Unipharm Without Representation wins Interim Proceeding in Opposition Against Novartis

February 22, 2018

Background

galvusIsrael  Patent Application No. 176831 to Novartis is titled “COMPRESSED PHARMACEUTICAL TABLETS OR DIRECT COMPRESSION PHARMACEUTICAL TABLETS COMPRISING DPP-IV INHIBITOR CONTAINING PARTICLES AND PROCESSES FOR THEIR PREPARATION ” the patent application is a national phase of PCT/EP/2005/000400. It relates to a pharmaceutical used in the treatment for diabetes known as Vildagliptin (previously LAF237, trade galvus moleculenames Galvus, Zomelis,) which is an oral anti-hyperglycemic agent (anti-diabetic drug) of the dipeptidyl peptidase-4 (DPP-4) inhibitor class of drugs. Vildagliptin inhibits the inactivation of GLP-1[2][3] and GIP[3] by DPP-4, allowing GLP-1 and GIP to potentiate the secretion of insulin in the beta cells and suppress glucagon release by the alpha cells of the islets of Langerhans in the pancreas.

Unipharm has opposed the patent issuing and in an intermediate proceeding, Unipharm (not represented) submitted a disclosure request for:

  1. the specific testing referred to Appendix E of a the Applicant’s expert witness
  2. All other tests relating to all the formulations that were performed where the particle size distribution was examined.

UnipharmAlternatively, Unipharm requests that the part of the evidence that relates to the evidence submitted in the European Opposition proceeding from Dr Davis’ statement, including Appendix E be struck.

The patent relates to tablets that are made by direct compaction and which include DPP-IV, (s)-1-[(3-hydroxy-1-adamantyl)amino]acetyl-2-cyanopyrrolidin (Vildagliptin) in free radical form or as a salt, wherein at least 80% of the particles compressed into the tablet are in size range of 10 microns to 250 microns.

novartisIn their Statement of Case, Novartis explains that use of direct compression was not obvious to persons of the art wishing to produce vildagliptin formulations, and the distribution and size of the particles affects the character of the tablet in a manner that determines the efficacy of the formulation. The chosen distribution enables tablets to be produced by direct compaction which have high quality, acceptable stability and good physical properties.

With respect to this, Novartis’ expert witness, Dr Davis explains in his expert opinion as follows:

“There is no prior art suggesting that tablets of vildagliptin can be made using direct compression with this size range or any size range. This particle size range and percentage of the active agent is not disclosed in the prior art. It should be noted that the particle size distribution is important to achieving good physical properties in the tablet (e.g. good hardness). Evidence filed in a technical annex for the corresponding European Patent Application No.15199440.7 (available on-line from the EPO at https://register.epo.org/application?documentId=EZQR8ZQ06757DSU&number=EP15199440&lng=en&npl=false),  comparing 88% PSD of 10-250 micron (within the claim) versus 79% PSD of 10-250 micron (outside the claim) shows that the use of a particle size distribution as claimed is important in providing directly compressed tablets with good hardness (Appendix E).”

The Expert witness related to the technical appendixes that were submitted by the Applicant to the European Patent Office which compares tablets that fall within the ambit of claim 1 to those that do not, and this is the basis of the discovery request that Unipharm submitted.

Claims of the Parties

disclosureUnipharm’s opposition to this evidence is that Professor Davis relied on test results from tests that he himself did not conduct, and they express wonderment that Novartis did not produce the drug developers to be cross-examined. In response, the Applicants claim that the disclosure process should be allowed on in cases where it is proven that the documents in question are relative to the proceeding  in general and to the point of contention between the parties, and in this instance the Opposer did not justify his request for disclosure of documents and did not explain how the disclosure would help clarify the question under debate.

grain sizeNovartis further allege that the request for disclosure is wide and general, in that it relates to all testing and formulations made, where particle size was examined. The Applicant further asserts that Dr Davis referred to Appendix E merely to dhow that it was published and not as evidence that the data therein is true(!?)

As to Unipharm’s alternative request, Novartis claims that the Opposer did not base this allegation, and that we are referring to an expert opinion based on data provided to him and his relying on the publication is equivalent to any expert relying on a professional publication such as a paper in a scientific journal or a patent application in a relevant field.

file-wrapperIn response, Unipharm claims that the Applicant’s expert Professor Davis did not merely testify that the document was included in the file wrapper of the European Patent Application, but also reached conclusions in his expert opinion that were based thereon. As far as anything connected to the scope of the disclosure, Unipharm focuses their request and asks to receive the documents relating to the experimentation with the particle distributions and efficacy of formulations made with the specific distributions.

Unipharm claims that the documents will reveal that the tests conducted, if indeed conducted, do not provide sufficient instruction to persons of the art to produce the invention successfully without additional experimentation and thus the patent application should be rejected as not enabled under Section 12 of the Israel Patent Law 1967.

Discussion and Ruling

legal fishing expeditionThere is no doubt that the Commissioner of Patents can request disclosure and access to documents in opposition proceedings. The disclosure is efficient in that it provides documents to the Patent Office that are not covered by Section 18 of the Law (Duty of Disclosure) and which can help clarify if an application is patent worthy. However, disclosure is performed in a manner to prevent the applicant going on an illegal fishing expedition in the applicant’s filing cabinets.

