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.


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

July 31, 2018

288045

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

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

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

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

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

Section 24a of the Trademark Ordinance 1972 states:

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

Section 23 states that:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

COMMENT

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


Panama Jack Cancellation Proceeding – Proving Something Did not Happen

July 1, 2018

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

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

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

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

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

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

Discussion and Ruling

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

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

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

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

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

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

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

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

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


The Admissibility of Late Submitted Evidence

July 1, 2018

Competing Marks Proceeding – DMI Dental Supplies vs. DMI Innovative Medic al Technologies ltd.

Where there are two competing pending trademark applications in Israel, unless the parties can agree to co-exist under conditions acceptable to the Israel Patent and Trademark Office (i.e. not confusing to the public), a special proceeding occurs under Section 29 of the Trademark  Ordinance 1972, to determine which application should be examined first, usually barring the other application from registration. The first to file is considered less important than the usage of the mark and the investment in promoting it. As always, inequitable behaviour trumps other considerations, and where proven, the mark of the guilty party is generally cancelled.

This interim ruling focuses on admissibility of late submitted evidence.

On 15 April 2018 there was proceeding under Section 29a of the Trademark Ordinance 1972 during which DMI Dental Supplies was ordered to produce an audited financial statement for 2017 showing sales of the company in Israel.

On 15 May 2018, DMI Dental Supplies submitted the document together with additional documentation not requested, including a balance sheet, profit and loss account and explanations.

The same day, DMI Dental Supplies submitted an urgent request to add further evidence. The evidence in question was a short statement from Mr Zaza Debershvilli that attempted to establish that the name was registered since 2012. This was appended to the Affidavit of Mr Alon, a witness for DMI Dental Supplies whose Affidavit was already on file. The affidavit itself was appended to the request to allow its submission.

On 21 May 2018, DMI Innovative Medic al Technologies ltd requested that this additional submission be removed from the file, or they be allowed to submit their balance sheet. Prior to obtaining permission, DMI Innovative Medic al Technologies ltd simply submitted their balance sheet.  DMI Innovative Medic al Technologies ltd opposed the additional submissions from DMI Dental Supplies claiming that they were attempting to strengthen their position and this was not allowable at that stage of the proceeding. Simultaneously they claimed that the additional evidence did not add anything new, and that its submission was acceptable if given negligible evidentiary weight as an affidavit that is not cross-examined, and that costs be awarded to them.

On 28 May 2018, DMI Dental Supplies responded to DMI Innovative Medic al Technologies ltd, objecting to the awarding of costs for the additional submission. Furthermore, they argued that since DMI Innovative Medical Technologies ltd’s balance sheet was not audited, it could not be considered as evidence, particularly as it related to foreign entity that was not a party to the proceeding.

Section 41 of the Trademark Ordinance 1940 states:

No party may submit additional evidence in any hearing before the Commissioner, however the Commissioner may, at any time permit the Applicant or Opposer to submit any evidence under conditions that he considers appropriate, regarding costs or other matters.

In general, parties should submit all their evidence in one go, and not in a trickle (Appeal 579/90 Rozin vs. Bin Nun, p/d/ 46(3) 738, 742 (1992), and Zusman, Civil procedures 509-510, 7th edition, 1995. Whilst it is true that the court can accept additional evidence during the proceeding and even during summations, (Appeal Shenzer vs. Rivlin, p.d. 45(2) 89, 95 (1991) and even during Appeal (Shenzer 95. Regulation 457 of the Civil Court Procedure Regulations, 1984).

Together with this, the court has to be very wary and careful when exercising this discretion “and in general should be careful to follow civil procedures, including the submission of evidence at the appropriate time” (Shenzer, page 95). The rationale for this principle is general efficiency of the handling of the case and of the court system in general.

