Copyright in Numerology

December 12, 2017

numerologyNumerology is any belief in the divine, mystical relationship between a number and one or more coinciding events. It is also the study of the numerical value of the letters in words, names and ideas. It is often associated with the paranormal, alongside astrology and similar divinatory arts.

gamatriya chartIn gamatriya, each letter of the Hebrew Alphabet is assigned a corresponding number. the first nine letters are numbered 1 to 9, and the next nine are assigned the numbers 10, 20, 30, etc. The final four letters are assigned the values 100, 200, 300, 400.

The word alphabet comes from the Greek Alpha Beta, and the word gamatriya comes from Gamma – t(h)reeya. That said, the Greek alphabet was based on the Hebrew and Phoenician precedents. The Latin letters were derived from the Greek ones.

The issue in question here, is whether copying sections of verbal lectures and publishing them in writing is considered copyright infringement.

In coming to their verdict, the Supreme Court has reviewd the differences bwetween the onld and new, law, what fixation requires and in what circumstnaes a publisher or distributor can be considered as innocently infringing.

The Case

Sharon Ron is a numerology lecturer. In 2002 Ela Shonia attended his numerology course at the Association for Promoting Awareness in Haifa. At the lectures, handouts and exercises were distributed by Ron. In 2003, Shonia and a fellow student called Sarah Vakhnin attended private lessons given by Ron at his home in Kfar Sava.

Numerology 3rd milleniumIn 2004, Shonia published a book titled “Numerology for the third millenium” which went to three editions, the last one in 2010. In 2010 Shonia published a second book titled Combined Numerology. Both books were published by Astrologue Publishing LTD.

Mishkal Publishing & Distribution LTD received the rights for both books in 2010, in a deal between Shonia, Astrologue and Mishkal dated 03/02/2010 [I am writing the date in numeric form is it may portend something – MF]. Ron sued Shonia, Astrologue and Mishkal in the Tel Aviv District Court in Appeal 8822/15, and counter Appeal 8822/15. [No doubt these file numbers have some mystical significance-MF].

On 20 March 2004 and on 3 February 2010, Shonia signed declarations Read the rest of this entry »


Costs Award for Drink Point Competing Marks Proceeding

June 9, 2017

Where two parties file confusingly similar or identical trademark applications in Israel, such that both are co-pending, a competing marks proceeding ensues under Section 29 of the Trademark Ordinance 1972. More important that who filed first, are the issues of inequitable behavior and the scope of use.

On 20 May 2012 Assaf Nakdai and Benny Molayof submitted Israel trademark application no. 246704 for DRINK POINT covering business management and business administration; office functions; advertisements; sales promotion; sale of alcoholic beverages; included in class 35.

On the same day Drink Point LTD submitted the identical mark for services for providing food and drink; all included in class 43

250525Then on 9 October 2017, Drink Point LTD submitted an application for the same mark for business management, advertisements and sales promotion (including sale of alcohol); all included in class 35 and on 23 October 2017 Drink Point LTD submitted an application for the stylized mark shown alongside.

On 8 March 2017 Assaf Nakdai and Benny Molayof withdrew their application following a ruling by Judge Cochava Levy of the Tel Aviv – Jaffa Magistrate’s Court. Consequently on 12 March 2017, the Deputy Commissioner terminated the competing marks proceeding and allowed Drink Point’s applications to proceed to examination.

Drink Point LTD requested 14,200 Shekels in costs, alleging inequitable behavior and costs incurred in the corresponding court proceeding.

Ruling

In the ruling, the Deputy Commissioner reiterated the principle that the winning party were entitled to recoup their actual costs. However, she could only consider costs incurred in the competing marks proceeding, not those relating to the court ruling which should be addressed to that court. Furthermore, she was not convinced that Nakdai and Molayof had acted inequitably. The invoices submitted for Drink Point ltd’s lawyer’s fees were not sufficiently detailed to be considered. Therefore, she estimated an appropriate fee for the amount of work performed and ruled 7000 Shekels costs.


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.


