days of the amended counter-statement of case of the mark owner.
  3. The mark owner should submit their evidence within 30 days of the submission of the amended evidence by the original and the additional challenger. In accordance with Regulation 40 of the trademark regulations, the original requester for cancellation and the additional party will be able to submit their counter-evidence in accordance with the schedule laid out in the regulation.
  4. Despite allowing the addition of a second party to the challenge, no costs will be awarded for any need to amend the statement-of-case, or other reason.
  5. In light of the above, at this stage, the Commissioner does not see it appropriate to require Kärcher to post a bond to cover costs of the mark owner, should they prevail. If however, the mark owner considers it appropriate to require the challengers to post a bond, they can submit a detailed request and it will be considered on its merits.

Interim Ruling in Cancellation Proceeding of Israel Trademark No. 258749 “K-Washer” by Ofer Alon, 19 July 2018.


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


IPR or AIPPI???

February 27, 2018

conferencesI was contacted by a trainee patent attorney who wishes to attend one of the forthcoming IP conferences in Israel but is not sure which one is better value for money.  The firm where she works are prepared to recognize her attendance as a day of work rather than a vacation, but are not prepared to pay for her participation.

ipr-logoThe 6th Annual Best Practices in Intellectual Property is hosted by the IPR and will take place on March 12th and 13th 2018.

 

aippi-israelThe Third International Conference on the Economics of Innovation is hosted by the AIPPI on April 30th-May 1st 2018 which may interfere with participation in International Workers’ Day, but I suspect that few IP practitioners in Israel actually march.

(The big international conferences fall over Jewish festivals this year. INTA is in Seattle, USA, but overlaps Shavuot. The AIPPI 2018 World Conference in Cancun, Mexico is over Suckot).

Although I believe that firms taking on trainees should invest in them and both the IPR and AIPPI Israel conferences include sessions that provide excellent training for the bar exams and/or professional development, clearly the cost of such conferences adds up rapidly for large firms if they send all of their staff. I can also appreciate why an IP firm may not want someone not yet qualified appear to represent them, when wandering around a conference and meeting potential clients and associates or actual clients and associates.

apprentice payNevertheless, on the salary of a trainee, particularly one with family commitments, both conferences are costly. A significant number of trainees are new immigrants that are self-not living with their parents. Those unluckily enough to be on a percentage of salary may not earn a minimum wage and I believe their ‘mentors’ should be struck off. But even those earning a reasonable fixed trainee salary may find that laying out 850 Shekels for a day of training lectures, is difficult to justify, despite the high quality lunch and coffee breaks and the possibility to pick up a couple of pieces of swag from exhibitors.

fair priceThis does not mean that either conference is objectively expensive when considering the standard of the program and the costs involved in hosting such events in expensive hotels, the quality of the refreshments and the cost of such programs abroad. However, I can certainly see why someone paying for himself or herself may not be able to justify for both events.

mingling 2Licensed In-House practitioners may well be able to get their companies to pick up the tab for them to attend both conferences, and unless swamped with urgent work, I can see many IP managers preferring to schmooze with colleagues and to attend lectures rather than sitting in their offices.  I suspect the coffee break refreshments and lunches provided also compare well to the canteen food or lunch voucher allowance of most hi-tech companies.

trainingIP boutiques are, of course, able to evaluate the relevance of the training for their different staff members, and will no-doubt consider this when deciding who to send to which conference.

As with all such conferences, some sessions will be highly relevant to one’s day to day work, but perhaps lacking in material one doesn’t already know. Similarly, some sessions will be focused on IP issues that may be completely irrelevant to one’s day to day practice.  In this regard, apart from keynote lectures, both conferences have parallel sessions, and one is advised to carefully select presentations to attend that are at least one of the adjectives selected from the group comprising: relevant, intellectually stimulating and informative.

bpip 2018The Best Practices in Intellectual Property conference hosted by Kim Lindy and the IPR is perhaps mis-named. Apart from one session on trade-secrets, the entire program is dedicated to patents and the conference is very much focused on practical aspects of patent management. The conference is particularly targeted at In-House counsel in industry and has much to interest independent patent attorneys in private practice, partners and attorneys at IP firms. However, it seems to have little of interest to those who earn their living managing trademark or copyright portfolios. Sadly in my opinion, it also does not address design law which is a rapidly changing field in Israel.

jam packedThere will be little at the “Best Practices in Intellectual Property” conference to interest academics. However, the program is jam-packed with relevant sessions for prosecuting patents and managing patent portfolios which is what very many in-house IP managers do, and also is the bread-and-butter work of most patent attorneys in private practice.

