Amending the Statement of Case to Hone Arguments

August 8, 2018

This interim ruling addresses the issue of amending the Statement of Case in Opposition proceedings before the Israel Patent Office.

IL 209734 to G Patel titled “A monitoring system based on etching of metals” was allowed and published for Opposition purposes.

Freshpoint Quality Assurance Inc. opposed the patent, and after the Applicant submitted their counter statement, Freshpoint requested permission to amend their statement of case.  They justified this request on the basis of the Applicant adding new details. They further argued that some of the amendments were necessary due to admissions of the Applicant in the counter-statement of case, and some were required to focus issues after the specification was twice amended following submission of the Opposition.

The Applicant considers that allowing Freshpoint to amend their statement of case would allow them to improve their position, and this would be financially difficult for him, as a private individual.  Patel further alleged that the amendment did not result from the additional details that he submitted, which should be considered as part of the proceeding and could be addressed in the evidence stage.

The Opposer related to the case-law and alleged that amendments to the Statement-of-case should be generously and liberally allowed.

In general, the Application relates to a system of control based on etching away metal of a two layer system, to provide an indication of time, temperature, humidity and so on.

The Application is a national phase entry into Israel of a PCT application that claims priority from a number of US provisional applications submitted between 3 June 2008 and 2 May 2009. The Israel application was allowed on published for opposition purposes on 31 May 2016 and the opposition was submitted on 30 August 2016.

After the Opposer submitted their statement of case, the Applicant requested permission to amend the specification. The parties agreed that the amendments should follow Regulation 102vi of the Patent Regulations 1968.

Following this agreement, the Opposer submitted an amended statement of case and the applicant again requested to amend the specification, but this time only amended the dependent claims. The Opposer considered that this amendment was not sufficiently justified and contravened Regulation 95 and should be struck. In a ruling of 28 September 2017, the Deputy Commissioner Ms Jacqueline Bracha rejected the request for the amendment to be canceled and when the Opposer stated that they would not be amending their statement-of-case, she ordered the Applicant to file his counter-statement. The second amendment followed the procedure set out in Regulation 102vi of the regulations.

One the Applicant submitted his statement of case, the Opposer requested that additional details regarding the denial in paragraph 25 of the Applicant’s statement of case. These paragraph related to the Applicant’s response to the  Opposer’s contention that the phrase “destructible barrier layer” that appears in the claims is not supported in the priority applications. The Applicant responded, but the Opposer requested interim costs, and that a schedule be set for submission of the evidence. In an interim ruling of 10 April 2018,  costs were awarded and a date for the Opposer to submit their evidence was set.

Instead of submitting their evidence, the Opposer has requested to amend their statement of case.

Discussion

The guiding principle for amending the statement of case before the Patent Office is that unless there are reasons to refuse the request, amending the statement of Case will be allowed, so long as it focuses the discussion on the issues that the parties disagree on. The reasons for not allowing amendments to the Statement of Case are also given:

This court has the authority to allow amendments to the Statement of Case in cases that the amendments relate to the issues that are really disputed by the parties, and where there is no reason NOT to allow the amendment. Such reasons (for not allowing amendments) include inequitable behavior on behalf of the party requesting the amendment, adversely affecting the rights of the opposing party in a manner that cannot be compensated for by a cost ruling, and tardiness in requesting the amendment (see the Request to cancel patent no. IL 154398 (request to correct the statement of case and evidence) Logo Engineering Development ltd vs. State of Israel, 29 April 2012. Furthermore, when exercising the authority, the court should consider the stage that the proceeding has reached, since the Opposition proceeding itself is a barrier to the Applicant obtaining the patent.

(Opposition to Patent 187923 (request to amend the statement of case) Pimi Aggro Clinic ltd vs. Xeda International, 19 May 2013).

In contradistinction to most of the cases  where amendments to the Statement of Case have been requested, here the Opposer does not wish to rely on additional publications that were missed in the search for prior art prior to filing the original statement of case.

As the Opposer claims, in this instance, the amendments are by way of honing the claims. The Deputy Commissioner, Ms  Jacqueline Bracha does not consider that these sharpening of arguments are necessary at this stage of the proceedings, since the honing and polishing of arguments that are not new arguments, may be done at the evidence stage.

Furthermore, the Deputy Commissioner accepts the Applicant’s arguments that many of the requested amendments are actually a “Response”, as they relate to the Applicant’s statement of case. This is evidenced by the many references in the amended Statement of Case of the Opposer to the Applicant’s Statement of Case. The Statement of Response that the Opposer is entitled to submit under Regulation 61 of the Civil Procedure Regulations 1984 is not the Statement of case that the Opposer is allowed to submit in an Opposition before the Commissioner of Patents. Furthermore, it is clear that there is no place for these amendments, since if the amendment to the Statement of Case is authorized, the  Applicant will have the right to File an Amended Statement of Case in response and previously submitted statement of case will no longer represent the points of contention.