Costs Where the Agent of Record is Slow but Sure

November 14, 2016

tortoise

On 17 February 2016, Talia Bio-Cosmetics LTD filed Israel Trademark Application No. 282845 for the word Talia covering soaps, ethereal oils and cosmetics in class 3. We assume that the term ethereal oils means essential oils, i.e. oils having a low vapour pressure that are easily vapourized.

The mark was allowed, and then, on 29 May 2016, ARIANDA THALIA SODI MIRANDA, represented by Colb, filed an Opposition.

Talia Bio-Cosmetics LTD engaged Adv. Moshe Goldberg to represent them, and, on 10 July 2016, the Opposition was withdrawn. Then Adv. Goldberg submitted a request for 10,200 NIS costs for 17 hours work spent on the Opposition. The cost request was supported by a detailed list of work done.

The Applicant claimed that the costs requested were exorbitant and unrealistic since the Opposition was withdrawn so early. The Applicant further noted that the request was not accompanied by an Affidavit and alleged that it was insufficiently detailed.

The Deputy Commissioner Ms Jacqueline Bracha noted that Section 69 of the Trademark Ordinance 1972 stated that costs were at the discretion of the Patent Office :

In any hearing before the Commissioner, he is authorized to award the party costs that he considers realistic.

In this instance, the Opposer, by withdrawing the Oppostion, is considered as having lost the proceeding and is obliged to pay costs. See Supreme Court Ruling 891/05 Tnuva Cooperative for Marketing Israeli Produce vs. The Authority for Granting export Licences of the Department of Trade and Industry p.d 60(1) 600 (30 June 2005).

As a matter of principle and as a starting position, the prevailing party is entitled to real costs, i.e. the costs that he has had to lay out. However, this is only the starting position. It is not the end of the matter, since the one sitting in judgement should examiner the costs requested and decide if they are reasonable, proportional and essential,when considering the whole picture. The Attorney’s fees are a relevant but not the only relevant consideration.

The Applicant has requested a rather large costs of 10,700 Shekels for 17 hours work spent on the file. In practice, the Opposer filed an Opposition and then requested an extension for submitting the Statement of Case. The Applicant requested that a bond be paid and also responded to the request for an extension. The Applicant never filed any substantive response since the Opposition proceeding was closed a mere week after it was opened.

To the extent that costs are extreme, there is a greater burden of proof on the Applicant to justify them. See Opposition to Patent Application No. 153109 Unipharm vs. Mercke Sharpe & Dohme 29 March 2011.

Ms Bracha considered the statement of costs sufficiently detailed but nevertheless considered it unreasonable when considering the stage of the proceeding reached, where no statement of case and no evidence had been filed. Consequently she ruled costs of 2000 Shekels to be paid within 21 days.


Exforge Patent Successfully Opposed in Israel, despite surviving an Opposition based on similar citations in Europe

November 7, 2016

Exforge is a blockbuster drug sold by Novartis for lowering blood pressure that combiexforgenes two medications in a film-coated tablet It contains amlodipine, a dihydropyridine-type calcium channel blocker, and valsartan, an angiotensin II receptor antagonist (ARB or A2RA); typically formulated as the benzenesulfonate salt.

Israel Patent Application No. IL 140665 titled “USE OF COMBINATION COMPOSITIONS COMPRISING VALSARTAN AND AMLODIPINE IN THE PREPARATION OF MEDICAMENTS FOR THE TREATMENT AND PREVENTION OF DIABETES ASSOCIATED WITH HYPERTENSION” relates to the drug.

In an Opposition to the Patent Application issuing, the Deputy Commissioner, Ms Jacqueline Bracha, has ruled that the combination of two active ingredients, each individually known for treating high blood pressure, into one pill for ease of dosage is not inherently inventive where the separate efficacy of the active ingredients is known, as are other two component pills for treating hypertension. Though claimed by applicants, there is no evidence of a synergy between the active ingredients.  The Patent Application is therefore ruled not patentable in Israel and significant costs were awarded to Teva and Unipharm. We expect that the decision will be appealed. This decision may have a knock on effect regarding patents for the same drug abroad and may encourage Teva to proceed with at-risk launches of generic competitors in other jurisdictions.