variety packThe AIPPI conference titled “The Economics of Innovation” uses the term innovation very widely and is much broader in scope than the “Best Practices in Intellectual Property” conference In that features sessions on trade-secrets, design law, trademarks, Copyright, traditional knowledge, taxation of IP and Internet & Privacy. Many of the sessions look at the issue of overlapping types of protection.

madagascan periwinkle

Madagascan Periwinkle, used to treat Hodgkin’s Disease

One of the AIPPI sessions is titled “Traditional Medicine – the influence of IP on Commercial Use and Economic Aspects”. This is not the first time the topic of traditional knowledge has been covered in Israel. Back in 2011, I helped
Dr Shlomit Yantizky Ravid of ONO Academic College organize a three-day traditional knowledge conference that brought representatives from a large number of developing countries and sympathetic US academics that was sponsored by WIPO.  Dr Irving Treitel, a patent attorney who deals with life science patents, especially pharmaceuticals (who was then working for me at JMB Factor & Co.) responded on behalf of the profession. Prof. Shuba Ghosh was the keynote speaker then, as now. Despite much advertising in the press, only some 30-40 people participated in the conference – virtually all speakers of foreign delegates. Apart from Dr Treitel and myelf, I don’t recall any other IP practitioners attending that free conference. I applaud the AIPPI bringing IP issues to the attention of local practitioners, but I doubt that this session will attract a large attendance despite the prestigious panelists.

 

taxCertainly patent attorneys, whether in-house or in private practice, should be familiar with the different types of protection available to be able to advise or at least refer clients.  Patent Attorneys should also be aware of tax issues, at least broadly, to be able to refer their clients to accountants where appropriate to do so. There are very many large US firms registered in Delaware that conduct R&D in Israel. There are also many firms that are physically based in Israel, but decide to incorporate in the US for political reasons, and these include start-ups as well as larger firms. I have clients that have fairly small staff but are incorporated as an IP holding company that owns the patents, trademarks, copyrights and designs and a separate manufacturing company that licenses the IP assets. The tax issues are not something that a patent attorney deals with, but attorneys-in-law may practice IP and tax law, and in-house legal counsel may deal with IP and taxation.  Apart from understanding how tax issues affect their own income and how various taxes can be legally avoided and what is considered illegal evasion and criminal, I believe that IP professionals not practicing tax law should nevertheless have a general grasp of the tax issues that face their clients to be able to advise them where they should seek guidance from a tax attorney, accountant of tax-consultant.

In summary, both conferences are value for money. People only having the time or budget to attend one should consider which one to go very carefully, and it is worth working out in advance which sessions to attend.


USA PRO – Can Sales and Marketing Data Submitted To Israel Patent Office Be Considered As Trade Secrets?

September 19, 2016

USA PRO.pngUSA Pro IP LTD filed Israel Trademark Application Number 268322 for “ISRAEL PRO”.

To prevail against Examiner’s Objections during Office Actions, the Applicant has to provide evidence of use and awareness of the mark amongst the relevant public. Once a mark is allowed, it publishes for Opposition purposes and third parties may challenge statements made during Examination or in evidence submitted. Sometimes, the Applicant does not want this evidence to be available to third parties, and claims that they are trade-secrets that should be kept secret.   This ruling addresses the conflicting rights of the applicant and of third parties that are inherent in keeping evidence and submissions confidential.

Confidential-219x194.jpgThe request to keep the evidence confidential was submitted in accordance with Circular 028/2014 “Trademarks – Examination of the Application Files” from 26 August 2014.

To prove that the mark had acquired distinctiveness, the Applicant submitted a summary of the investment in marketing, invoices for sales in Israel, Britain and the US and world-wide sales data.The Applicant claims that making this information available could adversely affect its ability to deal with third parties that that it was in contentious proceedings with in various jurisdictions.

Section 23 of the Trade Torts Law 1999 defines the Commissioner’s authority to rule that trade secrets of an applicant or another will not be published. This rule covers all courts and bodies having judicial or quasi-legal authority in accordance with any and all laws. Section 5 of the Trade Torts Law 1999 defines trade secrets as:

“Business information of any type that is not in the public domain and cannot be easily and legally revealed by others, whose secrets provide the owner with a business advantage over competitors, so long as the owners have taken reasonable precaution to maintain the information confidential.”

From examination of the documents submitted and the requested confidentiality, it appears that they cover the applicant’s sales in fine detail, including the type of goods sold, prices, who they were sold to and in what quantities. Additionally, the alleged advertising sales budget was provided.

