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.   



Statute of Limitation for Compensation for an Employee Invention

January 28, 2018

This ruling considers when the seven year Statute of Limitations starts for an employee to turn to the tribunal for service inventions for a ruling regarding appropriate compensation.



Section 134 of the Israel Patent Law establishes a tribunal comprising a judge, the Patent Commissioner and an academic, whose job it is to determine an appropriate level of compensation for an employee inventor if asked to do so.

The Law is clear that such inventions are the property of the employer. If there is a contractual arrangement regarding compensation it is usually upheld. Nevertheless, the committee has the authority to hear cases and make rulings, and several such rulings have published in recent years.  See re Barzani.


In this instance, on 20 April 2015 Dr Ruth Levy who was previously employed by Teva Pharmaceuticals, requested that the committee rule compensation for her employee invention of rasagiline which because the active ingredient of AZILECT™.


Teva opposed based on her tardiness in bringing the claims and the Statute of Limitations for such actions. They also requested that the tribunal set out a timetable for discussing the issues, and that they firstly address whether the case should simply be dismissed out of hand due to the time passed.

The witnesses concerned were aged, and Dr Levy opposed the timetable. Eventually it was decided to collect testimony first and then to establish a time-table for everything else.

After the usual preliminary skirmishes, on 30 June 2016 the tribunal ruled that Professor Cohen should be cross-examined at his home on 12 July 2016 and the other witnesses (including Dr Levy) would be cross-examined on 28-30 August 2016 at the Israel Patent Office.

Professor Cohen was cross-examined as scheduled, and the testimony of the other witnesses was postponed unto December 2016 at request and consent of both parties.

On 29 September 2019, the tribunal set a date for discussing initial questions, and delayed the hearing on the stature of limitations and aging of charges until later on.

On 25 October 2019, Dr Levy submitted her response to the initial requests together with affidavits and appendices and submitted that the affidavit of Professor Eldad Melamed which was part of her original submission, be included in the evidence, despite his having passed away in the meantime, making his cross-examination impossible.


Being swamped with material, the tribunal cancelled the scheduled cross-examinations and decided to relate to whether the case should be thrown out due to the statute of limitations first, so that if they concluded that the application for compensation was filed too late, it would not need to be addressed substantively.

The Main Claims of the Parties

claimsDr Levy has a PhD in microbiology and was employed by TEVA in various capacities relating to the Research and development of drugs from 1986 until retiring in 2013. She claimed that she was an active participant in a number of significant inventions, the most prominent being the active ingredient rasagiline which is used in the treatment of Parkinson’s Disease in the drug AZILECT™ which was marketed in Israel and Europe since 2005 and in the US since 2006.


TEVA responded that Dr Levy received full compensation for her inventions. I addition to her salary, she received a special grant of _______________ for her contribution to the development of AZILECT™. Teva considers that this grant was beyond that required by law and its acceptance created an implicit agreement between Dr Levy and the company regarding compensation for her inventive contribution. TEVA further claims that all the inventions that Dr Levy requests compensation for were invented over seven years before filing her request for compensation. Even if one counts the time period from when a patent application was filed, this is still seven years previous, and so the statute of limitations applies and she is not entitled to anything else.

Furthermore, Teva contends that by her behavior prior to suing, Dr Levy apparently gave up on any rights to additional compensation by not making any claims beyond her salary and grants, and so the case should be thrown out due to laches.

give up

Dr Levy disagrees. She considers that the special payment or grant that she received from TEVA was an admission that she had inventor rights. Furthermore, she only became aware of the right in 2012, and citing section 9 of the Statute of Limitations argued that the clock only starts ticking from her becoming aware of her rights.

It should be noted that Dr Levy denies that the payments made were compensation for her inventions. However, she claims that the fact that she denies this does not alter the fact that Section 9 of the Statute of Limitations starts with her becoming aware.

Alternatively, Dr Levy claims that if one does not accept the 2012 date, one should consider the period as starting with TEVA acknowledging her rights  which occurs in Paragraph 2.2 of the draft retirement agreement that TEVA drafted and sent her in 2013, and which was not included in the final version that was signed by the parties.

The paragraph remains confidential.


Dr Levy claims that had she signed the agreement including paragraph 2.2, this could be considered as being a waiver of her rights. She further alleges that raising the issue of Statute of Limitations is itself an act of bad faith since TEVA failed in their obligation to inform her about her right to compensation and to turn to the tribunal. Furthermore, as long as the parties consider that they have not reached an agreement by not being silent on the compensation issue, and have not performed an action that makes it clear that there remains disagreement between the parties, Section 134 has not been fulfilled and the employee has not yet got the right to claim compensation. So the period for making a concrete claim only starts with her retiring in 2013 when she made her final request for compensation.

Dr Levy considers that section 135(4) of the Patent Law regarding actual exploitation of the invention, is not a necessary condition for the committee under Section 134 to establish grounds for suing. However, it does reset the Statute of Limitations. She considers that there is reciprocity between the exploitation by the employer and the employees right to compensation.

The Applicant bases this assertion on the law under which the statute of limitations for suing for infringement of a patent can only occur from when the infringement first occurs, without any relevance being given to any previous infringements. She considers that every product that exploits a service invention recreates the employee’s grounds for suing. She considers that this is clear from the fact that the tribunal can reconsider its rulings as circumstances change.   Thus there is time limit to when one can approach the tribunal under section 136. Any change in circumstances, such as exploitation of the patent in practice, reestablishes grounds for the employee suing.


Were the tribunal to rule differently, pharmaceutical inventions would have two windows, the first within seven years of inventing and the second within seven years of a change of circumstances under section 136. This is inefficient.

Dr Levy further alleges that only after seeking legal advice did she become aware of the her right for compensation under the Israel  Patent Law. She considers that the employer is obliged to explain all rights to employees and should have made a formal approach to her to settle the issue.

Dr Levy further alleges that a narrow window would force the employee to fight the employer during the period of employment and risk dismissal, and would force the negotiation to be from a position of weakness. Furthermore, a narrow seven year period would require her to have fought for each invention separately. This would have required her to approach the tribunal several times sometimes widely spaced, regarding a single pharmaceutical. Finally, she does not acknowledge being a side to any agreement with TEVA regarding employee inventions during her period of employment.