There are four criteria to allow the submission of evidence at a different stage than that specified in the Civil Court Procedures:

  1. The most important is the importance of the evidence to ensure that justice is dispensed. This requires consideration of the new evidence in deciding the case, and the weight given to it, since it was not timely submitted.
  2. The amount of damage (evidentiary and with regard to the hearing) that would be caused to the opposing party if the evidence is accepted, which would alter the balance between the parties.
  3. The reasons why the evidence was not timely submitted and the responsibility of the submitting party for the lateness of the submission and whether they can be considered as acting inequitably by withholding the evidence until its late submission. (see Appeal Shasha Securities ltd vs. Adanim Mortgages and Loans ltd. p.d. 42(1) 14, 18)
  4. The damage to the effective management of the proceeding (re Rozin, page 743).

Applying these principles to the present case leads to the decision not to allow either party to submit additional evidence regarding the extent of their sales, since she does not consider that the evidence helps determine making a correct ruling or uncovering the truth. The deadline for the timely submission of evidence has passed, and neither party provided justification for their late submissions.  The evidence has been heard and the parties should be making their summations.

Ms Shoshani Caspi is less than enamoured with the behaviour of the parties, who chose to submit their additional evidence without waiting for authorization to do so. It is well-known that one should only submit late evidence after receiving authorization. Submitting the evidence together with the request does not accord with the Supreme Court ruling in Appeal 6658/09 Multilock ltd. vs Rav Bareakh ltd, 12 January 20110 on page 11 paragraph 12:

Until there is a judicial ruling allowing submission of additional evidence, a party to a proceeding is not allowed to relate to that evidence in his claims. Under the guidance 1/92 published by the Chief Justice, a request to submit additional evidence should “describe the purpose of the evidence without attaching it (section 1 of the guidance). This guideline attempts to strike a balance between the requirement not to expose the court to the additional evidence prior to being authorized to do so, and the need for the court to have an understanding of the nature of the evidence in order to consider whether it is relevant and significant.

As to the additional affidavit that DMI Dental Supplies wished to submit, Ms Shoshani Caspi considers that it should be allowed, despite it being submitted prior to receiving authorization. This is since DMI Innovative Medic al Technologies clearly stated that they do not object to its submission. However, DMI Innovative Medic al Technologies are correct that it should be given little weight since they cannot cross-examine the witness. However, she does not agree that DMI Innovative Medic al Technologies should be allowed to continue to cross-examine, as the new evidence does not add anything new. Since DMI Innovative Medic al Technologies did have to relate to the new evidence, they are indeed entitled to costs.

In conclusion, DMI Dental Supplies cannot submit the new material. DMI Innovative Medical Technologies are not allowed to submit their balance sheet.  DMI Dental Supplies can submit their Affidavit and costs of 350 Shekels (just under $100) are ruled to DMI Innovative Medic al Technologies.

The period for submitting summations starts today, 29th May 2018.

Interim ruling by Ms Shoshani Caspi re DMI competing marks proceeding, 29 May 2018.


Kerem

June 10, 2018

CEREMKerem Natural Foods Industry A. L. ltd applied for Israel Trademark Application Number 266067 for Jellies, jams, dried fruit, coconut oil, , black cumin oil, sesame oil, almond oil and other edible oils; Coconut milk, cream and butter; spreads, soup powders produced by cooking and preparing extracts of meat and vegetables, and soup powders for seasoning; all included in class 29, Date syrup, molasses; Coconut sugar and flour, molasses, honey, date syrup, crisp cakes, crackers, spreads and sauces; sweeteners made of stevia or other plants extraction; coconut flour and coconut flour baked products; all included in class 30 and for Fresh and unprocessed Coconut and other tropic Fruits and its products; all included in class 31.

Kerem is Hebrew for vineyards.

On 28 February 2017, HaKerem – Alcoholic Beverages ltd  opposed the registration. On 8 June 2017, Kerem Natural Foods submitted their counter-statement. HaKerem – Alcoholic Beverages ltd had until 11 August 2017 to submit their evidence, but this deadline was extended twice, to 12 November 2017, but the evidence was not forthcoming and instead HaKerem – Alcoholic Beverages ltd withdrew their opposition.

Kerem Natural Foods Industry then submitted a request for costs of 62,450 Shekels accompanied by an agreement with their attorneys regarding their hourly rate and various receipts evidencing payment in practice.

