A Storm in a Coffee Cup

March 20, 2017

This ruling relates to competing rights of different relatives to register and use trademarks for a family business that eventually split up. The marks were registered by a cousin living in Ramallah, and cousins living in East Jerusalem applied to have the marks cancelled on various grounds including passing off, misleading marks, inequitable behavior and lack of use.

234876 LOGOChain Stores of Izhiman Coffee Company own two trademarks: Israel Trademark No. 234876 for the logo shown alongside, and 234877 for the Arabic and English word mark
بن ازحيمان IZHIMAN’S COFFEE.

Maazen and Shapik Izhimian applied to have the mark’s canceled under Section 39 of the Trademark Ordinance 1972, and further under Section 41 for lack of use.

The mark was first applied for by Muhammad Musa H’alad Izhiman in January 2011, and after examination, was registered on 2 May 2012 for “coffee and coffee spices in class 30.” On 27 February 2014, the mark was assigned to Chain Stores of Izhiman Coffee Company, a Palestinian Company based in Ramallah that was owned by Muhammad Musa H’alad Izhiman and his two sons Kassam and Nasser.

On 5 March 2014, the brothers Maazen and Shapik Izhimian who own a Jerusalem based business in Bet HaBad Street, for marketing and trading in coffee and spices under the name “Izhiman’s Coffee” and who are cousins of Muhammad, submitted a cancellation request. In July 2014, the owners Chain Stores of Izhiman Coffee Company submitted their response.

The Background

EnjoyMuhammad, his three brothers and the Applicants for cancellation are all members of the same clan, that were involved in the family business established by Musa, Muhammad’s father, together with Mahmud, the father of Maazen and Shapik in the 1980s. The company had three addresses, the Ramallah address, the Jerusalem address now run by Maazen and Shapik, and a third branch in Abu Dis.

In 1994, Muhammad fell out with his brothers and nephews and received sole ownership of the Ramallah store. His three brothers and the nephews shared the Abu Dis and the Bet HaBad Jerusalem shops and opened a further outlet themselves in Ramallah. In 2000 the applicants for cancellation and Muhammad’s three brothers opened a fourth branch in Salah Shabati Salahadin Street in East Jerusalem. In 2008, these partners ceased to cooperate, and Maazen and Shapik were left with the Jerusalem Store in Bet HaBad Street.

love.jpgMaazen and Shapik submitted an affidavit written by Maazen and a second one from Riyadh Ghazi Halaq, the owner of a coffee shop near the Bet HaBad address that buys his raw coffee from them. The mark owners responded with an Affidavit by Nasser Muhammad Musa Izhiman, Partner and authorized signatory. At the end of September 2016, the Adjudicator of IP, Ms Yaara Shoshani Caspi held a hearing and the witnesses were cross-examined.
Read the rest of this entry »


Requesting Enlargement of A Deposit of Costs

January 8, 2017

The Krasnyi Octybar and Rot Front Joint Stock Companies own four Israel trademarks: 184179, 182758, 182759 and 182763. Each covering a long list of goods in class 30, including such things as for waffles; confectionery for decorating Christmas trees; cakes; pastries; peanut confectionery; almond confectionery; pasty; cocoa; cocoa products; caramels [candy]; sweetmeats [candy]; liquorice [confectionery]; peppermint sweets; coffee; crackers; meat pies; farinaceous foods; candy for food; fruit jellies; marzipan; custard; honey; ice cream; sherbets [ices]; muesli; mint for confectionery; cocoa beverages with milk and coffee beverages with milk; coffee-based beverages, tea-based beverage, chocolate beverages with milk, chocolate-based beverages, cocoa-based beverages; lozenges; petits fours [cakes]; biscuits; pies; fondants; pralines; gingerbread; chewing gum, not for medical purposes; sugar; cake paste; confectionery; rusks; sandwiches; almond paste; tarts; cakes (Edible decorations for-); halvah; bread; tea.

Five companies including the Roshen Confectionery Corporation,  Dealer B&D International Ltd, Kjarkov Biscuit Factory, Dolina Group Ltd and Latfood Ltd have filed cancellation requests against these marks.

The marks owners have requested that the sum that the challengers are required to post as a guarantee against legal costs in the event that the mark owners prevail be increased by a further 130,000 Shekels, or by whatever sum the commissioner sees fit. The request was submitted together with 90 pages of appendices and a copy of an Affidavit from the legal counsel of the mother company, however the original Affidavit was not submitted. The challengers opposed the request to increase the guarantee. A hearing has been set for the 17th and 18th of January for cross-examining the various witnesses.

The background to the request for guarantees is two requests for cancellation of the marks. Roshen Confectionery Corporation and  Dealer B&D International Ltd have requested the cancellation of 184179, 182758 and 182759 trademarks, and the Kjarkov Biscuit Factory, Dolina Group Ltd and Latfood Ltd have requested cancellation of the 182763 mark.

Following requests for guarantees that were filed in March 2015, the Adjudicator of IP Ms Yaara Shshani Caspi ruled on 21 June 2015 as follows:

In light of the above, and considering all the circumstances of this case and the general considerations used to determine the magnitude of the appropriate deposit, the first two challengers are to jointly deposit 75,000 Shekels and the second group of three challengers are also to jointly deposit 75,000 Shekels, and this should be done within 21 days.

The present request includes suspension of the proceedings until the deposit is increased.