In this instance, the parties concur that the amended Statement of Case does raise issues not previously raised or widens the claims raised in the following instances:

  • The invention does not deserve priority since the element in claim 1 that is “capable of providing an induction period which is measured by a delay in a visual indication of the destruction of the metal or metal alloy indicator” only appears in this format for the first time in the seventh application from 12 May 2009.
  • The claimed invention is directed to a new property of a known product (chapter 7 of the new Statement of Claims.
  • The invention has no utility (chapter 8 of the new statement of claims.

The claim that the invention is not entitled to an earlier priority date was in the previous Statement of Case, but based on a different reason. The current basis is, according to the Opposer, a result of the Statement of Case in Response by the Applicant, which added new subject matter. The Deputy Commissioner accepts the Applicant’s contention that the Opposer forwent his right to amend his Statement of Case following the second amendment to the specification, and so the request to now amend the Statement of Case is tardy. Furthermore, the element that allegedly is not entitled to the priority date, was already part of the claims when the Statement of Case was first amended, and so the Opposer had an earlier opportunity to challenge it.

As to the claim that the invention lacks utility,  this is based on Fig. 39 of the Application which measures the induction period which was found in the Application prior to the amendment. However, according to the Opposer, were the so called “barrier layer” that is shown in Fig. 3 of the first priority document, which the Applicant relates to in their Response to the request for more details, then that period cannot be measured, and so the invention lacks utility. In other words, from the Applicant referring to Fig. 3, the Opposer concludes both that the Application relates to a new property of a known substance, and that it lacks utility.  From here, it appears that there is a connection between the addition of chapters 7 and 8 to the Statement of Case that relates to the utility of the invention, and the determination of the new property of the known material, and the Applicant’s response to the request for additional information.

 

In light of the above, the Deputy Commissioner accepts the Opposer’s contention that these issues could not have reasonably been submitted earlier.

 

In conclusion, parts 7 and 8 of the Statement of Claims result from the response to the request for more information, do focus the discussion on the contended issues and their submission is allowed.

 

The other requests to amend the Specification are refused. The references to “agreement by the Applicant” in the Statement of Case is really a Statement in Response, and so cannot be considered as amendments to the Statement of Case designed to emphasize the points of dispute between the parties. Amendments that are honing of arguments that relate to prior art previously referenced in the Opposer’s Statement of Case, are not necessary to establish the points of contention, and their place is in the evidence and summations. Amendments due to changes in numbering and deletion of claims can help to understand the Statement of Claims and could be submitted, but it should have been done after the second amendment to the specification. Incorporating them at this stage would require the Applicant to amend his Statement of Case and would result in unnecessary expense.

 

In light of the above

 

The Opposer will submit their Statement of Case amended as per above, i.e. with the addition of chapters  7 and 8 only. The amended Statement of Case will be submitted within 7 days.

 

The Applicant will be allowed to amend his Statement of Case by relating to the new Chapters 7 and 8. It is stressed that further amendments to the Statements of Case will only be allowed with explicit authorization, after submitting a detailed requested to amend the Statement of Case. In light of the limited amendment that the Opposer is allowed to make at this time, the Applicant will have 7 days to file their Amended Statement of Case from the submission of the Opposer’s amended Statement of Case.

Any request for extensions that result from Office pressures, festivals, bank holidays, vacations in Israel or abroad or from the need to the coordinate between the various entities, will not be allowed.

 

Since some of the amendments have been allowed and some have been rejected, no costs are awarded at this stage.
Interim ruling re Request to amend the Opposer’s Statement of Case in Israel Patent Application IL 209734 , by Deputy Commissioner Bracha, 11 June 2018.  

 

 


When a patent application goes abandoned due to a misunderstanding between Attorney and Applicant

August 8, 2018

This case relates to a request to revive an abandoned Application, where the Agent of Record was under the impression that he was instructed to abandon, and thus failed to respond to the office action and to the Notice of Imminent Abandonment and the Notice of Abandonment (which gives a 12 month window to reopen the case as of right). He also failed to report the issuance of these notices to the client. The client denies instructing the Agent to abandon the case.

Israel Patent Application Number 191364 to Pro Natura Gesellschadt for Gresunde Ernahdrung MBH is titled “Agent for Reducing the Usable Calorie Content of Food and for Therapeutic Reduction of Weight in particular in the case of Adiposity (Obesity)”.

