Sebastia – an Iconic Image

November 14, 2016

sabastia

In addition to copyright, photographers also enjoy the moral right to have their photographs identified as being taken by them.

YNET, the Internet portal of Yediot Aharonot, used an archived photograph from 1975 of the attempt to establish a Jewish settlement in Sebastia. The photographer, Moshe Milner, was not attributed. He filed a complaint with the District Court and received compensation of 12000 Shekels, with the judge accusing Yediot Aharanot of being in that area between intent and innocence that is characterized by laziness, closing one’s eyes and acting rashly.

I believe the image concerned, is the one shown above. Showing Rabbis Hanan Porat (Z’L) and Moshe Levinger.


ECJ rules that the shape of a Rubik Cube is not a valid trademark

November 11, 2016

cube

Everyone agrees that three dimensionsal trademarks are possible. A classic example might be Rolls Royce’s mascot.  Where a mark has functionality, it becomes more difficult. Unique packaging, such as the shape of a truly unique bottle, is trademarkable.

Rubik’s Cube, which was invented in 1974 by Hungarian architecture professor Erno Rubik, has enduring popularity and has sold more than 400 million cubes worldwide. Seven Towns registered the Rubik’s Cube as a three-dimensional EU trademark with the EUIPO in 1999. Simba Toys challenged the registration, but in 2014 the European Union General Court decided the three-dimensional trademark was valid, and ordered Simba to pay costs.

The European Court of Justice has now ruled the registration invalid.

And what about Israel? Been there… Done that.


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 »


Gentlefile – Trademarking Portmanteau Words

November 2, 2016

Gentlefile is a portmanteau of ‘gentle’ and ‘file’. An Israel trademark application was filed for the GENTLEFILE covering flexible soft dental files. Ill-advisedly, the pending application was then used as the basis for an International application under Madrid.

Medic NRG Ltd filed Israel trademark application No. 255358 for the word Gentlefile. The application covers surgical, medical, dlogoental and veterinary apparatus and instruments; parts and accessories for the aforementioned products; all included in class 10.

The Application was filed on 1 May 2015 and was the basis for subsequent International Application No. 1189965 under the Madrid Protocol in accordance with Section 56(c)(1) of the Trademark Ordinance 1972.

On 17 September 2014 the Trademark Department of the Israel Patent Office refused the Application under Section 8(a) and 11(10) of the Ordinance as lacking inherent distinctiveness and being descriptive of the goods covered. The Examiner considered that the word was a portmanteau of gentle and file, and implied a filing implement that was mild or tender, and consequently the term was descriptive of dental filing apparatus. The Examiner stated that the term implied:

Devices and equipment that are smooth or soft, mild tender to the touch and which deflect on use or gentle touch medical equipment that gives a pleasant and good feeling to patients.

Furthermore, after reviewing the Internet website of the Applicant, the Examiner concluded that since the main activity of the applicant is to provide dental equipment, the term file is descriptive by its nature.

little-shop-of-horrorsThe Applicant claimed that the mark is distinctive and the goods to be protected are not soft, smooth or pleasant dental equipment and so the mark is not descriptive. The Applicant further alleged that a reasonable person would not associate the mark with dental equipment since smooth, soft, mild instruments can be used in a variety of fields, and at the Examiner’s request the Applicant appended examples of usage of the mark in its publicity material and the description of goods accepted on its basis by the United States trademark office on 12 August 2014.

mr-bean-dentistThe Examiner was not convinced and issued a second Office Action. In response the Applicant claimed that the applied for mark had many alternatives meanings and none of them described the goods covered. The Applicant claimed that the word file meant case, computer document, line or rasp, and that the Applicant had developed the mark and used it for years and had now began registering around the world, including the European Community, the United States, China and Russia.

The Examiner dug in her heels and continued to hold the mark non-registerable.  She claimed that the term file was a rasp-like instrument that was used in root canal treatment and the term “gentle file” is descriptive in that it relates to a flexible hand tool. The Examiner provided examples of dentists referring to such a tool as being a file and noted that it only requires one of the meanings to be a generic description to make a mark non-registerable.

oral-proceedingThe Applicant requested a judicial ruling based on the arguments on record and an oral proceeding.

