The Admissibility of Late Submitted Evidence

July 1, 2018

Competing Marks Proceeding – DMI Dental Supplies vs. DMI Innovative Medic al Technologies ltd.

Where there are two competing pending trademark applications in Israel, unless the parties can agree to co-exist under conditions acceptable to the Israel Patent and Trademark Office (i.e. not confusing to the public), a special proceeding occurs under Section 29 of the Trademark  Ordinance 1972, to determine which application should be examined first, usually barring the other application from registration. The first to file is considered less important than the usage of the mark and the investment in promoting it. As always, inequitable behaviour trumps other considerations, and where proven, the mark of the guilty party is generally cancelled.

This interim ruling focuses on admissibility of late submitted evidence.

On 15 April 2018 there was proceeding under Section 29a of the Trademark Ordinance 1972 during which DMI Dental Supplies was ordered to produce an audited financial statement for 2017 showing sales of the company in Israel.

On 15 May 2018, DMI Dental Supplies submitted the document together with additional documentation not requested, including a balance sheet, profit and loss account and explanations.

The same day, DMI Dental Supplies submitted an urgent request to add further evidence. The evidence in question was a short statement from Mr Zaza Debershvilli that attempted to establish that the name was registered since 2012. This was appended to the Affidavit of Mr Alon, a witness for DMI Dental Supplies whose Affidavit was already on file. The affidavit itself was appended to the request to allow its submission.

On 21 May 2018, DMI Innovative Medic al Technologies ltd requested that this additional submission be removed from the file, or they be allowed to submit their balance sheet. Prior to obtaining permission, DMI Innovative Medic al Technologies ltd simply submitted their balance sheet.  DMI Innovative Medic al Technologies ltd opposed the additional submissions from DMI Dental Supplies claiming that they were attempting to strengthen their position and this was not allowable at that stage of the proceeding. Simultaneously they claimed that the additional evidence did not add anything new, and that its submission was acceptable if given negligible evidentiary weight as an affidavit that is not cross-examined, and that costs be awarded to them.

On 28 May 2018, DMI Dental Supplies responded to DMI Innovative Medic al Technologies ltd, objecting to the awarding of costs for the additional submission. Furthermore, they argued that since DMI Innovative Medical Technologies ltd’s balance sheet was not audited, it could not be considered as evidence, particularly as it related to foreign entity that was not a party to the proceeding.

Section 41 of the Trademark Ordinance 1940 states:

No party may submit additional evidence in any hearing before the Commissioner, however the Commissioner may, at any time permit the Applicant or Opposer to submit any evidence under conditions that he considers appropriate, regarding costs or other matters.

In general, parties should submit all their evidence in one go, and not in a trickle (Appeal 579/90 Rozin vs. Bin Nun, p/d/ 46(3) 738, 742 (1992), and Zusman, Civil procedures 509-510, 7th edition, 1995. Whilst it is true that the court can accept additional evidence during the proceeding and even during summations, (Appeal Shenzer vs. Rivlin, p.d. 45(2) 89, 95 (1991) and even during Appeal (Shenzer 95. Regulation 457 of the Civil Court Procedure Regulations, 1984).

Together with this, the court has to be very wary and careful when exercising this discretion “and in general should be careful to follow civil procedures, including the submission of evidence at the appropriate time” (Shenzer, page 95). The rationale for this principle is general efficiency of the handling of the case and of the court system in general.

There are four criteria to allow the submission of evidence at a different stage than that specified in the Civil Court Procedures:

  1. The most important is the importance of the evidence to ensure that justice is dispensed. This requires consideration of the new evidence in deciding the case, and the weight given to it, since it was not timely submitted.
  2. The amount of damage (evidentiary and with regard to the hearing) that would be caused to the opposing party if the evidence is accepted, which would alter the balance between the parties.
  3. The reasons why the evidence was not timely submitted and the responsibility of the submitting party for the lateness of the submission and whether they can be considered as acting inequitably by withholding the evidence until its late submission. (see Appeal Shasha Securities ltd vs. Adanim Mortgages and Loans ltd. p.d. 42(1) 14, 18)
  4. The damage to the effective management of the proceeding (re Rozin, page 743).

