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.

 


Israel Supreme Court Upholds Decision Re Appellation of Origin

November 26, 2017

cheese and wineIsrael is a member of the Lisbon Convention for the Appellation of Origin. This is an international convention beloved of the French and frowned upon by the common law countries. Essentially food and drink associated with certain places is entitled to wider protection than mere trademark protection, so that only Scotland can make Scotch Whiskey. Only France can make Champagne and Cognac. Parmesan cheese and hams must come from the Parmesan region of Italy, and so on.

There are now two Israeli whiskey producers. Israel makes Kosher bubbly wine and brandy and a very wide range of cheeses that mimic English, French, Italian, Dutch and Greek types. The labeling is carefully controlled in accordance with the rules.

Israel boasts one Appellation of Origin: Jaffa for citrus fruits.

jaffa orangeCalling something Jaffa, Jaffas, or in Hebrew יפו, יבא, יפאס is not merely a trademark infringement, but also infringes the special law governing this appellation of origin “The Law for Protecting Origins and Indication of sources 1965” gave special protection for Jaffa and variant spellings for citrus fruits. Subsequently, special amendments to the Trademark Ordinance in 1968 widened the protection of the Jaffa mark to prevent its usage for a wider range of goods, and forbade marks that include the word Jaffa as only part of the mark. The amendment to the trademark ordinance takes this protection very seriously, and instead of merely providing financial remedies, prescribes incarceration for infringers.

126 EL AL Poster, Two Flight Attendants in Orange Uniforms by 747, Marvin G. Goldman Coll'nelal posterBack in the Sixties, Israel was a banana an orange republic. The largest export sector was fruit and vegetables and oranges were the flagship product. The posters alongside, used by ELAL – Israel’s national airline gives an indication of the importance and symbolism of the orange in that era.

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin.

Yehuda Malchi tried to register Israel Trademark Application Numbers 20542 and 220581 for OLD JAFFA, for preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively. Israel trademark no. 237678 covering soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 had previously issued without opposition. In an action combined with an opposition by the Council for Producing Plants and Their Marketing to Israel Trademark Application Numbers 20542 and 220581 , the Israel trademark 237678  (Old Jaffa) was canceled. The ruling may be found here.

Having appealed the Israel Patent Office ruling and that of the District Court, Yehuda Malchi appealed to the Israel Supreme Court.

EtrogJudge Hendel’s ruling included an interesting side comment in which he noted that Chief Rabbi Kook, who was the Chief Rabbi of Jaffa and the surrounding agricultural villages from 1904 until the outbreak of World War 1, had backed a campaign to promote using Jaffa etrogs (citrons) for the Sukkot ritual, rather than those from Korfu and Italy, which held much of the European market. Judge Handel thus argued that Israel was traditionally blessed with citrus fruit and that Jaffa was the hub of the trade a hundred years ago.

Hendel also noted that very little of the sprawling urban conurbation around Jaffa is devoted to agriculture today, but since the amendment to the Trademark Ordinance explicitly prevents use of Jaffa as part of a mark, the phonetic or visual similarity between JAFFA and OLD JAFFA is not relevant. He thus upheld the District Court’s ruling.

COMMENT

I am naturally formalistic (which is considered a dirty word in Israeli legal circles), and generally think that where the democratically elected legislative passes a clear law, the judges should follow that law. I am against judicial activism which I see as undermining the Knesset. (That is not to say that recent government attempts to prevent charges being brought against active ministers, to prevent the Prime Minister from being indicted for corruption are the finest examples of parliamentary legislation).

Nevertheless, I think that Judge Hendel could have and should have struck down this law providing wide and special protection for Jaffa oranges. The reason why is not merely that the brand does not indicate oranges from the Jaffa region grown by Jewish agriculturists on Kibbutzim, but rather that it does not indicate oranges grown in the contested region of Israel – Palestine at all! In order to provide year round supplies to world wide markets, oranges grown in South Africa and Australia are sold under the Jaffa brand. Thus the unique and distinctive taste of Jaffa oranges is not a result of the terroir of the Holy Land at all.  This travesty means that BDS supporters are not merely depriving Arab orchard owners with Thai foreign workers of their livelihood in an attempt to harm Israel politically, but are also harming the black workers in townships around Johannesburg.