The considerations to be weighed up prior to giving a disclosure order are detailed in Opposition to 60312 Biotechnology General Corp vs. Genentech Inc and in Opposition to 143977 AstraZeneca AB vs. Unipharm ltd, and these are the stage of the opposition reached; the amount of documents and their content; the weight of the claim that the Applicants are attempting to prove with the documents asked disclosure of, their evidential weight, the possibility of the Applicant to obtain the documents themselves, and the burden it will cause the opposing party.

In these rulings it was also determined that disclosure could damage the property rights of the opposing party by forcing revelation of trade-secrets. However, the possibility of such damage being caused does not remove the authority of the patent office to demand such a disclosure., but obliges consideration of the legitimate property rights of the party when applying that authority.

In the opinion of Commissioner Alon Ofir, Novartis is correct that the experimental results will have no effect on the average person of the art’s ability to implement the invention. The answer to this question is found in what is revealed and not in what is not revealed in the patent application.

Nevertheless, Unipharm is correct with regard to everything related to the tests described in Appendix E, since the Applicant himself relied upon this in his statement. In this regard the Commissioner does not accept that this evidence can be considered as external evidence that their Expert Witness relied on. The document was prepared by Novartis themselves, with data they control, and their expert witness relied on it in his Opinion.

tablet-compression-machineThe particle size distribution is claimed by Novartis themselves as being a central element of their invention, and the claims of the Application itself limits the requested patent to one wherein 80% of the particles are in the 10 micron to 250 micron range. The Applicant themselves state in their Statement of Case, that the choice of particle size and distribution is what enables the fabrication of tablets of an acceptable quality by direct compression. Their Expert Witness finds support for this claim in Appendix E which compares tablets having this particle distribution with tablets that do not.

In these circumstances, one should consider the documents as relating to the central question being debated by the parties. Thus the documents relating to Appendix E are ruled relevant and Novartis are required to provide not just those relied upon but other documents summarizing experiments done with the intention of producing Appendix E, even if not included therein.

Novartis is given 30 days to produce an Affidavit of disclosure with the relevant documents describing test results obtained in the experimentation leading to Appendix E, whether or not included in the Appendix, but relating to the hardness of tablets made from different particle distribution.

As an after-note, the Opposer is chastised for using language that does not show respect for the proceedings which was inappropriate.

No costs are awarded.

Ruling on Interim Proceeding regarding disclosure, by Commissioner Ofir Alon, 3 January 2018.

COMMENT

trawlingIn court proceedings in the United States there is wide discovery and the parties effectively go on fishing expeditions with trawlers and haul up everything and then have to wade through the bycatch.  This is not the case in Israel. One can ask for specific documents, but have to justify the request. Thus I have used the term disclosure and not discovery.

self representationIn this instance, Unipharm is not-represented, or to be more accurate Dr Zebulun Tomer is representing himself. No doubt if he runs into trouble he will call on his attorney Adi Levit to represent them. It is unlikely that the inappropriate language lost Unipharm a costs award as since they have not used legal counsel they are not entitled to costs anyway.

We strongly discourage industrialists to represent themselves in Opposition proceedings. The Tomers, however, have so much experience of killing pharma patent applications that there are very few lawyers that have handled so many cases.


Repeated Requests for Reconsideration Smashed

February 22, 2018

smash batmanBack in May 2017 we reported that Talber Pop LTD owns Israel trademark number 240598 “SMASH” for Notebooks, stationery, diaries, binders; gift wrapping paper, paper gift wrapping bows, paper cake decorations, paper party bags, loot bags, cello bags, paper party decorations, paper party hats, paper tables cloths, paper napkins, banner made of paper and/or cardboards; all included in class 16, and Backpacks, sidepacks, back bags, side bags, sport bags, tote bags, book bags, school bags, food bags, pencil cases sold empty, wallets, waist packs, briefcases, bike bags, toiletry cases sold empty, fanny packs, suitcases, umbrellas, umbrella covers; all included in class 18. They also own a second Israel trademark number 241238 for SMASH in class 14 covering watches, chronometers and their parts, and that Smash Enterprises Pty LTD submitted a request to cancel the Talber Pop LTD marks or to allow their marks to be co-registered.

The parties were interested in coexisting, but MS Shoshani Caspi considered it against the public interest in view of the likelihood of confusion. See here.

Ms Shoshani related to the request, but first detailed the conditions for reconsideration.  The correct way to attack a judicial ruling is by Appealing to a higher court, and not by way of reconsideration. See Appeal 5012/01 Jacobovitz vs. Lerner 11 July 2001 where the following is stated:

Parties that argue and return over again to the court cannot expect an advantage. If the party considers that there was a mistake in the ruling, they should timely file an appeal.

Nevertheless, the case-law allows reconsideration in two instances: where there has been a significant change in circumstances that justifies reconsideration, and where there was a technical error in the ruling. See Appeal 7869/17 E.R.M. Properties vs.Daniel Ohr, 23 November 2017 where Judge Minz of the Supreme Court ruled that:

The rulings of this court recognize two circumstances where a ruling can be reconsidered in a reconsideration, other than interim injunctions which are explicitly legislated in regulation 368 of the Civil Procedure Regulations. The first instance is where there has been a significant change of circumstances, and the second case is where the court made a serious and clear technical error – see Appeal 1474/11 Strauss Marketing vs. Orman, paragraph 13, 14 July 2011; 3604/02 OKO vs Shemi p.d. 56(4) 505, 508 (2002), and Tami bin Nun and Tal Habakin “Civil Appears p. 427 edition 3, 2012.