A translation of the ruling follows:

Read the rest of this entry »


Dormeo – A mark-owner is entitled to a hearing in a cancellation proceedings, even when failing to show evidence of use of the mark.

October 10, 2016

dormeo

Studio Moderna owns Israel Trademark Numbers 109784, 209785, 209786 and 209787. The mark is for Dormeo, in classes 20 (Mattresses; beds and parts thereof (not included in other classes); slatted frames and bed undersides; cushions; pillows; anatomical pillows not included in other classes; seat cushions; pillow materials), 24 (Textile goods, not included in other classes, including covers, coverlets, mattress covers, covers for cushions, bed sheets, blankets, bedding, bed linen and bed cloths (bedding); textiles, not included in other classes), 25 (Clothing; footwear; headwear; scarves, corsets (belts for warming the lower back), arm sleeves, leggings, elbow bands, wrist bands and slippers) and 35 (for Advertising, marketing and promotion services; advertising agencies; advertising through all public communication means; distribution and dissemination of advertising material; rental of advertising space; demonstration of goods; public relations; marketing studies; presentation of goods on communications media for retail purposes; advertising via electronic media and the internet; publicity services, namely, promoting the goods, services, brand identity and commercial information and news through print, audio, video, digital and on-line medium; advertising and commercial information services, via the internet; advertising services in connection with the commercialization and sale of products for household purposes, furnishing articles, clothing; creating and updating advertising material; distribution and dissemination of advertising materials, leaflets, prospectuses, printed material and product samples).

In July 2015, Aldi GmbH & Co. KG filed to have the marks cancelled under Section 41 of the Trademark Ordinance, alleging lack of local use.

In response, on 12 October 2015, Studeo Moderna submitted evidence of usage and denied that the mark was not in use. Aldi responded with Affidavits of their personnel and of a private investigator, and argued that the marks were not in use in Israel.

Time passed, and Studeo Moderna took various extensions, but failed to submit evidence. On 7 June 2016 Aldi requested that the Patent and Trademark Office rule on the case based on the material in the file. Studeo Moderna opposed this, claiming the right to cross-examine Aldi’s witnesses.

Commissioner Kling reviewed Regulations 71 and regulations 37 to 46 which relate to an opposer and an applicant, as if they relate to a challenger and a trademark holder and noted that once the challenger has provided evidence, the mark holder was obliged to provide evidence, but the time-frame for so-doing was limited and the deadline had passed. He specifically rejected the implicit position taken by the marks holder, that ONLY if the challenger’s evidence is considered compelling, is the marks holder required to submit counter-evidence on the basis of regulations 38-40 which require the parties to submit their evidence in one go.

According to the Commissioner, an Opposer or a challenger of an issued mark who fails to provide evidence supporting a claim of non-use is considered as withdrawing or abandoning the claim. This is NOT the case for the applicant or mark owner, who, though obliged to provide evidence, is not considered as abandoning his marks if he fails to do so. Since the mark owner has requested to cross-examine the challenger’s witnesses he cannot be considered as having abandoned his marks. The right to cross-examine witnesses is fundamental and is rarely denied.  The Commissioner is also obliged to hear the claims of both sides. Consequently, the hearing will go ahead, however the marks owner is warned that he may be laying himself open to high costs of the marks are nevertheless cancelled. The parties are invited to list days that they are available for a hearing in January 2017.

 

 


Israel Patent Office Rules Costs for ‘Unnecessary’ Design Cancellation Proceeding

September 11, 2016

costs-awardThere are very few Israel Patent Office rulings or Israel court rulings relating to designs. However, they do occur.

Israel Design No. 53151 to SHL Alubin ltd relates to a profile. It was submitted for registration on 6 September 2012, and issued on 19 December 2013. On 31 December 2015, it was canceled following a Court Order obtained by Silver Hong Kong Israel, who then requested real and actual costs to be awarded.

