Appeal Regarding Infanti Baby Seats Virtually identical to those of Fisher Price (Mattel)

September 19, 2017

fisher price swing seatBaby swing-seats that were made in China and are identical to Fisher Price swing seats, down to the image of a lion on the upholstery, were imported and sold in Israel under the brand Infanti. Fisher Price obtained an Anton Pillar injunction and seized 1830 seats from the Importers’ warehouse. However, the Nazareth District Court rejected all attempts to obtain compensation under copyright infringement of the lion design printed on the seat upholstery and in the instruction manual, trademark infringement for the Fisher Price logo shown in the illustrations of the instruction manual, the trade tort of Passing Off, and the catch-all Law Of Unjust Enrichment following A.Sh.I.R. The case was then referred to the High Court.

This ruling by a panel of Israel High Court judges considers whether copyright subsists for a product design or artwork printed on a product where no design was registered for the product and whether there are grounds for sanctions under the trade-law of Passing Off or under the Law of Unjust Enrichment. The legal advisor to the government filed an amicus brief clarifying the position of the government in such issues.

judge elyakim rubinstenThe main ruling was given by Vice President of the High Court, Judge Elyakim Rubinstein who first considered the basic relationship between design law and copyright. Then, he ruled whether part of something that could have been registered as a design is entitled to copyright protection, and if so, whether the lion character is copyright protected even if the swing chair could have been registered as a design. Are the respondents direct or indirect infringers of the Appellant’s copyright? Do they have the defense of being unaware? Does trademark infringement require intent? And finally is there Passing Off or Unjust Enrichment?

Essentially Judge Rubinstein and Fogelman found copyright infringement due to the lion character on the upholstery, and Judge Meltzer also found that there was passing off, due to the products being virtually identical. Judges Rubinstein and Fogelman rejected the claims of passing off since although Fisher Price clearly had a reputation, they did not necessarily have a reputation for the baby swing seat. Infanti’s copies, though virtually identical to those of Fisher Price, were packaged in different boxes and the boxes were clearly labelled Infanti. The product itself was also labeled with the Infanti brand.

The main ruling is given below, followed by additional comments by Judges Fogelman and Meltzer. Since this is an important ruling, I have translated it in full. At the end are some comments and criticisms.

Background

This is an appeal against ruling 39534-02-15 by Nazareth district Court judge, Ben Chamo which was given on 8 January 2015 and in which Fisher Price lost their claim regarding copyright infringement in a child’s swing seat.

The ruling addresses the relationship between copyright and registered design rights. Judge Rubinstein notes that in the modern consumer society, the design of consumer goods has an increasing importance, and that manufacturers invest heavily  Consequently, many goods are some combination of functionality and artistic expression which makes it difficult to classify such goods in a single IP category and raises difficult legal questions. This appeal relates to a list of such questions of which the relationship between design law and copyright is central.

The Appellant, Mattel Inc. is a US Company that owns Fisher Price which makes baby goods, etc. The Respondent, Dvaron Import-Export Co. Ltd, is a company that imports various baby products into Israel. They and their directors and share holders were sued.

infantiMattel / Fisher-Price learned through Sakal which imports their products into Israel, that the respondents have been distributing a baby swing seat manufactured in China and branded as Infanti, which is a copy of the Fisher-Price swing seat.  Read the rest of this entry »


Comprising

July 8, 2014

Chinese patent

In patent claim language, the term ‘comprising’ is generally taken to mean that a claimed device or system includes the listed elements, but they are not necessarily a closed list. In other words, possibly the device or system includes additional elements. Similarly, a method comprising a list of steps may include additional steps not detailed.

There has now been a Chinese ruling to the contrary. Apparently the China Patent Re-examination Board (PRB) has maintained the validity of a patent by interpreting the term “comprising” of the challenged claim as “consisting of”, thereby narrowing the claim scope to avoid prior art.

The case relates to ceramic blasting beads, and an attempt to invalidate Pat. No. ZL200810045235.7 regarding a composition for “ceramic blasting beads” was overturned.