Over the years there has been a worry that parties would make improper use of the opportunity of interim procedures to request reconsideration (see for example, 8420/96 Margaliyot vs. Mishkan Bank HaPoalim for Mortgages LTD (31 July 1997). So it was established that courts can simply throw out such requests on the grounds of improper use of the court proceedings, particularly where the party requests reconsideration over and over. That written in 5168/01 Reuveni vs. Ben Harush 28 Oct 2001 is relevant here:

RepeatFiling repeat requests that are minor improvements of the original request puts an unreasonable burden on the courts. Requesting reconsideration as a routine event is burdensome, and prevents the court providing a service for all its users.

In re Jakobovitz, then registrar of the Supreme Court Boaz Okan noted that:

The creative multiplication of proceedings, notices, reconsiderations and the like, are symptomatic of loose and unravelling systems (Appeal 502/00 Airport Authority vs. Epkon. There is no place to create cross-species rulings that damage the finality of the Court’s decision and may cause the legal proceedings to drag on forever., by misusing the civil procedures and wasting legal resources.

On 30 December 2015, Smash Enterprises Pty LTD requested to cancel the Talber Pop LTD’s marks for SMASH in classes 16 and 18.

The request for cancellation followed Smash Enterprises Pty LTDs attempt to register SMASH as a trademark in class 21 that was refused under Section 11(9).

Smash Enterprises Pty LTDs  application no 274301 is for Containers for household or kitchen use; household or kitchen utensils; containers for beverages; containers for food; heat insulated containers for beverages; heat retaining containers for food and drink; insulated containers; lunch boxes; isothermic bags; bottles including water bottles (containers); beverage coolers (containers); drinking containers; portable coolers; ice containers; ice packs; plastic containers (household utensils); lids for household or kitchen containers; tableware, including plates, dishes, drinking glasses, bowls, cups, saucers, mugs and jugs, all being of plastic materials; cooking utensils for use with domestic barbecues; storage boxes, baskets and containers for household use; household rubbish containers (bins); glassware for domestic use; ceramic tableware; baking trays; storage jars; cooler bags; thermally insulated bags for food and drink. In class 21.

Talber Pop LTD’s mark 24059 is for Watches of all kinds; chronometers and part thereof and accessories; all included in class 14, for Notebooks, stationery, diaries, binders; gift wrapping paper, paper gift wrapping bows, paper cake decorations, paper party bags, loot bags, cello bags, paper party decorations, paper party hats, paper tables cloths, paper napkins, banner made of paper and/or cardboards; all included in class 16, and for Backpacks, sidepacks, back bags, side bags, sport bags, tote bags, book bags, school bags, food bags, pencil cases sold empty, wallets, waist packs, briefcases, bike bags, toiletry cases sold empty, fanny packs, suitcases, umbrellas, umbrella covers; all included in class 18.

coexistOn 26 January 2017, the parties jointly requested coexistence following a mediation proceeding connected to a civil complaint filed by Smash Enterprises Pty LTD against Talber Pop LTD (Civil Complaint 65168-12-16). The request for coexistence under Section 30 was submitted with a copy of the agreement between the parties.

On 26 April 2017, Ms Shoshani Caspi explained in detail why she considered coexistence to be inappropriate as follows:

Thus the Arbitrator Ms Shoshani Caspi finds herself considering two identical marks for the word SMASH for two different entities that cover inter alia the same goods which creates a strong risk of confusion.

As part of their joint submission. the parties should have provided a detailed explanation why TM 274301 in class 21 should be registerable together with TM 240598 in class 18. This wasn’t done, and the parties have provided no explanation as to how to avoid confusion. The request for coexistence is refused. The parties have until 1 June 2017 to inform whether they wish to conduct a cancellation proceeding.

On 16 October 2017 a first request for reconsideration of the decision of 26 April  was received.  In that framework, the party who had requested cancellation noted that they were abandoning the 274302 and 274158 marks for SMASH in classes 18 and 16, despite the fact that the coexistence agreement didn’t relate to those marks. Additionally, the mark owner noted that they were prepared to strike the term ‘food boxes’ from the list of goods of Israel TM 240598.

On the same day, the Adjudicator Ms Shoshani Caspi again rejected the coexistence agreement stating:

There is before me a request for reconsideration of coexistence of the marks based on the agreement reached by the parties, following my rejecting this possibility in my ruling of 24 April 2017. The parties chose to ignore the significant obstacles that prevent coexistence that were stated in paragraphs 18, 21 and 24 of my previous decision. So the petition is rejected.

On 22 October 2017, the parties again requested reconsideration for a second time, restating their positions and claiming that their agreement does not leave room for confusion between the marks. On 25 October 2017, a detained ruling was issued that again rejected the coexistence stating:

I have not found that an error occurred in my ruling of 26 April 2016 (or indeed of that of 16 October 2017). The parties return and make exactly the same claims a third time. Consequently I do not find that there has been a change in circumstances from those under which the original decision and the appeals were given that justifies further reconsideration. Although unnecessary to do so, I note, again, that we are talking about an attempt to register exactly the same mark for goods having a similar commercial nature, without the appropriate and fitting difference between them. Consequently, the petition[ for coexistence]  is rejected a third time.

nagOn 11 January 2018, the parties submitted a third request for reconsideration of the 25 October 2017 ruling, raising the same arguments. Additionally this time the mark owner requested to remove the term “cases (files) of..”