Applying these principles to the present case leads to the decision not to allow either party to submit additional evidence regarding the extent of their sales, since she does not consider that the evidence helps determine making a correct ruling or uncovering the truth. The deadline for the timely submission of evidence has passed, and neither party provided justification for their late submissions.  The evidence has been heard and the parties should be making their summations.

Ms Shoshani Caspi is less than enamoured with the behaviour of the parties, who chose to submit their additional evidence without waiting for authorization to do so. It is well-known that one should only submit late evidence after receiving authorization. Submitting the evidence together with the request does not accord with the Supreme Court ruling in Appeal 6658/09 Multilock ltd. vs Rav Bareakh ltd, 12 January 20110 on page 11 paragraph 12:

Until there is a judicial ruling allowing submission of additional evidence, a party to a proceeding is not allowed to relate to that evidence in his claims. Under the guidance 1/92 published by the Chief Justice, a request to submit additional evidence should “describe the purpose of the evidence without attaching it (section 1 of the guidance). This guideline attempts to strike a balance between the requirement not to expose the court to the additional evidence prior to being authorized to do so, and the need for the court to have an understanding of the nature of the evidence in order to consider whether it is relevant and significant.

As to the additional affidavit that DMI Dental Supplies wished to submit, Ms Shoshani Caspi considers that it should be allowed, despite it being submitted prior to receiving authorization. This is since DMI Innovative Medic al Technologies clearly stated that they do not object to its submission. However, DMI Innovative Medic al Technologies are correct that it should be given little weight since they cannot cross-examine the witness. However, she does not agree that DMI Innovative Medic al Technologies should be allowed to continue to cross-examine, as the new evidence does not add anything new. Since DMI Innovative Medic al Technologies did have to relate to the new evidence, they are indeed entitled to costs.

In conclusion, DMI Dental Supplies cannot submit the new material. DMI Innovative Medical Technologies are not allowed to submit their balance sheet.  DMI Dental Supplies can submit their Affidavit and costs of 350 Shekels (just under $100) are ruled to DMI Innovative Medic al Technologies.

The period for submitting summations starts today, 29th May 2018.

Interim ruling by Ms Shoshani Caspi re DMI competing marks proceeding, 29 May 2018.


“Think Different” and “Tick Different” –

March 21, 2018

Tick different

Apple Inc filed Israel trademark no. 284172 for the slogan “Think Different” in classes 14, 28, 35, 36, 41 and 42.

Then Swatch AG filed Israel Trademark Nos. 281116 and 281332 for “Tick Different” in classes 9 and 14.

Now “think” and “tick” mean totally different things, but visually, the marks have a similarity, in that they both start with a t, have an I in the middle, and end with a k. The Israel Trademark Examiner saw a likelihood of confusion for fashion conscious illiterates or those whose mother tongue is not English, and instituted a competing marks procedure.

Apple’s slogan ‘think different’ dates back to 1997 and was a response by Steve Jobs to IBM’s “Think” campaign, and they already have a registered mark no. 266923 for “Think Different” in class 9. Consequently, in an Office Action Swatch’s marks were refused to under Section 11(9) of the Ordinance.

On 1 November 2017, Apple requested that the competing marks procedure be suspended until if and when Swatch managed to overcome the Section 11(9) objection.

Think different

Apple claims to be one of the leading technology companies in the world. They allege that the “Think Different” campaign should be considered a “well-known mark” under the relevant section of the Ordinance, and is thus entitled to wide protection against marks, seen in different classes, and Swatch’s Tick Different is confusingly similar thereto. Furthermore, Swatch’s application was rejected under Section 11(9) of the Ordinance in light of Apple’s registered mark. Apple considers the Angel Bakery vs. Shlomo Angel Patisserie LTD from 2016 as a relevant precedent. In that case, there was a competing marks proceeding in parallel with formal examination based on earlier registered marks and former Commissioner Asa Kling suspended the Competing Marks proceeding whilst examining the registerability of one mark based on previously registered marks. In this instance as well, Apple argues that it is ridiculous to have to fight a competing marks proceeding, where, if Swatch were to win, they would in all probability not be able to register their mark in light of the previously registered Apple mark.