The Application was filed on 16 September 2015, and when an Office Action was not responded to, a notice of Imminent Abandonment was sent to the Applicant’s Agent on 2 November 2016, and a Notice of Abandonment was sent on 8 February 2017.

(This wasn’t the first time that this application was considered abandoned due to a lack of response being filed. On 20 August 2015, the case was abandoned, but shortly afterwards, on 16 September 2015, it was reopened by the Chief Examiner under Circular 026/2014 ”Returning Closed or Abandoned Applications to Examination).

On 14 March 2018, i.e. over 12 months after the case was closed a second time, the Applicant petitioned for it to be reopened under Section 164 of the Law.

Applicant’s Claims

Daniel Feigelson, the Agent of Record, claimed that Mr. Virovnik, the Applicant’s representative, only learned that the case had been abandoned in January 2018. The request for reinstatement was submitted two months later because he had to submit affidavits in support of the Application to reinstate the case, together with a detailed response to the Office Action.

Mr Feigelson also claims that in a meeting with Mr. Vorovnik in December 2015, the Applicant requested to delay the Examination in Israel for as long as possible, pending a decision on patentability of the corresponding Application before the European Patent Office. In a phone call of August 2016, Mr. Feigelson understood that he should not do anything to further the allowance of the Israel Application.

The request to revive the case was supported by two Affidavits; one from Mr. Vorovnik and the other from Daniel Feigelson, the legal representative. Mr. Vorovnik’s Affidavit stated that contrary to Daniel Feigelston’s understanding, he never ordered him to let the Israeli Application lapse. Contrary to that stated in Mr. Vorovnik’s Affidavit, Patent Attorney Feigelston stated that he’d understood from the August 2016 conversation, that Mr. Vorovnik was not interested in pursuing allowance of the Israel Application. However, unlike his usual practice, Mr. Faigelston did not document the conversation or send a written notice stating that he would abandon the case as instructed, for Mr. Vorovnik to confirm.

In a hearing on 25 April 2018, Mr. Feigelston clarified that following the conversation of August 2016, he did not update Mr. Vorovnik regarding correspondence from the Israel Patent Office, thus Mr. Vorovnik did not know that the case had become abandoned. At that hearing, the Deputy Commissioner Ms Jacqueline Bracha ordered that Mr. Faigelston obtain a further Affidavit from Mr. Vorovnik expanding on what he did remember from the August 2016 conversation.

In accordance with this order, a further Affidavit from Mr. Vorovnik was submitted on 27 May 2017. However, this Affidavit does not clarify that there was a conversation in August 2018, as Mr. Vorovnik neither confirms nor denies that this conversation took place. It merely states that Mr. Vorovnik does not remember instructing that the case be abandoned. It is noted, however, that in the original Affidavit, Mr. Vorovnik was unequivocal that he did not give such an instruction.

Hearing

Section 21a of the Law defines the time period for requesting reinstatement of an abandoned patent as follows:

Where the Commissioner refuses a patent under Section 21a, he can reconsider the refusal if requested to do so within 12 months.

Section 164a of the Law allows the Commissioner to extend this period on reasonable grounds:

The Commissioner has the discretion, if he sees fit to do so, to extend any deadline of the Patent Office or proceedings before the Commissioner….

Considerations for extending a time period should be based on context and the interests in question. This was clarified by Judge Naor in Appeal 2826/04 Commissioner of Patents vs. Recordati Ireland Ltd, 26 September 2004:

The policy for ruling on the various requests before the Patent Office will change with the context, and depend on the deadline under consideration.

In a ruling concerning extending the 12 month period for reconsideration of a decision to close a file concerning IL 221116 Yaakov Dichtenberg et al. from 7 September 2016, the Deputy Commissioner stated that such requests should consider the interest of the Applicant on one hand, and that of the public interest for certainty on the other.

The relevant considerations are whether reasonable grounds for granting the extension were provided, the size of the delay and the reasons for the delay. See Opposition to IL 110548 Shmuel Sadovsky vs. Hugla Kimberly Marketing ltd, 122 August 2010, and the ruling concerning IL 157563 to Icos Corporation from 21 October 2013.

As to the first consideration, the period of the extension is only a little more than one month over the 12 month period set out in Section 21a, which makes it relatively easy to allow such a short extension.

On the other hand, the case went abandoned due to an apparent misunderstanding between client and attorney that could have been avoided by sending a written summary of the conversation or similar documentation. Furthermore, it was not even properly clarified what instructions the Applicant understood he’d given his attorney during that conversation which he doesn’t remember.