The Deputy Commissioner does NOT consider this amendment as being a “Significant change in circumstances or a technical error that warrants reconsideration of the ruling of 26 April 2017.

The third request for reconsideration is rejected. The Adjudicator is not happy with attempts to negotiate with the court of the Israel Patent and Trademark Office by unsupported requests for reconsideration. She considers these requests adds to the workload of the patent office staff and requires detailed responses and is inappropriate. She considers it would be appropriate to rule costs against the parties to be paid into the public fund but will refrain from doing so this time.

Ms Shoshani Caspi’s problem is that sports bags and school bags may be in different categories from food storage bags and flasks but the requested mark is for words and school bags and sports bags do sometimes have pockets for food, so she considers that different suppliers cannot use the same word mark for these goods, despite registering in different classes (19 and 21). Indeed, in absence of evidence to the contrary, the goods can be considered as complimentary  goods in the same broad category that are often used together, such that the reasonably consumer will assume a common source. See the HRA Laboratoire Pharma vs. Fr Shapira Eyal ltd ruling of 28 December 2017:

With respect to complimentary goods, one has to consider if there is a tight relationship between them, that one is required or significant to the other, or that the consumer is likely to consider that the provision of the goods is the responsibility of the same supplier.

The parties have still not provided any evidence that undermines the Adjudicator’s conclusions regarding a commercial link between the goods, and have only made unsupported statements to the effect that the food packaging supplied by the requester for cancellation is not sold in the same stores as the bags of the mark owner.

Thus, as determined more than once in this proceeding, the certain similarity between the goods listed in issued mark no. 240598 in section 18 and those in application 274301 in class 21, and the identical nature of the two marks (both word marks for SMASH), leaves a high likelihood of similarity which may result in consumer confusion.

As to the obligation undertaken in the coexistence agreement by the mark owners not to use a stylize graphic rendering of SMASH, this was discussed in the 26 April 2017 ruling, and can simply be recited: “it is difficult to ignore the situation where the patent and trademark registrar allows the parties to make use of the word in any style they see fit, merely because of a narrow contractual agreement between the parties, and the trademark register does not faithfully match the trade situation.”

The parties repetitively made shallow claims that the District Court endorsed the coexistence agreement and gave it the status of a court ruling. Examination of the agreement, sections 3 and 4 thereof, indicate that the mark owner obliged himself not to object to the registration of the word “SMASH” by the requester for cancellation in classes 16 and 18, and the requester for cancellation obligated himself to cancel the requests for cancellation.  It is assumed that the learned legal representatives (Eitan Mehulal for Smash Enterprises and Eyal Plum for Talber Pop) did not intend to accidentally claim that this can be interpreted as the court endorsing the right for the Smash Enterprises mark to be registered, since it is known that the Commissioner of Patents and Trademarks has the sole authority to register marks under Section 17(a) of the Ordinance. Thus one has to assume that the court endorsement of the coexistent agreement only obliges the parties themselves.

As we are dealing with the authority of the Israel Patent and Trademark Office, it should be noted that Section 30a allows and does not obligate the commissioner to allow coexistence of identical or confusingly similar marks. Furthermore, in the court ruling 48837-03-14 Biosensors Europe SA  vs the Patent Office 22 February 2015 it was stated that “the burden of proof that there is no confusing similarity is on the companies interested in parallel usage, to show that they have been using the mark in parallel for many years and it has not caused the public to be confused”. For more discussion, see here and here. As stated above, in this instance the parties have not met this burden.

not a rubber stampThus it is ruled that the parties legal representatives (Eitan Mehulal for Smash Enterprises and Eyal Plum for Talber Pop) failed to submit appropriate evidence to support their request for coexistence under Section 30a of the Ordinance, and merely supported their request with the in personam coexistence agreement. The Commissioner of Patents and Trademarks is NOT a rubber-stamp that endorses agreements between warring parties and though allowed to, is not obliged to consider them. The main obligation of the Commissioner is to maintain the integrity of the trademark register and this includes ensuring that there is no likelihood of misleading the public. This forum has established many times that a request for coexistence by the parties does not exert much influence on deciding whether or not to allow such coexistence under section 30a, and is at best an indication that coexistence may be possible that has to be considered with all the considerations, see Supreme Court ruling 1611/07 Micha Danziger cs. Shmuel Mor, 23 August 2012. 

On 3 January 2018, the Adjudicator gave the parties 14 days to submit their evidence, i.e., until 17 January 2018, or the cancellation proceeding would be closed.  The parties have failed to provide such evidence and have also failed to request an extension. The Adjudicator has not ignored the request from the parties to provide guidance for how to restrict the lists of goods to allow coexistence, but she is not clear why this is necessary in light of all the decisions referenced, and does not intend to provide such guidance.

Conclusion – since the Requester for Cancellation has not provided evidence to support his case as asked to, and since no request for extensions of time were submitted, the cancellation proceedings against Israel Trademarks 240598 and 241238 are closed. The Requester for Cancellation is not prevented from filing a new trademark cancellation request if it will be conducted in accordance with the timeframe.

Israel Trademarks 240598 and 241238 “SMASH”, Decision to reject Cancellation Request by Ms Yaara Shoshani Caspi,  18 January 2018.   