HaKerem – Alcoholic Beverages objected to the costs requested. They prevailed in the Opposition proceeding and are entitled to costs under section 69 of the Ordinance which states that

In any hearing before him, the Commissioner is entitled to award reasonable costs.

The right of the prevailing party to receive actual costs incurred depends on the amount requested, that it is properly documented, and that it is reasonable, necessary and proportional. See for example, Bagatz 891/05 Tnuva vs. Ministry of Trade and Industry p.d. (1) 600, 615 (30 June 2005). However, the arbitrators are required to consider the case specifics and legal policy, and are not obliged to award full costs – see Appeal 6793/08 Loar ltd. vs. Meshulam Lewinstein Engineering and contractors LTD. 28 June 2009, at paragraph 19.

The case specific considerations do not form a closed list and each case should be considered on its merits. These include the behaviour of the parties. The way the case was handled, the complexity of the case, the time invested in the case, whether the case requires specific expertise, the importance to the parties, whether the case has public interest ramifications, and the like.

As to judicial policy considerations, as previously ruled in Patent cancellation procedures against Israel Patent numbers 179379  and 142896 Alkermes Pharma Ireland Limited Novartis Pharma Services vs. MEDICE Arzneimittel GmbH & Co.KG from 28 March 2018, the patent office has an obligation to serve the greater public interest. In this framework, when addressing cost requests, the patent office has to find the right balance between the encouraging trademark submissions – both to protect property rights in brands and to prevent misleading the public regarding sources of goods, and not to discourage the submission of oppositions against unreasonable trademark applications. Awarding high costs to applicant or opposer could create an obstacle to filing that shifts from this balance.

In the present case, the request for costs did not provide sufficient details to substantiate their claim, and did not explain the basis of the costs, the number of hours spent by their attorneys, etc.  Consequently there is a real difficulty to determine whether the costs requested fulfill the considerations laid out in re Tnuva.

The Adjudicator of Intellectual Property, Ms Yaara Shoshani Caspi does not accept the claim of the enormous amount of work preparing evidence immediately on the filing of the Opposition, prior to the opposing counsel submitting their evidence. The Applicant did not explain why the Opposer should have to bear the burden of the Applicant’s obliging himself to pay global legal fees regardless of the work required, and also to provide a ‘bonus’ if the case is dismissed. The Adjudicator does not find this type of arrangement fulfills the ‘reasonable and necessary expenses’ requirement.

In this instance, the Opposition was abandoned at an early stage, after the filing of the counter-statement of case.  The Applicant did not need to file evidence, there was no hearing and no summations were required. In such a case there is no justification to award costs of 62,450 Shekels as requested. Compare for example, the cost request for Cancellation of Israel Trademark No. 140219 BASF Poyurethanes GmbH vs. Pazker ltd, 12 September 2015.

Conclusion, by way of estimation, costs of 7000 Shekels including VAT are awarded, to be paid within 14 days, or interest will be accrued.


Luistone, Bridgestone, what’s the difference?

May 27, 2018

GoldbergA Chinese man and his Jewish friend were walking along one day when the Jewish man whirled and slugged the Chinese man and knocked him down.
“What was that for?” the Chinese man asked.
“That was for Pearl Harbor!” the Jewish man said.
“Pearl Harbor? That was the Japanese. I’m Chinese.”
“Chinese, Japanese, you are all the same!”
“Oh!”

They continued walking and after a while the Chinese man whirled and knocked the Jewish man to the ground.
“What was that for?” the Jewish man asked.
“That was for the Titanic!”
“The Titanic? That was an iceberg.”
“Iceberg, Goldberg, you are all the same.”

Shandong Luistone Wheels Co submitted Israel Trademark Application No. 287968 for LUISTONE in Class 12. The Application was the National Phase of International Trademark (Madrid) Number 1309157.

On 18 October 2018, the International Bureau was informed that the mark was allowed subject to no oppositions being filed.

On 31 January 2018, Bridgestone Corporation opposed the mark under Section 24a of the Trademark Ordinance and regulation 35 of the trademark regulations 1940.

