Can Non-Israelis be Subpoenaed to testify in Opposition Proceedings?

June 10, 2018

novartis

Israel Patent Application No. 176831 to Novartis is titled “COMPRESSED PHARMACEUTICAL TABLETS OR DIRECT COMPRESSION PHARMACEUTICAL TABLETS COMPRISING DPP-IV INHIBITOR CONTAINING PARTICLES AND PROCESSES FOR THEIR PREPARATION”. It is the national phase entry of PCT/EP2005/000400.

Unipharm

On allowance, Unipharm filed an Opposition to the patent application being granted.  Within the Opposition proceeding, Unipharm, who for this case, have dispensed with the services of Adv. Adi Levit, their legal counsel and have been handling the Opposition unaided by attorneys, have requested that the Israel Patent Office subpoena  John Hutchinson and Mr Kowalski, workers at Novartis to give testimony.

This request follows an earlier request to reveal documentation regarding testing that was appended to the Expert Witness testimony of Professor Davies, Novartis’ expert witness, which was ordered in an earlier interim ruling of 3 January 2018.

Discovery

In response to the discovery request, Novartis submitted an Affidavit with various appended papers. In light of this, Unipharm now alleges that the Affidavit implies that Novartis has not revealed all documents it should have. Unipharm further indicates that the explanation proffered by Hutchinson, who is signed on the Affidavit, “appears to be odd”. Therefore, Unipharm wish to Subpoena him to cross-examine him on this.

lab bookUnipharm further claims that a document titled “Certificate of Authenticity” was included with respect to the laboratory notebook, parts of which were included in the appendices attached to the affidavit. According to Unipharm, Mr Kowalski, who was one of the named inventors, is signed on this document. Consequently, Unipharm requested to cross-examine him as well.

Novartis requests that Unipharm’s request be rejected. They claim that the Commissioner does not have the authority to subpoena witnesses not within the judicial territory of the State of Israel, who are not direct parties in a proceeding. Novartis also notes that Mr Hutchinson’s signature on the Affidavit accompanying the discovery documents was done in the framework of his employment as a patent attorney in the Legal Department of Novartis. Novartis claims that ALL information regarding the management of the proceeding is subject to legal confidentiality and may also be considered as being a trade-secret.

As to Mr Kowalski, he never signed an Affidavit of Evidence in the process and is not a party to it. Similarly Novartis claims that Unipharm has not stated why they need to cross-examine that inventor who was one of three named inventors.

Discussion

The witnesses that the Opposer wished to interrogate are beyond the territorial jurisdiction of Israel and are not parties in the case. Thus the Applicant is correct that Section 163b of the Patent Law 1967 that Unipharm referred to is not a legal basis for their being subpoenaed. The references that Unipharm related to in their request, dealt with witnesses that gave Affidavits or expert witness testimony, and thus could be subpoenaed for cross-examination purposes.

A party that wishes to subpoena a citizen or foreign resident to testify must do so under the International Inter-State Legal Assistance Law 1998. See Appeal 3810/06 Dori and Zacovsky Building and Investments Ltd vs. Shamai Goldstein, paragraph 17, 24 September 2007.

Section 47 of the Legal Assistance Law states:

The Authority is allowed to request from another country, that testimony be collected, including that physical evidence be transferred for display in Israel, if the court allows that the evidence is required to hold the trial in Israel; regarding this law, and where the case is pending, the term court refers to the tribunal that is hearing the case.

From the wording of this Section, it transpires that the court will open a proceeding to summon foreign witnesses to a hearing only if it is convinced that their testimony is necessary to conduct the proceeding. In this instance, the Commissioner considers that there is significant doubt as to whether the presence of the witnesses for cross-examination purposes is really required.

Unipharm has requested to cross-examination Mr Kowalski regarding an Affidavit for discovery that he is signed on. The purpose of the discovery process is to enable the main proceeding to be handled efficiently; legal proceedings with face-up cards where each party knows what documents the other parties hold to prevent surprises at the hearing. By this means, unexpected delays are prevented, allowing the court to reveal the truth. Appeal 4235/05 Bank Mizrachi United vs. Ronit Peletz, 14 August 2015.

Opposite the principle of discovery, there are other interests such as efficiency of the court proceeding, defense of the legitimate interests of the party revealing documents, and preventing damage to the interests of third parties – See Appeal 2534/02 Yehuda Shimshon vs. Bank HaPoalim ltd. p.d. 56(5) 193. So the case-law has ruled more than once that it will not allow cross-examination of affidavits of this kind, if they are properly presented (see Appeal 2376/13 Rami Levy Shikma Marketing Ltd vs. Moshe Dagan 8 July 2014, and Zusman Civil Procedures 7th Edition, page 436.