Silver Hong Kong Israel filed for cancellation on 10 August 2014. SHL Alubin ltd denied all charges. In parallel to the cancellation procedure, a complaint was filed with the Haifa District Court – Civil Matter 21470-03-14 SHL Alubin LTD vs. Exstel LTD.  Before the Israel Patent Office could hear the case, the District Court issued a ruling on 29 December 2015, canceling the mark.

To complete the picture, the design owner SHL Alubin LTD filed a request to hold the court’s ruling, but on 27 January 2015, that request was rejected and the design cancellation was published in the Israel Patent Office journal.

At that stage, a request for costs was filed, for the work done until that time, including filing statements of case, submitting evidence and counter-evidence. To support the request for costs, the Applicant submitted an affidavit from the CEO of Silver Hong Kong Israel ltd., with receipts for official fees and a breakdown of hours per month spent on the project. The breakdown was created for this request for costs, but was not detailed.

Silver Hong Kong Israel ltd. rather oddly claimed to have invoices that they were not submitting for secrecy reasons unless asked to.  On 10 May 2016, Applicant submitted invoices together with a statement from the CEO. The invoices were for consultation from the agent of record for each stage of the proceedings and totaled $35,567.5 (approx. 140,670 Shekels) for 42.5 hours of senior attorney time and 187.5 hours of junior attorney time, and a further 832 Shekels for official fees and 1500 Shekels for incidental expenses, not previously claimed.

Silver Hong Kong Israel ltd. considered the costs appropriate for the stage reached. They claimed that the court filing was forced on them as Alubin threatened to sue them for registered design infringement. However, since Alubin’s claims and designs were indefensible, their behaviour should be sanctioned, and this should be reflected in the costs ruled.

Silver Hong Kong Israel claimed that Alubin had hidden the functional nature of their design when filing the application, and this was what resulted in the design eventually being canceled. Silver Hong Kong Israel further alleged that Alubin hid the court proceedings from them and made it difficult for them to obtain details of the proceedings before the courts.

Alubin countered that the invoices were made out to a different company, VeMetal ltd., and there was no indication of a connection between that company and the plaintiff here.

There are very few Israel Patent Office rulings or Israel court rulings relating to designs. However, they do occur.

Israel Design No. 53151 to SHL Alubin ltd relates to a profile. It was submitted for registration on 6 September 2012, and issued on 19 December 2013. On 31 December 2015, it was canceled following a Court Order obtained by Silver Hong Kong Israel, who then requested real and actual costs to be awarded.

Silver Hong Kong Israel filed for cancellation on 10 August 2014. SHL Alubin ltd denied all charges. In parallel to the cancellation procedure, a complaint was filed with the Haifa District Court – Civil Matter 21470-03-14 SHL Alubin LTD vs. Exstel LTD.  Before the Israel Patent Office could hear the case, the District Court issued a ruling on 29 December 2015, canceling the mark.

To complete the picture, the design owner SHL Alubin LTD filed a request to hold the court’s ruling, but on 27 January 2015, that request was rejected and the design cancellation was published in the Israel Patent Office journal.

At that stage, a request for costs was filed, for the work done until that time, including filing statements of case, submitting evidence and counter-evidence. To support the request for costs, the Applicant submitted an affidavit from the CEO of Silver Hong Kong Israel ltd., with receipts for official fees and a breakdown of hours per month spent on the project. The breakdown was created for this request for costs, but was not detailed.

Silver Hong Kong Israel ltd. rather oddly claimed to have invoices that they were not submitting for secrecy reasons unless asked to.  On 10 May 2016, Applicant submitted invoices together with a statement from the CEO. The invoices were for consultation from the agent of record for each stage of the proceedings and totaled $35,567.5 (approx. 140,670 Shekels) for 42.5 hours of senior attorney time and 187.5 hours of junior attorney time, and a further 832 Shekels for official fees and 1500 Shekels for incidental expenses, not previously claimed.