 

 


CORRECTION Re – Third International Conference on the Economics of Innovation

February 13, 2018

mistakesI try to be factually accurate and helpful to my readership. However, occasionally mistakes happen. A couple of days ago I posted about the Third International Conference on the Economics of Innovation to be held in Israel under the auspices of the AIPPI in Israel between 30 April and 1 May 2018.

I received a press-release from the Israel Patent Office with a link to the website of the conference, so took details from there. I noted that the opening speakers were two Israel Nobel Laureates:

  • Prof. Ada Yonat, The Martin S. and Helen Kimmel Professor of Structural Biology.
  •  Prof. Aaron Ciechanover, Technion

I commented that both were certainly eminent scientists in their fields, but if the conference organizers want Nobel Laureates to talk about the Economics of Innovation, one or both of Israel’s Nobel Laureates in Economics would be a better choice.

mistake EinsteinI’d like to think that the conference organizers follow my advice, and I do note that some of my criticisms of the first and second International Conferences have been addressed this time around, but I doubt that within a couple of days of my posting my criticism, the organizers would disinvite two such distinguished speakers. Nevertheless, they are not coming.

francis gurryInstead the current program as advertised has a video greeting from Mr. Francis Guri [sic], WIPO president – a gimmick I enjoyed at a premiere cercle IP conference last year. Watching a VIP on-screen is not that exciting as in the flesh, and to be honest, I don’t think there is a major demand for autographs from WIPO presidents. (Indeed, when I was Guest of Honour at the AIPPI International Conference in Paris a few years back, I don’t recall anyone asking me for my autograph). Nevertheless, we assume that Francis Gurry (which is the correct spelling and should be corrected in the program) is perfectly competent to give an informed lecture on various aspects of IP. We suspect however, that his words of welcome will be more platitudes than substance.

ASHER_D._GRUNISThe opening session is instead being given by Judge (retired) Asher Grunis, President of the Supreme Court of Israel 2012 – 2015 on “Judge made law in the field of intellectual property”. Judge Gronis gave several IP decisions over his long and illustrious career, such as Toffiffee, Adidas, Dior, Shemesh restaurantsBalugan – Spinmaster, etc.

aharon aharonJudge Grunis’ talk is being followed by one by Mr. Aharon Aharon, CEO, Israel Innovation Authority. The title of Mr. Aharon Aharon’s talk is not published in the program, but it is clear that he has some influence over Israel govt. policy regarding promoting innovation.

I view the change of opening speakers favorably, as both should have something to say that is relevant to IP issues which may well not be the case with Nobel laureates in science, despite their eminence in their fields.

For reviews of the first Israel AIPPI conference From IP to NP (net profit) see here and here. For a review of the Second Israel AIPPI conference here.

The second mistake in Sunday’s post, noted by both IP KAT and leading Israel Trademark Attorney, Neil Wilkof, and by Patent Attorney David Silver, was that I put the price for Israelis which is 1600 Shekels down as $1600 by mistake. I have corrected that typo is Sunday’s post.


Third International Conference on the Economics of Innovation

February 11, 2018

aippiThe Israel Chapter of the AIPPI is hosting their third Conference on the Ecomomics of Innovention between 30 April and 1 May 2018, which is a few weeks after the 6th Best Practices in Intellectual Property Conference organized by Kim Lindy and the In-House Forum, and three weeks before the 140th INTA conference in Seattle (which coincides with Shavuot.

I am posting this to give those interested in attending advanced notice of the event. However, as the program at the link is labeled not for distribution, it may be premature to comment on the topics covered and the speaker list.

NobelWhat is impressive, however, is that the opening addresses include two Israel Nobel Laureates:

  • Prof. Ada Yonat, The Martin S. and Helen Kimmel Professor of Structural Biology.
  •  Prof. Aaron Ciechanover, Technion

what-is-economicsNobel Prizes are not given out like sweets, and being able to hear presentations by two Nobel Laureates without having to go to the Swedish Academy of Sciences is no-doubt an impressive draw. It occurred to me, however, that if this conference was really about the economics of innovation, It would make more sense to invite Professor Daniel Kahaneman or Professor Robert Aumann. It seems to me that these laureates, being economists, would have more of value to say about the subject of the conference.

I have read Professor Kahaneman and watched interviews of him on television. I have also heard Professor Aumann lecture (and been bird watching with him in the Golan – but that’s a different story). Both are accomplished speakers and apart from their subjects actually being economics, their fields of expertise are less specialized and more accessible to a wider audience than those of the keynote speakers.  Except the Conference on the Economics of Invention is not about the economics of invention. The title is simply a form of branding that enables the organizers to bill it as the third conference.  That said, the sessions as currently advertised do look interesting and varied, and one expects that participants will not be disappointed.

Like any two-day conference that is held every couple of years, the subject matter of the tentative program is a reasonable attempt to cover a wide range of topics and to try to ensure that there is something for everyone. As there appears to be parallel sessions, one assumes that most people will be find something of interest most of the time, and one can’t really ask for more.

The conference costs 1600 Shekels for two days ($480) which seems good value for money when compared to similar conferences overseas. For Israelis there is both less traveling and Kosher food. For overseas visitors, Israel is a great place to come for a conference and to tag on a pilgrimage to the holy sites and/or trips to the various Roman archaeological remains that are as impressive as those in Italy or elsewhere. it is also a great destination for ornithologists or simply for those looking for a beach holiday and good restaurants.