swatch

On 4 February 2018 Swatch responded, claiming that the competing marks procedure should NOT be suspended since unlike the Angel’s case, Think Different should not prevent Tick Different from being registered. Reasons given included that Apple was not using Think Different in Class 9, and because the marks were not confusingly similar phonetically or visually, and anyway Class 9 (Computers, Software, Electronic instruments, & Scientific appliances) and Class 14 (precious metals and their alloys and goods in precious metals or coated therewith, hierological and chronometric instruments).

Swatch considers that a competing marks procedure is necessary to decide which mark takes precedence. Swatch considers that the Commissioner is obliged to conduct a competing marks procedure if there are pending marks to two applicants that are confusingly similar and the parties are unable to agree to coexist, and this should occur prior to examination of the a priori registerability of either mark. The Angel’s case is different since in this instance, the list of goods to be protected by the mark is different for the two applicants.

ON 14 February 2018, Apple responded that they were using the Think Different mark, the two marks were undeniably similar and the Angel case is very relevant. Furthermore, as far as competing marks is concerned, it is irrelevant if the applied for marks are in the same category or not.

RULING

Section 29(a) is the proceeding that decides which of competing marks takes precedent:

Where separate applications are made by different persons to be registered as proprietors respectively of identical, or similar to a misleading degree, trademarks in respect of the same goods or goods of the same trade description, and the later application was filed before the acceptance of the prior application, the Registrar may refrain from accepting the applications until their respective rights have been determined by agreement between them approved by the Registrar. In the absence of such agreement or approval, the Registrar shall decide, for reasons which shall be recorded, which application shall continue to be processed pursuant to the provisions of this Ordinance.

Where the Commissioner uses his Section 29(a) discretionary power, there are two applicants that use the same or very similar marks. In such circumstances, the Section 29a ruling will cancel the rights of one of the parties to use the mark where, were it not for the competing mark, both applicants would be able to use their marks. Thus it is the second application that might make the mark non-registerable and effectively both parties attempt to prevent the other from continuing to use a mark.

In a long list of decisions and rulings, the Trademark Office considers the following:

  1. Who filed first?
  2. The extent of usage, and
  3. Issues of bad faith in selecting the mark.

See for example, Appeal 11188/03 Contact Linsen Israel ltd vs. Commissioner of Patents & Trademarks (5 May 2005) and Appeal 878/04 Yotvata ltd. vs. Tnuva Cooperative 4 March 2007 and Appeal 8987/05 Yehuda Malchi vs. Sabon Shel Paam (2000) ltd.

As a rule, in the Competing Marks procedure, the issue of registerability over existing marks is not considered, and there is an assumption that both marks are registerable and would be registered if not for the Competing Marks Proceeding (See Bagatz 228/65 Fromein & sons ltd vs Pro Pro Biscuits ltd p.d. 19(3) 337 (1965) where Judge Salzmann stated:

A proceeding under Section 17 (now Section 29) is not intended to determine whether a mark is registerable. In such a proceeding the Commissioner works under the assumption that both marks are registerable. At a later stage, after the mark has published and an opposition is filed, this assumption may be lost.

If it is clear that if the Commissioner is not willing to assume registerability of both marks, he will not initiate a Competing Marks procedure under Section 29(a) of the Ordinance. It is only sensible to start a Section 29a proceeding if one can assume that the marks are registerable under Sections 8, 11 and 12, and the following quotation from Frohmein is relevant here:

Where the Commissioner is not willing to assume (that the two marks are otherwise registerable), it is inappropriate to proceed according to Section 17 (i.e. Section 29) and consider which mark takes precedence, since this assumes that both marks would be registerable if not for the competing mark (BAGATZ 228/65 [1] page 341).