The Parties’ Allegations

The mark holder claims that increasing the deposit is required because following the original decision there have been changes in circumstances that warrant increasing the deposit. These new circumstances include the expectation of long and complex proceedings and a number of cross-examinations. Furthermore, the case is complex and it transpires that the costs are expected to be higher than originally anticipated. The additional costs are incurred by the two groups of challengers retaining separate counsel and making unnecessary requests. A further claim is that it was not previous clear but now is transparently so, that there will be a massive amount of evidence and documents and a hearing that will be conducted largely in Russian, requiring simultaneous translation. The mark owners nevertheless reiterate their opinion that the likelihood of challengers prevailing and the marks being cancelled are very slim. The amount of the deposit, standing at 150,000 Shekels, is too low and not proportional to the costs that will be requested if the cancellation attempts fail and so this is a classic example of where increasing the deposit is warranted.

Both group of challengers consider the request to increase the deposit should be refused since the ‘new circumstances’ were already fairly obvious when the original request for costs was made. The second group of challengers considers this to be a vacuous request filed in bad faith simply to stretch out the proceedings.

Ruling

Ms Yaara shoshani Caspi did not consider that the circumstances had changed since the original request for a deposit was ruled on. For example, where there are five parties challenging two groups of marks it is not unpredictable that there will be lots of witnesses to cross-examine. Since the challengers are Russian companies, it was always expected that their witnesses would testify in Russian and simultaneous translation would be needed, as is the fact that there are two groups of challengers. The massive amount of evidence was also expected and Ms Shoshani Caspi considered that these grounds were all considered by her in her original ruling regarding the size of an appropriate deposit.

With regard to the likelihood of the challenges prevailing and the marks being cancelled, there is no way to consider the likelihood or otherwise of the challenges be successful at this stage since the witnesses have not been heard and have not yet been cross-examined. At least this is the theoretical state of affairs. Since the challenges are on the basis of inequitable behaviour in the original filings, there is a high level of proof that the challengers will be required to submit to establish their case since they will have to positively show that many years ago the mark holders intentionally appropriated marks that were not theirs.

Nevertheless, the fact that the challengers have a difficult task ahead is not justification to increase the deposit that they have already placed. There are no unexpected circumstances not considered in the original ruling considering the size of the deposit.

The request to increase the deposit is refused. However, Ms Shoshani Caspi does not see the request as indicative of inequitable behaviour designed to make the trademark cancellation proceedings unnecessarily complicated. that said, the mark owners should nevertheless pay costs to the challengers for requiring them to respond to this request. The mark owners will therefore may 1500 Shekels to the first group of challengers and a further 750 Shekels to the second group and will do so by 15 January 2016 or interest will incur.

In cancellation proceedings concerning 184179, 182758, 182759 and 182763 trademarks, Ruling on increasing size of deposit by Ms Yaara Shoshani Caspi, 28 December 2016.


Requesting a patent allowance to be cancelled

January 8, 2017

reconsideration

Israel Patent Number 219586 to Fritz Collischan & Co. KG was allowed. The patent is titled “DEVICE FOR COUNTING OBJECTS FED AS BULK MATERIAL”and is the national phase entry into Israel of PCT/EP2010/067146 which published as WO2011/054974.

In a rather surprising move, Data Detection Technologies Inc, represented by Pearl Cohen Tzedek Latzer Brats requested that the allowance of the patent be cancelled. Actually this is not the first request of this type, for the present patent.  Back on 9 March 2015, following a request to have the allowance withdrawn on grounds that the applicant did not provide a list of prior art as required to under Section 18 of the Law, the same third party requested that the patent be disallowed, and on that occasion, the Applicant agreed for it to be returned to a state of pending allowance. Following that episode, the now pending patent application was returned to the Examiner and eventually was allowed on 29 September 2016 and published for Opposition purposes under Section 26 of the Law. Data Detection Technologies Inc have again requested that the case be returned to the Examiner as they have found additional citations and video clips that they claim reveal the invention and which were sent by themselves to the Applicant some month before allowance.

Despite bringing the additional material to the Applicant’s attention, the Applicants did not make this art of record and the patent was eventually allowed under Section 17c, on the basis of a corresponding issued patent (which presumably itself issued without the Examiner thereof considering the video clips and publications submitted by Data Detection Technologies Inc. Data Detection Technologies Inc argued that this failure is sufficient to prevent the patent issuing under Section 18c of the Law. Alternatively, since the citations are central to the patentability of the invention, Data Detection Technologies Inc considers that minimally the patent be returned to the Examiner for further Examination.

Data Detection Technologies Inc considers it inappropriate for them to have to fight an expensive opposition proceedings which was caused by the applicant failing in their duty of disclosure.

The Applicant claims that the appropriate way to raise issues relating to the duty of disclosure is via an opposition proceedings, and the arguments submitted by Data Detection Technologies relate to grounds for Opposition under Section 31 of the Law. The Applicant posits that withdrawal of allowance is an appropriate measure only in those rare cases where the decision to allow was flawed, or where a letter of allowance was issued by mistake. The Applicant does not consider this to be such a case.

The Applicant notes that the additional material was collected in an opposition proceeding that Fritz Collischan is fighting against an allowed patent of Data Detection Technologies. In that proceeding, Data Detection Technologies Inc requested an extension to respond to the Opposition and to amend the specification. The Applicant submits that the extension was applied for in bad faith and with factual inaccuracies in the justifications given. The Applicant further submits that the  Affidavit includes hearsay that is not acceptable as evidence.

