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

October 10, 2016


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

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

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

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

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

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



Israel Patent Office Closures – October 2016

September 28, 2016

The Israel Patent Office is closed on Fridays and Saturdays. It is also closed on Jewish Holidays, including Rosh Hashana, Yom Kippur and Suckot, and the day before.

The following list sums up when the Israel Patent Office is closed:

DATE Israel Patent Office
Fri. Sept. 30, 2016 Closed
Sun.   Oct. 2, 2016 Closed
Mon. Oct 3,   2016 Closed
 Tues. Oct. 4, 2016 Closed
Tues. Oct.11, 2016 Closed
Wed. Oct.12, 2016 Closed
Fri. Oct. 14, 2016 Closed
Sun.  Oct. 16, 2016 Closed
Mon.    Oct. 17, 2016 Closed
Tues. Oct. 18, 2016 Closed
Wed. Oct .19, 2016 Closed
Thurs. Oct 20, 2016 Closed
Fri.  Oct.21 2016 Closed
Sun. Oct.23, 2016 Closed
Mon. Oct.24, 2016 Closed


The Chinese Patent Office is closed in the first week of October – from 1 October to 7 October.

On Monday October 3, is the Islamic New Year as well as Rosh Hashana and a number of Patent Offices are closed. The EPO in Munich and the German Patent Office are closed for German Unity Day.

On Oct 8-10, the Japanese Patent Office is closed for Sports Day.

A number of Arab Country Patent Offices and also the Indian Patent Offices are closed on October 11-12, presumably in celebration of Yom Kippur.

October 30 is Diwali and possibly patent offices in Hindu countries are closed. It is also a Sunday, so although the Israel Patent Office is open, many others are not.

October 31 is Halloween (Night of All Saints). I am unaware of official closures, but druid associates may be unavailable.

A marked up calendar showing the various office closures may be found october-calendar-2016.

When a deadline falls on a day that a patent office is closed, typically the deadline is extended to the next working day. This is the case in Israel, US, EPO, etc. I can’t be certain regarding all jurisdictions. It is true for design and trademark prosecution and renewals, not just for patents.

This could be useful if a PCT application is not ready for filing on time. For instance, a PCT application claiming priority from an application filed on 14th October 2015 could be filed with the Israel Patent Office as the receiving office on 25 October 2016. It doesn’t matter that on 14, 16, 18-21 or 23, or even after nightfall on 15, 17, 22, or 24 an Observant Jewish Israeli Patent Attorney could file online. Associates around the world wishing to capitalize on this could make an Israel associate (like me) a co-owner in a jurisdiction of little commercial interest, such as Trinidad and Tobago (no offense intended) and then the PCT application could be filed in Israel and would be considered timely filed and the priority date would be recognized. Worth bearing in mind.

We take this opportunity to wish all clients, colleagues and readers, a Happy New Year and to humbly ask forgiveness for any innacuracies in or offence caused by any IP Factor blog post.

Israel Patent Office Invitation to a Round Table

September 27, 2016


The Israel Patent Office has issued an invitation to all knights  the entire public including not just knights, but squires and serfs as well  to attend a round table on the topic of draft patent office circulars.

For those not initiated into our little world, Patent Office Circulars aren’t circular at all. They are rectangular sheets of paper with the noble proportions of A4.

In these rectangular circulars, King Arthur the Commissioner lays down decrees on issues that do not require the Knesset or the Minister of Justice to legislate. Such issues include what may be submitted in electronic format and what requires hard copy in triplicate, things like taxi-cab omnibus claims, Swiss cheese type claims, what is considered patentable subject matter and the like.

Israel Patent Office Circulars are not limited to patents, but also regulate designs and trademarks, training for apprentices trainee patent attorneys and the like.

The Israel Patent Office has recently began sending draft circulars to their chain-mail list for feedback.  The meeting of the Round Table is scheduled for 22 November 2016 and is an opportunity for all and sundry to present their views on such draft circulars.

Do Israel Patent Attorneys Need a Code of Ethics?

September 25, 2016


“I don’t believe in God. I do believe in Judaism. I believe in ethics, morals.” Edgar Bronfman, Sr.

On 8 September 2016, the Israel Patent Office and the Ministry of Justice Issued a Call for Comments regarding a Code of Ethics for Israel Patent Attorneys.