RULING

The Deputy Commissioner Ms Jacqueline Bracha summed up the legal question as whether GENTLEFILE is inherently distinctive, and, if not, whether it can be considered as having acquired distinctiveness.

Section 8 of the Ordinance makes registerability dependent on distinctiveness:

8.—(a) No mark is eligible for registration as a trade mark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).

(b) In determining whether a trade mark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.

A trademark having distinctive character enables distinguishing the goods of one company from another. See the Bible Seligsohn “Trademark Laws and Related Legislation” page 20 (1973).

It is generally considered that marks fall into the following categories: generic, descriptive, indicative, randomly selected and made up. There is a continuum from generic marks to made up ones (See 5792/99 Communication and Religious-Jewish Education Family (1997) Ltd “Family” Magazine vs. SBS Advertising, Marketing and Sales Promotion Ltd. “Good Family” Magazine, Supreme Court Ruling 2001(11) 534 (23 May 2001). At the made up mark end are marks with inherent distinctiveness, whereas at the generic end are marks that cannot be registered.

Section 11(10) of the Ordinance determines that marks that describe the goods that they are to label cannot be registered unless they have acquired distinctiveness:

a mark consisting of numerals, letters or words which are in common use in trade to distinguish or describe goods or classes of goods or which bear direct reference to their character or quality, unless the mark has a distinctive character within the meaning of section 8(b) or 9;

The mere fact that a descriptive mark is not in Hebrew does not make it registerable in Israel since the accepted terms should remain in the public domain, even if they are not in Hebrew. (Seligsohn page 35, and 3552/02 Toto Gold Club Ltd vs. The Counsel for Regulating Sports Gambling (26 September 2004).

Thus the general rule is that there is no place to drag descriptive names from common language and to remove them from the public domain and to relate them to specific goods unless they have acquired distinctiveness. 

The degree of descriptiveness of a mark is determined with respect to the intended goods or services and not in a vacuum. (see Appeal 21488-05-11 Eveready Battery Company Inc.  vs. The Commissioner of Patents and Trademarks 8 December 2011. The mark will be considered in its entirety and not analyzed into its components as this is how the consumer regards the mark (see Appeal 5454/02 Tiv Taam  Teva (1988) Tivoli vs. Ambrosia Superhav Pd 57(2) 438).

No-one denies that the marks are intended for medical usage in general and for dentistry in particular. The consumer in this instance is not the general public but rather dentistry practitioners such as dental surgeons, assistants, dental technicians and the like. So the way the mark is regarded has to be considered from their perspective and not from that of others not in the field.

The applied for mark is a combination of two words without a space so that they are viewed as a single word. The portmanteau word comprises file and gentle which mean mild and a tool that is generally steel that has sharp crevices and is used to smooth and flatten surfaces such as human teeth. In dentistry this tool is used to remove plaque from teeth. The word file also means computer document, divisional arrangement and line.

When considering the words in the appropriate context, that is with regards to medical devices for dental applications, the Deputy Commissioner concludes that both ‘gentle’ and ‘file’ are descriptive terms. That the words have other meanings in different contexts to a different audience in no way detracts from them being descriptive in the relevant field, since one has to consider the marks with respect to the services and goods for which they are to be used. The word file has a specific dental meaning and the word gentle is a qualifier that describes a relevant property whose meaning is well understood in this context. As the Examiner concluded, in this instance, we are dealing with flexible tools and it transpires from the Applicant’s own marketing material that it is their softness/gentleness that describes them.

The mark should be considered in its entirety as this is how the target audience perceives it as a trademark. In this context the combination does add something beyond the sum of the parts which increases the likelihood of the mark being considered registerable.

However, it has been determined that merely joining two words together is insufficient to render a mark distinctive unless the combination provides added value. With reference to Page 38 of Seligsohn:

A complex mark of this type cannot over time and through usage lose the plain meaning of the words from which it is comprised, rather a combination has to inherently include something imaginative that the descriptiveness is no longer revealed.