Furthermore, Judge Barak added in re Al Din that under a Section 29a proceeding, the Commissioner has the authority to decide that neither mark is registerable before launching the Competing Marks Proceeding since there is no point or value in to conduct a long inter-partes proceeding where neither mark is registerable:

“Nevertheless, there is nothing to prevent the Commissioner to refrain from determining which mark takes precedence under Section 29 if, based on the evidence before him, neither is registerable. (Bagatz 90/70 [3]. For what is the purpose of holding a long and involved proceeding under Section 29 of the Ordinance if at the end it is determined that the party with the greater lack of registerability will not be awarded the mark in his name?”

Indeed, even if a Competing Marks Proceeding IS initiated under Section 29a, there is nothing to stop the Commissioner (and from re AL Din it is indeed fitting for him to) from considering if either mark is registerable. Otherwise the parties can waste time fighting a Competing Marks procedure only for the winning party to later learn that the mark cannot be registered in his name.

The inherently logical approach is to first consider registerability and only then to hold a Competing Marks procedure, as the Supreme Court ruled in Bagatz 296/85 Siya Siyak Nau (Anthony) vs. The Commissioner of Patents and Trademarks. p. d. 40(4) 770 where, in pages 775-776 of the ruling, it is stated that:

The Authority of the Commissioner to consider registerability coexists with the authority to consider which party takes priority. There is no room to consider which mark takes precedence where there is no registration worthy mark. Anyway, the other party will prevail over the applicant for the non-registerable mark.

This problematic nature of the Competing Marks Proceeding was realized by the Commission of Patents and Trademarks in 1167390 and 166845 Danin vs Shidurei Keshet ltd (26 December 2005) where it was ruled that:

It is a matter of case-law that Section 29 proceedings with respect to competing marks do not relate to the registerability of the marks per se, but only with regards to which of the two pending applications should take precedent. See re Frohmein 342, and Bagatz 450/80 p.d. 35, 187 (2) on page 189, Eshel and Sabon shel Paam, is only true with regards to considering registerabily of the  mark from one party, and is noted that the preference of one party over the other is not indicative that the mark is registerable and does not guarantee that it will be registered. However, one is uncomfortable with a situation where a party that wins a competing mark proceeding will eventually have their mark refused, and the party that loses the competing marks proceeding can then reapply and register their mark.

On 23 February 2012 Circular 013/2012 was published. This relates to Competing Marks Proceedings where objections are also raised against the registerability of one or other mark. Under the Circular, the parties to the Competing Marks Proceeding are allowed to file a joint submission to suspend the Competing Marks Proceeding under Section 29a until the substantive objections are addressed.

In subsequent proceedings, as in this instance, the parties do not see eye to eye, as in the Angel case:

As stated in the Circular, the parties have the opportunity to make a joint submission to request substantive examination […] however in this instance, one party’s issued marks are cited against the application of the other party whilst there is a Competing Marks Proceeding under section 29a of the Ordinance. This scenario results in the party whose marks are cited to prefer the substantive objections to be dealt with first. If the Applicant is NOT able to overcome the substantive objection, the Section 29a proceeding is moot, saving the other party the cost and aggravation of the competing marks proceeding and makes it unlikely that the parties will agree on suspension.

Since this Circular was published, there have been a number of Competing Marks Proceedings that were suspended pending rulings on registerability. However, these requests were submitted without agreement of both parties and different rulings ensued, see for example PayPal Inc. vs. Online Ordering ltd, 5 January 2017George Shukha Haifa ltd. vs. Fareed Khalaf Sons Company, 27 November 2016the Angel rulingetc. It has been established that in some cases, one can ignore the joint request requirement and the Commissioner can simply suspend the Competing Marks Proceeding pending consideration of the substantive objections.

In this instance, there are substantive objections against the Swatch mark, however the parties disagree regarding suspending the Competing Marks Proceeding.

Swatch’s “Tick Different” marks are objected to in light of registered Apple marks for “Think Different”, whereas apart from the Competing Marks Proceeding, the new Apple think Different mark is not objected to. One cannot conclude that were there not to be a Competing Marks Proceeding, Swatch’s marks would certainly be registerable.