Claim 1 of the patent in question is clear and unambiguous, claiming a ceramic blasting bead comprising various oxides, including ZrO2 and HfO2; Al2O3 or CaO, etc. The petitioner asserted that claim 1 lacks novelty in view of the prior art which discloses all ingredients, and, in addition, two other elements, Y2O3 and CeO2. The patent owner argued that the term “comprising” in Claim 1 is intended to mean “including the following and excluding others” on the basis that the specification disclosed that the motivation of the invention was to provide a solution that excludes Y2O3 and CeO2. The plaintiff disagreed on the necessity to introduce the specification for claim scope determination under Art.59 on the reason that the claims are clear in and of themselves, and thee is no need to look to the specification for further clarification.

Under former Chinese practice, Article 59 teaches that the protection scope of an invention or a utility model patent is confined to what is claimed literally, and the specification may be used to interpret the claims when the claims are unclear by itself. However, in this case, the PRB gave a new understanding of Article 59 that under certain situations, one could also integrate the parts of the specification and the background art of the patent application for claim scope determination, so that the technical solution can be accurately conveyed from the claims, provided that the interpretation does not violate logic and common sense. The PRB further clarifies that introducing the specification for claim scope determination is not restricted to where a claim is unclear.

The Appeal Board reinterpreted Article 59 and concluded that “if a skilled person in the art based on the disclosure of the specification can interpret that certain technical features should be excluded, such exclusion is allowable under the circumstance that the claim terms are not obviously contradictory”.

There is a problem. Section 4.2.1, Ch. 10, Part II of the Chinese Examination Guideline clearly states that “comprising” means that some components which are not indicated in the claim may be further included in a claimed composition. Thus until now, a closed-ended interpretation that excludes features not specifically recited in the claim was untenable. Even though specific PRB decisions are not binding precedents, this decision creates a high degree of uncertainty for those who may wish to invalidate patents based on novelty and/or inventiveness, but may provide another option for patent owners to argue for narrower interpretation of the claims should new prior art be presented during invalidity proceedings that anticipates the originally granted claims.

COMMENTS

Since an Australian judge understood the term comprising as limiting, I’ve generally included a paragraph at the end of patent specifications to the effect that the term “comprising” means including but not necessarily to the exclusion of other elements or steps. In other words, the term comprising indicates an open list. A paragraph of this sort can save a lot of ambiguity, but in this case, might have sunk the application.

What is worth noting is that in the Australian case, the judge was a general judge. In this instance, the Chinese board is apparently a dedicated patent forum. In Israel, the patent examiners have a nasty habit of deciding that text of this nature renders the scope of protection ambiguous and request that such paragraphs are removed.

In general, I am not a great fan of boiler-plate text.  The problem is not that people use standard paragraphs. The problem is that they do so without thinking. This case emphasizes that every line of a patent application is a two edged sword in that what is added to widen the scope of a patent claim, invariably widens the prior art that can be cited against the patent as rendering it lacking novelty or inventive step.

Negative claiming is generally frowned upon as being indefinite. However, in this case it seems that if the invention is that the ceramic beads do not contain ceria or yttria, this seems to be what should have been claimed.

There are about 20 applications that I’ve written over the past couple of years that are currently under examination in China and Taiwan. I have to rely on associates for translating my specifications into the local vernacular and in accordance with local case-law. I know what I mean when I write the applications, but do not know what is before the Examiner. Office actions are translated into English for me, and I instruct an associate who responds in Chinese. This is rather like the party game Chinese Whispers. When cases are allowed, I can never really tell whether the claimed invention is what was intended, and recently, where drafting for a China based client, I have the CEO’s personal assistant double check the translation against my original before filing.


Amit Ben-Yehoshua Appointed Foreign Arbitrator in China

May 29, 2014

Amit Ben-Yehoshua has been appointed to serve for a three year term as a foreign arbitrator in China International Economic and Trade Arbitration Commission (CIETAC) which is the biggest arbitration institution in China and one of the prominent in the world. CIETAC resolves commercial and trade disputes by means of arbitration and mediation. Amit becomes the first Israeli Lawyer appointed to this position.