Passed Off Pasta?

February 8, 2018

barilla pastaBarilla is an Italian pasta brand that is on sale in Israel.

Oddly enough, pasta is made of duram wheat (Triticum durum or Triticum turgidum subsp. durum), which is a tetraploid species of wheat which is hard to milling due to the starchy endosperm.Dough made from its flour is weak or “soft”. This makes durum favorable for couscous (semolina) and pasta, and less practical for flour. It is actually grown in Israel and exported to Italy!

Rami LevyRami Levy (Shivuk HaShikma) is an Israel chain of supermarkets that, as well as selling commercial brands, negotiates with manufacturers and packages its own brand labels which are usually cheaper.

 

Recently, Rami Levy started stocking their own label dried pasta.

Rami Levy pastaAs you can see, Rami Levy’s pasta, like Barilla, uses a blue box, albeit a slightly different shade, and has the type of pasta contained viewable through a cellophane window. The make of the type of pasta (penne, spaghetti, canaloni, etc.) is written in white, albeit on Barilla, the name is in English letters and on Rabbi Levy’s own brand, it is in Hebrew. Rami Levy Shivuk Hashikma us written across the top and on the side of the box. The name of the brand, written in yellow seems to be a face with a hat on and wide mouth, but is actually a stylized O followed by lla in italics giving Olla. However, Barilla also ends with an lla.

Barilla sued Rami Levy in the Tel Aviv District Court for a million shekels (about $300,000 US, 250,000 Euros) and obtained an injunction ordering Rami Levy to take their own brand pasta and sauces off the shelves. Rami Levy filed a counter-suit and the cases are pending.

Rami Levy claims that Barilla waited for over 14 months since Rami Levy introduced their own-label and so the case should be thrown out. He claims that his competition is fair and Barilla should respond by advertising, discounts and special offers. He dismisses allegations of passing off, and argues that there is an overwelming weight of precedent from the District and Supreme Court that indicates that the similarity is not excessive and that the case is baseless. The name Rami Levy, the Italian series is clearly written in white on blue in large letters.

Barilla has a trademark on their brand name and not on the design of the package or on the blue colour. Rami Levy accuses Barilla of ignoring their own branding and trying to monopolize the blue colour. However the case-law does not support claims of passing off where packages are similar but the trade name is clearly written and there is no likelihood of confusion in such cases. The courts do not recognize rights in a packaging colour. Rami Levy further claims that with over half a billion shekels in sales of “the private brand” in 2017, his sales outstrip those of Barilla. His prices are much lower and this also distinguishes them, and there are a number of accumulative differences.

COMMENT

taaman 1taaman 2We note that Taaman (pun on taam which means both taste and reason) is an Israeli importer and distributer of staples such as flour, pasta, chocolate, etc. that also has a red logo with white text in an oval. Their name, in Hebrew, is written in a backwards leaning italic font, however as Hebrew is written from right to left, the sloping is the same as that of Barilla. Their pasta is packaged in blue cellophane with  window showing the content. Thus Barilla’s packaging is perhaps less unique than they claim, although Taaman uses cellophane bags and not boxes.

In a recent decision the Deputy Commissioner refused to register a black box with silver trim as a trademark. Back in 2014, Judge Ginat refused to recognize a trade-dress in blue energy drink cans. Judge Binyamini threw out a claim that one ice-cream manufacturer was entitled to a monopoly on gold ice-cream tubs. Then again, Abu Shukra were unable to register their application for a trademark for a coffee package that is similar to Elite’s turkish coffee.

 

 

 


Palestinian Autonomy Adopts Nice Classification

January 30, 2018

70px-Coat_of_arms_of_Palestine_(alternative).svg.pngRAMALLAH – The Ministry of National Economy of the Palestinian Autonomy has adopted the 10th Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification).

From 1 January 2018 applicants may submit trademark applications for registration designating items from this edition.

 


A ballsy trademark ruling

January 30, 2018

SodKGaA & Henkel AG filed a series of Israel trademark applications (Nos.  258658, 258797, 258798 and 259500 as shown alongside.258658

The marks cover Bleaching preparations and other substances for laundry use, rinsing agents for laundry and tableware, stain removing preparations; cleaning, polishing, scouring and abrasive preparations, chemical agents for cleaning metal, enameled sheet metal, wood, cork, porcelain, ceramic, glass, plastic, leather and textiles; spot remover; soaps not for personal use, perfumery, essential oils in class 3, “Disinfectants and deodorants other than for humans and animals”. In class 5, and Sponges, brushes, cleaning cloths, cleaning purposes, hand-operated cleaning appliances, devices for dispensing sanitary cleaning and fragrance products, partially with the addition of disinfectant, included in class 21.

The Israel Trademark Department refused to register the marks on the grounds that they lacked inherent distinctiveness as indication of source, since they were the shape of the products themselves. The marks were also refused under Section 8(b) of the Ordinance 1972, as not having acquired distinctiveness through use.

