Patent Attorney Round Table

February 14, 2017

knights-round-table-1

The Patent Office is hosting a round table on 21 March 2017 between 2 PM and 6 PM to discuss regulating the patent profession.

Background

In September 2016 the Israel Patent Office called for comments concerning proposed legislation to regulate the patent profession.

The official position of the Association of Israel Patent Attorneys is based on the Code of Ethics for Attorneys at Law. It was drafted by attorneys-at-law working for the Reinhold Group, who are not themselves patent attorneys.

I have written up a list of issues that I consider need regulating, see here and here. To my mind, treatment of trainee patent attorneys is a critical issue and so is the limits of the profession. At present, there are a large number of non-licensed service providers that ‘help’ entrepreneurs obtain patent protection. Some are foreign attorneys practicing in Israel opposite foreign patent offices, and others are not licensed anywhere but offer renewal services, portfolio management services and other services.

In general, one can expect the profession to be expansive when interpreting the law forbidding those not licensed in Israel as either Attorneys-in-Law or Patent Attorneys. Those that are not licensed tend to construe the law more narrowly and may see themselves as not being able to formally represent clients opposite the Israel Patent Office during patent prosecution, but see no reason not to draft applications for the Applicant to file directly, no reason not to handle renewals, not to offer search services and no reason not to prosecute patents abroad on behalf of Israeli applicants.

The problem is, of course, when something goes wrong.

The lines are currently blurred. For example, I was surprised to note that a company calling itself Patenting Solutions that is headed up by an ex-paralegal, now CEO, is now the official address of record for an Israel issued patent. This seems to imply that the Patent Office recognizes one of these cowboys non-licensed practitioners.

I would NOT advise bona-fide licensed practitioners to rely on their professional organizations to look out for their interests, and I particularly urge small firms of licensed patent attorneys and sole-practitioners to come along. That said, I urge ALL interested parties to attend the round table, including those not licensed in Israel, such as US giants like Finnegan. Registration is by the following email: TamarK@justice.gov.il.

 


IL 221116 – Extending the Period for Reconsideration of a Refused Patent

November 2, 2016

mouth-cleanerIsrael Patent Application No. IL 22116 titled “Mouth Cleaner” was applied for by Yaakov Dichtenberg and Danny Unger who is also a patent attorney.

The Application was rejected. Under Section 21a and 164a of the Israel Patent Law 1967,  within 12 months of a final rejection, the Applicant may request reconsideration by the Commissioner. After that time it is possible to have a closed application reopened, but it is difficult and it is generally necessary to show extreme circumstances resulted in the application becoming abandoned.

weve-movedThis Application was filed on 25 July 2012 and, in accordance with Section 16a of the Law, a Notice of Imminent Publication was sent to the Applicants on 5 January 2014. This notice was sent to the address given on the application form which was the address of the first Applicant, Mr Danny Unger, a patent attorney who represented himself and the his c0-applicant. The Application published on 30 January 2014.

On 2 February 2014 the Applicants received a Notice of Imminent Examination in accordance with Section 18 of the Law and regulation 36 of the patent regulations 1968. Since the Applicants did not respond to this Notice within the period ordained in regulation 36, a reminder was sent on 5 November 2014 to the effect that in absence of a response within 30 days, the Application would be deemed abandoned. Subsequently, on 21 December 2014 a Notice of Rejection issued that also informed the Applicants that they could request reinstatement within 12 months.

On 21 December 2015 a request for reinstatement was received together with a response to the Notice Prior to Examination. The Notice of Reinstatement did not include a signed affidavit as required by Commissioner Circular  026/2014, however the Applicants alleged that they never received the correspondence due to a change of address.

On 15 March 2016 the Deputy Commissioner Ms Jacqueline Bracha requested that the Applicants provide a detailed signed statement of the events leading to the Application becoming abandoned and set a date of 20 April 2016 for a hearing.

On 19 April 2016, one day before the hearing, the Applicants requested a postponement for personal reasons. Despite the lateness of the request and the lack of a doctor’s letter, Ms Bracha agreed to the postponement. Nevertheless, the detailed statement was not submitted.