 

International arbitration is the most common mean chosen by parties to resolve disputes related to international business. International arbitration is recognized by 149 countries global wide according to the “New York Convention” of 1959.

 Amit works for Dacheng Law Offices which was founded in 1992 and is one of the first and largest partnership law firms in China. There are currently over 1,900 lawyers and staffs working for Dacheng Law Offices, most of whom are graduates from leading law schools within China or overseas.  A substantial number of our lawyers have expertise in areas including international trade, finance, construction, business administration, accounting, and taxation.

Amit is licensed to practice law in California and Israel, and holds a Master of Law degree in Chinese Law from Tsinghua University of Beijing.  He has been living in China since 2006 and has been working at two of China’s most elite law firms Da Cheng Law Offices and Zhong Lun. Amit is also the Vice Chairman of the China Law Committee ofthe International Law Section of the American Bar Association and is the Chief Editor of the China Law Committee’s publication the China Law E-Bulletin. Amit has had the unique opportunity to work as lawyer and as a Senior Counsel in three distinct jurisdictions (California, China and Israel) as a transactional lawyer and as an experienced litigator.

 Before coming to China, Amit served as a criminal defense attorney in United States. Earlier in his career, Amit served as a judicial clerk for the honorable Judge Haran Fainstein in the State of Israel.

I first met Amit at a Patent Conference in Shanghai. Israeli companies having issues with Chinese companies should consider arbitration as a alternative to the courts. Particularly where there is a lot of business between the entities which could be damaged by a no-holds bar war. I expect that Amit would be a good person to talk to about such matters.


Made in Hong Kong

May 24, 2014

Rebbe     Chabad

I wasn’t planning on any more non-IP related travel notes, but have just spent a Shabbat in Kowloon and want to tell you about it.

I prayed and ate Friday night at the Hechal Ezra Synagogue where I met up with a couple of ex Hasmo boys – pupils from my alma mater, one a few years older than me and one a few years younger. One is a brother of an Israeli patent attorney. Certainly less intelligent than his other siblings, he is a success International businessman. I found myself reflecting how many of the less academic pupils from high school are millionaires. Those of us with degrees in practical subjects are mostly making a good living and I suspect would be bored by international commerce. Nevertheless, it is those that didn’t and couldn’t go on to study who seem to be the wealthiest.

The food was delicious as always. The Rabbi gave a little talk about earning a living honestly and the importance of charity. Most visitors to Hong Kong are international businessmen. However, I find the atmosphere a little mercenary.

Shabbat morning I decided to pray and eat with Chabad. I always stick with Glubavich. The Chabad House has services in the tradition of the Ari, which is more similar to the Ashkenaz tradition than Hechal Ezra, which is Halabi (Aram Sova) – Syrian. The service was supposed to start at 9:30, but for want of a tenth man to make up the quorum, the service started at 10 am. To cover expenses of the hospitality, the honour of making a blessing over the various Torah portions was auctioned. There wasn’t a Cohen in the synagogue, so for the priestly sum of $18 US, which I settled up Saturday night, I received the first benediction. I’ve always wanted to be a Cohen. However, none of my father’s family are of this caste. It seemed a bargain to be able to join this exclusive club populated by the likes of Shlomo Cohen and Nachman Cohen-Zedek for such a small sum. However, the rabbi explained that I was merely substituting, and not buying the genealogy. Being something of a Marxist in the Groucho tradition, thoughts about not wanting to join a club that would have me as a member entered my mind.

Groucho

There was a portrait of the Rebbe – the late, much revered Grand-Rabbi Menachem Mendel Schneerson, and, being a bit of a Litwak, I am less than happy about praying in the presence of images of a person. However, once one realizes that every community is influenced by the surrounding culture, and Chabad is essentially a Russian Orthodox type of Church, the icon made sense. In a Da Vinci like manner I noted how the eyes followed one around the room.