Ms Bracha notes that relying solely on a telephone conversation as grounds for abandoning an application does not seem to her to be reasonable or appropriate behavior. This should be clear since this isn’t even the first case that this application was closed due to not responding to an office action, and consequently one could expect the Agent for Applicant to be more careful.

Furthermore, on discovering that the case had become abandoned, the Applicant could have acted immediately, within the 12 month window under Section 21a. However, she accepts that he preferred to submit a full response to the office action, as was finally submitted.

When weighing up the relatively short delay on one side, and the nature of the mistake on the other, which is far from being reasonable, Ms Bracha applies her discretionary authority under Section 164 to allow the case to be reopened, but on condition that there will be no further extensions whatsoever, for any reason.

Ruling re reopening abandoned application IL 191364, 18 June 2018.

COMMENT

Apart from the stated desirability to confirm instructions of this sort in writing, I would add that even when having received instructions to abandon a case, it is good practice for the Agent of Record to report the Notice of Imminent Abandonment and/or the Notice of Abandonment as a courtesy, since even if there was no misunderstanding and the Applicant does request abandonment, applicants have been known to change their minds.

In cases where a client’s desire to reinstate a mark becomes known to the Agent of Record within 12 months, the request should be made before the 12 month window closes, even if an extension is requested to obtain affidavits and to prepare a response to the outstanding Office Action.  It makes sense to obtain reinstatement as a matter of legal right under the law rather than to attempt to reinstate based on the Commissioner’s discretion. This is particularly the case where there is a contradiction between the testimonies of the Applicant and that of the Agent of Record regarding the chain of events leading to the case becoming abandoned. In this instance, the Deputy Commissioner was amenable. Had she not been, the client could sue the Attorney for malpractice, and his defence would be that he was acting on verbal instruction that he did not bother confirming. Not the best situation to be in.

 


Cancelling a Trademark – K Washer

August 8, 2018

This is an interim ruling regarding whether a sole distributor in Israel of trademarked goods has standing to request cancellation of a mark that is confusingly similar to the trademark covering the goods they distribute, and under what conditions can the owner of the trademark that is the basis of the challenge join the proceeding? Do they need to post a bond for costs? Does the counter-statement of case need substantive amendment and can the owner of the challenged mark requests costs for so doing?

KWASHER

Kärcher is a French company that has requested the cancellation of Israel Trademark No. 258749 to B.M. Peled-Technical Supplies LTD for the stylized “K-Washer” mark shown.

The basis for the cancellation request is that the K-Washer mark is confusingly similar to the Kärcher Mark.

Karcher

The request for cancellation was submitted by Dan Sheldon Ltd, which claimed to be the sole distributors of Kärcher in Israel. The Applicant for cancellation informed Kärcher about the issue and that they intended taking steps against the mark holder.

A letter of consent and a POA from Kärcher was attached to the cancellation request. In the letter of consent, Kärcher noted that they were not a party in the cancellation request but they agree to it occurring. In the POA it was emphasized that Dan Sheldon is the sole distributor of Kärcher products in Israel and that Kärcher delegates the right to take legal steps against K-Washer.

In response to the cancellation request, the trademark owner claimed that the party requesting cancellation of the mark had no connection to the registered Kärcher mark and no rights in the mark. In particular, the mark owner claimed that Sheldon had no standing and no legitimate interest that could serve as a basis for the cancellation request. Furthermore, he argued that the letter delegating authority showed that Kärcher had no interest in defending their mark in Israel.

In counter-response, to remove any doubt, Kärcher requested to be a party to the cancellation proceeding.

The cancellation request was submitted together with evidence from the requesters for cancellation and after the parties had submitted their statements of case. The mark owner has not yet submitted his evidence, and has already received an extension of time to do so.

The claims of the parties

Kärcher claims that their joining the cancellation request is essentially the same as if they had been a party from the beginning. It would not create damage, delay or affect the proceeding that has already started in any way, and their joining the proceeding does not in any way change the cancellation request.

Kärcher explained that their joining is merely a precaution to avoid the mark holder’s allegation that they have no interest in this proceeding, or in an infringement proceeding, Appeal 38680-11-17 in the District Court.

The mark holder counter claims that the fact that Kärcher has requested to join the proceeding is not a reason for them to do so, and Kärcher does not claim to be a necessary party in the proceeding. Furthermore, the mark holder notes that Kärcher has not explained how they would be hurt if their request to join the proceeding is refused, and the only reason why they requested to join the proceeding is that the respondent alleged that the party requesting cancellation has no rights in Kärcher’s mark and thus cannot themselves be a party to the proceeding.