The Statute of Limitations does apply to rulings of the Committee for Compensation to Employee Inventors since it is a judicial body, see Appeal 402/77 Goldman vs. Herman, p.d. 32(2) 421 page 428:

When the legislative defined “court” in the Statute of Limitations it bothered to clarify in the definitions section that the term court did not only refer to the law courts or Rabbinic courts but also to any judicial authority, and even to an arbitrator who is not an Authority in that he is not an Institution that generally exists, but is rather an ad hoc authority. This means to say that the legislation specifically opined tat any play where the Law provides judicial authority to any entity, the Statute of Limitations applies.

Section 2 of the Statute of Liberties states that:

A claim for any right is subject to become aged, and if a legal submission is made for an aged right and the one sued claims the defense of the Statute of Limitations, the court need not address the issue, however the Statute of Limitations per say does not cancel the abrogated right.

Section 5 of the Statute of Liberties states that apart from real estate issues, the Statute of Limitations is seven years.

Section 6 of the Statute of Liberties states that:

The period from which seven years is counted starts with the incident that created the grounds for filing the complaint.


In Appeal 10192/07 Pisgat Ashdod Civil Engineering LTD vs. Chen Gal Investments and Trading ltd. (24 May 2010) paragraph 17 of the ruling establishes that the time when a claim is conceived for the purposes of starting the Statute of Limitations clock is when the significant facts that are the basis of the requested claim come together. See Uri Goren “Issues in Civil Law” p. 118, 10th edition, 2009, Appeal 242/66 Jacobson vs. Gez p.d. 21(1) 85, 92 (1967). Estate of Williams p. 271, Appeal 244/81 Patent vs. Histadrut Health Fund p.d. 38(3) 673, 678-679 (1984). However, this definition does not fully cover the concept of when a claim is born. As far as the Statute of Limitations clock is concerned, it is insufficient for the claimant to have grounds for suing; he needs a concrete incident that can be proven in court for him to be able to file his claims and win the sanction he applies for. See 1650/00 Zisser vs. Ministry of Housing, p.d. 57(5) 166, 175 (2003).

monkey tribunal

Section 134 of the Israel Patent Law states that the tribunal has the authority to determine that an employee has the right to compensation for Service Inventions in cases where there is no agreement between the employer and employee:

If there is no agreement that prescribes whether, to what extent and on what conditions the employee is entitled to remuneration for a service invention, then the matter shall be decided by the compensation and royalties committee established under Chapter Six.

The Applicant claims that her rights as an employee come into play when the employee invention is made and she is entitled to compensation for inventing. However, she claims that her concrete right to file her complaint under Section 134 come into play only when there is no agreement between the parties regarding the employees rights. So long as it is not clear that there is no agreement, there is no concrete grounds for suing and thus the clock does not start to tick.

The tribunal rejects this claim. Section 134 states that where there is no agreement that regulates the employee’s right, the employee has the right to turn to the tribunal to determine if the employee is entitled to compensation and if so, how much? The requirement for a lack of agreement is a factual one objective one and is not subjective, as claimed by the complainant. As to when the concrete claim from which the clock starts to tick, this will be addressed below.

working together

Unlike other legal systems, the Israel Patent Law does not require that employer and employee will actively work towards forging an agreement as a preliminary action for Section 134 of the Law to come into effect. There is also no need for the parties to have a disagreement regarding compensation. So in accordance with the conditions laid out in re Ashdod Engineering (above), the plaintiff could have turned to the tribunal before negotiating on retirement, and the tribunal could have ruled that the plaintiff is entitled to compensation. In light of this legal situation, there is no basis for the claim that the employer is obliged to approach the employee and offer compensation. However, it is good for the employer to do so. Similarly, it is fitting for the legislation to consider including an obligation of this nature in light of the respective power of the parties, in light of Judge Rubinstein’s comments in re Barzani which are related to below.


The time when a concrete obligation was born

It is pertinent to discuss when an employee invention as defined in the Israel Patent Law comes into being for the purposes of the Statute of Limitation. One possibility is that the employee invention comes into being at the moment that the employee informs his employer that he has come up with an invention due to his employment or during his employment, as per Section 131 of the Law and the employer decides to monopolize the Invention under Section 132(a). There is an assumption that the parties do not disagree that this is a service invention. The logic behind this choice is that from the moment that the employee and employer fulfill their obligations under Sections 131 and 132 of the law, the parties are aware that there is a service inventions and have declared their interest regarding ownership, and this is the first opportunity to relate to the question of compensation. It is noted that by this approach the conceptual right and the concrete right.

A second possibility for when the right to compensation starts, is either when a patent application is filed or when a patent issues. These periods are periods when the employer shows interest in the invention. However, these dates are problematic since there are cases when an employee invents something that the employer does not apply for a patent for.

A third possibility for the concrete right is when the employer exploits the patent as per section 135(4) of the law. On the face of it, it seems that until the patent is utilized, it is not clear that the parties can really evaluate the worth of the patent. However, this approach is also problematic: exploitation does not occur in a single unequivocal event but is rather an ongoing process  during which various variables can affect the profitability of the invention. Similarly, it raises the question of whether the worker is entitled to a share in the profits if the employer sells the patent and does not exploit it directly.

That said, both the second option, and particularly the third one raise a further problem which it whether a concrete ground for suing as opposed to a conceptual ground for suing is cause to turn to the tribunal? Perhaps there is a difference from when the clock starts to tick, and the time period when the tribunal has the authority to relate to the employee’s claim for compensation. This means to say that it may be sufficient for there to be a conceptual claim for the tribunal to have authority, but a concrete right is required for the Statute of Limitations clock to start ticking. In the regard one should note that in Actelis Networks vs. Yishai Ilani (3 Feb 2010) discussed below, the tribunal concluded that one can request compensation prior to actual exploitation occurring.

In this instance, the tribunal sees no reason to rule on the issue of when the seven years Statute of Limitations period starts since the Complainant’s case was filed more than seven years after all the candidate dates.  Below claims by complainant to prevent the Statute of Limitations applying are discussed.