Silver Hong Kong Israel ltd. considered the costs appropriate for the stage reached. They claimed that the court filing was forced on them as Alubin threatened to sue them for registered design infringement. However, since Alubin’s claims and designs were indefensible, their behaviour should be sanctioned, and this should be reflected in the costs ruled.

Silver Hong Kong Israel claimed that Alubin had hidden the functional nature of their design when filing the application, and this was what resulted in the design eventually being canceled.

Alubin countered that Silver Hong Kong Israel based their case on the District Court case that they were not a party to. Silver Hong Kong Israel were granted access by the judge and this enabled them to file and prosecute the cancellation proceedings with minimal additional work.  Since the case never went to a hearing, this should be reflected in the costs awarded.  The cost request was a random list of hours and persons without details of the work allegedly done on behalf of Silver Hong Kong Israel, and the total amount of hours claimed was grossly inflated.  The invoices were made out in the name of V Metal ltd., not Silver Hong Kong Israel, and there was no link between the invoices and the work done.

Silver Hong Kong Israel countered this by explaining that V Metal ltd. was a sister company with common owners.

Commissioner Asa Kling noted that Section 46 of the Patent & Design Ordinance 1926 provides that:

In any legal proceeding before the Commissioner under this Ordinance, the Commissioner may rule what he considers to be reasonable costs, can decide which party should pay the costs and how they should be paid.

 [MF – there is an Israel Design Law pending legislation, but until it enters into force, design law is covered by this rather archaic ordinance].

The case-law establishes that the losing party should pay real costs. However, the courts can decide if the actual costs were reasonable, proportional and necessarily incurred in fighting the case, in the specific circumstances. The costs must be proportional to the issue being considered, so that the successful litigant recovers his costs but doesn’t punish the loser. See Bagatz 891/05 Tnuva Cooperative for Marketing Israel Produce vs. the Body Authorized to Grant Import Licenses of the Ministry of Trade & industry, 30 June 2005 paragraph 19.  The various considerations have been weighed up in a long list of patent and trademark rulings by the Israel Patent Office, and are appropriate for design litigation as well.

 

To be awarded real and actual costs, the successful litigator must show that the proof, a breakdown of hours and an agreement for compensating counsel.  Once the successful party provides a detailed costs analysis, the onus is on the losing party to pick holes in the costs request. This is stated in Paragraph 225 of the Tnuva ruling:

Once the detailed request for costs is substantiated – the burden of proof switches and the onus is on the loser to show why the costs are exorbitant, based on their being unreasonable, unnecessary and / or disproportional. 

The claim that Silver Hong Kong Israel could have based their case on the District Court filings was a general allegation and was substantiated in any way. Examination of the submissions to the Israel Patent Office dies imply that a significant amount of real work was performed on behalf of Silver Hong Kong Israel.  The case before the Israel Patent Office has a different statement of case, and evidence to support that statement of case. The court proceeding is not a substitute that can be cut & pasted.  Alubin claims that the costs incurred were unnecessary but there are no concrete examples and the company does not back this claim with evidence.

Alubin considers the whole submission was unnecessary since the case was never heard by the Israel Patent Office. Commisioner Kling rejects this position as  something that Silver Hong Kong Israel could not have predicted and the fact that the case before the Israel Patent Office was never ruled on its merits does not render the filing of the case frivolous or unnecessary.

In light of the above analysis, Silver Hong Kong Israel are entitled to real costs. However, Silver Hong Kong Israel did not originally submit details of the actual costs incurred. There is a difference between the identity of the party to the cancellation proceeding and the entity to which invoices were issued and due to the invoices not being submitted in a timely manner, this was not fully explained. This and the fact that the original request for costs was not detailed, can fairly be taken into account in a costs ruling under Regulation 512b of the Civil Regulations 1984, which allows the courts to consider the parties’ behaviour.

 Taking the above into account, costs of 832 Shekels and legal fees of 80,000 Shekels are awarded to Silver Hong Kong Israel , to be paid within 30 days or the sum will be index linked and interest will be incurred.

Costs re cancellation proceeding for Israel Design No. 53151, Ruling by Asa Kling, 3 August 2016.