Applicant and Patent Attorney Unger arrived very late to the rescheduled hearing and claimed that he thought that updating the Ministry of the Interior regarding his change of address was sufficient to automatically update the patent office records. The Applicant was informed that Regulation 16a makes it clear that he should have proactively informed the Israel Patent Office of his change of address and that he still needed to provide an affidavit.

On 25 May 2016 an Affidavit was received in which the Applicant informed the Israel Patent Office that he neglected to inform them of his change of address and consequently never received the correspondence from 2014 to 2016 which was sent to his previous address. He went on to affirm that he never intended to abandon the Application and wanted to continue prosecuting the Application in parallel with the US application.

RULING

Section 21a sets the timetable for requesting reconsideration of a rejected Application as follows:

21A. If the Registrar refused to accept an application under section 21, then he may— on the applicant’s application—reconsider the refusal, on condition that the application be submitted within 12 months after the day on which the Registrar refused to accept it as aforesaid.

Section 164a of the Law enables the Commissioner to extend Section 21a due to reasonable causes:

Where the 12 month period stated in Section 21 has passed, the Commissioner may, nevertheless, reinstate a patent application in exceptional circumstances under Section 164a which states:

164.—(a) The Registrar may, if he sees reasonable cause for doing so, extend any time prescribed by this Law or by regulations under it for the performance of anything at the Office or before the Registrar, except for the times prescribed in sections 30, 56, 57, 61, 64F, 64M…

As the Deputy Commissioner, Ms Bracha sees it, Section 21a gives the timeline for an Applicant to restore an Application. Section 164a gives the Commissioner sweeping powers to reinstate but has to be applied with consideration of the fine balance between the Applicant’s interest and that of the public; see 2806/04 Commissioner of Patents vs. Recodati Ireland LTD:

The policy regarding different requests to extend deadlines will vary depending on context and the type of proceeding that the extension is requested for.

If the Commissioner agrees to an extension, he is entitled to make the decision dependent on appropriate conditions in the circumstances as detailed in Section 164b:

The Commissioner may make the extension dependent on any conditions as seen fit.

As ruled in the decision concerning IL 157563 ICOS Corporation from 21 October 2013:

Citing Opposition IL 110548 Shmuel Sadovski vs. Hogla Kimberly Marketing LTD. regarding Revivals, the relevant considerations are the time passed and the underlying reasons for the delay. In this regard, the time passed not only provides an indication of the reasonableness of the Applicant’s behaviour, but also affects the likelihood of third parties relying on the case being abandoned, since it is evident that the longer an application remains abandoned, the greater the likelihood that third-parties will have relied upon the invention not having been patented.

In this instance, the period beyond the 12 months automatically  granted by Section 21a of the Law is minimal. The Applicant filed a request on the last day but did not file it properly since no Affidavit was included. The Affidavit was only submitted after the hearing.

However, the behaviour of the Applicant does not conform to that expected of a Patent Attorney, who, in this case, represents not just himself, but also a second Applicant. A Patent Attorney is expected to know that he should provide an address to the Israel Patent Office and that this address will be the one that post is sent to. The Patent Office cannot change the address of record without instruction to do so in a formal request to change the address of record. No such request was submitted. Furthermore, the Applicant found it difficult to conform with the revival instructions after being instructed to provide an affidavit explaining the circumstances leading to the application going abandoned. Nevertheless, it does seem that the Applicant followed the case or he would not have known that he should request revival of the Application.

elephant-and-post-boxIn the circumstances, the Deputy Commissioner ruled that the case should be returned to the Examiner as per Section 21a. However, because of the public interest, the Deputy Commissioner makes revival conditional on anyone relying on the patent lapsing from when it lapsed until when it was reinstated being allowed to continue using the invention, even if a patent should eventually issue.

Notice is given to the Applicant that his address has still not been updated.

Decision by Ms Jacqueline Bracha regarding reinstatement of IL 221116 “”Mouth Cleaner” to Yaakov Dichtenberg and Danny Unger”,  7 September 2016

COMMENT

Apart from being rather surprised that a registered Patent Attorney could forget to update the patent office about his change of address and assume that the Ministry of the Interior would do it automatically, I am at a loss as to why he didn’t bother checking up the progress of the application for his own invention on-line.