Ruling

The parties concur that the Commissioner may cancel a notice of allowance and return an application to the Examiner if there is a major flaw in the decision to allow the patent. This authority is derived from Section 15 of the Law of Interpretation 1981 and was adopted by the patent office in the previous ruling concerning Data Detection vs. Collischan from 9 March 2015 and also in the Cellular Dynamics vs. Christopher Reed ruling from 29 April 2014.

The argument is whether the current situation is one where it is appropriate for the Commissioner to exercise their authority and to withdraw the notice of allowance, or whether the appropriate action is for Data Detection Technologies Inc to file an Opposition under Section 31 of the Patent Law 1967?

The Deputy Commissioner, Ms Jacqueline Bracha considers that the choice of appropriate course of action is to be found in the purposes of the two courses, which are also derived from their different ways of being initiated. The authority under Section 15 of the Law of Interpretation is something initiated by the administrative body to correct a mistake that they made in an earlier decision or t as a result of a change of circumstances, as an exceptional course of action where there is no other appropriate recourse authorized by the law (See Y. Zamir, Government Authority (1996) pages 1003-1006. In contradistinction, the purpose of the Opposition proceeding is to critique the Examination and to continue the Examination of a patent application in an inter-partes procedure initiated by the third party (see the Israel Patent Office Ruling re IL 136482 Bromium Compounds Ltd vs Albermarle Corporation of 7 November 2010.

 With all due respect, I consider that the courts approach has changed since then, and nowadays the Supreme Court considers the Opposition procedure as being complimentary to and a completion of the Examination since it is intended to serve the public interest and the accuracy of the register.

In the framework of cancellation of an allowance the amount that the public would have relied on the notice of allowance and the type of mistake that resulted in the allowance are to be considered. However, it should be appreciated that not ALL mistakes justify the cancellation of an administrative decision. A mistaken decision based on consideration of the facts and simply reaching the wrong conclusion, will not, in general, justify changing an administrative decision (see Zamir on page 1006). The Authority will generally reach this result in cases where there is a suspicion that someone has been awarded more than he deserves. Such a suspicion is not sufficient to justify cancelling the benefit by the  government body (see Zamir on Page 1007).

In contradistinction to the civil proceeding to cancel an administrative  decision, the Opposition is an adversarial judicial proceeding or sub-judicial proceeding that allows the parties to bring evidence in accordance with the law of evidence, allows opposing counsel to cross-examine witnesses and enables the patent office to come to a reasoned decision. In such a proceeding, the Patent Authority is not limited by the administrative decision and he can reexamine the patentability of the invention in light of the evidence and claims before it, even apart from the considerations that the Examiner used in reaching the decision of allowance.

From the above it is clear that where a mistake in a decision is not self-evident and requires substantive clarification, the administrative decision to cancel the allowance is inappropriate.

In this instance, to determine whether the applicant is required to alert the Examiner about the publications that Data Detection mention, one has to see whether the publications “relate directly to the invention” as required by Section 19(a)2 of the Patent Law. To do this, it is necessary to listen to the claims and evidence of the parties regarding the nature of the invention.

Even if a decision is reached that the Applicant should indeed have made these publications of record under the duty of disclosure, it is necessary to consider if a failure to have done so can be dealt with by the alternatives in Section 18 or if the decision to allow the patent [to proceed for opposition purposes] should be cancelled. In this regard, to the extent that a publication allegedly shows the patent being demonstrated or implemented, the Examiner is not duty bound to consider it.  Section 17b of the Law states that:

(a) an Examiner will consider if the Examination answers all the following:
(1) is for an invention considered patentable under Chapter 2;
….
(b) despite section (a)(1), there is no obligation to examine patentability in accordance with Section 4(2). 

In summary, the Deputy Commissioner Ms Bracha does not consider that the present case is a mistake that warrants cancellation of the Notice of Allowance and does not see how the legal and factual issues can be considered in a decision to cancel the allowance and how this advances the case to a final decision on patentability.

The final claim of Data Detection Technologies Inc, that Applicant’s failure to make art of record should not oblige them to enter a lengthy and costly opposition proceeding. It is true that oppositions are lengthy and the regulations provide at least 16 months from initiation of an opposition until a hearing is scheduled. The parties may request extensions and interim decisions, to correct the specification and more. Nevertheless, the Opposer can submit their evidence on filing their statement of case, thereby significantly shortening the procedure. Furthermore, on conclusion of the opposition, the prevailing party is awarded actual costs, if they are essential, reasonable and proportional See Bagatz 891/05 Tnuva Agricultural Cooperative vs. the Authority for Granting Import licenses, p/d/ 60(a) 600. From here it is clear that if Data Detection Technologies Inc are right, they can expense appropriate compensation.

Therefore it is not considered that the decision to allow the patent was clearly erroneous, justifying its cancellation without a factual inquiry, and it is precisely the anticipated costs that are incurred by an opposer for conducting an opposition that tilts the balance towards holding an opposition proceeding.

As an afterword, it is noted that this is not the place to consider the behavior of Data Detection Technologies in a separate opposition before the Patent Office.

Data Detection Technologies are ordered to pay 4000 Shekels + VAT in legal fees to Fritz Collischan.