The Statute of Limitations as per re Schechter


The Applicant relates to the decision ruled in217/86 Mordechai Schechter vs. Abmatz LTD, p.d. 44(2) 846, following which Section 73b of the Israel Paten Law was amended to state that the Statute of Limitations does not apply to patent cancellation requests. Dr Levy considers that the Schechter right to request a patent cancellation comes into effect when the Applicant for Cancellation has an interest in the patent being cancelled. So there is no single Statute of Limitations of seven years from when a patent issues, as stated in paragraph 5 of the decision:

When is the point at which the right to sue becomes grounds to sue? If we use a metaphor, what is the point at which a grain of sand in an oyster becomes a pearl? When translating this picture to the issue before us and to answer the question, when does the right to challenge the validity of a patent become grounds for filing a cancellation proceeding that starts the Statute of Limitation clock? In this instance, the cancellation period for filing a cancellation proceeding only starts when the Applicant for cancellation has a personal right to have a patent thrown out of the register.  (which also serves the public interest).  

In re Schechter, Judge Netanyahu explains that the rationale behind the establishment of the time frame in this manner is to enable the public to challenge the validity of the patent. The rationale for this is the purity of the register:

To block the possibility of attacking a patent on grounds of the Statute of Limitations or laches would lead to the result that after the period has passed, the patent would become an absolute right which contradicts the spirit behind The Patent Law. There is no policy or logic to justify a patent becoming inviolate from direct attack by cancellation proceedings after seven  years when the same reasoning allows a patent to be enforced for 27 years or more. What logic is there to make things difficult for a responsible person who wars that applicant to check the status of a patent in advance and to make is easier for someone to defend himself during infringement proceedings for an ‘at risk’ product launch? The logical conclusion from the perspective of Patent Law is that Patent Law is incompatible with laches and Statute of Limitations and does not coexist with it.

Judge Netanyahu explains that the conceptual right is a public right to have patents cancelled. However, only if someone is interested in cancelling the patent is there a concrete right to request for cancellation. The period for so doing starts with the day that the concrete right comes into effect:

This way, that differentiates between the conceptual right and the concrete grounds for an action lead to the following conclusion: The right to cancel a patent is a ‘right open to every person’, it is a fundamental concrete right that remains simple until it aggregates into a concrete right and an issue develops for the Applicant for Cancellation. Only then does the clock start running. So where the cancellation request is filed by a third party, and not the patentee who is owns the invention, the public is drawn in by virtue of their conceptual right to the concrete private claim. However, this is not the claim of the appellant. The claim is made on behalf of the public –that the invention is not patentable. Until there is a private concrete claim to use the patented invention, the clock does not start ticking.

The present case is different. The right to submit for a patent to be cancelled is a right that the Patent Law gives the public; that means to say that anyone can submit a cancellation request. The claims for compensation for inventing is conceptually limited to the employee inventor as a personal right that he has by virtue of inventing. The employer’s obligation is, to the extent that the tribunal decides that it exists, is an in personam contractual right to the specific employee and not a general in rem public right. Thus the conceptual right, i.e. that of compensation and the concrete right, which is that which initiates the seven year period of the statute of limitations- both are private rights that exist between employee and employer and do not extend beyond this relationship.

The reciprocity of the relationship between the Exploiting the Invention and Claims for Compensation


The supplicant Dr Levy claims that there is a reciprocity between the Exploiting the invention by the employer and the ability of the inventor to claim compensation. She claims that as long as the employer exploits the inventions, the worker’s right to compensation is continuously regenerating.

The tribunal rejects the supplicant’s claim in this regard. Such reciprocity does not accord with the wording of the Patent Law and does not accord with the underlying logic.

In re Schechter, Judge Netanyahu stood firm in her belief that the rationale was to allow the public to attack registered patents, and stated that:

As stated previously that the perspective at the base of the patent law and the public aspect is to ensure the ‘purity of the register’. I also explained that since the commissioner has limited tools to test that patents have correctly issued, the system relies on the public and encourages them to submit challenges. However, the most effective challenge is by persons with a personal interest, whether claiming that he is the true inventor, or claiming that he is exploiting the invention and considers that it does not deserve patent protection, and whether he attacks it directly [by cancellation proceedings] or indirectly by at risk product launch, allowing the patentee to sue him, and him being able to use invalidity defense], no one will exert the effort or costs for a thorough inquiry into the questions raised, which may be complicated and require expert testimony, as well as someone with a personal interest.

In parallel with the public right to challenge the validity of a patent, the patentee has the right to claim damages for patent infringement. This right mirrors the right to attack the patent. The patentee has a monopolistic right to the invention but only if it is held to be protected by a valid patent.  Thus he can protect his invention  from infringement, but only as long as there is a valid patent.

In cases of expensive infringement, the infringer infringers the patentee’s rights each time that he uses the patented invention without permission. So each act of infringement is free standing.  However, individual acts of exploitation by the patentee are not individual grounds for the employer inventor to claim compensation that each reset the clock. Section 132 of the Patent Law fixes that a service invention “shall become the property of the employer”.  Due to his contribution, the employee inventor has a right to compensation. So the action creating rights for the inventor is a single event.

Nevertheless, the patent law does not ignore the complicated employer-employee relationship, and the conditions that can develop during the life of an invention.  The inventor can return to the tribunal if it can proven that “the conditions existed at the time of the ruling have changed”.  As stated in Section 136 of the Law, there has to have been an earlier ruling for the worker to be entitled to return to the tribunal. Thus section 136 is a special arrangement that that Law provides the worker, so as not to leave him unprovided for. But one should not assume asymmetry between the employers utilization of a patent and the right of the employee inventor to compensation such that each utilization restarts the Statute of Limitations period.

(The arrangement of Section 136 is similar to the entitlement of the estranged wife to support by the husband pending divorce. The financial support is not final and can be revisited if circumstances change, as, for example in Appeal 442/83 Moshe Pam vs. Deborah Kam, p.s. 38(1) 767 on page 771).

However, this is not really relevant to the issue of finality in the employer-employee case. The issue is when the employee can first request compensation? In marital support, personal law applies and there is a tendency to consider a woman that is tardy regarding claiming support, as giving up on it. In cases where the general law applies, the period of aging is very short in the amendment to Section 11 of the Family Law (Support) 1959. Nevertheless, if there is a submission for support prior to the period of the appropriate Statute of Limitations, the parties can claim for changes due to changes in circumstances.