Since the request for revival was filed within the 12 month time period, at least, since all yearly and monthly deadlines are to the same calendar day, I think the decision is correct.

chewing-gumI couldn’t resist reviewing the Application as claimed, and note that the first few claims attempt to monopolize apples and chewing gum. Go figure.


Israel Patent Office Invitation to a Round Table

September 27, 2016

250px-king_arthur_and_the_knights_of_the_round_table

The Israel Patent Office has issued an invitation to all knights  the entire public including not just knights, but squires and serfs as well  to attend a round table on the topic of draft patent office circulars.

For those not initiated into our little world, Patent Office Circulars aren’t circular at all. They are rectangular sheets of paper with the noble proportions of A4.

In these rectangular circulars, King Arthur the Commissioner lays down decrees on issues that do not require the Knesset or the Minister of Justice to legislate. Such issues include what may be submitted in electronic format and what requires hard copy in triplicate, things like taxi-cab omnibus claims, Swiss cheese type claims, what is considered patentable subject matter and the like.

Israel Patent Office Circulars are not limited to patents, but also regulate designs and trademarks, training for apprentices trainee patent attorneys and the like.

The Israel Patent Office has recently began sending draft circulars to their chain-mail list for feedback.  The meeting of the Round Table is scheduled for 22 November 2016 and is an opportunity for all and sundry to present their views on such draft circulars.


Down to Earth Issues That an Israel Code of Practice Should Regulate

September 26, 2016

The following is a list of issues that I would like deliberated by the Ministry of Justice or the Knesset before legislating a Code of Practice for Israel Patent Attorneys. The same issues should be discussed by the IPAA and other relevant fora when considering voluntary codes.

In no particular order:

Patent Attorneys often provide opinions to third parties such as investors.If they have a conflict, maybe they should not be allowed to provide an opinion or should at least be required to announce their interest.

  1. Should patent attorneys that are not employees but outside service providers be allowed to own shares in their clients?
  2. Should patent attorneys that are not employees but outside service providers be allowed to draft applications for shares in their client’s business?
  3. May a patent attorney  that is not an employee but an outside service provider be allowed to jointly own a patent application with his client?
  4. May a patent attorney that is not an employee but an outside service provider be allowed to list himself as an inventor on a patent that he or one of his partners or an employee of the IP firm is filing and prosecuting?

Israel Patent Attorneys are specialists in IP Law but do not have a general legal background (unless, like me, they also have Law Degrees). If they are not licensed to practice law, regardless of their personal knowledge, what are the borders of what services can they legally provide? Attorneys-at-law tend to take a narrower view and patent attorneys a wider view. The border is not clear. Now is an excellent time to provide clarity and guidelines.

  1. May a patent attorney who is not an Attorney-At-Law provide legal information regarding IP related tax issues, the sale of IP, copyright and the validity of Israel patents.
  2. May a patent attorney who is not an Attorney-At-Law provide advice regarding service inventions?

What Patent related services may a self-styled patent expert, patent manager, IP manager, Search expert, IP Paralegal or other IP practitioner who is neither a patent attorney or an attorney-at-law be allowed to practice?

Section 154 of the Israel Patent Law lists the Rights of Patent Attorneys

154.—(a) Patent attorneys have the exclusive right to deal in Israel, for remuneration, with applications for patents, designs and trade marks and with the preparation of any document to be submitted to the Registrar, the office or to an authority for the protection of industrial property in another country, to represent the parties and to handle and represent in any proceeding before the Registrar or in the Office.

(b) This section does not derogate from the right of an advocate or of a State employee to perform the said acts within the scope of his functions.

There are all sorts of people who offer patent related services that are not formally qualified and are not regulated. Section 19 and 20 of the Israel Bar Law and Section 154 of the Patent Law which is reproduced above make this quite clear. The Law does not seem to have teeth, and there are a whole slew of non-patent attorneys that provide such services.  Nevertheless, it is not always clear what the meaning of the Law is. For example:

