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.

 


Can evidence submitted in an adversarial civil legal proceeding be kept confidential from the opposing party?

June 14, 2015

trade secretevidence

Israel Patent Number 132540 “System and Method for Direct Monetary Transfer Using Magnetic Cards” to Yehuda and Yigal Tsabari issued and then lapsed due to failure to pay the renewals.

Back on 24 July 2014 the Israel Patent Office agreed to the patent being reinstated. Generally, third parties who are utilizing the patented technology in good faith relying on the fact that the patent was abandoned are granted a non-transferable license that allows them to continue their business activities.  Nevertheless, the Israel Patent Office Decision to allow a patent to be reinstated is published for opposition purposes, giving third parties three months to oppose the lapsed patent being reinstated.

In the case of IL 132540, on 23 November 2014, Going Dutch LTD filed an opposition to the reinstatement. They claimed that the patent had not lapses unintentionally, but that Tsabari had knowingly abandoned the patent and that this was evident from the way Tsabari tried to enforce his patent.

Tsabari responded to these charges but requested that part of his response be kept confidential by the Patent Office and not made available to the opposer, claiming that the information constituted a Trade Secret. The documents to be kept secret included a document describing an enabling system, a draft contract with a credit card organization, a proposal for developing a system based on the patent, a contract with an investor and a letter from the investor, canceling the contract.

The patentee argued that these documents were confidential and for the parties themselves, and that their publication could compromise the patentee’s ability to compete in the relevant market. They were submitted as evidence that the invention had not been abandoned, but beyond that, their contents were not relevant to the issue in question, and so their contents should remain restricted.

The Opposer noted that the patentee had not provided sufficient evidence to prove that the documents in question were fairly described as trade secrets. This was particularly the case due to the fact that the documents apparently related to a failed business transaction from ten years previously. Furthermore, the patentee was not a side in the agreements in question and therefore could not claim that any trade secrets were his secrets.  Substantially, any documents used to support a legal claim should be available for public inspection. In addition, the opposer noted that the documents should have been supplied together with an affidavit and their dates and the parties thereof and the editor thereof should be identified.

 

Ruling

Section 23 of the Trade Related Torts Act 1999 give the courts (including the Patent Office) authority to prevent the publication of evidence considered as including trade-secrets and to allow only restricted access.

In recent Supreme Court Decision 2376/12 Rami Levi [a discount supermarket chain] vs. Moshe Dahan, July 8, 2013, Judge Amit ruled that there was a connection between the relevance of a document to a proceeding and the extent it could be kept confidential.

Essentially, where a document is relevant to a proceeding but one side claims a trade secret, the court has to weigh up the opposing rights of the parties and also to be aware of the potential damage to further entities not party to the a proceedings.

As a general rule, in civil proceedings, documents are available to all and confidentiality is the exception – See 7598/14 Theopholus Johnopholus (Theopholus III), the Greek Orthodox Patriarch of Jerusalem vs. Hymnota LTD., albeit the precedent relating to religious confidentiality and not to trade confidentiality.

Firstly, therefore, the court has to assess the relevance of the documents in question, which is a function of the arguments between the parties. In this instance, the argument relates to the restoration of a patent under Section 61 of the Patent Law 1967:

Any person may oppose a patent being restored within three months of the publication of the restoration notice on the grounds that the Commissioner [or deputy in this case] did not have grounds to order the publication of the request [i.e. to oppose the decision to reinstate].

Consequently, the discussion regarding reinstatement should focus on the three grounds for reinstatement:

  • failure to pay the fees resulted from reasonable circumstances
  • the patentee did not intend the patent to lapse
  • the patentee requested reinstatement as soon he realized that the fee was not paid.

The opposer considers that the patentee’s behaviour over the years was unprofessional, surprising and irresponsible. In other words, the patentee either wanted the patent to lapse or at least was unconcerned about his rights.

In response to these claims, the patentee described his attempts to commercialize the invention and submitted the documents about which he requested a secrecy order. The documents in question date to the period 2007 and 2008 and are thus of little relevance to the opposition proceeding.

Due to their lack of relevance to reinstatement, it seems that the right for confidentiality outweighs the right of access. They were prepared for the patentee or for exclusive licensee and were not published after they were not successful. There is no reason why these documents should enter the public record. Based on the statement of cases, the documents are not relevant and should not be published.

As to the lack of an affidavit, i.e. a signed statement testifying to that claimed, in Patent IL 118045 AstraZenca AB from 16 Jan 2005, there was a ruling to the effect that a statement should have been submitted.  However, in the Rami Levy case the Supreme Court ruled that the affidavit requesting secrecy was sufficient and there is no need for an additional affidavit accompanying the submissions. In the present case, the documentation as supplied is sufficient since the content is clearly sensitive, rendering superfluous the need for an affidavit supporting this contention.

Furthermore, the Patentee decided to submit these appendices to his statement of case and not to later submit in the evidence stage as he could have done, relying on Section 93 of the Patent Regulations 1968. Consequently, at this stage of the proceedings, the patentee does not have automatic rights to view the documents.

Thus in the meantime, the documents shall remain confidential. Should the Opposer consider these documents relevantat a later date, he is entitled to request their publication. At this time, no costs are awarded.

Opposition to reinstatement of IL 132540 “System and Method for Direct Monetary Transfer Using Magnetic Cards” to Tsabari, opposed by Going Dutch LTD., interim ruling by Jacqueline Bracha, 7 May 2015.

Comment

I am a little confused here.  The adversarial system requires that evidence brought in a legal proceeding be available to opposing parties to examine and challenge the validity thereof.

In this instance, the Opposer is using his legal right to oppose a patent being reinstated on the grounds that the patent was willfully abandoned. The Patentee has countered that there was no willful abandonment and has substantiated this claim with various evidence that allegedly shows this to be the case. In the circumstances, the evidentiary documents are considered by the patentee to be pertinent. If the patentee does not want the opposer to see the documents, he should retract them and base his case on other evidence.

That said, the 2008 documents are irrelevant as the patent only went abandoned on 24 October 2013, presumably retroactively on 24 April 2014, when the six month grace period past.

This patent was ‘abandoned’ for less than three months. The issue is when Tsabari realized that the patent had gone abandoned and when he tried to have it reinstated. Reinstatement is thus unlikely to be difficult, and one suspects that the patentee would be better served if he had chosen to use professional counsel for the reinstatement.

money plany

I had a look at the patent in question. It is a variation of the hoary old wedding present patent for directly transferring money from a credit card to the celebrants at a wedding. This is what a call a hardy perennial as approximately once a year some inventor comes in with this great idea he’s had.

Ironically the patent appears to be eminently voidable due to both lack of novelty and obviousness in light of the prior art and also on the substantive grounds that it is a software implemented business method and the fact that it is hardware implemented is insufficient to change this characteristic.