It is noted that the significance of Section 135 of the Law is not the aggregation of circumstances that makes it possible to sue for compensation for making an employee invention. The purposes is established in the heading “Guidelines for Establishing Compensation”, and these are only the guidelines for the tribune to use when considering compensation:

  1. In making a decision under section 134, the compensation and royalties committee shall also take into account the following factors:
  • the capacity in which the employee was employed;
  • the nature of the connection between the invention and the employee’s work;
  • the employee’s initiative in making the invention;
  • the possibilities of exploiting the invention and its actual exploitation
  • (expenses reasonable under the circumstances incurred by the employee in order to secure protection for the invention in Israel.

One could argue that clause (4) regarding actual exploitation of the invention is forward looking and does not require a certain knowledge that this will be the case. This was why the Legislative also included Section 136 which enables the tribunal to revisit and reconsider cases rule don under section 134 if they consider that the circumstances have changed. From here it can be seen that if a first request was filed during the seven year period, the conditions underpinning the Statute of Limitations apply and both the employee and his employer have certainty that the issue can be reconsidered. This is whilst the tribunal can request possibilities of the invention being utilized at all times, and even early on, before there is practical usage.

As the tribunal ruled in re Actelis Networks vs. Yishai Ilani (3 Feb 2010) in Section 9 of the ruling, that actual usage is not required to give the employee the right of standing before the tribunal:

The claim that the request is theoretical and premature since there is no actual exploitation in practice is rejected. Section 135 states that one of the conditions for determining the amount of compensation is the possibility of implementation if the invention. So there is no need for actual implementation and the request for compensation is not premature.

In the Actiles case it is noted that the previous tribunal considered it had authority to hear the case despite no actual exploitation. The content of the ruling is based on tests in law, and it is possible that the tribunal will postpone ruling until a later date, such as when there is actual exploitation, if this circumstances require this, as per section 136 of the Law.

Not knowing the Law


Contrary to her assertion, the question of whether or not the Applicant had knowledge of her right to turn to the tribunal is not relevant to the concrete basis of her claims under Section 134. Section 8 of the Statute of Liberty states as follows:

If the claimant is not aware of the main grounds for claiming due to reasons beyond claimant’s control, and which with reasonable care, would still have been unable to prevent, the period for calculating the claim aging is calculated from when the claimant was first aware.

However, Appeal 1960/11 Almog vs. General Medical Services, 6 May 2013, page 7 states that Section 8 of the Statute of Limitations includes the objective test regarding when the period starts, but the burden of proof of its existence was only leaned later falls on plaintiff:

This claim is incompatible with the Guy Lipel, Donenfeld and Ganaim rule. It is difficult to argue that the period for reckoning the Statute of Limitations will start with receiving a professional medical opinion or when the law or a precedent becomes known. Otherwise, the clock for the Statute of Limitations is in the plaintiff’s control, which contradicts the rationale underlying the concept of claims aging. Section 8 of the Statute of Limitations gives both objective and subjective tests:

I will also note that since Section 8 of the law is an exception to the general rule of cases becoming aged, the burden of proof regarding retroactive awareness lies with the party claiming it (See Guy Lipel paragraph 41 and appendages.

It is true that not knowing the Law is not comparable to not knowing facts that would could have caused the plaintiff to file their suit; see Appeal 2919/07 State of Israel – Committee for Atomic Energy vs. Edna Guy Lipel, p.d. 64(2) 82, and paragraph 42 of the ruling:

The extent of the revelation: the law contains four conditions:

  • the existence of facts that were concealed from the plaintiff
  • the facts are significant and central to the claim
  • The plaintiff was unaware of these facts for reasons beyond his control
  • The plaintiff could not have prevented these reasons by taking due case

See Yehudai, page 204 and 1164/04 Herzliya vs. Yitzhaki, 5 Dec 2006. And note, the ruling states facts and not law, and so lately becoming aware of one’s legal rights is not considered retroactively becoming aware.

Furthermore, the facts required for the plaintiff to turn to the tribunal were known to her in fact long before the argument broke out on her retirement in 2013. The plaintiff claims a right to compensation for a number of inventions that she invented during her employment, the last being in 2006 at the latest. Dr Levy was aware of her contribution back then, and also was aware that TEVA had filed patent applications for these inventions.

In light of the above, the tribunal concludes that whichever date one considers as the period at which Dr Levy could have sought compensation, over seven years has passed and the complaint is thus aged.

Application of Section 9 of the Statute of Limitations

The Applicant added and claimed that even if the complaint has aged under section 6 of the Statute of Limitations, the defendant has admitted her right in section 2.2 of the agreement, and that some of the right___________________________________. Consequently, the Statute of Limitation should be calculated from when the defendant acknowledged her right.

Section 9 of the Statute of Limitations states that:

If the defendant admits in writing or before a court, whether during the seven year period or subsequently, that the plaintiff has rights, the period for the Statute of Limitations starts with that admission; and an action that pays out some of the rights is considered as such an admission.

In this section, the term ‘admit’ excludes an admission that accompanies the Statute of Limitations.  

expiredThe defendant denies the allegation that the conditions of Section 9 should be implemented. TEVA argues that to reset the clock, they have to admit that the complainant has the right to turn to the tribunal, and has to admit that there is both an employee invention and a lack of agreement regarding appropriate compensation. TEVA considers that these have to be clearly and explicitly stated, both formally and in terms of content. They argue that this remains the case even if some compensation is paid by the defendant.

time out

Under Section 9 of the Statute of Limitations, the new period starts notice. Since the Complainant submitted her case for compensation for her worker invention on 20 April 2015, the notification restarting the clock has to have been submitted in the previous seven years. So the question is whether there was such a notification within the relevant period, such that the seven years have not passed.

Section 2 of the Statute of Limitations states that aging alone does not cancel the right. The question is whether the respondent’s behavior can be considered an admission, in the sense of Section 9 of the Law, that revives the plaintiff’s claim? The tribunal does not consider this to be the case. One should remember that the applicant’s right to sue depends on the fact that there is no agreement between the parties regarding compensation. Thus any time that the defendant claims that there is an agreement, he does not accept the right of the Applicant to turn to the tribunal, and this cancels the authority of the tribunal. The result is that not only does he not agree with the right to file a complaint with the tribunal but he denies the right of the tribunal. Paragraph 3.3 of the draft retirement agreement  that was offered in the negotiations is not an admission of the right to file a complaint to the committee. The draft agreement states “and will not have further monetary demands beyond that paid by TEVA. This means that the claim for compensation is a claim that cancels the committee’s authority.