Discussion and Ruling

First the Commissioner, Ofer Alon notes that he doesn’t think that the cancellation proceeding submitted by Dan Sheldon was submitted without right of standing. Section 38 of the Trademark Ordinance 1972 states that:

38.(a) Subject to the provisions of this Ordinance, any person aggrieved by the non-insertion or omission from the Register without sufficient cause, or by any entry wrongly remaining on the Register, or by any error or defect in any entry in the Register, may make application in the prescribed manner to the Supreme Court or may, at his option, make such application in the first instance to the Registrar.

The term any person aggrieved has been broadly interpreted, see Seligsohn “Trademark and Related Laws, 1973, page 105 and Appeal 94/05 The Vineyards of Rishon L’Zion and Zichron Yaakov Cooperative vs. The Vineyard Company ltd. P.d. 61(3), 350 (2006) and paragraphs 9 and 10.

The term “who is aggrieved” has been explained very liberally in the case-law, and includes all business competitors who lose out by a competitor benefitting from a trademark that he does not have rights to. This explanation is based on the explanation of the term Person Aggrieved in the English Law.

This was cited in Bagatz Klil vs. Commissioner of Patents and Trademarks, p.d. 42(1) 309 on pages 316 and 317 where the court related to the fact that the mandatory authority amended the term “person interested” that appeared in the original law to “party aggrieved” in  the 1938 Ordinance, and the term remained broad as explained above.

To demonstrate the trend to explain the term broadly, it is noted that in the new UK Trademark Law 1994, the term “person aggrieved” is also deleted, and anyone can request cancellation of a mark.

If there is a risk of misleading the public to think that K-Washer is connected to Kärcher, then Sheldon, who is Kärcher’s distributor in Israel, is within the ambit of a ‘person aggrieved’ and has the right to request cancellation of the mark.

It is noted that the mark owner simultaneously claims that there is no point adding Kärcher to the proceeding, and that only Kärcher has the right to request cancellation, implying that there is indeed a point in allowing him to join the proceeding.

It seems that the parties concur that Kärcher has the right to request cancellation of the mark, since they are also ‘aggrieved” by it being registered (should it be determined that there is indeed a danger of misleading as to the source of the goods).Consequently, if we were to refuse to allow them to join this proceeding, they could simply file a separate request to cancel the mark(which logically would be combined with this proceeding), and this justifies allowing them to join this proceeding at this time.

Regulation 72 of the Trademark Regulations 1940 lays out the conditions for a third-party to join a cancellation or correction proceeding for an issued trademark that are set out in regulation 70:

  1. Any person other than the registered owner, claiming a benefit in a registered trade mark in respect of which an application was made under clause 67, may apply to the Registrar, using the prescribed form, to permit it to intervene in the matter, and the Registrar may refuse or accede to the granting of permission for such, after hearing the parties in respect of the matter, on such terms as the Registrar may see fit. Prior to dealing with such application in whatever manner, the Registrar may demand that the applicant give an undertaking to pay the Registrar’s expenses incurred in deciding to the benefit of one of the parties under the circumstances.

The purpose for Regulation 72 is to allow third parties that claim a benefit in the registered mark, to have their day before the Commissioner. As then Commissioner Asa Kling stated, this is the right to a substantive hearing (see registered Israel trademark no. 216,916 (request to include a third-party) Danny Argon vs. Strauss Culture Factories ltd, 1 November 2012:

Where the third party claims apparent rights to a mark and excluding him from the proceeding would have negative consequences, it seems appropriate to include him in the proceedings as it seems improper to prevent him for stating his case.

As stated above, the cancellation proceedings is based on claims of misleading and unfair competition with respect to Kärcher products.so it seems appropriate to allow Kärcher to join the proceeding, and this accords with Regulation 72. Thus Commissioner Alon orders that Kärcher can join the proceeding as a third-party.

The trademark owner requested on 2 July 2018, that should Kärcher be allowed to join the proceeding, a procedural regime should be introduced wherein amended statements of case and amended evidence be resubmitted in consequence of them being added. Furthermore, the mark owner requests that should Kärcher be allowed to join the case, that they be required to deposit a bond to cover the mark owners costs and should bear the costs of the mark owner correcting their statement of case.

The parties requesting cancellation object to this procedural regime and contend that adding Kärcher does not require making substantive changes to the statement of case, and adding Kärcher does not require moving from where the case has got to and does not introduce new claims. As to requiring Kärcher to deposit a bond, they note that Kärcher is a company with a yearly turnover of billions of dollars and in the court proceedings Kärcher was added as a plaintiff without preconditions.