The deadline for responding is 26 September 2016. One presumes that no committee is going to do anything until November as, with the Jewish Festivals, there are about 5 working days in October. This combination of facts implies that the authorities do not particularly want responses from the IP industry it is proposing to regulate.

I see this as a shame. The entry-level qualifications for the patent attorney profession in Israel are a science or engineering degree and two years on-the-job training under a licensed patent attorney, exams showing drafting ability, knowledge of the Law and fluency in English and Hebrew. A very large proportion of the profession have at least one of: advanced degrees, 10 or more years of post-qualification experience, ten or more years experience in industry, a law degree, additional languages and a foreign patent attorney license. As a group, we are high achievers. Given a reasonable opportunity and encouragement to do so, I consider it likely that members of the profession could provide interesting feedback and ideas. On the bright side, the Ministry of Justice and the Patent Office did send the Call for Comments to all registered patent attorneys rather than prominently displaying a notice in a locked filing cabinet somewhere, or publishing a notice in the Tulkarem Local Advertiser.

aippiI would like to hope that it is no coincidence that the Call for Comments coincided with the most central biannual international IP conference last week in Milan. This unfortunate coincidence could explain why the esteemed Israel Patent Attorney Association does not seem to have balloted their members or held a meeting on the subject.

ipaaTo be fair, this is not the first time the issue has been raised. Last time, a response drafted by in-house lawyers at Reinhold Cohn responded on behalf of the Israel Patent Attorney Association. Their position was that the Code of Ethics for Patent Attorneys should be based on the Code of Ethics for Israel Attorneys of Law. I do NOT consider this position to represent the needs or interests of the industry as a whole, although it may well represent the interests of an IP group that includes a patent attorneys practice and an IP Law practice.

Do we need a legal code telling us how to behave or can we regulate ourselves?

Laws are like cobwebs, which may catch small flies, but let wasps and hornets break through. Jonathan Swift

Here is a list of things done over the past couple of decades by members of the profession. I am not naming and shaming. Many of you will know who did what. Others will just have to take it on trust that everything listed relates to real incidents:

  • The Business Software Alliance caught a former head of the Ethics Committee running Microsoft Office on a large number of computers, despite having one single-user license.
  • One Israel patent firm is knowingly employing someone who aided and abetted a murderer escape prison in the US. This is a felony. He is wanted by the FBI.
  • As a trainee patent attorney, I was fired when I came back from Compulsory Reserve Army Duty (explicitly against the law) since the supervisor had to finish off open-work. The head of the firm explained that this wasn’t the only reason. The other reason was that I couldn’t write patents and didn’t have what it takes to succeed.
  • There are a number of firms that give work to self-employed subcontractors which may raise issues of confidentiality and employment law.
  • Some firms have trainees working on a percentage basis, they lob off the top for time invested by trainers, not all of whom are licensed professionals themselves. Graduate employees often work full-time and don’t earn the legal minimum wage.
  • A secretary was fired by an IP firm when she went into hospital for a hysterectomy.
  • There is one patent attorney that passes off trainee attorneys as patent attorneys, effectively giving them licenses directly.
  • One patent attorney has put himself down as a co-inventor on applicant’s patent applications.
  • One patent attorney has put liens on client’s patent applications for unpaid debts.
  • One patent attorney was sued by his father for trying to steal the family firm
  • One attorney-in-law, working for an IP Firm killed both parents, his mother being the head of trademarks at the Israel Patent Office.
  • One head of an IP Firm regularly makes support staff work past sundown on Fridays in case he needs their services. We note that the firm does not do outgoing work in other jurisdictions, and the Israel courts and patent office are closed.
  • On behalf of the government in a service invention dispute, one Israel Attorney sued a Fortune 500 Company whose trademark portfolio he represented. (They subsequently transferred the portfolio from him).

I am NOT stating that any or all of the above should necessarily be reason to impose sanctions on one or another attorney or firm or that all of the above are illegal. I am, however, suggesting that they could and should all be considered in a draft of a serious code of ethics, and as a group they amply demonstrates that self-regulation does not work.