The Relative Strengths of the Employee and Employer

tug of war.jpg

The Applicant claims that the Statute of Limitations requires that the understanding that the worker should request compensation for the employee invention close to when the invention was conceived forces the worker to enter into a fight with the employer. Such a fight could risk the future employment and this means that the employee is in a weakened position with respect to the employer.

In general, the employer-employee relationship favors the employer, as Head of the Supreme Court Aharon Barak stated in Appeal 6601/96 AES Systems  vs. Saar, p.d. 44(2) 850, paragraph 12:

Not only this. In the contractual relationship, the employer and the employee are not equals The Employer generally has the upper hand, and can dictate the terms of the employment. Judge Berenson discusses “the Employees weakness with respect to the employer who dictates employment terms”  (Appeal 4/75 Berman vs. The Office for Lorry Transport Pardes Chana –Carcur “Amal”” ltd [12] on page 722. The national Labor Court of Appeal stressed that “labor law assumes a basic condition that there is a fundamental lack of equality between employer and employee (re Checkpoint [29] page 312. It will be appreciated that this inequality changes over time. It is affected by the market and the workers’ unions. Nevertheless, as a principle one can state that the worker’s and the public  interest is to protect the employee’s creativity and work.

As to the assumption of inequality between employee and employer in the workplace, see. The words of the Head of Labor Court Steve Adler in Case 164/99 Dan Fromer s. Red-guard ltd. pd”a 34 294 (1999) paragraph 14:

Labor law takes it as granted that there is an inequality between the employer and employee and so certain clauses in the work contract are not upheld by the court, if one can assume that a reasonable worker would not have agreed to them without this coercion. This is similar to the worker signing a waiver of rights he is entitled to under labor law. It is stressed that as a rule, the worker signs such clauses out of lack of choice; since the worker wishes to be accepted to the workplace, since it is reasonable to assume that failure to sign would result in him not be employed.

However, alongside the determination that the worker is in a position of weakness, and the binding nature of the relevant legislation the case-law does recognize a legitimate employer interest, see Red-Guard paragraph 16:

 True, the Employer has his interests, and the worker, his interest. These interests are different from the public interest. However, we are not concerned in the interests of the parties. We are concerned with the legitimate interests of the parties. The legitimacy is determined by general considerations, principles and assumptions of the legal system. The legitimate public interest and the legitimateinterests of the parties are the same. Although one refers to thelegitimate interests of the parties, the intention is the public order in which some of the parties interests are defended and others are not.

It seems that an arrangement based on an assumption that the employee is always in a position of weakness vis a vis the employer will create undesirable results. The purpose of the Patent Law is to incentivize the parties – both employee and employer, to create employee inventions, whilst regulating the property rights of the employer and the monetary rights of the employee. The employee’s rights are protected by a contractual agreement that arranges them or by the Tribunal for Compensation. Section 131 of the Law obliges the worker to inform the employer of the service invention as close to the time of inventing as possible. Section 132(a) of the Law obliges the employer to inform the employee of whether or not they intend to take ownership of the invention within six month of the notification under Section 131.

The arrangement of the Patent Law chooses to incentivize the parties to reach an agreement as early as possible. Neither the language of the law nor the context imply a separation between the period for informing the employer and the time frame for compensation.

One should remember that the employer has a real interest in knowing the employee’s intention to seek compensation for the service invention. This may be significant and can affect the management of the company and should be reflected in the balance sheet. So there is an importance for the employer that there is a Statute of Limitations to prevent the issue of compensation first being raised many years later, which could surprise the employer and cause significant financial difficulties.

It should be noted that the section 134 rights are not cognitive and do not provide social rights requiring special protection see the Application for Compensation (preliminary requests) Gideon Barzani vs. Isscar LTD, 4 May 2015 paragraph 30:

 We consider that section 134 which provides compensation,  are not cognitive. These are not social rights requiring special protection. In this light, but in a different context, the District Court ruled in Appeal 1843/-1 S.G.D. Engineering vs. Baruch Sharon, 25 January 1993, that  the question of employee inventions is not a social right, but a right in the invention under the Patent law. The conclusion that the right is dispositive concurs with the general cognitive nature of the write in re Shocker as ruled by judge Heishin.

In Barzani paragraph 32 it is stated:

Since conceptually the right is not a social right that requires protecting, as testified by Section 135, the legislation did not decide a cognitive right to compensation similar to the right to be named as an inventor under Section 42 of the Law. In these circumstances, the lack of such a condition in the law forces the understanding that the tribunal gives way to any agreement. It is noted that Dr Shlomit Yanivski-Ravid who champions the cause that the employees rights should be cognitive, establishes in her book IP and Innovention at Work, Theory, Practice and Comparative Law 2013, that the law as it is, is dispositive and if there is a contractual agreement, the tribunal does not have the right to intervene (see pages 305, 311).

The Supreme Court decided not to intervene in our ruling on re Barzani See Bagatz 4353/`4 Barzani vs. Isscar ltd. 8 July 2015.

The legislative body chose to apply the regular Statute of Limitations to employee invention compensation. Had it intended something else, it would have written this into the Patent Law, as indeed, some other legal systems have done. Dr Levy has related to special laws in Germany and the UK.  There is also reference to the law in France, Switzerland and Austria. It is accepted that there is interest in the balances found in these laws but it is the job of the legislative body to consider this, and we can only advise the Knesset to consider these arrangements and to adopt them if it finds it appropriate to do so.

We conclude that the request for compensation was submitted too late and the request for a ruling is rejected.

Bearing in mind the conclusion and the relative resources of the parties, each party will bear their own costs.

As a final comment we note that the arguments put forwards by the parties were of great help to the committee in addressing the issues raised which were considered for the first time and the legal counsel of the parties (Richard Luthi for Dr Levy, and Shin Horowitz for Teva) were of great help in understanding and ruling this complicated case.

The decision is of interest and will be published with the names of the parties, but the sides will have seven days to request that certain details remain confidential.

Ruling in Tribunal for Employee Compensation Levy vs. Teva, 25 May 2017 ruling by Prof. Engelhard, (then Commissioner) Asa Kling and Professor Doron Urbach.