The Applicant claimed that the marks are registerable since they serve in practice as a trademark, have acquired distinctiveness through use, and the choice of shape is not a result of real aesthetic or practical considerations. The Applicant requested a hearing, and submitted the following evidence:

  • An opinion by Mr Oshik Roshnik, marketing consultant, who held a public survey regarding how well known the marks were. Mr Roshnik attended the hearing and the survey and his conclusions are detailed below.
  • An affidavit from Ms Danielle Rabinowitz who is the product manager for Henkel Sod ltd, which is fully owned by the Applicant. Her testimony affirmed the sales in Israel and abroad and the investment in advertising and promotional activity. Ms Rabinowitz also attended at the hearing.
  • An Affidavit of Ms Cecile Leroi the International Marketing Manager of the Applicant, who testified regarding sales.

A large quantity of marketing material was appended to the affidavits.

sod balls.jpg

From the evidence it appears that the products are sold in Israel in blister packs that have transparent fronts. The mark Sod appears clearly on the packaging, which is the brand for these and other products of the Applicant in Israel. The Sod mark is recognized as being a leading brand in Israel.

juggling four balls

The Applicant claimed that since January 2014 they have invested 15 million shekels in advertising and marketing in various telecommunication channels, including point-of-sale. As a result of this intense marketing, some 6 million units have been sold, which is 30% of the market. These statistics support the Applicant’s contention that the marks have acquired distinctiveness.

The Applicant’s legal counsel emphasized that the marks were registered in a number of countries, including the EUIPO. The Applicant is also prepared for the mark to be registered under Section 16.

Discussion

toffiffee

The tests for validity of a trademark registration for the shape of an article was given in the Supreme Court ruling 11487/03 August Storck KG vs. Alfa Inuit Food Products LTD, of 23 March 2003. These tests are summarized in Circular 033/2016 Trademarks: Emphasis on Examining trademarks from 15 December 2016 as follows:

  1. The requested shape has to serve as a trademark in practice
  2. The requested shape cannot be significantly aesthetic or practical.
  3. The shape has acquired distinctiveness through use

This topic has been widely discussed in the case-law and literature in Israel and abroad. The tests have been largely adopted due to comparative law, and so we can use foreign rulings to aid us in coming to a conclusion.

Nevertheless, the Deputy Commissioner does not consider that the applied for mark fulfils the Supreme Court’s criteria.

The Mark Does Not Serve As a Trademark in Practice

The question asked in this context is whether the public and the applicant see the shape of the mark separately from other marks that are applied to the product to indicate the source, thereby serving as trademarks. As clarified in Berkeley “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 197, from a UK decision regarding the registerability of the shape of a container:

The relevant question is not whether the container would be recognised on being seen a second time, that is to say, whether it is of memorable appearance, but whether by itself its appearance would convey trade mark significance to the average customer.”

The things are stated regarding containers, but this is also true regarding the shape of the products themselves, since these are not generally considered as being trademarks by the public, and the packaging includes the well known word mark Sod as a trademark indicating the source of the goods. It is true that sometimes a single object will have more than one trademark on it, each being independently registerable. However, in such cases it is difficult for the manufacturer to demonstrate that the public afford each element weight as a trademark: See J. Thomas McCarthey in McCarthey on Trademarks and Unfair Competition (2011), pages 7-12:

“When a label or advertisement contains a cluttered morass of claimed marks in many words, slogans and designs, no one of these things is likely to make a significant trademark impression on customers. If a given designation is a trademark, that should be immediately evident to the ordinary buyer. If it takes extended analysis and legalistic argument to attempt to prove that a designation has been used in a trademark sense, then it has not.”

kitkatThe need for the public and the manufacturer to rely on the shape of the product as an indication of the source of the product is required for it to be registerable has been discussed recently in the UK decision [2017] EWCA Civ 358 Société des Produits Nestlé SA  v. Cadbury UK Ltd. (Kit Kat). In this ruling, the court affirmed the ruling of two lower courts that the shape of the KitKat snack bar is not registerable. In that case, the issue of the burden of proof for registering a product shape was referred to the CJEU:

The judge thought that the answer to this question was not clear and depended upon what was meant by “use of the mark as a trade mark”. As he put it: does it require the applicant to show that, as a result of the use of the mark, consumers rely on the mark as a trade mark, or is it sufficient that consumers recognise the mark and associate it with the applicant’s goods?”

The UK court considered that the European Court’s position was that the public have to rely on the product shape as a source of origin, and not merely to recognize the product shape:

“Accordingly, I agree with the judge that it is legitimate for a tribunal, when assessing whether the applicant has proved that a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether such person would rely upon the sign as denoting the origin of the goods or services if it were used on its own. Further, if in any case it is shown that consumers have come to rely upon the mark as an indication of origin then this will establish that the mark has acquired distinctiveness”

Deputy Commissioner Jacqueline Bracha does not consider that the survey and publicity material in the present case proves the Applicant’s contention.

In all cases, the word mark Sod clearly appears in the publicity material, and the advertisements all include the word Sod a large number of times. So it does not appear that the applicant is relying on the visual appearance of the product to indicate the origin thereof.

The extent in which the shape of the package is capable of serving as a trademark depends on the degree that they are different from that typical in the field. See for example, Israel Trademark Application No. 174402 Diageo North America, Inc. from 13 April 2011. The Applicant notes that they chose the mark to distinguish themselves from their competitors. The Applicant submitted a lot of material that shows that cleaning materials intended to be hung in the toilet bowl come in different shapes, however all of these include a hook and a perforated plastic case so that they can serve their function of hanging over the rim and allowing water to reach the cleaning material on flushing. The product in question is not sufficiently distinctive that it is recognized by the public as being a trademark. From the material submitted and from a personal search of the Internet it appears that such products come in various shapes and sizes including five flowers, three crescents three rectangles and so one. Most of the products are coloured and two colours are combined in a single product… Many are sold in transparent packages that have the manufacturer’s logo on the upper part.