History shows that where ethics and economics come in conflict, victory is always with economics. Vested interests have never been known to have willingly divested themselves unless there was sufficient force to compel them. B. R. Ambedkar

There is a separate set of problems that the Code of Ethics does not address. To my mind it should:

  • What activities are legal for a patent attorney who is not an attorney at law to perform?
  • Which activities can be conducted by an attorney-at-law on behalf of his employee, but not on behalf of employee’s clients? In other words, can a patent attorney firm employing an attorney-at-law provide legal services via the employee lawyer that a patent attorney cannot provide directly?
  • Can a patent attorney practice or provide consulting services regarding assignment of ownership? valuation and sale of patents or copyright issues?

At present, due to the lack of commitment required to take on trainees, and the ease of dumping them half-trained, and patent attorneys who have provided some training to people who cannot get licensed and are not licensed due to not having the basic requirements, such as a law, science or engineering degree, there are a number of non-licensed practitioners.

code-of-ethicsShould not the Code of Conduct or Ethics, or whatever we call it clarify what IP services can or can’t be practiced by practitioners who are neither patent attorneys nor attorneys in law?

  • Can someone who is neither an Israel patent attorney nor an attorney at law licensed to practice before the Israel Bar provide IP management services?
  • Can someone who is neither a patent attorney nor an attorney at law licensed to the Israel Bar provide patent drafting services via a patent attorney working for him?
  • Can someone who is neither a patent attorney nor an attorney at law licensed to the Israel Bar provide patent valuation services?
  • Can someone who is neither a patent attorney nor an attorney at law licensed to the Israel Bar provide IP trading services?

Israel is party to a number of international treaties, etc. I am not sure to what extent foreign law firms are allowed to have local presence in Israel. One large US patent firm is actively involved offering patent services directly to Israeli clients.

foreign-invadersI personally think that such firms should not be allowed to operate locally. There are instances where Israeli Law requires the applicant to first file in Israel. Ownership issues are different in each jurisdiction, and even after the American Invents Act, the US system is still the most different from other industrialized countries. The creation and the sale of IP creates tax issues.  I don’t think that people who are not licensed individuals have the knowledge of these issues to be able to competently practice locally. When something goes wrong, who can one turn to???

Advertising is legalized lying. H. G. Wells

The Israel Bar limits the type of advertizing that attorneys-at-law may conduct. The Reinhold Cohn draft that was adopted by (forced upon?) the IPAA suggests that at least in Israel, patent attorneys should have similar limitations to those that attorneys-in-law have.

Is it reasonable that a US firm is running a vigorous advertising campaign that the current voluntary code of conduct for patent attorneys. the draft code proposed by the IPAA and the Israel Bar obligations for Israeli lawyers do not permit. Anyone who uses search engines to get to national patent office databases and the like, gets advertisements from the US firm in Facebook, on YouTube, etc.

I think it is a terrible state of affairs that local licensed IP practitioners are at a disadvantage to practitioners and firms that are not licensed locally in terms of acceptable forms of licensing and services that they are allowed to offer. the proposed Code of Professional Conduct should address this.

If you have religious faith, very good, you can add on secular ethics, then religious belief, add on it, very good. But even those people who have no interest about religion, okay, it’s not religion, but you can train through education. Dalai Lama

Lawyers are the only persons in whom ignorance of the law is not punished. Jeremy Bentham

IPROne issue raised in the Call for Comments related to on-going training. I think that those practitioners who don’t see the need for this are so ignorant that they can’t see where they lack knowledge. However, there is a need to ensure that practitioners can clock up on-going training requirements with relative ease. Should attendance of lectures at AIPPI, INTA and other international conferences be considered appropriate training that can count to legal requirements for on-going education? One of the best local conferences is “Best Practices” run by Kim Lindy and the IP Resources forum. Kim is not a licensed practitioner. Many of her speakers are, in one jurisdiction or another, could attendance of this conference be considered as on-going professional training?

I gravitate toward the law, I think, certainly more times than not, because it’s our best mechanism for legislating human behavior, and morality, and ethics. David E. Kelley

If we desire respect for the law, we must first make the law respectable. Louis D. Brandeis

cowboyWith Basic Laws offering freedom of occupation, it is not unreasonable for cowboy practitioners, non-licensed professionals to argue that the law should allow them to offer a wide range of patent related services. Foreign practitioners may feel the same way. Maybe there are problems with a code-of-ethics that has teeth. Nevertheless I think there are specific concerns that should be addressed when designing and legislating such a code. The current state-of-affairs is less than ideal. It does not protect the clients, employees and trainees or registered and licensed practitioners. This can’t be good.