Since the Council for Producing Plants and Their Marketing does not restrict usage of the mark to Israel grown oranges, why shouldn’t the special designation be cancelled?

In fairness to Judge Hendel however, we note that Yehuda Malchi was not represented and suspect that the sad state of affairs described above is unknown to him.

For the record, we note that it is ill-advised to appeal to fight legal battles, including submitting Appeals to the Supreme Court without legal representation.


Coffee Whitener Trademarks in the Gaza Strip

November 6, 2017

city creamerClients sometimes ask about whether or not it is worth registering trademarks in the Gaza Strip. Recently, we’ve been handling the destruction of fake plumbing goods destined to Gaza, that were stopped at the Israel Port of Ashkelon. Delivering papers in Gaza is not easy. It can, however, be done.

Qumsieh is a Jordan firm of patent attorneys that handles IP registration across the Middle East. On behalf of their client, Bilal Mohammad Al Hamwi, on 20 May 2014, Qumsieh submitted a Gaza Trademark Application for City Creamer, a coffee whitening milk substitute that comes in powder form, in class 29. The application was assigned number 18963, and published in the Official Gazette number 54 on 28 May 2015.

coffee mateSociété des Produits Nestlé S.A. (“Nestlé”), the owner of trademark “Coffee Mate” filed an opposition against Al Hamwi’s mark based on their earlier registrations for “Coffee Mate” based on the following grounds:
An alleged Similarity between “City Creamer” and “Coffee Mate” in terms of appearance and general look;
Coffee Mate is a well-known trademark worldwide;
Registration of the opposed mark will mislead the public about the origin of the products and will confuse the consumers between both products, and
Due to the above, allowing the registration of “City Creamer” contradicts local Trademark Law.

In their response, Qumsieh noted that “City Creamer” has no counterpart “mug design” mark to that of Nestlé’s mark, however Nestlé argued that this was irrelevant. Opponent dismissed as irrelevant. Qumsieh also argued that the figurative elements illustrated the differences in the imagery, which far outweighed the alleged similarities.

The Gaza Registrar ruled that the “City Creamer” mark could be registered. Apparently Nestlé appealed said decision before the Gaza Supreme Court, which affirmed the decision of the Registrar.

COMMENT

The colour schemes of the two marks are similar, but coffee is a product that is generally drunk warm and the orange-red colour implies a warm cosy feel. The term creamer, like coffee, is generic. Showing a powder additive for coffee as a spoon for adding to coffee seems to me to be descriptive, and despite the similarities which are probably not coincidental, I think that the Gazan authorities made the right decision. It is worth comparing this ruling to the Israeli rulings concerning energy drinks and the Eden Turkish Coffee.


Increase in Official Publication Fees in Syria

October 3, 2017

200px-Flag_of_Syria.svgOn 28 August 2017 the Syria Minister of Internal Trade issued Ministerial Decree No. 2133 announcing an increase in the official publication fees for new trademarks and renewal applications, as well as for publication for recordals of assignment, mergers and changes of name and address.

The decree will become effective on 15 October 2017 affecting applications pending publication, as follows:

Item Old Price New Price
Publication fees for accepted applications in the Official Gazette (for a list of goods of 10 words) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees after registration in the Official Gazette (for a list of goods of 10 words) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications before acceptance (for applications filed or renewed before April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications after issuing the renewal certificate (for applications filed or renewed before April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Publication fees for renewal applications after acceptance (for applications filed or renewed on or after April 2007) SYP 35000
USD 70
SYP 100000
USD 200
Fees for additional group of 10 words in the list of goods and services SYP 500
USD 1
SYP 1500
USD 3
Publication fees for the recordal of assignment SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of merger SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of change of name SYP 25000
USD 50
SYP 50000
USD 100
Publication fees for the recordal of change of address SYP 25000
USD 50
SYP 50000
USD 100

Renewals of trademarks filed or renewed before April 2007 will be published twice, the first time after acceptance and the second time after the issuance of the registration or renewal certificate. Trademarks filed or renewed after April 2007 will only receive one publication notice, after acceptance.