This general rule has two exceptions: The first is that where reading of the Affidavit alone or with reference to its citations, that the Affidavit is defective, the court can order the party revealing documents to file a further Affidavit. Second, where the issue of confidentiality is used, the court can examine the document and decide if this claim is reasonable (see for example, Appeal 240/73 Baruch Vilker vs. Dov Tishler, 205, 2 December 1971 and Appeal 6823/05 Abraham Roimi vs. Bank Leumi of Israel, 12 January 2016.

In this instance, Unipharm did not append an Affidavit, detail or justify why they considered that the current case is one of these exceptions. Thus the Commissioner cannot rule that this is the case, and so the request is rejected.

As to the evidence of Mr Kowalski, Unipharm did not claim that there was any connection between the documents appended to the Affidavit of the Discovery and to the experiments that were appended to Novartis’ evidence, which was the basis of the original discovery request. Note, Mr Kowalski’s signature is only on the Certificate of Authenticity taken from the lab-book that was appended to some pages therefrom that were submitted in the discovery documents. In these circumstances, it is not clear what value Mr Kowalski’s testimony has, even were he to be subpoenaed.

In light of this, the Commissioner does not consider that the requirements of Section 47 of the Law of Legal Assistance are fulfilled with regard to Mr Hutchinson or Mr Kowalski.

The Request is refused. Unipharm will cover Novartis’ costs and their legal expenses to the tune of 2000 Shekels + VAT. These costs will be paid within 30 days.

Interim Ruling in Opposition to IL 175831 Ofer Alon, 30 April 2018.

Comment

It is possible that Mr Tomer has indeed bitten off more than he can chew by handling legal issues procedural issues such as requesting subpoenaing witnesses without legal counsel. However, the costs ruled against him are trivial when considering the issue in question. The Unipharm’s Expert Witness cannot testify to things that he does not know such as what else was in the lab-book, and in Opposition proceedings there is no assumption of validity of the patent. Thus it would be premature to write this request off as a strategic or even a tactical error.


Kerem

June 10, 2018

CEREMKerem Natural Foods Industry A. L. ltd applied for Israel Trademark Application Number 266067 for Jellies, jams, dried fruit, coconut oil, , black cumin oil, sesame oil, almond oil and other edible oils; Coconut milk, cream and butter; spreads, soup powders produced by cooking and preparing extracts of meat and vegetables, and soup powders for seasoning; all included in class 29, Date syrup, molasses; Coconut sugar and flour, molasses, honey, date syrup, crisp cakes, crackers, spreads and sauces; sweeteners made of stevia or other plants extraction; coconut flour and coconut flour baked products; all included in class 30 and for Fresh and unprocessed Coconut and other tropic Fruits and its products; all included in class 31.

Kerem is Hebrew for vineyards.

On 28 February 2017, HaKerem – Alcoholic Beverages ltd  opposed the registration. On 8 June 2017, Kerem Natural Foods submitted their counter-statement. HaKerem – Alcoholic Beverages ltd had until 11 August 2017 to submit their evidence, but this deadline was extended twice, to 12 November 2017, but the evidence was not forthcoming and instead HaKerem – Alcoholic Beverages ltd withdrew their opposition.

Kerem Natural Foods Industry then submitted a request for costs of 62,450 Shekels accompanied by an agreement with their attorneys regarding their hourly rate and various receipts evidencing payment in practice.

HaKerem – Alcoholic Beverages objected to the costs requested. They prevailed in the Opposition proceeding and are entitled to costs under section 69 of the Ordinance which states that

In any hearing before him, the Commissioner is entitled to award reasonable costs.

The right of the prevailing party to receive actual costs incurred depends on the amount requested, that it is properly documented, and that it is reasonable, necessary and proportional. See for example, Bagatz 891/05 Tnuva vs. Ministry of Trade and Industry p.d. (1) 600, 615 (30 June 2005). However, the arbitrators are required to consider the case specifics and legal policy, and are not obliged to award full costs – see Appeal 6793/08 Loar ltd. vs. Meshulam Lewinstein Engineering and contractors LTD. 28 June 2009, at paragraph 19.

The case specific considerations do not form a closed list and each case should be considered on its merits. These include the behaviour of the parties. The way the case was handled, the complexity of the case, the time invested in the case, whether the case requires specific expertise, the importance to the parties, whether the case has public interest ramifications, and the like.