Comments are encouraged. Please have the decency to post under your name though.


Wet-wipes, The Issue of Inventorship and the Responsibilities of the Patent Attorney

September 22, 2016

wetnap-were-ready-for-any-messThis ruling concerns a product that resulting from the contributions of two people who were formerly friends. A patent application was filed that named both people as both inventors and applicants. Later, after powers-of-attorney signed by each of the named inventor – applicants had been filed, there was an attempt to ‘correct an office error’, to list one of them as an inventor only. The corresponding PCT application and the national phase entry applications, including two issued patents in the United States only bore the name of one inventor and applicant. In an Opposition ruling the Israel Patent Office has now accepted that the second named inventor is indeed an inventor and also an owner.

Apart from emphasizing the need to determine who is the inventor and who is the owner of an invention when the patent is filed, the need to put everything into writing, and the dangers of working with friends, the case raises interesting questions regarding what contribution to reducing a patent to practice entitles someone to recognition as an inventor and whether this standard is the same in all jurisdictions. It also raises interesting questions regarding the duties and responsibilities of the patent attorney to ascertain the facts, or at least to avoid signing on contradictory statements regarding ownership and invention in different jurisdictions.


IL 152867 titled “Tissue Container With Auxiliary Compartment”is a patent application for a package of wet-wipes
rc-chairswith an adjacent container for nappy cream. The Application was filed back in November 2002 and listed Boaz Krystal and Liat De-Vries as inventors and owners. The patent application was allowed at the end of June 2010.

Subsequently, an Opposition was filed by WET-NAPS LTD and Liat De-Vries on 4 October 2010 under Section 31(3) of the Israel Patent Law 1967 on the grounds that Boaz Krystal was not in fact an owner, and that the patent was exclusively owned by Ms Liat De-Vries.
affidavitsMr Boaz Krystal and his wife Mrs Dorit Krystal each submitted affidavits. Mrs Liat De-Vries submitted a primary affidavit and a supplementary one in response to Mr Boaz Krystal’s affidavit. Wet-Naps Ltd. is owned by Mr Ilan De-Vries, who is Mrs Liat De-Vries’ husband. He also submitted an affidavit on behalf of the company.  Mr David De-Vries, a patent attorney at Reinhold Cohn & Partners who drafted and filed the application and is a cousin of Mr Ilan De-Vries, Ms Ronit Tal who is an acquaintance of Liat De-Vries and Mr Yoram Hadar who is an industrial designer, also submitted affidavits. A hearing was held and the parties submitted their summaries.

wetnapWet-Nap Ltd manufactures, exports and markets wet-wipes. The company had a business relationship with Packtop Ltd., a company directed by Mr Boaz Krystal that distributes wet-wipes amongst other things.   At the time of filing, both the Krystals and the De-Vries couple were good friends.

roobarbs-shedThere is no argument that Mr Boaz Krystal and Mrs Liat De-Vries met at the Wet-Nap Ltd factory, where Mr Boaz Krystal heard the idea of including baby ointment together with a package of wet-wipes from Mrs Liat De-Vries. There is also no argument that Mr Boaz Krystal and Mrs Liat De-Vries had some kind of collaboration, to develop and improve this invention and to file a patent application for it. Eventually a joint application was filed in both Mr Boaz Krystal and Mrs Liat De-Vries names. However, the parties disagree regarding Mr Krystal’s contribution to the development of the invention and consequently disagree regarding whether he is to be considered an inventor and owner of the patent.

The Main Documents in the Prosecution File Wrapper

roobard-and-custard-friendsThe Application was filed in November 2002 by Reinhold Cohn Patent Attorneys. The Application form lists both Mr Boaz Krystal and Mrs Liat De-Vries as joint owners due to them being inventions. Both parties filed Powers of Attorney, and the Filing Certificate gives both names.