  1.  Is a graphics person who produces IP drawings for a patent attorney to file preparing a document for submission to the registrar. There are a large number of such  people offering services to patent attorneys on a free-lance basis. I’d argue this should be legal, but is it?
  2. What if a graphics person provides an inventor with such figures for inventor to submit himself?
  3. What if a company, say a prototyping company, produces such drawings and accompanying description for an inventor to submit himself?
  4. What if such a company also provides draft claims?
  5. What about a person who has worked for a patent attorney firm in the past or is moonlighting and still working for a patent firm. I am thinking of a paralegal or a trainee patent attorney or someone else who is neither an attorney-in-law nor a patent-attorney.  Does this happen? Yes. Is it illegal? I think so.
  6. What about a US licensed practitioner who has failed to pass the Israel Patent Bar, and merely helps clients obtain IP rights in the US? Such a person seems to be helping with the preparation of any document to be submitted to the office or to an authority for the protection of industrial property in another country. It seems to be illegal.
  7. But what about companies that are bona fide US firms (or European or other foreign firms) whose attorneys come to Israel a few times a year to meet with their clients? If they accept remuneration for advice given locally or work on an office action whilst here, is this illegal?
  8. What about US firms that operate in Israel and aggressively chase Israeli clients?

I would argue that their operating an office here is illegal and contrary to Section 154. The fact that they do not prosecute patents in Israel does not make their offering IP services to Israel clients directly a legal activity.

Advertising. The Israel Bar Code of Ethics places significant limitations on the type of advertising that Israel Attorneys-at-law are allowed to engage in. The voluntary code of ethics for Israel Patent Attorneys has similar limitations that are voluntary. The response to the Call for Comments that the IPAA sent out last time was drafted by Reinhold Cohn lawyers and called to limit, at least locally in Israel, patent attorneys from using any form of advertising that Attorneys-in-Law cannot use. There is some legitimacy and logic in holding patent attorneys to the same standards as Attorneys-In-Law, but there are counter arguments. If patent attorneys provide services that are hybrids of technical,,scientific and legal services, maybe they should have the option to market themselves in a more high-tech service provider and less legal manner? Note Reinhold Cohn themselves have moved from Legal South Tel Aviv to a High Tech park and moved out of a Bauhaus building and into a modern building in a high-tech park. They’ve changed their logo to something more distinctive and less legal looking, and adopted the high-techy acronym RCIP. Let’s take this one stage further. Reinhold Cohen has a sister firm of attorneys at law to provide complimentary services, handling oppositions, enforcement and the like.  Does this mean that a patent attorney cannot handle these issues? If a patent attorney does not want to handle these issues and wants to brand himself more like a technology service provider, may be he or she should be able to advertise more proactively?

Another corollary of aping the legal profession, is that patent attorneys would have to have  a dedicated premises for meeting clients that is not shared with any other type of business. This limitation of legal practices may be inappropriate to patent attorneys.

  1.   Two or more law firms can share office space without competing, if one handles wills and the other handles litigation, conveyancing (real estate law),  one handles criminal and the other civil, etc. There are 75,000 potential room-mates to share office space with. Patent attorneys don’t have this flexibility. If Reinhold Cohn’s proposal is accepted, they will have to rent a full office, or share with direct competitors. Note – small offices are hard to come by and the rents are usually much higher.
  2. Why shouldn’t a high-tech patent attorney specializing in start-ups rent office space in the offices of a venture capital firm, a high-tech incubator, a start-up trendy premises like We Work? It may not be appropriate for a large IP firm, but it may be a good solution for a sole practitioner or a small firm.
  3. Maybe in the modern world, a patent attorney does not need an office at all? One can have all one’s files on a laptop and work anywhere. I have a number of clients that I visit who have never visited by office. Maybe I don’t actually need an office? The code of ethics for lawyers is a document that was drafted in an earlier age. It has occasionally been updated. It may be inappropriate as a basis for an up-to-date profession that provides services at the cutting edge of technology.

Treatment of trainees and employees

I think trainees should be registered within less than a month of starting their apprenticship. They are entitled to a minimum wage. Percentage based remuneration is not appropriate for trainees.

Should percentage based remuneration be legal for any employee?

Should patent attorney firms be able to demand exclusivity from a licensed practitoner, whilst employing him on the basis of tax invoices for jobs on eat-what-you-kill basis?  I am aware of situations where employers do not fire employees working on a percentage basis but simply close the tap. The employer does not provide redundancy pay.

Some firms make employees sign non-compete clauses, contracts requiring them to stay for at least a year after qualifying, letters explaining that strange employment terms where the employees idea that he insisted on and other shenanigans. I think that the current proposed code of conduct is an ideal opportunity to address all these issues.