I accept that there should be a Statute of Limitations for claiming an employee right but I do not find this ruling particularly convincing in its analysis regarding cancellation of a patent. I think the correct perspective is that an issued patent has a rebuttable assumption of validity but it may be challenged at any time by bringing evidence of lack of novelty or inventiveness, and doing so does not so much as cancel a patent in the way that a trademark is cancelled, but rather it shows that the patent should never have been granted it demonstrates that it is invalid rather than invalidates.

Alternative Dispute Resolution Copyright in an Ark Curtain

January 9, 2017

parochet cloth.JPG

Haggit Weingarten is a talented graphic designer. She designed a parochet (curtain for ornamenting the Ark of the Synagogue) where she and her family pray in Petach Tikveh. After finalizing the design with the Synagogue, Ms Weingarten approached a company that did computerized embroidery that specializes in similar ritual items and paid them to fabricate a parochet with her design which is a stylized arrangement of a well known phrase found in Isiah 52:8. The curtain is more modern that the dark velvet or satin curtains that include Stars of David, lions, the Menorah or Ten Commandments that are ultra conservative, but it is not overly modern. The resultant curtain is shown alongside having in her Synagogue. The embroidery company were very complimentary of her design.

parochet-laviSome months later, a member of her community spent a weekend in a Kibbutz Hotel and was surprised to see a curtain with the identical design hanging in the Synagogue of the hotel. Ms Weingarten was rather annoyed about this, and after a little bit of research discovered that the embroidery company was offering the curtain in their catalogue of designs and on their website. Now furious, she got her attorney-in-law husband to write a cease and desist letter requiring that the design be removed from the catalogue and from the website and that the company pay 5000 Shekels compensation.

The company argued that graphic designers made nowhere near that amount for designing embroidery and made a counter-offer of a velvet bag for the husband to store his ritual prayer shawl in.

Dr Ben Spungin who is a patent attorney at IP Factor, prays in the same Syngagogue. The Weingartens contacted him and we decided to help. I was near the Kibbutz one day that summer and took a photograph of the curtain, which by that stage was a three piece suite set including  a cover for the Bima – the central table used for reading from the Torah, and a smaller cloth for the lectern.

The problem was that court proceedings could take 2-3 years and the total award would be unlikely to cover the legal costs which was why the embroidery company could take such a cavalier attitude to their infringement.

We prepared a Statement of Case and noted that under copyright law, the graphic artist was entitled to (up to) 100,000 Shekels compensation for copyright infringement, and a further 100,000 Shekels for infringement of her moral rights to be identified as the artist. In case the embroiderers would argue that this was a design for manufacture and not a work of art, we noted that under the A.Sh.I.R. ruling, the artist was entitled to up to 100,000 Shekels compensation under the Law of Unjust Enrichment.

We sent a copy of the Statement of Case to the embroiderers. Their lawyer got the embroidery company to take the curtain off their website and out of their catalogue, and  then contacted us to negotiate a settlement.

Now whilst the law provides grounds to sue for up to 200,000 Shekels, followers of this blog will note that court rulings vary widely from 2000 Shekels to maybe 50,000 Shekels for copyright infringement of this nature. Ms Weingarten did not include her name as the designer on the original curtain for her Synagogue. Nor would she be expected to. Arguably however, this puts a zero value on her moral rights to be recognized as the artist. More significantly, the original Cease & Desist letter from her husband valued the infringement at 5000 Shekels. Still, the curtain had now gone forth and multiplied into a family of three embroidered cloths. With both lawyers phoning their clients and a little haggling, a settlement was agreed that was more than the Weingartens had originally asked for and even after paying us a small commission, was still more than they would have received.  Justice was served in that the embroiderers ended up paying more than they would have otherwise, not including their own legal expenses. The issue was settled in less than three months.

It should be appreciated that mediation and arbitration are faster alternatives to court proceedings. As this was not a court ruling in the public domain I am not naming the infringing company, but in court rulings, the parties are identified. To avoid adverse publicity it is often in the parties’ interest to avoid going to court.

Ful – the Broad-bean Ruling

July 15, 2016

It is generally known that the Lilliput wars were fought over which side one should crack to access the contents of soft-boiled eggs.

Zeno Eitam owns registered Israel trademarks 262406 and 258737 reproduced above.  The words mean “House of Ful (broad-beans), Tasty and Healthful Since 1952.

Apart from Iraqi Jews who have G6PD, i.e. a recessive hereditary disease, causing a lack of the glucose-6-phosphate dehydrogenase enzyme, Ful is a common food amongst oriental Jews. Ful has been tasty and healthful (at least for those not allergic) far longer than since 1952, but the legendary Ful outlet in Beer Sheva was apparently established back then.

The Ashkenazi clan (that’s their surname, not origin, and one assumes they are actually Mizrachi, probably Moroccan or Tunisian) filed to have the marks cancelled due to lack of use.

Yitzhak, Shalom, Yaakov, Moshe and Yoseph Ashkenazi were represented by Adv. Einat Noy Peri. On 10 May 2016 she submitted a hand-written note to the Trademark Office withdrawing her representation, however no explanation or justification was given. On 15 May 2016, the Trademark Office ruled that she could not simply withdraw, and remained the attorney-of-record until someone else is appointed, and gave her until the following day, 16 May 2016, to state whether her evidence was provided to the other side or not, but, to date, she has not complied.

On 22 May 2015, Yitzhak Ashkenazi filed to have the cancellation proceedings abandoned. As of 24 May 2016, Yitzhak Ashkenazi has been represented by Adv. Yoram Dadia.

On behalf of Mr Eitam, Adv. David Walberg (pronounced Deivid and not Dah-vid, so presumably both Ashkenazi by extraction if not in name, and probably an import from an English-speaking country) accepted the abandonment of the cancellation proceedings. He considers that Adv. Yoram Dadia should be considered as acting on behalf of all plaintiffs, and anyway, the cancellation proceedings should be thrown out since the plaintiffs requesting cancellation did not submit any evidence supporting their claims.

The Adjudicator of IP, Ms Yaara Shoshani Caspi ruled that she could not ignore the protocol of a discussion between Yitchak Ashkenazi and Ms Osnot Askenazi and Ms Bar Ashkenazi that took place on 17 April 2016 before the Been Sheva District Court Judge Ms Rachel Barkai (12737-10-15) that endorsed a compromise agreement between the parties under which the Ahkenazis would withdraw the cancellation requests in the current case.