HALLEY vs. HALEY

September 29, 2017

HalleyJordan based patent attorneys Qumsieh report filed an application in the Palestinian Authority (referred to by Qumsieh as the State of Palestine) for a trademark for Halley on behalf of their Client, Yildez Holding Anonim Sirketi, a Turkish company, on 25 June 2015 in class 30. The mark received the trademark number 27208. The application was published in the Palestine Official Gazette on 15 December 2015 subject to the opposition period of 3 months.

A Saudi Arabian company, under the name of Abdullah Al Othaim Markets, filed an opposition against our client’s application on the basis of it:

  • Being a well-known company in terms of commercialising food products;
  • Being the owner of the registered trademarks “Haley” in Latin and Arabic characters in classes 21, 29, 30, 31, and 32;
  • Prior registration of “Haley” in the home country and abroad since 2003;
  • Claiming their mark “Haley” as a well-known trademark, and
  • Commercialising their products under the trademark “Haley” on their website, which is known to consumers worldwide.

Qumsieh countered that:

  • Their client is also a worldwide,  well-known, company established in 1989;
  • Their client is the owner of the registered trademark  “HALLEY” in Turkey and worldwide in classes 29 and 30 since 1993;
  • The trademark “HALLEY” is well-known worldwide, and customers now associates this brand with Yildez Holding Anonim Sirketi, and
  • The trademark is widely used worldwide and in Palestine [sic].

After reviewing the matter, the Palestine Trademark Registrar allowed HALLEY to register.

COMMENT

We note that the stylized mark Halley is registered in Israel for plumbing products, namely: faucets, shower installations, shower cabinets, shower cubicles, bathtubs, water closets, sinks, wash-hand basins, urinals, sanitary apparatus in the form of squatting pans, toilet seat lids, toilet cisterns; all included in class 11.

If the Palestine Territory mark is also for sanitary equipment, and Haley (not registered in Israel) sells food products, there is indeed little likelihood of confusion.


Chipsico – a Competing Marks Proceeding Where Both Marks were Refused

July 11, 2017

267474On 13 August 2014, the New Dubak Natsha ltd filed Israel trademark application no. 267474 in class 29 for chips (potato crisps). The stylized mark is shown alongside, and reads CHIPSICO Batates Modalaah – (Chipsico Crinkle-Cut Potato Chips).

The same day, the Halawani Industrial Company ltd filed two trademark applications for coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitute, flour and grain products, bread, wafers, cakes and sweets, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, tomato paste, seasoning mixtures, spices, frozen foods, snacks and crackers. The first application was Israel Trademark No. 267770 CHIPSICO and the second, 267772 was for شيبسيكو, which is Chipsico written in Arabic.

crinkle cutThe trademark department considered the marks as being confusingly similar and the parties failed to reach an agreement, so on 8 May 2016, a competing marks proceeding under Section 29 of the Ordinance was initiated and the parties were invited to present their evidence.

New Dubak Natsha ltd submitted: Read the rest of this entry »


Jordan Accedes Patent Cooperation Treaty (PCT)

June 14, 2017

JordanJordan became the 152nd member of the Patent Cooperation Treaty (PCT) on March 9, 2017, and the most recent Arab state to accede to the PCT.

The Accession Procedures of Jordan to the Patent Cooperation Treaty (PCT) with the Secretary General of WIPO have been completed and entered into force on June 9 2017. Any PCT application filed on or after June 9, 2017 will automatically include the designation of Jordan, and Jordanian nationals and residents will be able to submit international patent applications through the Jordanian Patent Office.

COMMENT

In the past, despite a peace treaty between Israel and Jordan, the Jordan Law Society had an unofficial boycott against Israel Applicants. There has not been a tremendous interest by Israelis for filing patent applications in Jordan, but Israeli pharmaceutical companies have filed applications there.

We hope that following Jordan joining the PCT, the Kingdom will live up to its international obligations and treat Israeli applications no differently from those originating further afield.