Comment

This decision is a correct one. Since, nowadays pending applications publish 18 months from priority and the whole file wrapper is available for examination prior to allowance, maybe Israel should formally allow third party prior art submissions.

It seems that Data Detection Technologies Inc is trying to delay issuance without formally filing an opposition. I think that this decision, not allowing this is correct.

Previous opposition rulings that relate to failure to submit art generally did not invalidate the patent on this ground alone, but it is within the authority of the patent office to do so.


Is claim construction a matter of Law or is it related to the Art claimed?

January 6, 2017

Elad Barkan owns Israel Patent No. 133671 titled “CRYPTANALYSIS METHOD AND SYSTEM” and Rontal Engineering Applications 2001 (LTD) is attempting to have this patent canceled.

There are corresponding US patents US9038192 (B2)  and  US8295477 (B2), however there are some claim differences.

One question that arose in the cancellation proceedings is how the claimed invention differs from that of the corresponding US patent.

Rontal Engineering’s representatives engaged veteran Israel Patent Attorney Sanford T Colb to explain this, which he did in an Affidavit. Barkan’s attorneys requested permission to submit an expert opinion of their own and this was duly allowed.

Elad Barkan wrote the expert opinion himself, challenging Colb’s competence in cryptoanalysis. Rontal Engineering’s lawyers then submitted to have Barkan’s affidavit thrown out as it raised new issues, and, according to them, despite his competence regarding the technical subject matter, the correct reading of claims is a matter of law that was outside his competence. They also noted that as a party to the proceedings he could hardly be considered an impartial expert witness.

After referring to different sections of the affidavit that showed that Barkan was indeed ignorant of claim construction, the Deputy Commissioner Ms Bracha had his Affidavit struck from the record, and announced that costs for this skirmish would be taken into account at the end of the main proceedings.

 

COMMENT

In Israel we do not have specialist IP courts and any District Judge or Supreme Court judge may be called upon to rule on IP cases. Sometimes, the judge has no scientific background and has never studied IP law and occasionally the decisions are plane wrong. See here  for an example of a very wrong decision. The Commissioner and Deputy Commissioner are specialist IP judges. They have a team of Examiners that they can call on. they should therefore be able to construe the scope of protection of claims granted in Israel without the help of a practitioner in private practice, however experienced and competent.

I think that Luthi et al who represented Barkan should have understood or at least clarified what Ms Bracha wanted in a counter-opinion, and should know that clients are not impartial and generally make lousy witnesses.


UNILAK

January 6, 2017

Israel Trademark Number 121683 to Industrias Titan, S.A. is for the word UNILAK covering paints, colours, varnishes, lacquers, enamels; all included in class 2. It was registered back in 1999.

On 16 October 2015, Israel paint company Nirlet LTD filed a request to have the mark canceled due to lack of use. A notice of the cancellation request was sent to Industrias Titan, S.A., but they ignored it, and did not respond in any way.

Nirlet claims that Industrias Titan has not used the mark in Israel over the past three years and there are no extraordinary reasons justifying this lack of use.

Section 41 of the Trademark Ordinance 1972 states that:

“…any interested in so doing can file a trademark cancellation request on the basis of there never being an intention for bona-fide use or that the there was no bonafide use during the three years prior to submission o

 

Trademarks are property rights that are not trivially

f the cancellation request.”disposed of, and the burden of proof lies with the requester for cancellation -see Bagatz 476/82 Orlogad vs. Commissioner of Patents, p.d. 39 (2) 148. This burden of proof switches from one party to another throughout the cancellation proceeding, but there remains a requirement for the requester of cancellation to bring supporting evidence of the alleged lack of use. Only if this burden of proof is met, does the onus transfer to the mark owner to overcome the evidence provided by the challenger and to show that the mark is indeed in use. Cases that are not clear-cut work in favour of the mark owner – see Bagatz 296/89 Moorgate tobacco Co. vs Philip Morris Inc, p.d. 41 (1) 485 on page 493.

Regulation 70 of the 1940 trademark regulations provides the procedural requirements:

A request to correct the register or to cancel a mark from the register will detail the interest of the requester, the facts and the requested change in two copies: one for the Commissioner and one for the registered owner.

The adjudicator of IP, Ms Yaara Shoshani Caspi, ruling on the case, was convinced that the mark owner was served the papers. Consequently, regulation 71 comes into effect:

With such a request, and a copy sent to the mark owner, the procedural arrangements of regulations 37 to 46 come into effect (with the necessary changes as appropriate):

The mark owner should have submitted a counter statement of case by 16 December 2016, but failed to do so. Consequently, regulation 71a comes into effect:

If the mark owner does not submit a response within two months, the patent office will give the challenger two months to file his evidence.

Thus in absence of a Counter Statement of Case from  Industria Titan, the challenger is given two months to file their evidence and to send a copy to the Industria Titan.

Interim Ruling re Cancellation of Israel Trademark 121683, Ms Shoshani-Caspi, 25 December 2016.

 


Amending Consisting to Comprising in Claims of An Issued Patent

November 1, 2016

spelling-is-hardTypographical and scribal errors may be corrected in already issued Israeli patents provided that the commissioner is convinced that the error is a genuine one and that the patentee is not using an alleged error to widen the coverage of the claims.