The problem is that there is that the parties in the present case are not identical to those that were party to the case before  the District Court, and, apart from YItzhak Ashkenazi, the other parties to the trademark cancellation proceedings remains Adv. Einat Noy Peri until she manages to extricate herself from her obligations. The other plaintiffs have not agreed to have the cancellation proceedings closed, nor have they accepted Adv. Dadia as their representative. Therefore, the Court Protocol cannot be relied upon in this instance.

The question remains whether there are additional grounds for cancelling the proceedings? From reviewing the cancellation application it appears that the evidence for cancellation was submitted on a portable disk that cannot be reviewed. It is also not clear that these were provided to the mark holder. The Applicants for cancellation should be given an opportunity to provide the evidence to the court and to the mark owner in readable form.  That said, it seems pointless to order the submission of evidence in an acceptable form from plaintiffs that want to withdraw their case.

Ms Shoshani Caspi separately ordered all three lawyers, Ms Noy-Peri, Mr Dadia and Mr Walberg to inform all plaintiffs within seven days that they have 45 days to submit their evidence for cancellation in an acceptable, accessible form to the Trademark Office and to Mr Zeno Eitam or the case will be closed.

Interim ruling by Ms Yaara Shoshani-Caspi concerning cancellation proceedings against Israel trademarks 262406 and 25873 to Eitham, 6 June 2016.



Michel Mercier Coexistence Agreement Refused by Israel Patent and Trademark Office

April 10, 2016

Michel Mercier 2

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

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

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

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

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

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

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

Section 30 states as follows:

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

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

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

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

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

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

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

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

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

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

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

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

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

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






January 19, 2016

Glide Talk LTD filed Israel Trademark No. 252076 for the stylized mark glide as shown below:


The application covered Optical apparatus; apparatus for recording, transmission or reproduction of sound, images, or video; computer application software for mobile phones, tablets, computers, notebooks, and handheld computers, namely, software for voice, text, picture and video messaging; computer software for internet and telecommunications messages; computer and video game software for mobile phones, tablets, computers, notebooks and handheld computers; Computer software for providing access to computer and video games through online social networking websites; all the aforesaid excluding blank and pre-recorded USB flash drives and Telecommunication services, namely, providing online and telecommunication services between and among users of desktop and tablet computers, mobile and handheld computers, and wired and wireless communication devices concerning topics of general interest; enabling individuals to send and receive messages via online messaging in the field of general interest; providing online communications for registered users to share information, photos, audio and video content about themselves, their likes and dislikes and daily activities, to get feedback from their peers, to form virtual communities, and to engage in social networking; broadcasting over the Internet, electronically transmitting, posting, displaying, and tagging information of audio, video and textual content; transmission of greeting cards over the Internet or other communications network; all included in class 38.

SanDisk Corporation opposed the mark. In this instance, the parties came to an agreement under which Glide Talk LTD would amend the list of goods in class 9 and SanDisk Corporation would abandon the Opposition.

The Israel Patent Office does not rubber stamp such agreements automatically, since in addition to the interests of the parties, there is a public interest so where such agreements leave a situation where there is a reasonable likelihood of confusion, the Israel Patent Office may decide not to ratify such agreements and can continue an Opposition in the shoes of the Opposer becoming inquisitional instead of merely observing and adjudicating.

In this instance, Glide LTD undertook to add the following to the list of goods in Hebrew and English:

and excluding software used (a) for security and encryption of data stored in blank and pre-recorded USB flash drives, and (b) to facilitate, enable and manage flash storage of electronic data and electronic files stored in blank and pre-recorded USB flash drives; all included in class 9.

Since this is a disclaimer that limits the range of goods, it was allowable under Regulation 22(a)2 of the regulations and accorded with Section 21 of the Ordinance granting the Commissioner authority to amend the list of goods to disclaim and clarify.

Ms Yaara Shoshani Caspi allowed the amendment and closed the opposition, ruling that each side should bear its costs.


Coming to a mutually acceptable resolution in a fairly amicable way is generally in the interest of all parties. Some attorneys are adversarial and fight uneccessary battles. In this case, the attorneys representing the parties have saved the parties time and money by identifying the problematic issue and bringing this to a quick resolution.


So Israel took his journey with all that he had, and came to Beersheba (Genesis 46)

April 14, 2015

park Carusso

Yesterday I enjoyed a pleasant trip down South to attend the WIPO Roving Seminar in Beer Sheva. The drive was pleasant. Negev is very verdant and the ornithology was good, with a lot of storks and black kites and the odd short-toed eagle in evidence. The event started at 9:30, and, with considerably less congestion getting into Beer Sheva than into Tel Aviv, I arrived at 9:15 am at the Carusso Science Park.

Moshe Lemberg, the Senior Program Officer at WIPO who organized the event introduced himself to me and hoped that I would blog about the refreshments. I thought this was a little surprising as the rogelach and burekas were fairly standard fayre but did make a welcome breakfast. Unfortunately however, the 3 litre hot water urn was inadequate to the task and I was unable to make myself a coffee. That had an adverse affect on my concentration during the first part of the program, and I noted that after Dr Daniel Ben Oliel presented the prize for Excelling Academic thesis in various fields of IP [sic] there were three or four competitors who presented brief talks on their papers for the Israel Patent Office Competition, but have no idea what they talked about. The chairs were too comfortable, I’d left home at 7 am and I was too far away from the screen. My neighbor kept nudging me. I suspect I was snoring a little. I went to the bathroom, washed my face and had a coffee (botz, using water from the now refilled urn), and went back in sitting closer to the front. This was a great improvement and I found the sessions interesting, stimulating and enjoyable.

Those wanting a review of the early sessions are respectfully referred to the IPKAT where the Doyen of IP Bloggers, Professor Jeremy Phillips has some insightful and relevant comments. See here.  For inciteful and irrelevant ones, read on!

Professor Phillips notes that there were 98 registrants. He was sitting in the back corner and was better situated to count heads than I was. I do try to keep tally on these events however, and did a head count on three occasions throughout the day. I noted 60 in the audience. With 5 rovers from WIPO and a large contingent from the patent office, this was less than impressive. I hope that the Haifa event on Tuesday is better attended, and as the program is largely the same, can highly recommend it.