In this regard, reference is made to the Opposition against Israel Trademark Application No. 202424 “MAXIMUMASP” MAXIMUMASP LLC vs. Sky Net Group Ltd (30 June 2010:

The element that Judge Zilberg refers to as “An invention”, and which the European Court calls “Linguistically Unique” is not separate from the second element, that is having acquired a separate meaning from the original one. This means to say, the creativeness is the originality that changes two known and descriptive words into a third phrase which in turn indicates or describes the original meaning, is tested not just in that the phrase adds something, but that the addition provides the phrase with a meaning that is blatant and is the first thing to jump into the viewer’s brain, and which clouds out the original meaning, even were he to think of the original meaning if contemplating the mark. We can already say that the mere combining of two words into one, and even if a letter is thereby deleted, is no proof that the resultant word has the inventiveness required.

The term ‘Gentlefile’ is indeed a portmanteau of two words rolled into one, but it does not appear that the combination creates a new meaning beyond the literal meaning of the combination. In this instance there isn’t even a letter that has been deleted or changed, merely the space between the noun and adjective has been deleted. Thus the combination lacks the essential element of inventiveness that creates an additional meaning beyond the original meaning of gentle file.

Without ruling on whether the combination is too descriptive to be able to acquire distinctiveness through use (2673/04 Appeal Copy to Go marketing (1997 Ltd. vs Israel Shaqued 15 April 2007) the Applicant has not furnished sufficient evidence to persuade that the mark has indeed acquired distinctiveness as required for registration under Section 8(b) of the Ordinance.

Examining acquired distinctiveness of a mark is done with reference to how long the mark is in use, the amount of publicity gained and the resources invested by the Applicant / Owner in creating a linkage between the mark and the goods in the public perception. (see Toto above). Furthermore, one should examine if due to the mark the public connects the goods and services with the mark Applicant/Owner. (see Appeal 18/86 Israel Class Company Venezia vs. Les Verries de Saint Gobain, p.d. 45(3) 224, 238 (1991).

The Applicant did append examples of advertising material from Israel and abroad showing the mark to their responses to the Office Action, and also submitted examples of registrations for the mark from other countries. The Applicant did  not supply details of sales, investment in marketing, the period over which the mark was in use, and the like.

Where marks are far from the imaginative end of the spectrum and are more descriptive-generic, it is more difficult for the Applicant to meet the burden of proof to show acquired distinctiveness. (see Toto paragraph 9). Since the Applicant did not append sufficient evidence to prove this and relied on foreign advertising and registrations, without additional evidence there is no way to ascertain that there is local acquired distinctiveness.

In conclusion, Ms Bracha ruled that the Application be rejected.

Ruling by Deputy Commissioner Ms Jacqueline Bracha on Registerability of Israel Trademark Application No. 255258 Gentlefile, 21 September 2016

COMMENT
Where a mark is arguably descriptive such as in this case, it is not advisable to use a pending application as the basis of a Madrid filing since central attack on the application voids the Madrid trademark registrations.

What I believe the Applicant should have done in this case is to first register the logo that appears above. The mere addition of the graphic element makes this more than a mere combination of words. Using this as a logo without challenges will be good evidence of acquired distinctiveness when subsequently attempting to register the portmanteau word. It is likely that the company sells dental tools worldwide and does not concentrate on the local market which is small since there are only 8.5 million Israelis for dentists to treat. In a small market it is possible to acquire distinctiveness and to become the market leader but this requires strategically deciding to do so. As always, descriptive names should be avoided.

It is difficult to blame the Attorney of record in this case as it is more than likely that they provided good advice and the client went ahead and chose a poor name and tried to protect it. If they didn’t, there would be little work for trademark attorneys.

 


Amending Consisting to Comprising in Claims of An Issued Patent

November 1, 2016

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

COMMENT

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

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

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


Are methods of calculating rediculous alleged legal costs trade-secrets?