In the case of Israel Patent No. 194774 to Lantmann As-Faktor AB [no relation- MF], titled “ANTISECRETORY PROTEIN FOR USE IN THE TREATMENT OF COMPARTMENT SYNDROME”, after the patent issued, an Examiner refused to allow an error to be corrected. The patentee appealed this decision to the Commissioner, under Section 161 of the Israel Patent Law 1967.

wish you were her.jpgThe patentee claimed that a mistake had occurred in claims 1 and 21 as granted. The Examiner agreed that a mistake had indeed occurred but wasn’t prepared to consider the mistake as being a typographical / scribal error that could be corrected.

In general, Section 65 allows scribal errors to be corrected and Section 66 provides various conditions. Section 69 states that:

(a) the patentee is able to request a correction to a scribal error that occurred in the specification, and the Commissioner will allow this provided he is convinced that this is ONLY a correction of a scribal error

(b) the Commissioner is also allowed to initiate the correction of a scribal error found in the specification provided that the patentee agrees.  

erroristsThe allowance of the patent changes the rules regarding amending the specification. Once the patent is allowed there is less flexibility. Whereas section 22 allows applicants to amend anything and everything prior to  allowance under Section 26, The part three amendments of sections 65-69 that are allowable after allowance or grant are far more restrictive. See regulations 101 and 102.

Regulations 95-102 of the Patent Regulations 1968 regulate the post allowance amendments in accordance with Sections 65 and 66, and allow the patentee a hearing in this regard. These regulations do NOT apply to Section 69 and nor do their procedural aspects.

Correcting typographical errors is also related to in section 171 which states:

The Commissioner is allowed, if requested to do so, to correct any typographical errors in the patent register or in any document from the Patent Office.

It is noted that Section 170a grants the Commissioner wide discretion to amend documents if they do not correctly reflect the state of affairs.

(a) Following a request from an interested party, appropriately submitted in accordance with the guidelines, the Commissioner can amend the register or any document filed with or issued by the Patent Office, if he considers that the register or the document does not correctly reflect the facts and where this Law does not provide an alternative method for effecting the correction.

In contradistinction to amendments to register entries and documents that require publishing for public opposition, amending a scribal error does not necessary require its publication. However, with regard to amendments requested by the Commissioner, Section 172 requires the Commissioner to allow any parties that may be adversely affected to state their case.

In addition, Regulation 149 allows requesting the correction of any register entry or document that does not have specific regulations or laws elsewhere. In such cases, the Commissioner has the discretion whether or not to publish the amendment based on the rights of third-parties that may be adversely affected.

Prior to IL 194774 issuing, there were several rounds of interaction between the examiner and the applicant. with respect to the Office Action of 6 October 2014 the Examiner stated that the claims should be amended as follows:

2(a) As per Regulation 20(a)(3) with respect to claims 1 and 20, the phrase ‘which corresponds to’ should be amended to ‘consisting’ which is a well-known and clearly defined term.

2(b) Combining claim 7 with claim 2 does not overcome the problem referred to in section 3(a) of the Office Action from 4 December 2014 and it is therefore repeated: Claim 2 contravenes Regulation 20(a)(3) since it defines two separate dosage regimes rendering the scope of the claim unclear. The two regimes should be divided by the word ‘preferably’ as per Page 19 line 14, or alternatively, you could claim the narrower, preferred regime in a separate dependent claim.

2(c) At this stage I only have a marked-up claim-set (version 4). After correcting these issues, please submit full marked up and clean claim-sets.

3. If all the issues raised are addressed, I can accept the application (PK 27).

In the  response of 4 February 2015 a fifth amended claim-set was submitted showing the amendments. In an accompanying letter the Applicant noted that following the amendments he anticipated allowance, but noted that “in the appended pages claims 1 and 20 were amended such that the word comprising was replaced with consisting and claim 2 was divided into two claims.”

In practice, the Examiner’s requirements in 2(b) were fully met. the 2(a) requirements are the subject of the present decision.

In his letter of 17 May 2015, the Examiner noted that the examination was concluded and the application with claim version 5 was allowed. The Applicant was invited to check the allowed patent to ensure that there were no errors. On 12 July 2015 the Applicant paid the issue fees and requested publication of the allowed patent application without referring to any typographical errors.

The allowance published in the 30 July 2015 journal and in absence of any oppositions, a patent certificate issued.

Subsequently, on 2 December 2015, the patentee claimed that due to an error, claims 1 and 22 were not fully amended and requested that the claim 1 version 5 as follows 1. An antisecretory protein, which corresponds to an amino acid sequence as shown in SEQ ID NO:6, or a homologue, and/or fragment thereof comprisingconsisting of an amino acid sequence as shown in SEQ ID NO:4 and having antisecretory activity, and/or pharmaceutically acceptable salt thereof, for use in the treatment and/or prevention of compartment syndrome.” be amended to “1. An antisecretory protein, which corresponds consisting ofto an amino acid sequence as shown in SEQ ID NO:6, or a homologue, and/or fragment thereof consisting comprising of an amino acid sequence as shown in SEQ ID NO:4 and having antisecretory activity, and/or pharmaceutically acceptable salt thereof, for use in the treatment and/or prevention of compartment syndrome.” A similar amendment to claim 22 was requested. Both versions are supported by the specification and there is no problem of unity of invention.

The patentee submitted a statement by Ms Sigal Dahan a patent attorney of the agent of record (Reinhold Cohn). Ms Dahan affirmed that she was requested to amend the claims in accordance with the Examiner’s request. she claimed that failure to do so was the result of a genuine scribal error and that there was no bad faith.