With respect to the posting of a bond, the mark owner did not provide justification for this request. However, the request to add Kärcher as a plaintiff was also not submitted with justifications for them not to post a bond other than their alleged turnover which was also not supported by any evidence.

In the Commissioner’s ruling of 19 June 2018, the time frame for the mark owner to submit evidence was set to 30 days after the requester for cancellation submit their evidence in a discovery procedure that the Commissioner initiated. It appears from the documents before him, that the requested documents were transferred to the mark owner on 26 June 2018, so the mark owner has until 26 July 2018 to submit their evidence.

In light of the above, the Commissioner rules as follows:

  1. The statement of case of the requester for cancellation of the mark shall be amended only by adding Kärcher as a co-plaintiff. The mark owner will have 21 days to amend their counter-statement of case from the date of this ruling.
  2. The challenger can amend their evidence by adding Kärcher as a plaintiff, and can add any new claims to their statement of case that result from this addition. The additional evidence should be submitted within 30 days of the amended counter-statement of case of the mark owner.
  3. The mark owner should submit their evidence within 30 days of the submission of the amended evidence by the original and the additional challenger. In accordance with Regulation 40 of the trademark regulations, the original requester for cancellation and the additional party will be able to submit their counter-evidence in accordance with the schedule laid out in the regulation.
  4. Despite allowing the addition of a second party to the challenge, no costs will be awarded for any need to amend the statement-of-case, or other reason.
  5. In light of the above, at this stage, the Commissioner does not see it appropriate to require Kärcher to post a bond to cover costs of the mark owner, should they prevail. If however, the mark owner considers it appropriate to require the challengers to post a bond, they can submit a detailed request and it will be considered on its merits.

Interim Ruling in Cancellation Proceeding of Israel Trademark No. 258749 “K-Washer” by Ofer Alon, 19 July 2018.


Opposition to IL 190827 to Pfizer – A request to delete paragraphs from Expert Opinion as Widening Front of Attack

August 8, 2018

In evidence submissions, parties can support contentions made in statements of case, but are not allowed to widen their position by introducing new matter. When evidence relating to allegedly new issues is submitted by an Opposer, the Applicant can be expected to oppose the submission. Opposition proceedings are typically characterized by skirmishes regarding the admissibility of evidence, that are discussed in interim rulings. This is one such ruling.

Opposition to IL 190827 to Pfizer

Lyrica

IL 190827 to Pfizer relates to a pharmaceutical composition prescribed for once a day dosage comprising Pregablin and a matrix forming agent of PVP or PVA and CPVP as a swelling agent.

Teva opposed the patent.

This interim ruling relates to a request by Pfizer to remove paragraphs 13-15, 16, 94, 105 and 130 from the Opposer’s Counter-Evidence in Response of Professor Golomb, acting as an expert witness for Teva.

Pfizer claimed that paragraphs 13-15 of the Opposer’s Counter-Evidence in Response stress gelling agents which are not mentioned on the Opposition or in Professor Golomb’s main Opinion. In paragraph 15 of the Opposer’s Counter-Evidence in Response, Professor Golomb alleges that selective reporting on stability, swelling and hardness is arbitrary and they claim that these paragraphs should be struck as they were not submitted in answer to anything in their response.

Pfizer alleged that Paragraph 16 of Teva’s Counter-Evidence in Response raises issues not previously raised: that there is no comparison between the claimed invention and known formulations and no indication of any advantage thereover.
Pfizer requested that paragraph 94 be struck since it makes allegations not found in the original evidence submission. Similarly, paragraphs 105 of the Opposer’s Counter-Evidence in Response relates to Cmin values in the simulation summarized in table 15, and paragraph 130 thereof, are not by way of response and should be struck from the record.
Teva responded that the request to have these paragraphs in their Opposer’s Counter-Evidence in Response cancelled was submitted for improper reasons. Paragraphs 13 and 15 are supported by the patent application itself and do not raise new subject matter. They come in response to paragraph 9 of Dr. Tomber’s opinion. That mentioned in paragraph 15 regarding swelling, stability and harness comes in direct response to Dr. Tomber’s claim that these characteristics are advantageous. The claim that this is an advantage of the claimed invention was first raised in Dr. Tomber’s opinion as expert witness of the Applicant and so the first opportunity for the Opposer to refute this allegation is in their Counter-Evidence in Response.
Teva further submitted that Section 16, when read in context, is a response to Dr. Tomber’s claim that there is an advantage in the claimed formulation of the application. Professor Golomb considers that without comparison to other formulations, one cannot claim the present invention provides an advantage thereover. Similarly that stated in Section 95 of the opinion; that the application does not provide stability data, comes in response to Dr. Tomber’s claims regarding the efficacy of the formulation. The Opposer adds that the application and the Applicant’s claims in the Statement of Case do not relate to any advantage provided by the swelling or the hardness.
Section 105 deals with the Cmin value in table 15 and comes in response to Dr. Tomber’s claim that tablets having a 6 hour release window are not appropriate for once-a-day dosage. Teva claims that when reading this paragraph in the Opposer’s Counter-Evidence in Response together with the previous paragraphs one can only conclude that they come in response to Dr. Tomber’s claim.