November 1, 2016

novartis    teva

Teva successfully opposed IL 184027 to Novartis titled “COMPOUND TRISODIUM [3-((1S,3R)-1- BIPHENYL-4-YLMETHYL-3- ETHOXYCARBONYL-1- BUTYLCARBAMOYL)PROPIONATE-(S)- 3¶METHYL-2¶PENTANOYL{2¶¶ TETRAZOL-5-YLATE)BIPHENYL- 4¶YLMETHYL}AMINO)BUTYRATE] HEMIPENTAHYDRATE, ITS PHARMACEUTICAL COMPOSITIONS, METHOD FOR ITS PREPARATION AND USE THEREOF IN THE PREPARATION OF MEDICAMENTS.”

The application was filed on 18 June 2007 as the national phase entry of PCT/US2006/043710. A divisional application was filed as IL 219782. The application published for opposition purposes on 30 November 2014, and on 25 February 2015 Teva Pharmaceuticals LTD filed an opposition. One day later Unipharm also filed an Opposition. Subsequently, since there was a pending divisional application and because the opposer had not filed their statement of case, the Opposers filed for suspension of the Opposition proceeding for 18 months as per Commissioner Circular 020/2012 “Opposition to a divisional patent or to a patent that is divided” from 18 November 2012. The Applicant opposed the request to stay the opposition. However, on 9 August 2014, the Commissioner agreed to stay the opposition proceeding.

On 7 September 2015, the applicant abandoned the divisional application and requested that the Opposition against the parent application be renewed and that the Opposer file their statement of case. The commissioner accepted this, and on 9 September 2015 gave the Opposers 60 days to file their statement of cases.

On 8 November 2015 Teva announced that they were withdrawing their opposition for “pure business reasons”. On 30 November 2016, the Commissioner ruled that the Teva opposition be closed and that the Unipharm opposition continue.

detailed-costsOn 11 January 2016, Novartis requested costs from TEVA. The costs request was supported by a statement from Liad Whatstein, Novartis’ counsel, but with many details thereof blacked out as they are allegedly business secrets and some are pertinent to the ongoing Opposition by Unipharm. They also requested a confidentiality order with respect to the blacked out data.

The Commissioner decided that Novartis had failed to make a case that the data should remain confidential, and issued a ruling on 4 February 2016 rejecting the confidentiality clause. Novartis’ counsel chose not to provide a time-sheet detailing the work done, considering this also as being a trade-secret.

Novartis’ Claims

The Applicant considers that TEVA’s withdrawing from their opposition puts them into the category of a party that loses their case. They do not think that the ongoing opposition by Unipharm should release TEVA from having to bear costs in a proceeding that they initiated. Thus Novartis alleges that TEVA should have to pay half the actual costs incurred by Novartis from when the opposition was filed until when it was abandoned, which comes to $17,136.72.

The Applicant claimed that due to the tight deadlines and the complicated scientific data they had to prepare for the opposition prior to the statement of case being filed. The complications are evidenced by Unipharm’s opposition and by the corresponding opposition filed in Europe. Furthermore, the Applicant claims that TEVA’s behavior and the time passed from when the opposition was filed until when it was withdrawn after the continuation was abandoned, created a state of affairs wherein TEVA could reasonably expect that Novartis would work on the opposition and incur costs thereby.

Novartis also claimed that TEVA had abused the opposition process by filing a baseless opposition simply to delay the patent issuing and to cause the divisional application to he withdrawn. Consequently Novartis considered that TEVA should pay costs.

 TEVA’s Claims

TEVA considers that Novartis is NOT entitled to costs at all and the cost request should be denied and Novartis should be charged for Teva having to respond to their costs claim. Alternatively, each side should bear their own costs.   Since the Opposition was terminated early it is by no means clear that were it to have continued, Novartis would have prevailed and would be entitled to costs for the preliminary part where Teva was involved. Teva alleges that if the Novartis application is refused, not only would Teva not have to compensate them, but conceivably Novartis would have to pay the costs  that Teva incurred in filing the statement of case.

Additionally, Teva considers that the Applicants actions and the costs incurred thereby in preparation of an anticipated opposition were needlessly incurred. Teva considers that from studying other statements of opposition, there is nothing to justify the preliminary and anticipatory actions that Novartis took, and certainly one cannot hold Teva responsible for such actions. Furthermore, the actions taken by the Applicant preceded the time when Teva had to submit their statement of case – which, in the event, were never submitted.