Wet-wipes, The Issue of Inventorship and the Responsibilities of the Patent Attorney

September 22, 2016

wetnap-were-ready-for-any-messThis ruling concerns a product that resulting from the contributions of two people who were formerly friends. A patent application was filed that named both people as both inventors and applicants. Later, after powers-of-attorney signed by each of the named inventor – applicants had been filed, there was an attempt to ‘correct an office error’, to list one of them as an inventor only. The corresponding PCT application and the national phase entry applications, including two issued patents in the United States only bore the name of one inventor and applicant. In an Opposition ruling the Israel Patent Office has now accepted that the second named inventor is indeed an inventor and also an owner.

Apart from emphasizing the need to determine who is the inventor and who is the owner of an invention when the patent is filed, the need to put everything into writing, and the dangers of working with friends, the case raises interesting questions regarding what contribution to reducing a patent to practice entitles someone to recognition as an inventor and whether this standard is the same in all jurisdictions. It also raises interesting questions regarding the duties and responsibilities of the patent attorney to ascertain the facts, or at least to avoid signing on contradictory statements regarding ownership and invention in different jurisdictions.

BACKGROUND

IL 152867 titled “Tissue Container With Auxiliary Compartment”is a patent application for a package of wet-wipes
rc-chairswith an adjacent container for nappy cream. The Application was filed back in November 2002 and listed Boaz Krystal and Liat De-Vries as inventors and owners. The patent application was allowed at the end of June 2010.

Subsequently, an Opposition was filed by WET-NAPS LTD and Liat De-Vries on 4 October 2010 under Section 31(3) of the Israel Patent Law 1967 on the grounds that Boaz Krystal was not in fact an owner, and that the patent was exclusively owned by Ms Liat De-Vries.
affidavitsMr Boaz Krystal and his wife Mrs Dorit Krystal each submitted affidavits. Mrs Liat De-Vries submitted a primary affidavit and a supplementary one in response to Mr Boaz Krystal’s affidavit. Wet-Naps Ltd. is owned by Mr Ilan De-Vries, who is Mrs Liat De-Vries’ husband. He also submitted an affidavit on behalf of the company.  Mr David De-Vries, a patent attorney at Reinhold Cohn & Partners who drafted and filed the application and is a cousin of Mr Ilan De-Vries, Ms Ronit Tal who is an acquaintance of Liat De-Vries and Mr Yoram Hadar who is an industrial designer, also submitted affidavits. A hearing was held and the parties submitted their summaries.

wetnapWet-Nap Ltd manufactures, exports and markets wet-wipes. The company had a business relationship with Packtop Ltd., a company directed by Mr Boaz Krystal that distributes wet-wipes amongst other things.   At the time of filing, both the Krystals and the De-Vries couple were good friends.

roobarbs-shedThere is no argument that Mr Boaz Krystal and Mrs Liat De-Vries met at the Wet-Nap Ltd factory, where Mr Boaz Krystal heard the idea of including baby ointment together with a package of wet-wipes from Mrs Liat De-Vries. There is also no argument that Mr Boaz Krystal and Mrs Liat De-Vries had some kind of collaboration, to develop and improve this invention and to file a patent application for it. Eventually a joint application was filed in both Mr Boaz Krystal and Mrs Liat De-Vries names. However, the parties disagree regarding Mr Krystal’s contribution to the development of the invention and consequently disagree regarding whether he is to be considered an inventor and owner of the patent.

The Main Documents in the Prosecution File Wrapper

roobard-and-custard-friendsThe Application was filed in November 2002 by Reinhold Cohn Patent Attorneys. The Application form lists both Mr Boaz Krystal and Mrs Liat De-Vries as joint owners due to them being inventions. Both parties filed Powers of Attorney, and the Filing Certificate gives both names.

On 10 December 2002, Adv. David De-Vries of Reinhold Cohn Patent Attorneys submitted a notice stating:

office-error“Due to an office error, the name of the inventor, Mr Boaz Krystal was inserted as an Applicant. With our apologies for this, we are submitting a new cover sheet and application form in duplicate, listing Mr Boaz Krystal and Mrs Liat De-Vries as joint inventors, but Mrs Liat De-Vries as the sole owner.”