On 10 December 2002, Adv. David De-Vries of Reinhold Cohn Patent Attorneys submitted a notice stating:

office-error“Due to an office error, the name of the inventor, Mr Boaz Krystal was inserted as an Applicant. With our apologies for this, we are submitting a new cover sheet and application form in duplicate, listing Mr Boaz Krystal and Mrs Liat De-Vries as joint inventors, but Mrs Liat De-Vries as the sole owner.”

On 10 December 2002, Adv. Edna Haruti, now Mr Krystal’s representative, submitted a letter in which it was stated that Mr Krystal was a joint owner together with Mrs Liat De-Vries as he had invented the tissue container with auxiliary compartment together with her.  Adv. Edna Haruti also noted that registration of the patent in the name of Mrs Liat De-Vries only was contrary to the agreement between the parties.

shimon-shalitOn 2 February 2003 Patent Attorney Shimon Shalit, then Senior Examiner in charge of formalities at the Israel Patent Office, responded to both Reinhold Cohn and to Mr Krystal that Mr Krystal could not be removed as an owner in the application as filed, since there was no indication that he had assigned his invention to Mrs Liat De-Vries prior to the application being filed. In absence of such proof, since Mr Krystal was not an employee of Mrs De-Vries, by virtue of being a co-inventor, he was also a co-owner.

(As an aside – On 12 March 2006 Mrs De-Vries submitted a divisional application of IL 152867 for certain applications of the invention. This divisional application (IL 174309) was examined, allowed and issued as a patent. On 1 December 2010 IL 174309 lapsed due to failure to pay the renewal fees. That patent is not directly relevant to this Opposition, but Wet-Naps Ltd and Liat De-Vries related to it in their claims).

procrastinateIn the protocol of a hearing held on 5 February 2007 before then Deputy Commissioner Noah Smulevezh it was decided to defer the issue of ownership until the examination of the application was completed. It was further ruled that Reinhold Cohn would be address of record, but would update Mr Krystal or his representative regarding actions taken to get his input before responding to office actions. The patent application was eventually allowed and published for opposition purposes, resulting in this opposition proceeding.

The Opposers’ (Wet-Naps Ltd and Mrs Liat De-Vries) Main Claims

Mrs De-Vries and Wet-Naps Ltd claimed to have thought of the idea and developed the invention whereas Mr Krystal had merely provided technical drawings and a business plan for commercializing the product. They alleged that during the period in question, Mr Krystal provided technical and consultancy services to the company as almost an in-house service provider and as such, was exposed to the invention. They further claimed that Mr Yoram Hadar (industrial designer) and Patent Attorney David De-Vries provided sketches for the product that eventually evolved into the patent application. They further alleged that Mr Krystal had suggested a specific implementation (embodiment?) – storing the cream in a blister pack or sachets, which developed into  Read the rest of this entry »

Formalities May be a Big Deal

September 20, 2016

This is an interim request to delete evidence submitted in a trademark cancellation proceeding.

Israel Trademark No. 131862 for “Big Deal” covers shop services for toys, kitchenware, disposable articles, houseware, clothing for children, and drawing books; all included in class 35.   It is owned by H.A.B. Trading Ltd which has stores selling discounted goods. Yediot Internet (YNet) has an internet website offering special offers. Their website is called Big Deal.

big deal storeynet big-deal

Yediot Internet filed a request to cancel H.A.B.’s mark and H.A.B. Trading LTD requested that Yediot Internet’s counter-evidence be deleted from the file due to it not complying with various formalities. Ms Yaara Shoshani Caspi refused the request to throw out the evidence, but gave the applicant for cancellation (Yidiot Internet) 14 days to resubmit their expert opinion as a proper signed and dated affidavit with an  appropriate lawyer’s warning within 14 days, and to ensure that the trademark owner’s counsel receives a copy in this period as well. She also awarded interim costs of 800 Shekels + VAT to the mark owner (H.A.B. Trading Ltd ) to be paid within 14 days. A report of that decision may be found here.

This post reports in the next episode in this thrilling saga.

In the 22 June 2016 decision Ms Shoshani Caspi found that there were indeed flaws in the Expert Opinion submitted by Yidiot Internet that adversely affected the value of their submission as evidence. For example, the signatures were on an otherwise blank piece of paper appended to the opinion, so it is not clear that the undersigned expert was aware of what his signature was attached to. The opinion didn’t include the name of the expert giving it, and wasn’t dated.