As to paragraph 130, the Opposer claims that the expert opinion cited comes in response to the Applicant’s claim that formulation is resistant to the compaction pressure which is based on experimental evidence first submitted by Dr. Tomber.

The Applicant considers that the Opposer’s Counter-Evidence in Response was not a fair response to their counter statement of case and the Opposer allegations that Dr. Tomber’s statements went further than required to respond to the Opposition, whereas the Applicant claims that Professor Golomb simply expanded on statements made in the original Opposition, that could have been made in the original opposition.

Discussion

The parties are in no disagreement regarding the Law, but only in how it should be applied in this instance. Consequently, the relevant case law regarding the application of Regulation 62 is only summarized briefly.

This regulation orders that evidence in response must fulfill one of the following conditions: They should relate to the issues that are specifically denied by the Applicant in their counter-evidence, or are raised for the first time in their counter-evidence. In the response to the Applicant’s evidence, the Opposer may not submit evidence that should have been part of their main submission of evidence (See Opposition to IL 178141 Unipharm vs. Bristol Myers Squibb Company, 12 January 2015 following the ruling of the then Deputy Commissioner in the opposition to IL 127833 Teva vs. Abbott, 12 February 2007 (Oppositions to IL 177724 and 205606, request to delete sections from the Opposer’s Counter-Evidence in Response DSM IP Assets B.V. vs. Refine Technology LLC, 16 March 2015).  

The Deputy Commissioner, Ms Jacqueline Bracha considers that, on examining the paragraphs in question, Pfizer’s request to have them struck from Teva’s Counter-Evidence in Response should be rejected.

In Paragraphs 13 and 14 of the Opposer’s Counter-Evidence in Response, Professor Golomb relates to Dr. Tomber’s examples. Most of the criticism is directed to Dr. Tomber not relating to the fact that the examples include additional ingredients that are not claimed, and which could affect the release of the active ingredients.

In paragraph 15 of the Opposer’s Counter-Evidence in Response, Professor Golomb alleges that there is nothing in Dr. Tomber’s Opinion to explain why examples 24, 25 and 40 of the Application were chosen to show stability, swelling and hardness of the formulations claimed. Professor Golomb further claims that the Opinion does not relate to the other components of the examples, apart from those that are likely to affect the hardness and swelling of the tablets. The additional components are defined in the specification as gelling agents. From this, Professor Golomb deduces that the chosen examples do not exemplify formulations that only include the elements of claim 1.

In these examples, Professor Golomb relates to things mentioned in Dr. Tomber’s opinion. However, this is not a new issue first raised in the Response Opinion. In fact, a similar statement to that of paragraph 15 of the Response Opinion is found in paragraph 81-83 of Professor Golomb’s first opinion where he explains why, in his opinion, none of the Examples of the patent match that claimed. The difference is the switching of the words “additional assistive materials” in the first Opinion, with the phrase “gelling agents” in the second opinion. Professor Golomb also explains in paragraph 15 of the Opinion that the additional materials are defined as “gelling agents” in the patent application itself.

From that stated, it is clear that paragraphs 13-15 of the Response Opinion do not raise any new issue but rather come in response to that said previously, and so the request to delete these paragraphs is rejected.

In paragraph 16 of the Response Opinion, Professor Golomb relates to the claim in Dr. Tomber’s Opinion, that the claimed invention is advantageous in terms of stability, swelling and hardness of the tablets as compared to those formulated by the standard methods for obtaining delayed release in the stomach that is described in example 29. In the Opinion of the expert, the comparative data provided is insufficient to prove this advantage. The Applicant claims that Dr. Tomber did not make this claim and so this response comes to reject a claim not made.