An issued mark that has been examined, allowed, and published for opposition purposes, is considered stronger than a pending application. For example, the owner of a registered mark is entitled to a monopoly for that mark and this is not the case with a mark that has yet to be allowed. A registered mark can be enforced against infringers, whereas a pending mark cannot, unless it is a well-known mark. Thus it would appear that Apple’s issued Think Different mark should take priority over the pending Swatch mark.

Consequently, the Adjudicator of IP, Ms Yaara Shoshani Caspi rules that it is appropriate to consider whether or not there is a confusing similarity between the two marks BEFORE considering the Competing Marks issue.

Ms Shoshani Caspi notes that she is unhappy with Swatch arguing two contradictory positions. Swatch has submitted copious arguments to the effect that “Tick Different” is not confusingly similar to “Think Different”, but nevertheless, it is appropriate to fight a Competing Marks Procedure which is based on the inherent understanding that there is a confusing similarity and the marks cannot coexist.  Thus Swatch is arguing that classes 9 and 14 (computers and watches) are different classes of goods, but nevertheless a Competing Marks Proceeding is appropriate.

It is fitting to allow Swatch to try to argue that Tick Different in classes 9 and 14 is not confusingly similar to Think Different in class 9 which is already registered. It is right to do this before addressing the Competing Marks Procedure.

This ruling is in accordance with the Angel’s decision where there was also a Section 11(9) objection and the Competing Marks Proceeding was suspended pending resolution of the objections.

Swatch is to respond to the substantive Section 11(9) objections against the two Tick Different applications, within 30 days. If successful, the Competing Marks Proceeding will ensue.

Ruling by Ms Shoshani Caspi re Think Different to Apple vs. Tick Different to Swatch, 28 February 2018

 


Repeated Requests for Reconsideration Smashed

February 22, 2018

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

 


ENVY

December 20, 2017

276449Bacardi & Company LTD filed Israel Trademark Application Number 276449 consisting of a stylized mark comprising a pair of wings and the words ANGEL’S ENVY, the mark is for alcoholic beverages, except beers in class 33. They also filed Israel Trademark Application Number 275692 for North American whiskey; alcoholic beverages based on, or flavoured with North American whiskey.

ENVYLa Fée LLP filed Israel Trademark Application Number 278588 for ENVY as shown. The mark covers Spirits; absinthe; alcoholic beverages containing spirits; alcoholic beverages containing absinthe in Class 33.

(Absinthe  is an anise-flavoured spirit derived from botanicals, including the flowers and leaves of Artemisia absinthium (“grand wormwood”), together with green anise, sweet fennel, and other medicinal and culinary herbs. In other words, it seems to be a type of Arak,

angel's envyBacardi’s marks were filed on 31 March 2015, and La Fée’s marks were filed on 27 July 2016, before Bacardi’s marks were examined. As the marks were co pending, a competing marks proceeding ensued. On 26 June 2017 the parties were given three months to submit their evidence regarding their rights to the marks.

On 13 September 2017, La Fée LLP submitted an unclear communication that related to priority. On 14 September 2017 the Israel Patent Office requested clarification and asked if the submission was a type of evidence. However, La Fée did not respond. On 26 October 2010 after requesting and obtaining extensions, Bacardi submitted their evidence. In view of the lack of response from La Fée, on 7 November 2017, the patent office sent them a letter giving a grace period of a week to submit their evidence. However, La Fée LLP did not respond.

Section 67 of the Trademark Ordinance 1972 states that

Subject to any regulation under this Ordinance, evidence is proceedings before the Registrar shall be by affidavit under section 15 of the Evidence Ordinance (New Version) 5732 -1971, or by declaration made abroad under the law of the place where it is made, so long as the Registrar does not otherwise direct; but the Registrar may, if he thinks fit, take oral testimony in lieu of or in addition of written evidence, and may permit the deponent or declarant to be cross-examined.

In this instance, La Fée did not submit any affidavit and there does not seem to be any justification for them failing to do so.