The Commissioner Asa Kling is prepared to accept Ms Dahan’s statement and that of the Applicant and to accept that there was a genuine mistake made without evidence of bad faith.

However, at this stage, following the issuance of the patent,  the examiner wants to amend the phrase ‘which corresponds to’ to ‘consisting of’ and ‘consisting of’ to ‘comprising’.  This is problematic since the term comprising is understood to be wider that the term consisting.

A requirement that a claim “comprises” certain elements does not mean that other elements may not be present: “comprising” does not mean “only consisting of”.(Terrel on the Law of Patents, 17th ed., pp. 288).

The amendment from ‘which corresponds to’ to consisting of is narrowing and is allowable. However, amending consisting of to comprising is a widening.

On 28 January 2016 the Examiner acknowledged that a mistake had occurred, but did not consider this to be a scribal error:

Although I was convinced from the statement filed that a mistake occurred in version 5 that was allowed, I have to examine this mistake as a ‘scribal error’ and cannot accept the amendment as it is not a ‘mere scribal error’ as required by Section 69 of the Law.

The Examiner did not find that version 5 included a clear and obvious typographical error that could be corrected.

Following the Examiner rejecting the amendment, the patentee appealed to the commissioner against the Examiner’s interpretation of Section 69 and alternatively requested that the Commissioner allow the amendment under Section 170 of the Law.

The Patentee argued that in the circumstances it was appropriate to allow the amendment in these circumstances.

The problem is that in the letter of 28 January 2016 the Examiner told the Applicant that subject to correcting the detailed problems with claims as filed, the application would be allowed, thereby saving an examination round. Both versions 5 and 6 overcome the Examiner’s issues and are allowable.

Creatively, the Patentee noted that the Examination guidelines were applicable to pending applications and not to issued patents. This is clear from the fact that the guidelines don’t relate to Section 69 that regulates amending allowed and issued patents.

In his ruling, the Commissioner noted that there is a difference between amending pending applications under Section 22 and amending issued patents under Part 3 of Chapter 4 of the Law that relates to issued patents. The types of amendments allowable are discussed in the Opposition to amend IL 121004 in Mutli-vision technologies vs. Avner Medar 4 May 2003 which defines scribal errors both objectively and subjectively.

comedy-of-errorsThe fact that an error occurred is not sufficient to classify it as a scribal error that may be amended. To classify the error as a scribal error it should be an error of the type that is self-evident on reading the specification and must be the result of a technicality. As defined in Medar, so long as the error is not self-evident, the evidentiary support that it was an error is required to be stronger. From this it is possible that the Examiner was overly formalistic. Nevertheless, following Medar the test is whether a person of the art reading the specification would note immediately that an error had occurred.

From the Office Action, the correspondence and the affidavit of the patentee it is not clear that the Applicant intended to narrow the scope of the patent and this occurred in error. When the Applicant pointed out the error, the Examiner accepted that it was indeed an error and the patent therefore issued in error. One the patent issued, for a scribal error to be corrected, it is necessary for it to be clearly a scribal error. That means to say that were the patentee not to have pointed out the error and requested rectification, the claims of version 5 could have remained the claims on record. Consequently this is not a ‘mere scribal error’.

However, one cannot ignore the fact that the patent issued by mistake. In the circumstances and with regards to the mistake one cannot conclude that section 3 of Chapter 4 applies. It does not appear appropriate to cancel the allowance since both versions 5 and 6 are acceptable claims. The appropriate legal basis for the amendment is section 170 since the document does not reflect the facts and there is no other way to allow the amendment.

The commissioner therefore allows the amendment of IL 194774 claim version 6 under section 170 subject to publication of the amendment in the forthcoming journal, thereby allowing third-party oppositions.

COMMENT

I agree that the commissioner has the authority to allow this amendment but think that allowing this error is wrong. It is a clear widening of the claimed invention and the agent of record is supposed to be well aware of the significance of the terms corresponding and comprising.

I do not agree with the Commissioner’s interpretation of section 170a, that relates to amendments ‘if he considers that the register or the document does not correctly reflect the facts‘. This should be limited to a case, for example, where despite a later amendment having been filed prior to allowance, the claim-set of the issued patent does not reflect this amendment. It should not be used where the fact is what the Agent of the Applicant meant to do, which is a matter of conjecture, but of what the Agent of the Applicant actually did. Here the Agent may have made a genuine mistake but who says that all mistakes may be fixed? The amended claims are wider than those that issued and the Agent had an opportunity to amend prior to paying the publication fee.

This scribal error is somewhat reminiscent of the alleged office error committed by the same firm in the wet-wipes case. I do not have an invested interest to oppose the amendment. If somebody does, I hope that they do and would like to see this amendment canceled.


KANEX – Cancelling a Trademark and Posting a Bond to Cover Costs

October 31, 2016

KANEX is a trademark owned by Chen Writing Instruments Ltd. It covers “Staplers, paper-punches, staple-pins, lever arc mechanism and all other office requisites (other than furniture) all being articles of stationary included in class 16.

Kanin India (Pvt) Ltd. filed a cancellation proceedings under section 39 of the Trademark Ordinance 1972. Both sides have submitted their evidence but the hearing which is typically the next stage of cancellation proceedings has not yet occurred.