A young but distinguished looking bearded gentleman with a silk frock coat and a stylish Italian hat who received a Torah benediction after me, was treated to hearty Mazel Tovs, and it transpired that he’s got married the previous week after converting the week before.

The prayers were followed with a Shabbat meal, including salads, a fish course, a meat course – mostly cholent, and fresh fruit and cake. It wasn’t as posh as the Halabi option, but the emphasis in Chabad is on the Jewish people and community rather than business, but with the usual Messianic overtones that Chabad is known for. Chabad is somewhat egalitarian. Their website announces Shluchim: Rabbi Itzik and Chana Eisenbach and there is a definite atmosphere that the Rabbi and his wife work as a team. Both here and in Shanzhen, the Rebbetzen is an active community outreach worker in her own right. The atmosphere was very congenial, and less formal than Hechal Ezra.

I had an opportunity to talk to the recent convert, and was interested to learn that he was from Barcelona and had originally learned Chinese to work as a missionary for the Catholic church. His family had Conversio ancestry on both sides and his mother had converted to Judaism and was living in Jerusalem. He followed some debates between Christian and Jewish clergy and had come to the conclusion that the Jewish case was more persuasive. He was learning Daf Yomi and he and his Chinese girl friend had converted. The conversation was terminated by the Grace After Meals, for which he did the Mayim Achronim ritual hand-washing that very many otherwise Observant Jews don’t both with. Another recent convert, also converted by the well-respected Chabad Rabbinic Court in Australia, was an ethnic Chinese from New Zealand.

The beauty of Shabbat in Hong Kong is that one never knows who one might meet and one really bumps into the most interesting people.


Why? Is this night different?

May 23, 2014

Indian seder

The Mul Yam Kosher restaurant in Kowloon is really excellent. The food is phenomenal, and there are tablecloths and cotton napkins, stem water-glasses. It is a place to take clients. However, it is also phenomenally expensive and costs about twice what the same food would cost in an upmarket Jerusalem restaurant.One can find Haagen Daaz ice-cream and Pepperidge Farm chocolate chip cookies, but for Kosher food, the options in Kowloon are limited.

I’d been subsisting on chocolate, raw vegetables, fruit and crackers in Zhuhai for a week, and wanted to eat something proper. I stumbled across Smrat Pure Veg. an outlet in a market that sells Indian Punjabi and Jain food. The consumerables behind the counter all looked very interesting. I wasn’t sure what the things were though. After ascertaining that it is strictly vegetarian, I asked the vendor what the least spicy stuff he had was. He called over a Sikh who explained that as the food is ready made, it is all rather hot, with lots of chili pepper. He explained however, that they had a restaurant upstairs, where they would cook for me without chili, and less spices.

I followed him to a lift and we went up six floors and through a plain door to an authentic Indian restaurant. The decor furniture and prices were rather more modest than at the the Kosher restaurant. unfortunately I had no idea what any of the dishes were!

Remembering the great BBC “Goodness Gracious Me!” sketch, I explained that I was English and wanted something bland. I let them choose dishes from the menu and, after ascertaining that the cheese was strictly vegetarian without animal rennet, waited for what I was about to receive.

When I arrived, the restaurant was empty. It quickly filled up, and I noticed that everyone else looked rather Indian. I think I had found where the Indian tailors go to eat! Someone photographed me with his smart phone and asked if I liked Indian cuisine. I responded that I didn’t know, but could let him know later.

Whereas Chinese women dress for the climate and wear rather short skirts or shorts, Indian ladies are more like Beis Yaakov seminary students. They don’t cover their hair, but wear full length skirts or trousers, or tunics over leggings, and have sleeves to their triceps.

The waitress brought me some pieces of carrot and cucumber and a bowl with a dip that turned out to be yoghurt with cardamon and various other spices. I was on home ground! On all other nights we don’t dip even once, but on this night, twice! She brought me a fork. Noticing that everyone else was managing with a spoon and their fingers, I disdainfully put it to one side.