As to judicial policy considerations, as previously ruled in Patent cancellation procedures against Israel Patent numbers 179379  and 142896 Alkermes Pharma Ireland Limited Novartis Pharma Services vs. MEDICE Arzneimittel GmbH & Co.KG from 28 March 2018, the patent office has an obligation to serve the greater public interest. In this framework, when addressing cost requests, the patent office has to find the right balance between the encouraging trademark submissions – both to protect property rights in brands and to prevent misleading the public regarding sources of goods, and not to discourage the submission of oppositions against unreasonable trademark applications. Awarding high costs to applicant or opposer could create an obstacle to filing that shifts from this balance.

In the present case, the request for costs did not provide sufficient details to substantiate their claim, and did not explain the basis of the costs, the number of hours spent by their attorneys, etc.  Consequently there is a real difficulty to determine whether the costs requested fulfill the considerations laid out in re Tnuva.

The Adjudicator of Intellectual Property, Ms Yaara Shoshani Caspi does not accept the claim of the enormous amount of work preparing evidence immediately on the filing of the Opposition, prior to the opposing counsel submitting their evidence. The Applicant did not explain why the Opposer should have to bear the burden of the Applicant’s obliging himself to pay global legal fees regardless of the work required, and also to provide a ‘bonus’ if the case is dismissed. The Adjudicator does not find this type of arrangement fulfills the ‘reasonable and necessary expenses’ requirement.

In this instance, the Opposition was abandoned at an early stage, after the filing of the counter-statement of case.  The Applicant did not need to file evidence, there was no hearing and no summations were required. In such a case there is no justification to award costs of 62,450 Shekels as requested. Compare for example, the cost request for Cancellation of Israel Trademark No. 140219 BASF Poyurethanes GmbH vs. Pazker ltd, 12 September 2015.

Conclusion, by way of estimation, costs of 7000 Shekels including VAT are awarded, to be paid within 14 days, or interest will be accrued.


Evangelical Television and Temporary Injunctions

May 9, 2018

voice of hope2

High Adventure Ministries sued Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe (presumably Taylor?) for using “the Voice of Hope” for spreading evangelical messages.

This case related to a Request to Appeal a refusal to grant a temporary injunction that was issued by Judge M Amit-Anisman of the Tel Aviv – Jaffa District Court on 27 November 2017.

The background relates to the parties’ activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.

The background relates to the parties’ activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.

high global

The Appellant, High Adventure Ministries, has used the mark for many years, and sued the defendants Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe in the Tel Aviv – Jaffa District Court claiming passing off, Unjust Enrichment and infringement of a well-known trademark albeit not registered in Israel.

During the proceeding, they submitted a request for a temporary injunction to forbid the defendants using the mark. This interim injunction (Case 65046-06-17) was refused by Judge M Amit-Anisman on 27 November 2017. She ruled that the Plaintiff had a case, at least under the tort of passing off, but considered that the significance of the case, the balance of convenience and justice considerations tilted the scales in favour of the defendants, stressing that:

  1. The defendants had used a radio station named Voice of Hope for a number of months and its establishment had required an investment of millions of dollars.
  2. The radio station broadcasts in Arabic and is directed to listeners in various Arab countries, whereas the plaintiff’s transmissions are in English and are directed to English speakers.
  3. The plaintiff had known about the intention to establish the radio station at least a year ago but had been tardy in filing a complaint and so was not deserving of a temporary restriction order.

voice of hope

The plaintiff claims that the defendants’ website includes English and so they also direct their efforts to English speakers. They argue that it is not proven that a temporary injunction will cause the defendants damage, however NOT granting a temporary injunction will do them damage, and they contested the allegation of tardiness. They argued that they had a good case and accused the defendants of inequitable behaviour. The defendants meanwhile, argued that the Court of First Instance was correct to refuse to grant a temporary injunction and did not consider that the case should be appealable.

This issue is one of temporary injunctions, which are relevant to trademark issues. In this field, the Court of First Instance that considers the case has wide discretionary powers and the Court of Appeal has limited authority to intervene where the Court of First instance has the information before it and hears witnesses and gets an impression of their reliability. There are, however, exceptional cases where intervention is justified, but is this one of them?
Antenna

Whether or not to grant interim injunctions depends on two main variables: the likelihood of prevailing, and the balance of convenience.