On 6 February, the International Bureau was alerted under Section 56(vi)b of the Ordinance, and provided with the timetable for submitting a response and counter-claims.

Under Regulation 37, the Applicants had two months to submit a counter-statement, and the final deadline was 6 April 2018. No counter-statement or request for an extension were received until 26 April 2018 when Arbitrator of Intellectual Property Ms Yaara Shoshani Caspi ruled that the mark could therefore be considered abandoned and the file closed. No costs were awarded.


Evangelical Television and Temporary Injunctions

May 9, 2018

voice of hope2

High Adventure Ministries sued Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe (presumably Taylor?) for using “the Voice of Hope” for spreading evangelical messages.

This case related to a Request to Appeal a refusal to grant a temporary injunction that was issued by Judge M Amit-Anisman of the Tel Aviv – Jaffa District Court on 27 November 2017.

The background relates to the parties’ activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.

The background relates to the parties’ activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.

high global

The Appellant, High Adventure Ministries, has used the mark for many years, and sued the defendants Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe in the Tel Aviv – Jaffa District Court claiming passing off, Unjust Enrichment and infringement of a well-known trademark albeit not registered in Israel.

During the proceeding, they submitted a request for a temporary injunction to forbid the defendants using the mark. This interim injunction (Case 65046-06-17) was refused by Judge M Amit-Anisman on 27 November 2017. She ruled that the Plaintiff had a case, at least under the tort of passing off, but considered that the significance of the case, the balance of convenience and justice considerations tilted the scales in favour of the defendants, stressing that:

  1. The defendants had used a radio station named Voice of Hope for a number of months and its establishment had required an investment of millions of dollars.
  2. The radio station broadcasts in Arabic and is directed to listeners in various Arab countries, whereas the plaintiff’s transmissions are in English and are directed to English speakers.
  3. The plaintiff had known about the intention to establish the radio station at least a year ago but had been tardy in filing a complaint and so was not deserving of a temporary restriction order.

voice of hope

The plaintiff claims that the defendants’ website includes English and so they also direct their efforts to English speakers. They argue that it is not proven that a temporary injunction will cause the defendants damage, however NOT granting a temporary injunction will do them damage, and they contested the allegation of tardiness. They argued that they had a good case and accused the defendants of inequitable behaviour. The defendants meanwhile, argued that the Court of First Instance was correct to refuse to grant a temporary injunction and did not consider that the case should be appealable.

This issue is one of temporary injunctions, which are relevant to trademark issues. In this field, the Court of First Instance that considers the case has wide discretionary powers and the Court of Appeal has limited authority to intervene where the Court of First instance has the information before it and hears witnesses and gets an impression of their reliability. There are, however, exceptional cases where intervention is justified, but is this one of them?
Antenna

Whether or not to grant interim injunctions depends on two main variables: the likelihood of prevailing, and the balance of convenience.

The court of first instance determined that there was a case to be answered. However, it was the balance of convenience and considerations of justice that tilted the scales into not issuing the temporary injunction. Thus despite considering that there was a case, it was the balance of convenience issue that was considered more important. Here, both sides argued that it was not proven that the other party would suffer irreversible damage. In this regard, Judge Handel emphasized two points:

Firstly, apart from general waffle, neither party provided concrete data supporting their suspicions that the damage they would suffer would be irreversible. For example, the defendants invested significant sums in establishing their radio station but did not show that much of that investment was in branding, and that changing the name of the channel temporarily would adversely affect their profitability. That said, since they are already broadcasting under the name Voice of Hope, there is no doubt that a temporary injunction would inconvenience them, not so much due to the start-up investment costs, but because a change of name could cause confusion and lose them listeners.