From the request to keep this information secret, it appears that this information is confidential and was not revealed to third parties. In this instance and since there is no a priori public interest in this information that outweighs the applicant’s request to keep this secret, it should remain confidential, at least at present, whilst the mark is under Examination.

access-deniedAs the Deputy Commissioner, Ms Jacqueline Bracha, does not think that revealing this information is required to enable third parties to review trademark applications for the purpose of opposing them, she does not see a need to make this information available to third parties and orders that it remains confidential. To support this position, reference is made to the Israel Trademark No. 243620 “Become ill? Injured?” Center for Receiving Medical Rights LTD decision of 1 December 2014. It is understood that to the extent that an Examiner decides to relate to this material during prosecution, he can do so in general terms, whilst giving enough details to serve the interest of the public following the prosecution. However, should the mark be allowed and an Opposition filed, the Opposer may be entitled to greater or even to full access to the confidential material. Thus in the event of the mark being allowed, an opposition filed and the Opposer requesting access, the issue will be revisited.

The request for confidentiality and this decision are made public.made public.jpg

Decision re confidentiality of trade-secrets revealed to the Israel Patent Office during prosecution of a trademark for USA PRO, ruling by Ms Jacqueline Bracha, 21 August 2016.


Michel Mercier Coexistence Agreement Refused by Israel Patent and Trademark Office

April 10, 2016

Michel Mercier 2

As previously reported, Campalock LTD (formerly Michel Mercier LTD) and Michel Mercier previously reached a coexistence agreement which was rejected by the Israel Patent Office who fined both parties for wasting the court’s time.

To recap, on 13 November 2011, Kampalook LTD (previously Michel Mercier LTD) filed a word mark application (IL 240628) for Michel Mercier in class 21. On 2 December, Michel Mercier filed Israel trademark no. 251414 in classes 3, 8, 11, 21, 35, 41 and 44. Since the identical mark was submitted by two different applicants, both in class 21, a competing marks procedure was initiated.

According to an Affidavit submitted by Mr Avshalom Hershkowitz, the Deputy CEO of the company, Mr Mercier is an entrepreneur and inventor in the field of hair care, who created both the brand that carries his name, and the company. The company owns the patents and designs for hair untangling equipment invented by Michel Mercier.

Over the years, differences of opinion between the company and Mr Mercier resulted in the parties requesting the court’s arbitration.

Following a negotiated settlement, the parties have now requested that the mark for the hair brushes remain the property of the company, but the same mark for hair cleansing and other treatments, and electronic and manual hair styling equipment, hairdressing services and schools remain the  property of Mr Mercier. However, this agreement was not presented to the Israel Patent and Trademark Office.

Now the companies request that both marks be allowed to register.

The parties stated their case and attempted to convince the Israel Patent and Trademark Office that parallel registration was allowable under Section 30.  The parties considered their case an exception that justified coexistence. The parties argued that they have been effectively coexisting for over a year without problems and without any customer complaints or confusion. Furthermore, in addition to the name Michel Mercier, the company’s products include the term “by Campalook”. Forbidding coexistence would make filing abroad difficult as the Madrid Protocol could not be used and the parties further noted that the USPTO had agreed to register the two marks.

Section 30 states as follows:

(a) Where it appears to the Registrar that there is current use in good faith, or where there are other special circumstances which in his opinion justify the registration of identical or similar trademarks in respect of the same goods or description of goods by more than one proprietor, the Registrar may permit such registration subject to such conditions and limitations, if any, as he may think fit. (Amendment No.7) 5770-2010 (b) A decision of the Registrar under subsection (a) shall be subject to an appeal to the Supreme Court; an appeal as aforesaid shall be filed within 30 days of the date of the Registrar’s decision; in the appeal, the Court shall have all the powers conferred upon the Registrar in subsection (a). (Amendment No. 7) 5770-2010 (c) The appellant shall give notice to the Registrar of the filing of an appeal under subsection (b) within 30 days from the date of its filing. (Amendment No. 7) 5770-2010 (d) In an appeal under subsection (b) the Court, if so required, shall hear the Registrar

The Equitable behaviour and desires of the parties themselves are necessary but not the only considerations. The parties wish to part company and have reached an agreement that the Patent Office is not party to. Since the Applicant was himself unhappy with the agreement at one stage, it went to arbitration. The parties now want the Patent Office to ratify the agreement, despite most details being obscure. Nevertheless, there is no indication of inequitable behaviour.

However, the Patent Office is also responsible to protect the public interest and coexistence agreements that mislead or confuse the public regarding the source of goods cannot be ratified. In this regard, the deputy commissioner referred to the Karl Storz vs. Bausch and Lamb decision from 2009, and to the biosensors ruling of the District Court.