On 10 December 2002, Adv. Edna Haruti, now Mr Krystal’s representative, submitted a letter in which it was stated that Mr Krystal was a joint owner together with Mrs Liat De-Vries as he had invented the tissue container with auxiliary compartment together with her.  Adv. Edna Haruti also noted that registration of the patent in the name of Mrs Liat De-Vries only was contrary to the agreement between the parties.

shimon-shalitOn 2 February 2003 Patent Attorney Shimon Shalit, then Senior Examiner in charge of formalities at the Israel Patent Office, responded to both Reinhold Cohn and to Mr Krystal that Mr Krystal could not be removed as an owner in the application as filed, since there was no indication that he had assigned his invention to Mrs Liat De-Vries prior to the application being filed. In absence of such proof, since Mr Krystal was not an employee of Mrs De-Vries, by virtue of being a co-inventor, he was also a co-owner.

(As an aside – On 12 March 2006 Mrs De-Vries submitted a divisional application of IL 152867 for certain applications of the invention. This divisional application (IL 174309) was examined, allowed and issued as a patent. On 1 December 2010 IL 174309 lapsed due to failure to pay the renewal fees. That patent is not directly relevant to this Opposition, but Wet-Naps Ltd and Liat De-Vries related to it in their claims).

procrastinateIn the protocol of a hearing held on 5 February 2007 before then Deputy Commissioner Noah Smulevezh it was decided to defer the issue of ownership until the examination of the application was completed. It was further ruled that Reinhold Cohn would be address of record, but would update Mr Krystal or his representative regarding actions taken to get his input before responding to office actions. The patent application was eventually allowed and published for opposition purposes, resulting in this opposition proceeding.

The Opposers’ (Wet-Naps Ltd and Mrs Liat De-Vries) Main Claims
wetnap

Mrs De-Vries and Wet-Naps Ltd claimed to have thought of the idea and developed the invention whereas Mr Krystal had merely provided technical drawings and a business plan for commercializing the product. They alleged that during the period in question, Mr Krystal provided technical and consultancy services to the company as almost an in-house service provider and as such, was exposed to the invention. They further claimed that Mr Yoram Hadar (industrial designer) and Patent Attorney David De-Vries provided sketches for the product that eventually evolved into the patent application. They further alleged that Mr Krystal had suggested a specific implementation (embodiment?) – storing the cream in a blister pack or sachets, which developed into  Read the rest of this entry »


Coexistence Agreement Rejected and Attorney Accused of Conflict of Interest

August 17, 2016

Kennedy Electricity and Assets Ltd filed Israel Trademark Application Number 246560 for “Belissima”.

Belissima

The application was filed on 15 May 2012 in class 8 for “hair straighteners, hair removers and hair curlers, electrical tongs, shavers et al.” and for hair dryers in class 11. The original application was for a somewhat wider range of goods, but this was narrowed in response to an office action on 31 July 2014.

Bellisima ImetecBefore this mark was registered, the Tenacta Group S.p.A. filed Israel Trademark Application Number 251952 for “Belissima Imetec”. The application was filed on 26 July 2012 under International Application Number 1140345 claiming priority from European trademark number 011073319, and was submitted for “Electric and electronic apparatus and instruments for curling, cutting, waving, straightening, styling, trimming hair; electric epilators; electric pulsed light epilators; electric razors; electric and non-electric apparatus for cutting nails; manicure sets, pedicure sets; electric apparatus for removing, softening nails, corns, bunions ; in class 10 for Ultrasound electric apparatus for medical purposes for cleaning the face and reducing wrinkles; electric radio-frequency apparatus for medical purposes for reducing wrinkles and toning the skin; electric apparatus for the care of skin and acne; electric apparatus for medical purposes which vibrates or rotates for the cleaning of the face, body and for massaging the body; electric apparatus for medical purposes for microdermabrasion and electrostimulators for toning the body”; in class 11 for “hair drying apparatus, electric; heated or LED apparatus for reducing blemishes or imperfections on the skin; electric apparatus for drying nail polish or for decorating the nails; steam facial apparatus (saunas)” and in class 21 for “Electric and non-electric apparatus for removing make-up; brushes and sponges for body care; combs”.