The plaintiff Appellant did not indicate why failure to grant a temporary injunction would cause him damage. Here the emphasis is on the fact that the radio station broadcasts in Arabic, whereas those of the plaintiff Appellant are in English. So the target audience is different, and there is no support to the claim that the plaintiff Appellant will suffer damage, and thus no support that he would suffer irreversible damages. In this regard, Judge Handel considered the claim that the plaintiff Appellant had a world-wide reputation as the Voice of Hope, but as the District Court stated, in the request for a temporary injunction, the plaintiff Appellant failed to provide the factual basis for the claim that Arabic speakers are familiar with the Voice of Hope and would link the defendants’ station with the Israeli body that uses that name. Thus even if Judge Handel would accept the claim that the name Voice of Hope is indeed a well-known mark around the world that is associated with the plaintiff Appellant, that would not be a sufficient basis to grant the temporary injunction.  See for example, the Opposition to Israel Trademark Application Number142266 “No limits eyewear” (2 May 2004). It is noted that the burden of proof is on the plaintiff who wants the temporary injunction, expect for one exception, and here the second consideration comes into play.

Secondly, the defendants’ Internet site gives the impression that the radio station is the one established in 1979-2000 that no longer broadcasts, For example they state:  

“In 2014 we reestablish the VOICE OF HOPE radio station which had broadcast from South Lebanon from 1979-2000 The airwaves have been silent for 17 years, until today!

In other words, the defendants are glorifying themselves as reestablishing the station that the plaintiff had owned. Since the word mark is the same for the two stations, and the dove logo is similar, there is indeed likelihood that English speakers would erroneously conclude that the defendants’ station is associated with the plaintiff.  Similar erroneous messages are found in other English advertisements used by the defendants, appended as annexes 4-8 of the Appeal.

This suspicion of misleading the consumers throws a special light on this proceeding which relates to trademarks. Unlike other civil disagreements such as contract law, with regards to intellectual property, there is a third wheel to the conflict – the public.

The purpose of the Law of is not merely the narrow interest of the parties, but also the public interest who have a place in the story (see for example 8127/15 The Associate of Israeli Industrialists vs. Dohme Corp and Merck Sharp, 15 June 2016), and in trademark matters,  see also the request to register Israel Trademark No. 164702 LENGO, paragraphs 6-9 and the references there.

This is true for main trademark proceedings, such as registration of a mark in the trademark register, but it is also true for temporary injunctions. Just as it is important to consider the public in the main rulings, it is also important to consider them when considering issuing temporary injunctions since temporary injunctions are designed to serve the main ruling. The extent that NOT granting a temporary injunction would lead to the public being misled should be considered when considering temporary injunctions.

It will be noted that the first point emphasized the commonality of civil law including trademarks, whereas the second point emphasized the uniqueness of trademarks. This is not contradictory. Just as one has to consider the likelihood of a proceeding being successful in prevailing with regard to a specific law, one has to consider the uniqueness of trademark law where the specific law is the Trademark Ordinance. The difference is that one also has to relate to the third wheel – the public. This is the commonality with Administrative Law, although the public interest is different in the two areas. Whereas trademark Law is still personal law, in this regard it is on the seam between personal private law and public law.

In this instance, the existence of two entities transmitting Evangelical Christian messages under the same trademark, where one body publicises itself as related to the other body before the same target group, is likely to mislead the English listening demographic. This has an independent weight in both the considerations of public interest and in the balance of convenience. The risk is not that the listening public will be confused, as the transmission languages are different. The risk is in the advertisements in English. In these circumstances, it is fitting to not allow the appeal apart from with regards to one point.

That is to say, that the District Court was correct to refuse to grant a temporary injunction to the extent that it would be inappropriate to interfere, due to the large investment, the different target audience and language and the delay – even if it resulted from a lack of clarity regarding the defendants’ intentions following exchanges of letters and it is not clear if there was tardiness, or if the plaintiff thought things were resolvable without going to court, but the findings of the Court of First Instance were reasonable.

Together with this, the Court of First Instance was wrong with regard to the request to remove advertisements that create an association between the defendants and the plaintiff. The defendants are required to remove all references to the historic Voice of Hope channel belonging to the Appellant, and similarly to cease and desist from any publication that implies a connection between the parties. Alternatively, the defendants are allowed to leave the advertisements in place, but to add a clear and unequivocal clarification that they are not related to the English Voice of Hope, so that advertisers will not be misled. If the parties are not happy with this, they are invited to raise their claims with the Court of First Instance, but it appears that the parties can settle this between themselves without referring back to the courts.