There was a picture of the Ben Ish-Chai (or similar) on one wall, and a television screen showing a Bollywood movie on another, which added to the atmosphere. The waitress brought Chapatis and a delicate curry. Chapatis are unleavened bread, that can be used to wrap Paschal lamb and horse-radish super Indian, hot hot sauce (but not in a strictly vegetarian restaurant of course). I suspect that the Indian child on the next table that I was playing Pickaboo with, was born in China. I bet his parents used supper in an Indian restaurant to explain where the family had come from and where it was going, and the miraculous trip on eagles wings across the South China sea.

I ordered a Samosa, and finished with some Indian sweet that turned out to be butter fried balls of semolina (פסולת). Together with mineral water and a coffee, the meal cost about 70 shekels, or $20 US. I have discovered that there is a Buddhist monastery with a strictly vegan Chinese restaurant near the giant outdoor Buddha. Maybe I’ll try that next.


visa & Visa

May 22, 2014

When I moved on to Shanzhen, I thought that my Chinese visa was in good order. I am a regular visitor to South China and have a year long visa. However, when queuing at passport control, it transpired that my visa had ran out at the end of April.

I was very impressed with the speed at which I was whisked upstairs and my passport went from one clerk to another along a row of three, and then, after paying about $20 US, I got a visa, the whole procedure taking less time than Passport Control at Ben Gurion Airport on an Israeli Passport.

landing_slip (1)

I consulted the little slip I was given, and noted that the visa was good for three months, until 15 August 2014. I went on from Shanzhen to Zhuhai, and then, after a couple of days with a client, left early to get the ferry to Hong Kong Airport. I anticipated arriving 3 hours before the flight, and had decided to have a neck massage at the airport, and to wander around Duty Free. After purchasing the ferry ticket, I went through to passport control and discovered that there was a one week visa in the passport. I wasn’t worried, however, since I knew that I had a little slip saying that I was OK until 15 August 2014. The problem was that I couldn’t find the bloody thing. I went back to the departure lounge, received a refund of my ferry ticket, and went through my hand luggage and case, turning everything upside down. I found my Disneyland entry ticket, and considered trying to bluff it. Chinese have a great sense of humour. This is probably how they manage with chronic overcrowding, etc. China is, however, a totalitarian regime, and Police and Customs are not known for their humour. I have a cousin who made a joke once about a bomb, and was strip searched and examined internally. Served him right. I eventually found the slip of paper. I bought a ticket to Hong Kong Island and calculated that I’d still have plenty of time to get the Airport Express. Eventually they allowed passengers to go through to passport control again and I queued up triumphantly to the same clerk, and was told that the slip was a Hong Kong visa. I looked at it. It didn’t have the words Hong Kong in English. There was Chinese on it and the words Visa valid until 15 August 2014. I asked the clerk if she was sure.

china visa

I was told I had to go back to Shanzhen’s Souku (pronounced Choco) to sort the problem out. I arrived at Souku two hours before take off, with a ferry due to arrive at Hong Kong Airport 30 minutes before departure.

I’ve previously arrived at Hong Kong Airport 20 minutes before takeoff and got on the plane. It is not advisable and ElAL doesn’t like it, but I am a frequent flyer and have performed the odd miracle. (When we were first married, I had a ticket for my wife in the name of Factor but her passport was in her maiden-name. Despite a strike at the Ministry of the Interior, I managed to sort things out, but I digress).

I eventually found a travel agent who could speak English and could help me. Flying with another carrier would cost $2000+. There were no seats on Thursday’s ELAL flight, and eventually, for a further $500US to ELAL and 300 RMB to her, I got a ticket on Sunday’s flight to Tel Aviv.

It was now too late for Customs to process me and I was sent to another border crossing. I had to queue up again, this time with several million Chinese, to reach Passport Control to be told again that my visa had run out. I apologized and did my spiel. After waiting an hour, I had to copy a statement that “I understand and agree with the above” on a form in Chinese (Whether Mandarin, Cantonese, Chow Mein or Sweet & Sour, I have no idea). I don’t know what I was signing, and suspect that on a future visit, this may come back to haunt me. I was fined 500 RMB (about $80 US), had to sign 5 forms, none of which was in English, and had to add my finger print to one of them. I was then sent back.