The court of first instance determined that there was a case to be answered. However, it was the balance of convenience and considerations of justice that tilted the scales into not issuing the temporary injunction. Thus despite considering that there was a case, it was the balance of convenience issue that was considered more important. Here, both sides argued that it was not proven that the other party would suffer irreversible damage. In this regard, Judge Handel emphasized two points:

Firstly, apart from general waffle, neither party provided concrete data supporting their suspicions that the damage they would suffer would be irreversible. For example, the defendants invested significant sums in establishing their radio station but did not show that much of that investment was in branding, and that changing the name of the channel temporarily would adversely affect their profitability. That said, since they are already broadcasting under the name Voice of Hope, there is no doubt that a temporary injunction would inconvenience them, not so much due to the start-up investment costs, but because a change of name could cause confusion and lose them listeners.

The plaintiff Appellant did not indicate why failure to grant a temporary injunction would cause him damage. Here the emphasis is on the fact that the radio station broadcasts in Arabic, whereas those of the plaintiff Appellant are in English. So the target audience is different, and there is no support to the claim that the plaintiff Appellant will suffer damage, and thus no support that he would suffer irreversible damages. In this regard, Judge Handel considered the claim that the plaintiff Appellant had a world-wide reputation as the Voice of Hope, but as the District Court stated, in the request for a temporary injunction, the plaintiff Appellant failed to provide the factual basis for the claim that Arabic speakers are familiar with the Voice of Hope and would link the defendants’ station with the Israeli body that uses that name. Thus even if Judge Handel would accept the claim that the name Voice of Hope is indeed a well-known mark around the world that is associated with the plaintiff Appellant, that would not be a sufficient basis to grant the temporary injunction.  See for example, the Opposition to Israel Trademark Application Number142266 “No limits eyewear” (2 May 2004). It is noted that the burden of proof is on the plaintiff who wants the temporary injunction, expect for one exception, and here the second consideration comes into play.

Secondly, the defendants’ Internet site gives the impression that the radio station is the one established in 1979-2000 that no longer broadcasts, For example they state:  

“In 2014 we reestablish the VOICE OF HOPE radio station which had broadcast from South Lebanon from 1979-2000 The airwaves have been silent for 17 years, until today!

In other words, the defendants are glorifying themselves as reestablishing the station that the plaintiff had owned. Since the word mark is the same for the two stations, and the dove logo is similar, there is indeed likelihood that English speakers would erroneously conclude that the defendants’ station is associated with the plaintiff.  Similar erroneous messages are found in other English advertisements used by the defendants, appended as annexes 4-8 of the Appeal.

This suspicion of misleading the consumers throws a special light on this proceeding which relates to trademarks. Unlike other civil disagreements such as contract law, with regards to intellectual property, there is a third wheel to the conflict – the public.

The purpose of the Law of is not merely the narrow interest of the parties, but also the public interest who have a place in the story (see for example 8127/15 The Associate of Israeli Industrialists vs. Dohme Corp and Merck Sharp, 15 June 2016), and in trademark matters,  see also the request to register Israel Trademark No. 164702 LENGO, paragraphs 6-9 and the references there.

This is true for main trademark proceedings, such as registration of a mark in the trademark register, but it is also true for temporary injunctions. Just as it is important to consider the public in the main rulings, it is also important to consider them when considering issuing temporary injunctions since temporary injunctions are designed to serve the main ruling. The extent that NOT granting a temporary injunction would lead to the public being misled should be considered when considering temporary injunctions.

It will be noted that the first point emphasized the commonality of civil law including trademarks, whereas the second point emphasized the uniqueness of trademarks. This is not contradictory. Just as one has to consider the likelihood of a proceeding being successful in prevailing with regard to a specific law, one has to consider the uniqueness of trademark law where the specific law is the Trademark Ordinance. The difference is that one also has to relate to the third wheel – the public. This is the commonality with Administrative Law, although the public interest is different in the two areas. Whereas trademark Law is still personal law, in this regard it is on the seam between personal private law and public law.

In this instance, the existence of two entities transmitting Evangelical Christian messages under the same trademark, where one body publicises itself as related to the other body before the same target group, is likely to mislead the English listening demographic. This has an independent weight in both the considerations of public interest and in the balance of convenience. The risk is not that the listening public will be confused, as the transmission languages are different. The risk is in the advertisements in English. In these circumstances, it is fitting to not allow the appeal apart from with regards to one point.