In this instance, the two parties do not have an ongoing business arrangement, but the mark is the same and the goods and services are in the same class. Furthermore, Michel Marcier remains seen as the source of goods and the company has had to add their name to indicate otherwise. However, the addition of the company name is not part of the applied for mark and they could stop adding it. Furthermore, it does not imply a lack of relationship with Michel Mercier.  Since Michel Mercier is a real person who is active in the field, a reasonable consumer would assume an ongoing  relationship with him.

It is true that the USPTO allowed registration to both parties. However, with reference to the Trademark Manual of Examining Procedure,  it appears that the USPTO will allow different legal entities to register the same mark(s) if it considers that there is a connection between them:

Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), requires that the examining attorney refuse registration when an applicant’s mark, as applied to the specified goods or services, so resembles a registered mark as to be likely to cause confusion. In general, registration of confusingly similar marks to separate legal entities is barred by §2(d). See TMEP §§1207–1207.01(d)(xi). However, the Court of Appeals for the Federal Circuit has held that, where the applicant is related in ownership to a company that owns a registered mark that would otherwise give rise to a likelihood of confusion, the examining attorney must consider whether, in view of all the circumstances, use of the mark by the applicant is likely to confuse the public about the source of the applicant’s goods because of the resemblance of the applicant’s mark to the mark of the other company. The Court stated that:

The question is whether, despite the similarity of the marks and the goods on which they are used, the public is likely to be confused about the source of the hair straightening products carrying the trademark “WELLASTRATE.” In other words, is the public likely to believe that the source of the product is Wella U.S. rather than the German company or the Wella organization.

Therefore, in some limited circumstances, the close relationship between related companies will obviate any likelihood of confusion in the public mind because the related companies constitute a single source”.

In Israel Law, there is no similar clause that allows a connection between separate legal entities to be sufficient for them to be considered a single source. However, where companies are daughter companies of the same concern, under certain circumstances it may be possible to allow them to own confusingly similar marks (See Seligsohn 1973, Page 55).

This case is different. The Agreement between the parties is more of a divorce than anything else. It states the lack of connection between Michel Mercier and the company. It is not clear what was disclosed to the USPTO and their decision to allow the two marks to coexist has not been endorsed by a court. The decision is not sufficient to be relied upon as a comparative ruling of a foreign judiciary.

The lack of problems caused over the twelve months of coexistence de facto is also of limited value since it is not clear that the consumers purchasing the hairbrushes were aware that there was no ongoing connection with Michel Mercier. It does not seem that any attempt was made to poll the customers.

Furthermore, 12 months is a short period.  In the Biosensors ruling, Judge Schitzer  noted that in that case, the coexistence on which registration in parallel was requested was two years, but the cited case law related to very much longer periods.

Whilst it is true that the company  Campalock LTD owns the various patents and designs, that not necessarily mean that trademarks be considered in the same manner. The designs and patents may be the basis of the sold product range and can be bought and sold, but the name is the public face of the company and has to identify the source of the goods.

Certainly allowing the marks would facilitate international trademark registration by Campalock via Madrid, but traditional national registration remains an option and the ease of registration abroad via the Madrid Protocol is not a relevant consideration for the Israel Patent and Trademark Office to consider when ruling on whether to allow two competing marks to coexist.

 

 

 

 


IP Training Program in Israel

February 17, 2016

IPR

A week after the AIPPI Conference in Tel Aviv, the Intellectual Property Resources Institute (Kim Lindy) is running a three day course:

Patents and Trade Secrets:
Course for Inventors, R &D, Project Managers and Managers

March 27, 2016: General Overview of Patents and Trade Secrets
March 28, 2016: In depth Analysis of Patentability Requirements and Enforcement
March 29, 2016: Strategy, and Facilitating Communications with Patent Attorney

For more details, click here.

We note that this event is more expensive than the AIPPI conference which itself is not cheap. Kim’s conferences are usually very well organized and informative. I am familiar with many of the speakers and believe that this event will be informative and worthwhile for participants.


Brooks vs. Speedo – Cancelling a Hearing at the Last Minute

February 15, 2016
Brooks logo

Brook’s logo

Speedo logo

Speedo’s Logo

Brooks Sports filed Israel Trademark Application Number 238375. The mark is shown above. The actual representation filed was for the outline without colour. On allowance, the mark published for Opposition purposes and Speedo Holdings represented by Pearl Cohen Zedek Latzer Baratz (Pearl Cohen) opposed the mark on 30 September 2014. We’ve also shown Speedo’s mark. Whilst different, one can understand why Speedo had a problem with Brook’s mark.