Now both sides have filed interim requests. Kanin India have requested permission to file supplementary evidence, and Chen Writing Instruments have requested that Kanin India post a bond to cover legal costs should Kanin lose the cancellation proceedings.

Filing Additional Evidence

The general course of cancellation proceedings is set out in the 1940 regulations. Kanin India’s request to submit additional evidence at this stage contravenes the general order of things.

The additional evidence includes two Israel court rulings:

  • 2430/98 Kangaroo Industries Regd. vs. Guard Writing Instruments (1995) LTD.  (30 July 2007)
  • 18116/02 Guard Writing Instruments (1995) LTD.  vs. Chen Writing Instruments LTD (11 Sep 2007).
  • Three affidavits from Ehud Berman, manager and owner of Guard Writing Instruments (1995) LTD. that are dated from 1998, 2004 and 2016.
  • Copies of letters from 1998 sent by Kanin India (Pvt) Ltd., which were attached to Mr Berman’s affidavit from 30 July 1998.
  • Copies of additional letters sent by Kanin India (Pvt) Ltd in 1999 that allegedly mention the trademark

The request to submit the additional evidence was supported by an affidavit signed by Adv. Rami Artman, Kanin India (Pvt) Ltd’s legal counsel, testifying that the evidence only reached him after he had made the original submission of evidence, and that he could not have obtained evidence that he was unaware about.

In the name of Kanin India (Pvt) Ltd., Adv Artman argued that the additional evidence is relevant to rights in the marks and due to their importance, their late submission should be allowed. As the hearing had not yet occurred, there was no reason not to allow their inclusion.

Chen Writing Instruments Ltd. argued that Adv Artman’s affidavit was insufficient and that the evidence was irrelevant to the cancellation proceeding. Furthermore, the evidence was known to the applicants of cancellation when the first round fo evidence was submitted, and since they did not present it at that stage, they were estoppled from submitting it at this later time. If this additional evidence is allowed, it will cause additional and significant expense to Chen Writing Instruments Ltd., and thus Chen Writing Instruments Ltd were entitled to compensation for this damage.

DISCUSSION

As a general rule, evidence is preferably submitted in one lot. (See 2813-07 Unipharm vs. Merck & Co Inc. Section 22 (30 January 2013); See also 579/90 Rozin vs. Bin-Nun p.d. 46(3) 738 (1992) section 8, and also Zusman Civil Evidence Procedures 1995 (509-510).

Nevertheless, the case-law provides considerations that justify later submissions of evidence, particularly the relevance of the submission and the importance of allowing substantive justice to occur. See 1297/011 Michaelovich vs. Clal Insurance ltd. p.d. 55 (4) 577 (2001) 579-580; the stage of the proceedings reached; could the party have brought the evidence at an earlier stage; why the evidence submitted earlier (see Rozin section 8), and whether the opposing party can explain away or contradict the further evidence (391/80 Leserson vs. Workers Residences Ltd. p.d. 38(2) 237 (1984) section 3).

In addition to these considerations, the Commissioner of trademarks has wide discretion to deviate from formal requirements and to accept additional evidence since Regulation 41 grants the Commissioner discretion to deviate from the procedures:

Neither side will add evidence in cases before the Commissioner, however the Commissioner may, at any time allow additional evidence to be submitted as he sits fit, and to adjust costs accordingly.

The commissioner may rely on any of the considerations that courts have allowed, but additionally, may rely on regulation 41 because of the public good inherent in the register. See, for example. competing marks 242735 and 24250 Razer (asia Pacific) PTE Ltd vs Razor USA LLC (14 October 2014), and cancellation proceeding 114996 Hosan Marketing (USA) Ltd vs. Nobel Fashion (1981) Ltd (24 April 2006).

It appears from Mr Berman’s affidavit from 1998, that the Application for cancellation is justified as there was inequitable behaviour in the filing of the Application. However, the way in which this evidence was submitted makes it problematic to allow its inclusion.

It appears from Mr Berman’s affidavit that only part of the evidence available was submitted by the Opposers, and no evidence was submitted as to why the rest of the evidence was not also mae available. The papers were filed in one submission without explanation or organization, and without an affidavit explaining the submission. True, the Agent for the Applicant submitted an affidavit explaining that he had only now learned about the evidence. However, the client did not submit an affidavit or statement explaining the significance of the evidence or why it was not submitted earlier. The commissioner is not convinced that he should accept evidence on the basis of the attorney’s submission. One has to allow the mark owner to cross-examine the challenger and the agent of record cannot represent his client if he himself is signed on an affidavit. this seems to contravene section 36 of the Rules of Ethics for Attorneys 1968 which allow the attorney to testify to technical procedural issues but not to substantive matters. See the request to cancel 187385 aned 187386 Gemological Institute of America and opposition to 200701 and 200702 Gemology Headquarters International (28 May 2012).

Although the commissioner has great flexibility and discretion to allow additional evidence to be submitted, he can also use this discretion to ignore evidence under Section 80 of the Regulations. In this instance, there is no apparent justification to allow late submission of evidence and the Applicant hasn’t even made a case to justify where such late submission should be allowed.

There is something in the trademark owner’s complaint that the additional evidence is being submitted late in the proceedings without due justification.