That is to say, that the District Court was correct to refuse to grant a temporary injunction to the extent that it would be inappropriate to interfere, due to the large investment, the different target audience and language and the delay – even if it resulted from a lack of clarity regarding the defendants’ intentions following exchanges of letters and it is not clear if there was tardiness, or if the plaintiff thought things were resolvable without going to court, but the findings of the Court of First Instance were reasonable.

Together with this, the Court of First Instance was wrong with regard to the request to remove advertisements that create an association between the defendants and the plaintiff. The defendants are required to remove all references to the historic Voice of Hope channel belonging to the Appellant, and similarly to cease and desist from any publication that implies a connection between the parties. Alternatively, the defendants are allowed to leave the advertisements in place, but to add a clear and unequivocal clarification that they are not related to the English Voice of Hope, so that advertisers will not be misled. If the parties are not happy with this, they are invited to raise their claims with the Court of First Instance, but it appears that the parties can settle this between themselves without referring back to the courts.

In Judge Hendel’s opinion, this is the correct balance between the plaintiff, the defendants and the public. The defendants can continue broadcasting in Arabic under the name Voice of Hope to the residents of Lebanon and Syria since, in the framework of the request for a temporary injunction, no risk was substantiated that Arabic speakers would be misled regarding a relationship with the plaintiff’s station that closed in 2000, and so there is no risk of damaging that station. This considers the target audience of the radio station, and the minor differences in the marks, See Nazareth Civil Action 613/95 Arditi Americano vs. Harush, paragraph 6 (17 March 1996), and also considering that no evidence was produced to substantiate the claim that the mark was well known amongst Arabic speakers. As to English speakers, only the plaintiff transmits in English, and the defendants admit that their usage of English is only for written advertising purposes. Thus there is no likelihood of confusion regarding the transmissions themselves, but only with regard to the advertisements and these are mitigated by the steps ruled above.

Domino's pizzaPizza Domino

Such intermediate rulings are possible in trademark case which can result in two similar marks coexisting where there is a ruling that creates a difference that mitigates the likelihood of confusion, such as with regards to Israel TM no 6140 Domino Pizza which then Commissioner Michael Ophir Z”L allowed to coexist with Pizza Domino, in light of the different colour schemes, signage and newspaper articles stressing the lack of connection between the two chains. This is not a common occurrence, but it is fitting in a temporary injunction, as it balances the three interests, including that of the consumers.

All of the above only relates to the temporary injunction. It does not nail down the final ruling. The parties disagree regarding many factual matters, such as whether the plaintiff has a reputation, and the extent of that reputation, how well the Voice of Hope is known around the world and so on. Although these issues are considered with respect to whether a temporary injunction is appropriate, this in no way decides the trademark issue or nails down the main ruling, but merely attempts to minimize damage to both sides before the full ruling issues. See Appeal 4196/93 Shefa Bar Management and Services 1991 led.vs Shefa Restaurants Production and Marketing of Prepared Meals 1984 Ltd. p.d. 47(5) 165 (1993). The appropriate temporary injunction and the appropriate main ruling have different considerations. The Court’s main consideration with respect to temporary injunctions is to enable the main proceeding to take place without creating irreversible damages, whilst noting that the apparent facts and working hypotheses are liable to change, as is the perceived public interest, throughout the case, and the Court will have to make a final ruling in due course.

The Appeal for a temporary injunction is partially accepted and the costs awarded against the plaintiff by the Court of First Interest are cancelled. The defendants will bear the plaintiff’s costs and legal expenses of 18000 Shekels.

High Adventure Ministries vs. Strategic Group and the Voice of Hope LTD; ruling on interim injunction by Judge Hendel 7 May 2018.

COMMENT

2567555-David-Ben-Gurion-Quote-The-test-of-democracy-is-freedom-ofI think this ruling is balanced. It is in stark contrast to the en banc decision in the Bagatz ruling on the legality of the lex-specialis Arutz Sheva where the Supreme Court overturned a Law that legalized the station, basing themselves on the spurious argument that allowing the station would interfere with other stations being able to attract advertising revenue, alleged to be a fundamental right under the quasi-constitutional Basic Law – Freedom of Occupation, whilst ignoring the fact that the appellants acted in bad faith (Yossi Sarid was simultaneously campaigning for Abu Nathan to get the Nobel Peace Prize for the Voice of Peace),  and with no mention of the other quasi-constitutional right, that of Freedom of Speech, defended successfully by Judge Agranat in 73/53 Bagatz Kol HaAm vs. Ministry of Interior, 1953 where Ben Gurion’s attempt to silence a communist newspaper was thwarted well before the ‘legal revolution’. Aharon Barak creatively misinterpreted the basic Laws of 1991 to give the courts unprecedented and anti-democratic powers to overthrow Knesset legislation and widened the definition of legal standing to allow the courts to intervene at the request of legislators, non-profits and others.
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Pending Israel Copyright Amendment to Address Internet Piracy of Audio Visual Works

May 8, 2018

pirate bay

Oh, better far to live and die
Under the brave black flag I fly,
Than play a sanctimonious part,
With a pirate head and a pirate heart.
Away to the cheating world go you,
Where pirates all are well-to-do;
But I’ll be true to the song I sing,
And live and die a Pirate King.