On 7 September 2015 the Trademark Department at the Israel Patent Office informed the applicants that in view of their not reaching agreement, a competing marks procedure would ensue under section 29 of the Trademark Ordinance 1972. On 21 September 2015 the parties submitted a joint statement to the effect that they did not consider the marks confusingly similar and would cooperate to prevent confusion and mistakes by the public. On the basis of this agreement the parties requested that the Section 29 objection be removed.

On 22 October 2015, the Examiner refused to retract the competing marks assessment and to allow coexistence, resulting in the case being transferred to the Commissioner for judicial review.

edward scissorhands

On 9 November 2015 the parties submitted their coexistence agreement to the Commissioner of Patents and Trademarks. The parties agreed between themselves that the marks could be registered in parallel. The Tenacta Group undertook to only use the term Belissima in conjunction with either Imetec or Italia to differentiate between the marks. The parties stated that the term Imetec is a trademark that is associated with  the Tenacta Group. Furthermore, the parties undertook to clarify any confusion, should it occur.

In her decision of 18 November 2015, the Deputy Commissioner Ms Jacqueline Bracha rejected the coexistence agreement. In that decision she ruled that:

From the agreement it transpires that not only is there no difference in the goods sold under the two marks, but that the first applicant (Kennedy Electricity and Assets ltd.) would be the distributor of the Tenacta Group’s products.

So the parties were invited to state their claims.

sweeneytoddOn 2 March 2016 the parties submitted a joint notice that the first applicant (Kennedy) will remove all goods in classes 8 and 11 from their application, and the Patent Office was asked to reconsider its ruling in light of this development.

In her ruling of 3 March 2016, Ms Bracha stated:

“After reviewing the details of the goods covered by the two marks it is possible to accept the coexistence agreement on condition that ‘combs’ are removed from the list of goods in class 21 for the 251952 mark and that the 246560 mark be combined with Kennedy’s logo and only used therewith. These conditions are intended to protect the public from confusion since the relevant public and the distribution channels are identical.”

Following this decision, the parties submitted additional notices. On 10 March 2015, the Tenacta group announced that its application was only for the stylized mark shown above that includes the term INTETEC and that its mark was for registration in classes 10 and 21 only, and that Kennedy was not attempting to register its mark for goods in those classes. Consequently there was no reason not to allow coexistence. However, Kennedy claimed in a notice of 13 March 2016 that it was not prepared to limit its application to goods carrying the Kennedy logo together with the stylized Belissima mark since it was not marketing the Belissima brand under the Kennedy logo, and they requested reinstatement of the competing marks procedure.

Following Kennedy’s submission, Ms Bracha gave the parties two months to submit their evidence. Some days later, the Tenacta Group again requested coexistence of the marks. On 18 April 2016 Ms Bracha again requested that the parties submit their evidence. On 19 April 2016, the Tenacta Group restated that the parties had reached agreement and that the marks could coexist. On 20 April 2016 Ms Bracha ordered the Tenacta Group to clarify how their notice fulfilled her request. In the same decision it was clarified that this clarification did not extend the deadline for submission of evidence. On 2 May 2016, the Tenacta Group detailed why coexistence was in order. Read the rest of this entry »


Hark the Herald Angels

June 22, 2016

anastasia

I attend INTA to meet old friends and to make new ones. In a recent email exchange with UK trademark attorney and Cam-marks director, Dr Roman Cholij, I noted that I had missed him at INTA in Orlando.

He informed me that domestic issues had forced him to stay at home. It turned out that a daughet, Anastasia, was born on 25 December 2015. In the above picture one can see a blessing on her head, Mazal Tov, Mazal Tov.

Dr Cholij organized a conference in Cambridge last September under the auspices of st Edmund’s College, that was titled “Patents on Life: Through the Lenses of Law, Religious Faith and Social Justice – ‘defining the boundaries’” where I was honoured to speak. Previously, he spoke at a conference I organized with Machon Herzog on IP in Jewish Law where he spoke about IP in the Christian tradition.

I believe in ecumenical interfaith dialogue and in seeking knowledge wherever it may be found. I am also delighted to see the Cholij’s are being productive.

It turns out that Professor Jeremy Phillips was also born on Christmas day, but so long ago that he doesn’t remember it. There was apparently a Kat and at least one wise man present.