When weighing up the integrity fo the register against the additional work required to take into account mountains of evidence submitted without proper labeling in an appropriate manner and at an innappropriate stage, the Commissioner ruled that the District Court ruling and the Affidavits of Mr Berman may be submitted together with their appendices within 30 days. The additional material that was not submitted with an affidavit may not be submitted as the trademark owner cannot cross-examine on them.

The Request to Place a Bond for Costs

The mark holder has asked for the Applicant for cancellation to post a bond of not less than 100,000 Shekels to cover legal costs, expenses and damages should the cancellation action be rejected.  The Request is based on section 353a of the Company Law 1999 and section 519 of the Civil Law procedures 1984. Furthermore, the mark owner has requested that the proceedings be stayed until such a bond is posted.

The mark holder considers the request justified since the Applicant for cancellation is a foreign limited liability company (an Indian company) without assets in Israel. Furthermore, the Applicant has not filed any evidence of their financial state. The trademark owner contends that the Applicant is acting in bad faith, is making the proceeding unneccessary complicated by submitting late evidence with a low chance of prevailing, requiring them to post a bond is justified.

To support the request for a bond, an Affidavit from Mr Isaac Neiman, the CEO of the mark holder was submitted together with the request.

The Applicant for cancellation claims that the mark owner’s request to stay proceedings is simply  a ploy to allow them to continue using the mark whilst preventing the Applicant from importing products into Israel.

The Applicant considers the likelihood of the cancellation request being allowed as reasonable, and considers the size of the bond requested to be disproportionate and inappropriate for an Indian company.

Section 353a states:

If an Israeli or foreign limited company files a legal proceeding in an Israel Court, the court is allowed, at defendant’s request, to require the applicant to post a bond to cover legal expenses in the event of the action being dismissed, and can stay proceedings until such a bond is deposited, unless the court is convinced that the Applicant has the resources to pay its bills.

The parties do not disagree that the commissioner can request such a bond deposited. Such bonds have been placed from time to time, see Israel Trademark No. 242256 East and West Stores Ltd. vs. East and West Importers Ltd. (27 August 2012); The Mooi cases Densher vs. Mewah Brands  and Oui Gruppe GmbH & Co. vs. Mis El High Fashion (1992) Ltd. The guidelines for such cases are given in Appeal 10376/07 LN computerized engineering vs. Bank HaPoalim (2009) paragraph 13:

From that stated above, the court reviewing a request for bail to be posted by a plaintiff who is a company to ensure that costs are covered, should first of all consider the financial status of the applicant. This is the first clause in the law, but this does not stop here. If the court is not satisfied that the plaintiff can pay his fees should the defendant prevail, the court should consider whether placing bail is appropriate or not. This stage requires considering the legal rights of  the parties and the status of the parties. The general situation is that a bond is required, and a decision not to require one is an exception to the general state of affairs.

See Appeal 10905/07 Naot Oasis Hotels ltd/ et al. vs. Zisser (13 July 2007, 23 May 2011).

Furthermore, in LN Engineering it was ruled that one does not consider the likelihood of prevailing unless the case is very clear-cut.

In other words – if, for example, the chances of prevailing are high, it may be appropriate not to request a bond but there are two points: (a) the proof is on the plaintiff to show that their case is very good, and (b) it is generally inappropriate to enter a protracted analysis of the chances of prevailing and these should only be considered if they are very good or very poor.

Since the general position is that bonds should be required and the Applicant is a foreign limited company without Israeli assets, the Applicant has failed to to provide justification for NOT requiring them to post a bond. No evidence was submitted about the companies’ finances.

As to the specifics of the case, the onus is on the applicant to show that he should NOT place a bond, and in this instance, one notes that the Applicant made the strange move of late submission of evidence, and was also responsible for various delays and extensions at various stages. Nevertheless, at this stage, it does not seem appropriate to look into the merits of the case. In conclusion, the Applicant has not persuasively argued that they should not post bail.

In LN Engineering, it was ruled that bail should be proportionate to expected costs if the Applicant loses:

Once the second inquiry is concluded with a conclusion that the Applicant should indeed post bail, the third inquiry commences, to ascertain the appropriate bond that is proportionate and balances the various interests. Paragraph 13 here.

The mark holder has asked for a bond to be set at 100,000 Shekels, and notes that actual costs so far have been 50,000 Shekels, but one has to note the large additional submission of evidence that has now been made.

Consequently, the Applicant has to deposit a personal promissory note for the full amount requested within 30 days for the case to move forwards.

CONCLUSION

The District Court ruling and its appendices may be submitted. Mr Berman’s statement and its appendices may be submitted, but no further evidence will be allowed.

The Applicant will personally guarantee payment of costs of  100,000 Shekels should the cancellation proceedings prevail, and in consequence of this late submission, the applicant will pay 8000 Shekels legal fees within 30 days.

Interim Ruling by Asa Kling re cancellation of 130585 (KANEX), 28 September 2016.

COMMENT

This is a cancellation proceeding. There is nothing to stop the Applicant from filing a second cancellation proceeding immediately on this one being rejected.  No trademark is ever inviolate. It is therefore appropriate to review all the evidence available and to rule on substance not on formalities. It therefore seems clear that evidence should be allowed to be submitted at any stage. However, if the stage is not the correct one, costs should be awarded against the late submitter. Similarly, evidence submitted without a proper affidavit or in a format not acceptable, should be objected to, giving the submitter an opportunity to correct the defects, and awarding costs to the opposing party.