PC Tea

PC Tea

Mr Matthew Bryan, the director of the PCT Legal Division gave a brief review of the PCT system and recent developments, and the amicable and helpful Dr Michael Bart who heads up the Israel Receiving Office spke about recent changes there. The local Beer Sheva (actually Omer – but who’se counting?) Mukhtar Patent Attorney, Dr Kfir Luzzatto joined Matthew and Michael, and gave some thoughts on the PCT, how Israel joining the system had affected the profession, and how he views International Search Reports from the Israel Patent Office.

Trademarks and Designs

Ms Debbie Roenning, Director of the Legal Division Madrid Register, Brands and Designs Section (BDS) spoke on Madrid system for trademark registration and then on the Hague system for Design Registration.  As well as showing which countries had signed up, she showed which countries were in the process of signing up which was useful. She also had some tips regarding tailoring goods for different jurisdictions, translating the list of goods into Hebrew, adding countries to an existing application and varying classes per country that were very informative.

Ms Anat Levi Sofer spoke briefly about trademarks and Madrid from the perspective of the Israel Patent Office and considered Israel joining Madrid a great success. Ms Ronit Bazik Sofer, head of trademarks at Reinhold Cohn represented the private sector and noted that she had been apprehensive of Israel joining Madrid and indeed, there had been a drop off in work since Israel joined, but with increased prosecution, things had evened out.

Knowing the official figures regarding trademarks filed directly into Israel and via Madrid, and Madrid marks originating in Israel, I think that both Ms Anat Levi Sofer and Ms Ronit Bazik Sofer were being less than objective. (Reinhold Cohn has too large a market segment for their practice not to follow the official statistics). Israel is very good at creating technology, but is less successful at launching international brands. Madrid has not been widely used by Israeli companies. It is possible that with additional prosecution resulting from more trademark applications designating Israel, workers in the trademark office and in private practice feel that they are busy. However, without the lucrative filing and with renewals handled centrally or by bucket shops, the revenues generated are lower that revenues once were. This is true of both patent office revenue and income to IP firms.

There was an opportunity to ask questions. In her first slide, Ms Roenning had shown various recent Israel trademarks filed by Israelis. The slide also included WIPO’s logo. It was tempting to ask why they had chosen what look’s like a roll of toilet paper, but I decided that it would unnecessarily cheapen the event.



WIPO’s Arbitration and Mediation Center

Mr Matthew Bryan gave a presentation regarding WIPO’s arbitration and mediation services.  It was certainly worthwhile reminding those present that there are alternative methods of dispute resolution, and that going to court is not the only option.


Mr. Yoshiyuki Takagi spoke about WIPO’s databases such as WIPO Green and WIPO Re:Search. This brought some useful online tools to the attention of participants.



We were pleasantly surprised that WIPO / Patent Office had laid on a sumptuous buffet of ravioli, pizza, macaroni, cheese rolls, garlic bread, quiches, cheeses and salads. Had this been a couple of days after Shavuot (Pentacost) this may have seemed more of the same, but after a week of Pesach, noone passed over the opportunity to dine on hametz.


real life

Mr. Paolo Lanteri, the Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO spoke about the gaming industry. It seems that I was far from the only participant who wasn’t a gamer. I put this down to a combination of the audience being middle aged nerds.

It was fascinating to learn that the gaming industry is more significant financially than feature films and music combined. Happily people still read.

It seems that protecting IP in games is a complicated issue. The talk was very informative.

Questions were solicited and I made a case for moving over to registration of copyright and shorter periods of protection since I consider the system as broken. Jeremy Phillips took issue with my position and argued that most people in practice can do most of what they want and that the system does give redress for abuses. We continued arguing in the car back to Jerusalem.

Closing session

men in suits

The WIPO representatives and the Commissioner got on stage together as a panel. It was reassuring with INTA coming up, to note that my charcoal suit is apparently in fashion for IP events.

Dr Luzzatto took the opportunity to ask about Arab countries boycotting Israel, giving the example of Jordan that, despite a peace agreement, in practice the legal profession there won’t represent Israelis.

Mr Matthew Bryan first dodged the question by noting that Jordan was not a signatory to the PCT. As Kfir would not let things go at that, he rather sensibly pointed out that WIPO strongly condemns Arab countries discriminating against Israel, and writes strongly worded letters noting that such countries are not living up to their international obligations. He did, however, point out WIPO does not have enforcement police and their influence is very limited.

The Commissioner noted that Israel could theoretically refuse to allow applications originating from countries that don’t accept Israeli trademark or patent applications, but that the Israel Patent Office decided not to adopt this policy.

Retired US patent attorney Bruce Lilling noted that Taiwan, an important industrial nation was kicked out of the PCT mechanism at China’s request.


For those who missed the Beer Sheva event yesterday, I recommend trying to attend the largely parallel but slightly shorter program in Haifa tomorrow. See here.

Gratuitous Political Rambling Digression (its my blog so I can do what I like)

I note that Ms Debbie Roenning (who also wore a trouser suit, but not a tie) is the head of the Brands and Designs Section which shares the unfortunate acronym of BDS, the ‘Boycott, Divestment and Sanctions’ Movement, the allegedly pro Palestinian, but actually notoriously hypocritical and anti-Semitic international movement.

On the way to the conference, I noted Sodastream’s new factory in Beer Sheva. They moved from the Industrial Area by Maale Adumim (a satellite town of Jerusalem on the road towards Jericho) in response to vicious propaganda abroad. In the Maale Adumim factory, Sodastream provided jobs to West Bank Arabs and was a model of co-existence. Forced to relocate, the primary sufferers are the West Bank Arabs.
WIPO is one of the least anti-Israel organs of the UN. I think it might have been very worthwhile for them to have invited Jordanian, Palestinian and Egyptian IP professionals, both government and private, to the event. I am on good terms with professional colleagues in all these jurisdictions, and with others in Lebanon, Saudi Arabia and elsewhere, who read this blog, and chat amicably with me at INTA, AIPPI and other international conferences. Peace is made by trade.

Of course, Israel is not the only country to have been boycotted. To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the “U.S. Sanctions Program”).  31 C.F.R. § 501 et seq.  The Office of Foreign Asset Control (“OFAC”) at the Department of the Treasury manages the U.S. Sanctions Program.  The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations.  At various times, the US has forbidden their nationals to register trademarks in Cuba and has also failed to uphold Cuban trademarks. Whether or not human rights are more mistreated by Castro’s regime in Cuba or by the US in the Guantanamo Bay prison camp is not clear.