Once I got through passport control and into Hong Kong the other side, I had no idea where I was or how to get to somewhere I knew. A bus driver told me to take him two stops and then to change. A delightful Pakistani in an electric wheelchair took pity on me and helped me get a train to Kowloon.

I went straight to the Mul Yam restaurant in the Sefardic Synagogue, and having eaten crackers for the past four days, ordered a steak. One of the regulars directed me to a cheap guesthouse where I booked in for four nights. The place is reasonably price and much cheaper than a hotel. Unfortunately, the mattress is thin and hard, but otherwise, adequate.

The fiasco has resulted in me being a further weekend in China instead of at home, and has cost about $1000. At this stage my mobile phone decided to play up. That is not generally a problem, but I can’t remember my PIN number, which is stored in the phone which is refusing to boot up. An Indian tailor trying to sell me some shirts took me to a Chinese technician who had a sign saying “Prices according to invoice. No discounts. If you want to bargain, mend it yourself”. He charged me $120 HK and told me to come back in an hour. I killed time by wondering through the market, but when I got back, he refunded my money and said that the phone was confused and he could only wipe memory and recalibrate.

Having a VISA credit card makes it possible to manage with unforeseen mishaps. Not having a credit card and no cash is no laughing manner.

NoVictor_(Visa)

I walked back to the guest house and met the Indian tailor again. He offered to bill me $2000 HK over the cost of some shirts and, after discounting $70 HK for the bank charges, to give me the cash. I agreed to this.

I am four days more in Hong Kong than I wanted, but have ordered a new suit and spare trousers, and some shirts, all made to measure and good quality. I have done some sight-seeing, and have bought some English teabags from Marks & Spenser and a smart phone. All in all, could be worse.


Disney!

May 21, 2014

china disney

INTA’s final event at Hong Kong’s Disneyland was an opportunity to see my colleagues letting their hair down. I am a firm believer in having a girl in every port, and in the accompanying photo you can see Tweetie-Pie, my Hong Kong girl who let me join her and her family for the Winnie the Pooh ride.

Not having my kids to take me on the fast and furious rides, I enjoyed a couple more sedate activities.  I wish my 11 year old was with me. He’d enjoy Disney, but that’s not the reason. I would have liked to have pointed out that people whose job consists of waving a white Micky Mouse hand and smiling. I’ve been trying to convince him to study a little harder to have more options.

It was amusing that there was a sign by the jungle ride saying that one might get wet. As it was raining on and off, I think most of us got wet anyway. It was odd seeing one of Israel’s leading litigators (who shall remain nameless) wearing a pair of Micky Mouse ears.

Unlike the opening reception where Kosher food was absent, here, as promised the Mystic Point had a room with Kosher food. The same dining area contained vegetarian and Hallal. It could be that all of it was Rabbinically supervised, as Kosher food fulfils the Muslim requirements for Hallal. On the other hand, we were unable to clarify where the Kosher food came from and whether it was supervised or merely ‘Kosher style’. One meat dish was labeled as containing lactose. Was this a mistake? Was it Kosher meat cooked in butter or cream? I ate steamed salmon and salads. Some Kosher keeping konventioners ate everything and one only ate a banana that he pealed himself. Compared to INTA in the US, this was disappointing.  Nevertheless, the proximity of all the special diet foods meant we have Moroccan, Egyptian and Dubai colleagues at the next table. It may not immediately bring about an exchange of work, but I think that cordial relationships between Israeli patent attorneys and their colleagues in nearby jurisdictions is a positive force. I did suggest to one charming Jordanian associate whose first name is Jihad, that perhaps like the Chinese, he should consider an English name like Gerald or Jared.

Overall, Disneyland is not such inappropriate place to hold an INTA event. INTA conferences are a kind of fairy-tale world of receptions and beer drinking, where one fantasizes about landing lots of new corporate clients.