Brooks Sports Inc. represented by Dr Shlomo Cohen Law Offices filed a counter statement of case on 20 November 2014, and by 10 July 2015,  the evidence stage was finished with Speedo declining to file evidence in response to the Applicant’s evidence. On 8 October 2015 the Patent and Trademark Office scheduled a hearing for 21 January 2016 and informed the parties. However, on 29 December 2015, Speedo Holdings submitted an urgent request to substitute a new affidavit instead of  one from a Mr Long, where the identity of the new witness was not yet known. Furthermore, they requested to conduct the hearing by video conference.  Alternatively they requested to postpone the hearing.

In a ruling of 31  December 2015, the Adjudicator of IP, Ms Yaara Shoshani Caspi, refused the request to allow an unidentified witness to attend a hearing by video conference, but noted that Mr Long was not required to come to Israel and could be cross-examined by video conference.

Speedo’s attorneys Pearl Cohen Zedek Latzer Baratz (Pearl Cohen) submitted a request that the Adjudicator of IP, Ms Yaara Shoshani Caspi, reconsider her refusal and alleged that the new witness was a British single mother and that Her Majesty’s Government was advising against visiting Israel, however the request was not backed up with any affidavits. Mr Long’s affidavit was unsigned and was not legalized. Brooks’ representative was not happy with this, and after his comments and Speedo’s response, Ms Shoshana Caspi ruled that there was no justification to reconsider her interim ruling, particularly as no reasons were given for both the change of witness and for cross-examination by video, and because of serious flaws in Mr Long’s affidavit,a lack of an alternative affidavit from the British alternative witness and lack of notice to make these changes prior to the hearing.

Unaccountably, Speedo represented by Pearl Cohen (PCZL) did not see fit to address the flaws, and did not submit a new affidavit for the new witness to support claims made on her behalf. Furthermore, Mr Long’s affidavit was not corrected and no other witness was found who could be cross-examined by the Applicant. On 17 January 2016, a mere three days before the hearing, Speedo represented by Pearl Cohen filed a request to cancel the hearing on the basis that there were no factual differences of opinion and the burden of proof lies with the Applicant.

Brooks responded to this on Ms Shoshani Caspi’s request and noted that the unilateral request to cancel the meeting was filed without the Applicant’s consent and without even bothering to consult the Applicant. This behaviour not collegial and is not acceptable, particularly when the request is an urgent one to cancel a hearing. This is particularly serious since the party at fault is the opposer who initiated the proceedings. This is tantamount to contempt of court.

The Applicant’s representative stands by his right to cross-examine the witnesses, and cancellation of the hearing will substantively damage the applicant’s rights. In this instance there was no agreement to cancel the hearing, merely a last minute request by the Opposer. One cannot force an Applicant to accept affidavits and statements without an opportunity to cross-examine, and to force them to agree to a ruling based on evidence submitted.

Ruling

The Law allows a party to a proceeding to forgo the right to cross-examination the other party’s witnesses but this does not cancel the hearing. The hearing may only be cancelled if both sides forgo the right to cross-examine. Only then is a decision issued on the basis of the written evidence. Regulation 44a states in the plural that where the parties forgo the right of cross-examination, the Commissioner will rule on the basis of the evidence before him.

The Opposer cannot unilaterally declare that the hearing should be cancelled as there are no factual issues in question. If that were the case, the Opposer would not have submitted affidavits stating the facts. Furthermore, examination of the statements indicates that there are factual issues in question.

As to the burden of proof, whilst it is true that this is on the Applicant to prove that a mark may be registered, in order to do so, he may need to cross-examine opposer’s witnesses who challenge this.In light of this, Me Shoshani Caspi rejected the request to cancel the hearing and announced that it would occur as scheduled on 21 January at 9 am. Since the Opposer has announced that they are not interested in cross-examining the Applicant’s witnesses, these are not required to attend. The Opposer is obliged to ensure that their witness is in attendance.

Finally, as a swath of unilateral intermediate requests by Pearl Cohen on behalf of Speedo to switch affidavits and to postpone or cancel the hearing were submitted and since the Applicant has had to address these issues, costs of 1500 Shekels +VAT are awarded to the Applicant and should be  paid within 5 days.

COMMENT

There is no doubt that Speedo are in their rights to oppose Brook’s Application. Filing Oppositions and responses on the last day is common practice for the Opposer who is in no hurry. This is procrastination within the law and is allowable. Switching witnesses and attempting to cancel proceedings at short notice, without regard for the Applicant, their legal representative’s busy schedule or the over-stretched legal resources of the Patent Office is unnacceptable. This Opposition has been handled with arrogance and it is good that the Adjudicator has put her foot down.