Pirates of Penzance Gilbert & Sullivan

From 2006 to 2014, we have noted that Israel has been on the United States Special 301 priority watch list of countries having allegedly inadequate IP protection. The main criticism was the pharmaceutical extension regime in Israel which was believed to be too liberal to generic manufacturers. The amendment of the amendment was reamended and Israel’s status was upgraded.

A second criticism was that Israel’s copyright regime did not provide tools to hold Internet Service Providers (ISPs) responsible for preventing free access to copyright materials such as songs, movies and television series over the Internet. There are good arguments for and against making service providers responsible. They are not policemen and should not be. There is a perceived problem that without monetary compensation for their creative output, producers and artists will not create.

There is a new copyright bill pending legislation in Israel that addressed this issue, and a copy of which may be found here. The purpose of the bill is to try to reduce copyright piracy on the Internet, particularly of audio-visual works.

The following is an analysis of the proposed amendment. The bill contains four elements:

  1. An expansion of the concept of indirect infringement, to include websites that offer viewers access to unauthorized content such as movies and TV series. The indirect inclusion includes links to an offshore location in cases of actual or constructive knowledge of the act and intent to profit.
    This element will have utility to the extent that the Israeli courts can thereby obtain jurisdiction over the operators of the web site that aggregates the links. However, where this entity is not identified, then this part of the amendment won’t have much real world effect.
  2. Blocking Orders. While some courts have issued these in the past, other courts claim that without specific authorizing legislation they do not have authority to grant blocking orders. Hence the legislation.
    This element is likely to become the best tool for disrupting internet piracy. The proposal also clarifies that the cost of the blocking order will be borne by the applicant and not the Internet Service Provider (ISP). Apparently, there are actual costs in carrying out such blocking order.
  3. Discovery of the identities of up-loaders of infringing content.
  4. Enhanced criminal penalties.

The Tel Aviv Law School (Amnon Goldenberg Institute run by Professor Michael Birnhack) has published their comments on the bill, as have others, and it is scheduled to be debated by the Economics Committee of the Knesset on 21 May 2018.

ISP-1

The goal of the Ministry of Justice in formulating the bill was to find language that would be wide enough to catch pirates, but narrow enough to not cause any unwanted collateral damage. This goal was difficult to achieve in the proposed 48A.

Content developers and rights holders would prefer that the legislator err, if at all, on the side of over-protection, whereas the advocates of fair use and free speech prefer that the legislator err, if at all, on the side of under protection.

What is not included in the Bill, despite calls for such, is:

  • A codified “notice and takedown” type regime; and
  • WIPO style “technological protection measures” legislation.

The “notice and takedown” case-law seems to work, so why fix it? Although we have heard comments from legitimate web sites that a “safe harbour” might help them should 48A prove to broad in practice.

pirate dated

Currently, Israel does not have technical performance measures (TPM), something mandated by the 1996 WIPO treaties and intended for a different era, but which may have some unintended relevance in a world where content is no longer delivered on DVD, but rather through on-line subscription services. The Israel Justice Ministry does not have any a priori objection to either of these matters. However they are both incredibly complex to draft and if drafted improperly can have grave unintended consequences. For example, an overly broad TPM provision might have unintended consequences for tech companies and their developments.

The Justice Ministry considers that both of these issues are worthy of further study, but to move forward with them considers they should get the full legislative process by issuance of a proposal, requesting public comment, the drafting of a bill, and Knesset discussion, rather than a last-minute add-on to a pending bill.

The current bill is cautious and conservative, with the drafters having the perception that it is easier to add measures than to cope with overly broad powers and runaway judges.

 

Comment

The proposed legislation seems balanced and well-considered.