In Judge Hendel’s opinion, this is the correct balance between the plaintiff, the defendants and the public. The defendants can continue broadcasting in Arabic under the name Voice of Hope to the residents of Lebanon and Syria since, in the framework of the request for a temporary injunction, no risk was substantiated that Arabic speakers would be misled regarding a relationship with the plaintiff’s station that closed in 2000, and so there is no risk of damaging that station. This considers the target audience of the radio station, and the minor differences in the marks, See Nazareth Civil Action 613/95 Arditi Americano vs. Harush, paragraph 6 (17 March 1996), and also considering that no evidence was produced to substantiate the claim that the mark was well known amongst Arabic speakers. As to English speakers, only the plaintiff transmits in English, and the defendants admit that their usage of English is only for written advertising purposes. Thus there is no likelihood of confusion regarding the transmissions themselves, but only with regard to the advertisements and these are mitigated by the steps ruled above.

Domino's pizzaPizza Domino

Such intermediate rulings are possible in trademark case which can result in two similar marks coexisting where there is a ruling that creates a difference that mitigates the likelihood of confusion, such as with regards to Israel TM no 6140 Domino Pizza which then Commissioner Michael Ophir Z”L allowed to coexist with Pizza Domino, in light of the different colour schemes, signage and newspaper articles stressing the lack of connection between the two chains. This is not a common occurrence, but it is fitting in a temporary injunction, as it balances the three interests, including that of the consumers.

All of the above only relates to the temporary injunction. It does not nail down the final ruling. The parties disagree regarding many factual matters, such as whether the plaintiff has a reputation, and the extent of that reputation, how well the Voice of Hope is known around the world and so on. Although these issues are considered with respect to whether a temporary injunction is appropriate, this in no way decides the trademark issue or nails down the main ruling, but merely attempts to minimize damage to both sides before the full ruling issues. See Appeal 4196/93 Shefa Bar Management and Services 1991 led.vs Shefa Restaurants Production and Marketing of Prepared Meals 1984 Ltd. p.d. 47(5) 165 (1993). The appropriate temporary injunction and the appropriate main ruling have different considerations. The Court’s main consideration with respect to temporary injunctions is to enable the main proceeding to take place without creating irreversible damages, whilst noting that the apparent facts and working hypotheses are liable to change, as is the perceived public interest, throughout the case, and the Court will have to make a final ruling in due course.

The Appeal for a temporary injunction is partially accepted and the costs awarded against the plaintiff by the Court of First Interest are cancelled. The defendants will bear the plaintiff’s costs and legal expenses of 18000 Shekels.

High Adventure Ministries vs. Strategic Group and the Voice of Hope LTD; ruling on interim injunction by Judge Hendel 7 May 2018.

COMMENT

2567555-David-Ben-Gurion-Quote-The-test-of-democracy-is-freedom-ofI think this ruling is balanced. It is in stark contrast to the en banc decision in the Bagatz ruling on the legality of the lex-specialis Arutz Sheva where the Supreme Court overturned a Law that legalized the station, basing themselves on the spurious argument that allowing the station would interfere with other stations being able to attract advertising revenue, alleged to be a fundamental right under the quasi-constitutional Basic Law – Freedom of Occupation, whilst ignoring the fact that the appellants acted in bad faith (Yossi Sarid was simultaneously campaigning for Abu Nathan to get the Nobel Peace Prize for the Voice of Peace),  and with no mention of the other quasi-constitutional right, that of Freedom of Speech, defended successfully by Judge Agranat in 73/53 Bagatz Kol HaAm vs. Ministry of Interior, 1953 where Ben Gurion’s attempt to silence a communist newspaper was thwarted well before the ‘legal revolution’. Aharon Barak creatively misinterpreted the basic Laws of 1991 to give the courts unprecedented and anti-democratic powers to overthrow Knesset legislation and widened the definition of legal standing to allow the courts to intervene at the request of legislators, non-profits and others.
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