Teva went on to allege that the claimed expenses were unreasonable when considering the stage that the opposition procedure had reached. Furthermore, these so-called expenses were, in the main, not supported by an affidavit.

The Ruling

True, Teva filed an Opposition which was then abandoned early on. The Application is, however, still being opposed by Unipharm and has not issued as a patent. In this specific case, following review of the claims and counter-claims of the parties, Commissioner Kling concluded that the request for costs to be awarded to Teva should be deferred until the Unipharm opposition runs its course, depending on the outcome thereof.

The Commissioner has the authority to delay cost ruling under section 162b of the Law:

162b The commissioner is authorized to rule reasonable costs, to determine which partner should pay costs and how they should be paid.

Generally, the Commissioner rules costs in favour of the winning party. As a general rule, the side that abandons their case for whatever reason, and consequently a patent issues, is considered as having lost the proceeding and is to bear costs of the opposing party. (See 133957 cost ruling Pfizer Products Ltd vs. Teva Pharamaceuticals 14 February 2008). Nevertheless, the awarding of costs is left to the commissioner’s discretion and this is certainly the case where the abandoning of an Opposition does not necessarily lead to a patent issuing.

In this instance, despite Teva abandoning the Opposition the proceedings are ongoing. Unipharm’s opposition is still being fought and one cannot consider Novartis as being one who has won their battle. It is thus not the time for Novartis to claim costs. Consequently, at this stage the Commissioner is refraining from determining what costs the Applicant is entitled to, and what costs the Opposer is or may be entitled to. These will be determined once the fate of IL 184027 us known.

As an afterward and without final determination of the costs themselves, the Commissioner noted that it is rather difficult to rule on costs in the manner that they were submitted, with certain facts blacked out and no support for other contentions. This makes the reasonableness, necessity of and proportionality of the alleged expenses difficult to substantiate and makes it difficult to award real 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). This is particularly the case when considering the enormous costs claimed and the early stage at which the Opposition was abandoned by Teva, prior to submission of any substantive arguments.  See the ruling of the Then Deputy.  Commissioner re IL 113433 Smithkline Beecham Corporation (SKB) vs. Teva Pharmaceuticals (30 May 2005).

Interim Ruling re Costs in Il 184027 Teva vs. Novartis Oppostion Asa Kling 19 September 2016.

COMMENT

Whilst filing an opposition and then suspending until a divisional application issues or is abandoned could be considered as a delaying tactic, often filing such divisional applications is simply a means to keep an applications pending through parallel opposition proceedings, enabling a new claim approach not conceived at the time of filing to be considered. Since Unipharm is rather good at successfully opposing patents, it is a reasonable tactic for Teva to leave it to them to challenge the validity of the allowed claims. One suspects that Teva will have made relevant prior art and arguments available to Unipharm.

The successful opposer is entitled to claim costs from the applicant. Nevertheless, I am flabbergasted that Whatstein could make a claim for over $17,000 for costs incurred by having an opposition filed against his client prior to even having a statement of case requiring analysis being submitted. There were no patents or other prior art or other evidence that needed to be analyzed and no claims that needed consideration. Apart from informing Novartis that an Opposition had been filed, it is difficult to see what work was necessarily incurred.  Submitting a blacked out statement simply flags the fact that this is unreasonable. In desperation, I went to his website and discovered that as part of patent litigation “The firm orchestrated and designed complex experiments in patent infringement and opposition proceedings and uses a network of internationally acclaimed experts and external laboratories. In addition, the firm is involved in a large number of multi-jurisdictional patent proceedings.” This certainly goes some way to explain how $17,000 worth of costs could be accumulated, but one wonders if it was proportionate, reasonable and neccessary in response to an opposition being filed prior to relevant prior art and arguments being made of record.


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

October 31, 2016

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

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

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

Filing Additional Evidence

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

The additional evidence includes two Israel court rulings:

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

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

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

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

DISCUSSION

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

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

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

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

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

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

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

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

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

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

The Request to Place a Bond for Costs

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

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

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

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

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

Section 353a states:

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

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

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

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

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

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

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

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

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

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

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

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

CONCLUSION

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

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

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

COMMENT

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