The mark has not attained distinguishing character through use

There is a connection between the question of whether a mark serves as a trademark in practice and whether it has acquired distinctiveness. The Applicant has to demonstrate that through sales, etc., there is public awareness of the mark.

First and foremost, the Applicant has to show that the goods have a reputation, meaning that the public identifies the goods with the applicant or at least with a specific source, even if not identifying the applicant by name.
….
Continuous significant usage is not what is important, but rather the type of use:  if it is a use that identifies the product with the Applicant, see Appeal 18/86 Israel Venetian Glass Factory vs. Les Verries de Saint Gobain p.d. 45(3) 224, 238.

To prove a relationship between the product and supplier, the Applicant submitted Mr Roshinak’s survey. The questions were directed to respondents who admitted to being the purchasers of domestic hygiene goods for their homes. The respondents were first asked if they were familiar with the products for which the trademarks were sought (specifically the product having Israel TM Application No. 258658). It is noted that the respondents were not asked if they had purchased the product and so those who had seen the advertisements also responded positively and some 67% were familiar with the product. Mr Roshnak explained at the hearing that this is significant. In this regard, it is noted that the publicity campaign was conducted close to the survey and may well have affected the results. See Complaint 31706-01-12 Dan Design Center ltd vs. B.R.A.P. Projects ltd 19 June 2012.

survey3.JPGThose respondents  that responded positively to the first question were asked if the product was known in Israel. The Deputy Commissioner considers this is less relevant since it surveys what the respondents thought and not how well known the product was. In the next stage, the respondents were asked if they were familiar with other products of the same manufacturer and 65% were unaware of any other products or were not sure in their response.

The Deputy Commissioner considers this the most significant part of the survey. The purpose of a trademark is to link a product with other products of the same supplier. See Seligsohn Trademark Law and Similar Law 1973 page 1. If this connection does not exist, the shape of the mark does not serve as a trademark in practice.

In this instance, the majority of the public does not consider the product as associated with a particular supplier and this is clear from the fact that they did not know if the supplier sold other goods. In other words, the public surveyed were unaware of the source of the goods and did not connect the balls with other products marketed under the Sod mark. Since the Applicant acknowledges that Sod is a well known mark associated with a wide range of hygiene products, had they associated the product with Sod, they would have made a connection and mentioned other products.

The Applicant claimed that the acquired distinctiveness exists where the public associate a product with some supplier and not necessarily with a supplier by name. This is true. The principle was established in Appeal 18/86 Israel Venetian Glass Factory vs. Les Verries de Saint Gobain p.d. 45(3) 224, 238. However, in this instance, it is claimed that Sod is a ‘quality brand’ and so it is not reasonable to claim that the majority of the public do not know the brand. Furthermore, from the response to this question, it appears that the majority of the respondents do not relate the product with ANY supplier and for this reason cannot answer whether the supplier supplies additional products.

survey.jpgIn the final survey, the respondents were asked who manufactures or markets the product. This was a multiple choice question with the options Henke, Sod, some other supplier SPECIFY and do not know/not sure. This is a closed-ended leading question similar to that discussed in Opposition 112645 Mei Zach (Clear Water) Shlomo Zach vs. Teneh Industries 1991 ltd from 12 July 2007. Two of the four answers were correct. The others required the respondents to admit to not knowing or to suggest an alternative themselves. It is hardly surprising, therefore, that most respondents answered correctly. Furthermore, the respondents who answered correctly were not even required to remember the manufacturer/supplier’s name themselves….

leading questionMr Rohnak was asked about this during the hearing and responded that respondents are not ashamed to answer that they do not know, and so their choosing a correct answer is significant and indicates knowledge. Mr Roshnak did not think that wording the question differently and giving names of other manufacturers of hygiene products would have led to a different result. This response is speculative and is beyond his competence since it does not relate to making surveys and drawing results but rather to anticipating responses to questions not asked. The fact that most respondents elected “Sod” and not “Do not know” certainly raises the suspicion that the respondents answered that way as the question led them to do so, or because the way the survey was constructed led them to believe that this was the desired response.

Deputy Commissioner Bracha concludes that the survey does not prove that the public identifies the product with the source. Furthermore, it really indicates a lack of identification with any source.

By way of comparison, in the KitKat ruling, most respondents recognized KitKat as being an image of the snack without the name being suggested to them. Nevertheless, the court held that the manufacture does not rely on this recognition and the shape is not eligible for registration. In this instance, the public could not identify the source without leading questions that posed the correct response.

In evidence of acquired distinctiveness, the Applicant submitted an affidavit of the product manager. It is not denied that the Applicant invested large sums in promoting the product to the result that they captured a significant 30% of the market. However, this does not show that the public identifies the product with the supplier without the Sod mark clearly shown.

In light of the above, having concluded that the mark does not have distinguishing characteristics, it cannot be registered under Section 16 either.

The mark is therefore refused.

Ruling by Ms Jacqueline Bracha re 4 Balls Shape Mark to KGaA & Henkel AG 258658, 258797, 258798 and 259500, 18 December 2018.