Certainly consumers of content should compensate the developers of the content for their efforts, and have little patience for those that download films and series, arguing that the developers don’t lose anything as they wouldn’t pay for it anyway. Traditionally, Jewish Law did not generally recognize non-tangible property rights, although entertainment, such as a dance, could have value and be used instead of a ring, for marriage purposes. The modern economy and civilization has moved on and IP rights are an essential development. Israel should be a light to the world in judicial matters. However, where there are widely accepted minimum standards of behaviour, it is important that Israeli legislation and private behaviour do not fall behind.  That said, I don’t think that there is any basis for assuming that people write songs or create films for revenue in 70 years’ time or for 50 years after death. The actuarial depreciation of such revenue streams to the time of writing results in such future profits as being negligible. I would prefer that:

  • laws on copyright infringement be coupled with the need to register copyright (as once required in the US, and required for trademarks, patents and designs
  • that the period of protection be significantly shortened to perhaps 10 or 15 years
  • that after initial launch in cinemas or as albums, movies and songs become available for reasonable cost over the Internet by legitimate streaming services, and that viewers can choose between premium advertisement-free access and sponsored access
  • there should be broad fair use exceptions
  • I am very put out that academic papers are developed by public universities and that access often requires payment. I want to see access for all with the universities sponsoring the publication rights, and more journals being exclusively on-line. Knowledge should be in the public domain, but authors should be recognized. There seems no place for commercial publishers of academic journals in the modern world.

The Economy of Innovation

May 3, 2018

zombie.jpgIlan Cohn, Dorit Karine and Former Commisioner Asa Kling are to be congratulated for organizing a balanced high level program with parallel sessions relating to different aspects of IP, that was fairly well-structured. It was less schleppy than the 2016 reincarnation, but was nevertheless not inspiring. Participants returning to their offices would probably use terms like OK (בסדר) to describe the event to their colleagues. However, I can’t see anyone telling those colleagues that they missed out by not attending. Attendance levels were high for an Israel IP event, but low when considering the potential and the resources invested.

intercontinentalAs in previous years, the event was held at the prestigious David Intercontinental in Tel Aviv. There were over a hundred speakers, but luckily they were spread out over two days and with three sessions running in parallel and most having panels of four or five speakers, this was less overwhelming than it sounds.

ASHER_D._GRUNISAfter the usual self-congratulatory opening remarks, the conference kicked off with Judge Asher Grunis former Head of Supreme Court criticizing Judge made law, specifically the infamous A.Sh.I.R. ruling. Being a formalist myself, it was enjoyable hearing a Supreme Court president criticizing judges doing what they like.
It  would have been nice would have been reference to the recent injunction against Rami Levy in the Baladi case and also the controversial Unipharm vs. Sanofi which both related to Unjust Enrichment in IP matters. Then again, Rami Levy recently appealed the pasta injunction and may well be appealing the minute steak injunction, and Unipharm vs. Sanofi is under appeal, so perhaps he was correct not to address these cases.

It is not every day that one gets to hear a former Head of the Supreme Court discussing judicial legislation which is a hot topic at present due to attempts by the Justice Minister to reign in judicial activism.

Unfortunately, Judge Gronis didn’t bother using visual aids, and did not balance his talk by showing how judicial creations such a contributory infringement and indirect infringement (Srori, Rav Bareakh) can be valuable.

Variety

varietyThe conference was wide-ranging, with sessions on various aspects of patenting, including pharmaceuticals and computing which are always controversial.

There were also sessions on the interfaces of trademarks and designs and copyright and designs. The issue of content piracy over the Internet and new legislation addressing this issue was presented. There was a session on trade secrets and one on copyright infringement over the Internet, so there was much to interest IP lawyers and not just patent attorneys.

crowd.jpgNew tax issues relating to international companies were discussed, and how this would likely affect Israel. I took the opportunity to ask the panel about the VAT issue, and Adv. Ayal Shenhav confirmed my understanding that services relating to an asset in Israel do indeed incur VAT.  This is a practical issue that affects IP practitioners. I would have preferred some sessions on such practical matters, as there is confusion among practitioners.

There was a session on the fashion industry and one on IP rights and competition law. Licensing agreement and Medical devices were discussed, as was the Internet of Things and standard non-discriminatory  licenses. There was also a session on traditional knowledge.

adidas.jpgApart from the keynote lectures and the final session, there were generally three parallel and diverse sessions going at any time, so everyone could find something of interest; whether related to their practice or a window on some other aspect of IP.

As I had to pick and choose myself, although I did try to slip in and out to get some sort of feel for the different sessions running in parallel, it is difficult to give a fair overview of the entire event. It is certainly possible that the scheduling resulted in me totally missing sessions that I would have thoroughly enjoyed.