Since striking evidence from the record is a drastic step that may have dire consequences to the party whose evidence is struck from the record, Ms Shoshani Caspi preferred to give the party requesting the cancellation a window to correct the formalities.

The Opinion was submitted on paper and not using the on-line submission system, contrary to Regulation 6b of the Trademark Regulations 1940. [MF astute readers will probably guess that back in 1940 there was no on-line submission process – the current regulation is an amendment – MF]. The requester for cancellation ignored the Adjudicator’s instructions and it is not clear that the Opinion was submitted to the agent of record of the owner of the trademark.

Apparently losing patience, the Adjudicator gave the agents for Yediot Internet until September 1, 2016 to comply with her instructions as the hearing was set for September 4, 2016. She then warned the agents for Yediot Internet that failure to follow her instructions would affect the weight she would give to the evidence submitted.

Re Proceeding to Cancel Israel Trademark No. 131862 “Big Deal” Interim Decision by Ms Yaara Shoshani Caspi, 28 August 2016


USA PRO – Can Sales and Marketing Data Submitted To Israel Patent Office Be Considered As Trade Secrets?

September 19, 2016

USA PRO.pngUSA Pro IP LTD filed Israel Trademark Application Number 268322 for “ISRAEL PRO”.

To prevail against Examiner’s Objections during Office Actions, the Applicant has to provide evidence of use and awareness of the mark amongst the relevant public. Once a mark is allowed, it publishes for Opposition purposes and third parties may challenge statements made during Examination or in evidence submitted. Sometimes, the Applicant does not want this evidence to be available to third parties, and claims that they are trade-secrets that should be kept secret.   This ruling addresses the conflicting rights of the applicant and of third parties that are inherent in keeping evidence and submissions confidential.

Confidential-219x194.jpgThe request to keep the evidence confidential was submitted in accordance with Circular 028/2014 “Trademarks – Examination of the Application Files” from 26 August 2014.

To prove that the mark had acquired distinctiveness, the Applicant submitted a summary of the investment in marketing, invoices for sales in Israel, Britain and the US and world-wide sales data.The Applicant claims that making this information available could adversely affect its ability to deal with third parties that that it was in contentious proceedings with in various jurisdictions.

Section 23 of the Trade Torts Law 1999 defines the Commissioner’s authority to rule that trade secrets of an applicant or another will not be published. This rule covers all courts and bodies having judicial or quasi-legal authority in accordance with any and all laws. Section 5 of the Trade Torts Law 1999 defines trade secrets as:

“Business information of any type that is not in the public domain and cannot be easily and legally revealed by others, whose secrets provide the owner with a business advantage over competitors, so long as the owners have taken reasonable precaution to maintain the information confidential.”

From examination of the documents submitted and the requested confidentiality, it appears that they cover the applicant’s sales in fine detail, including the type of goods sold, prices, who they were sold to and in what quantities. Additionally, the alleged advertising sales budget was provided.

From the request to keep this information secret, it appears that this information is confidential and was not revealed to third parties. In this instance and since there is no a priori public interest in this information that outweighs the applicant’s request to keep this secret, it should remain confidential, at least at present, whilst the mark is under Examination.

access-deniedAs the Deputy Commissioner, Ms Jacqueline Bracha, does not think that revealing this information is required to enable third parties to review trademark applications for the purpose of opposing them, she does not see a need to make this information available to third parties and orders that it remains confidential. To support this position, reference is made to the Israel Trademark No. 243620 “Become ill? Injured?” Center for Receiving Medical Rights LTD decision of 1 December 2014. It is understood that to the extent that an Examiner decides to relate to this material during prosecution, he can do so in general terms, whilst giving enough details to serve the interest of the public following the prosecution. However, should the mark be allowed and an Opposition filed, the Opposer may be entitled to greater or even to full access to the confidential material. Thus in the event of the mark being allowed, an opposition filed and the Opposer requesting access, the issue will be revisited.

The request for confidentiality and this decision are made public.made public.jpg

Decision re confidentiality of trade-secrets revealed to the Israel Patent Office during prosecution of a trademark for USA PRO, ruling by Ms Jacqueline Bracha, 21 August 2016.