Consequently, regulation 25(b) applies:

If the Applicant fails to submit a detailed response within three months of the invitation to do so, the Applicant will consider the Application as cancelled under Section 22 of the Ordinance and a notice to that effect will be sent to the Applicant.

Since La  Fée chose not to submit evidence at all, and not to respond in any way to the Queries from the Court of the Patent Office, the Adjudicator, Ms Yaara Shoshani Caspi ruled that filed Israel Trademark Application Number 278588 for ENVY be considered abandoned, and Bacardi’s marks proceed to examination.

Using her powers to rule reasonable costs under Section 69 of the Ordinance, noting that Bacardi did exert effort in responding and Le  Fée’s behavior, she ruled that le Fée pay 15000 Shekels costs (excluding VAT) to Bacardi within 14 days or the costs will be index linked and bear interest until paid.

Competing marks ruling concerning 276449, 275692 and 278588, Yaara Shoshani Caspi , 16 November 2017.


A forest of Sequoias

December 19, 2017

SequoiaBalboa Apps attempted to register Israel Trademark Application Number 271170 for SEQUOIA in class 9 covering Computer software for Internet search and browsing, e-mail, electronic messaging, and application development; computer operating system software and computers. The mark is a stylized word mark in capital letters in a serif font as shown along side.

The Examiner refused the mark on the basis of Section 11(9) of the Trademark Ordinance 1972 due to its similarity to Israel Trademark No. 227696 for SEQUOIA CAPITAL THE OWNER’S CODE and to Israel Trademark No.  227697 for SEQUOIA CAPITAL THE FOUNDER’S CODE both in class 42 and covering technology consultation and research in the fields of computer hardware, computer software, networking, telecommunications, e-commerce, content distribution, financial services, health care, energy, clean technology and outsourcing; all included in class 42.

Sequoia capital

271338

sequoia 271339

271339

A separate issue was a Section 29 (competing marks proceeding) with reference to  Israel Trademark Numbers 271338 for Sequoia Capital and 271339 for Sequoia in classes 35, 36, 38, 41 and 42.

On 2 January 2017, the Applicant responded to the Office Action by noting that the requested mark was successfully registered in many other jurisdictions; that the application was for a different class than that of the cited marks and the services and goods are likewise different, and the difference in the marks are clear and self-evident and not similar enough to cause confusion. These arguments were not considered persuasive by the Examiner and Applicant’s representative requested a hearing before the Commissioner, which was held on 16 July 2017.

In this regard, the Applicant requested under paragraph 8 of Circular 013/2012 to leave the competing marks issue under Section 29 (competing marks) until the Section 11(9) (similarity of marks) issue was ruled on.

Ruling

The Applicant’s mark is the word Sequoia in a serif font, and the registered marks are for SEQUOIA CAPITAL THE OWNER’S CODE and SEQUOIA CAPITAL THE FOUNDER’S CODE in San-serif font. The Applicant’s mark is for computer software under section 9, whereas the registered marks are for consultation regarding computer software and hardware, telecommuniication as and other things in class 42.

Section 11 states that:

  1. The following marks are not capable of registration:

(1)…

(9) a mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;

 Section 2 states:

  1. Save as otherwise provided, the provisions of this Ordinance which apply to trade marks shall apply mutatis mutandis to service marks, and every reference in this Ordinance to a trade mark or to goods shall be deemed to include a service mark or a service.

Thus before considering the similarity of the marks, and whether the registration of the mark in question could deceive with regards to the registered marks, it is necessary to determine whether the various marks are for goods and services of the same type. If it can be established that the requested goods and services are of a different type, Then Read the rest of this entry »


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.


Apple and WhatsApp’s Apps for Apps

September 14, 2017

272109 apple watch appOn 9 February 2015, Apple Inc submitted Israel trademark application no. 272109 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular background as shown.

280669

Before Apple’s trademark application was examined, WhatsApp Inc. filed Israel trademark application number 280669 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular speech bubble shaped background as shown.

 

 

Apple’s application was for Read the rest of this entry »