I rather enjoyed a session on the Interface Between IP Law and Competition Law, where Judge Grosskopf (now of the Supreme Court) related to the Read the rest of this entry »


Shuka – A Trademark Parody

April 22, 2018

Shoka 1Shuka is a fictitious insurance broker used in a long running and highly effective, humorous series of advertisements by IDI, an insurance company offering direct insurance services over the phone by dialing 9,000,000.

I

IDI is an insurance company. They applied for Israel Trademark No. 264302 for the word שוקה (Shuka) covering financial transactions, insurance and life insurance in class 36 on 2 April 2014. The mark was allowed on 16 July 2015.

The Association of Insurance Agents in Israel, which is a non-profit organization representing thousands of licensed insurance brokers, opposed the mark on 11 August 2015, alleging that it was misleading and its registration was contrary to Section 11(6) of the Trademark Ordinance 1972. The grounds of the Opposition were that the Applicants gave the impression that they were licensed insurance brokers and this is not the case.

Shoka 2There was a proceeding between the parties in the Tel Aviv District Court (28223-03-12) in which the Opposer requested that the court issue an injunction against the Applicant to stop their advertising which was alleged to be insulting slander and misleading, and created unjust competition. The District Court partially accepted the Opposer’s claims and forbade the Applicant from using the advertising campaign clips and radio advertisements and various other advertisements.

Shoka 4

On appeal to the Supreme Court, this decision was overturned. In Civil Appeal 3322/16 and 4313/16 IDI Insurance ltd vs. The Association of Insurance Agents in Israel, 30 April 2017, the Supreme Court ruled that the advertisements did not create a tort and the appropriate grounds for the complaint was the Libel and Slander Act. However Section 54 of the Act relates to any community that is not a company, and so the civil case was inappropriate. The Court stated this in Section 31 of the ruling:

However, in this instance we are dealing with humorous advertisements wherein insurance brokers are indirectly represented in jest and parody that is so exaggerated that it is clear that the reasonable viewer will consider the claims accordingly. That as may be, one cannot state that, following the advertisements, a reasonable person would consider that the characteristics ascribed to Shuka in the advertisements, hedonistic, archaic, etc) apply to specific insurance brokers, and there isn’t even a hint of this.

The Supreme Court also ruled that the advertisements were not an insulting description, since the viewer would not consider the advertisements as information imparted to him seriously due to the dominant humorous elements of the advertisements (paragraph 64 of the advertisement.

The Association of Insurance Agents in Israel requested reconsideration.

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Abandoned Patent Opposition Converted into Ex-Partes Procedure

April 20, 2018

Israel Patent Application No. 220476 to Mapi Pharma titled “Long Acting Depot System Comprising a Pharmaceutical Acceptable Salt of Glatiramer” was allowed and published for opposition purposes. Teva filed an opposition under Section 34 of the Law.

glatiramer

The application relates to a dosing regime of Glatiramer and salts thereof. The drug is an immunomodulator medication used to treat multiple sclerosis.

The application is a national stage of a PCT filed on 19 August 2010 which claims priority from an American patent application of 4 January 2010.

The patent was examined and published for opposition purposes on 31 March 2016. On 28 June 2016, Teva filed an opposition. After the parties submitted their statements of case, Teva withdrew their opposition for commercial reasons.

Under Section 34 of the Patent Law 1967, the Commissioner has to decide whether the suspended opposition provides a sufficient basis for the patent to be granted.

In their Statement of Case Teva raised various issues regarding the patentability of the claimed invention. Since no evidence was submitted, the Deputy Commissioner concentrated on the allegation that the publication of WO2005/041933 from 12 May 2005 anticipates the invention and negates novelty.

Claim 1 recites:

“A long acting parenteral pharmaceutical composition comprising a therapeutically effective amount of a pharmaceutically acceptable salt of glatiramer, the composition being in a sustained release depot form which releases a therapeutically effective amount of the pharmaceutically acceptable salt of glatiramer over a period of about one week to about 6 months.”

Paragraph 20 of the Statement of Case which from paragraph 58 of their counter statement, it appears the patentee accepts, construes claim 1 as follows:

  1. A long acting pharmaceutical composition
  2. For parenteral dosing
  3. comprising a therapeutically effective amount of a pharmaceutically acceptable salt of glatiramer,
  4. the composition being in a sustained release depot form
  5. which releases a therapeutically effective amount of the pharmaceutically acceptable salt of glatiramer over a period of about one week to about 6 months.

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