Examination of Dr. Tomber’s Opinion shows that in part 9.4 of his Opinion, the expert relates to example 29 of the Application as a comparative example. Dr. Tomber explains that the release of the active ingredient in example 29 after 12 hours is 65%, compared to 80% for formulations of the invention, and so some of the active ingredient in the formulation of example 29 is wasted. It appears that paragraph 16 of the Opinion is an attempt to respond to this contention of Dr. Tomber and is thus a response to an issue raised by the Applicant. To the extent that the Applicant considers that Dr. Tomber’s opinion was not properly understood by the Opposer, they can relate to the alleged misunderstanding in cross-examination. In light of this, the request to delete paragraph 16 is rejected.

Paragraph 94 of the Opinion in Response by Professor Golomb raised the issue that Examples 15-23 which look at Lactam formation over time does not indicate the efficiency of the claimed formulation. In this paragraph, Professor Golomb responds to Dr. Tomber’s claim that was raised in paragraph 30 of his opinion, that “the results demonstrate the efficacy of the claimed invention.” Dr. Tomber continues that the examples show the efficacy of the invention under various conditions. In Paragraph 95, Professor Golomb adds that the Application lacks stability data for Example 29 which also does not include all the elements of the invention. According to Professor Golomb, without stability data, Example 29 cannot be used for comparative purposes as Dr. Tomber had suggested in Section 9.4 of his Opinion. The Deputy Commissioner does not think that Paragraph 95 goes beyond the issues under discussion, since it specifically relates to Dr. Tomber’s Opinion which related to Professor Golomb’s original Opinion. In light of this, the request to cancel section 95 is refused.

In paragraph 104 of the Expert Opinion in Response, Professor Golomb summarizes that stated in paragraph 32 of Dr. Tomber’s opinion regarding adapting the formulation for once-a-day dosage, with reference to the release duration and the amount of active ingredient in the blood over the period of release by the tablet. In paragraph 105, Professor Golomb explains why he disagrees with that stated by Dr. Tomber in Paragraph 32 of his opinion, and supports this with reference to publications cited in his original Opinion. This is sufficient to show that Paragraph 105 of the Response Opinion relates to matters raised by the Applicant and is in accordance with Regulation 62 of the Patent Regulations.

In paragraph 104 of the Expert Opinion in Response, Professor Golomb summarizes that stated in paragraph 32 of Dr. Tomber’s opinion regarding adapting the formulation for once-a-day dosage, with reference to the release duration and the amount of active ingredient in the blood over the period of release by the tablet. In paragraph 105, Professor Golomb explains why he disagrees with that stated by Dr. Tomber in Paragraph 32 of his opinion, and supports this with reference to publications cited in his original Opinion. This is sufficient to show that Paragraph 105 of the Response Opinion relates to matters raised by the Applicant and is in accordance with Regulation 62 of the Patent Regulations.

In Section 130 of the Response Opinion, Professor Golomb claims that the Application emphasizes the wear data and hardness of the formulation as ways to optimize the release rate of the active ingredient, but he disagrees that the evidence supports this contention. Here again, the Deputy Commissioner accepts the Opposer’s argument that this paragraph comes in response to Dr. Tomber’s statement in paragraph 26 of his Opinion, that CPVP manufacturing provides a significant advantage. In fact, Dr. Tomber dedicated a number of paragraphs to the stability of the tablets, and so the Deputy Commissioner does not consider that Paragraph 130 goes beyond Regulation 62 of the Patent Regulations.

In Section 130 of the Response Opinion, Professor Golomb claims that the Application emphasizes the wear data and hardness of the formulation as ways to optimize the release rate of the active ingredient, but he disagrees that the evidence supports this contention. Here again, the Deputy Commissioner accepts the Opposer’s argument that this paragraph comes in response to Dr. Tomber’s statement in paragraph 26 of his Opinion, that CPVP manufacturing provides a significant advantage. In fact, Dr. Tomber dedicated a number of paragraphs to the stability of the tablets, and so the Deputy Commissioner does not consider that Paragraph 130 goes beyond Regulation 62 of the Patent Regulations.

In light of this, the request to cancel the various paragraphs is refused.

Since the parties informed the Patent Office a few days ago that they are negotiating a way to end this Opposition procedure, no costs are awarded at this time.

Interim ruling re admissibility of various paragraphs in a Response by Opposer to Applicant’s Opinion concerning IL 190827 to Pfizer, opposed by Teva, ruling by Deputy Commissioner Jacqueline Bracha,  6 June 2018.     


The three month Trademark Opposition period is calculated from the day it starts

July 31, 2018

288045

The three month Trademark Opposition period is calculated from the day it starts

On 3rd June 2018, Israel Trademark Number 288045 to R & S Food Import Export published as issued. The mark is shown alongside.

Barilla Ger Fratelli requested that their trademark opposition submitted on 30 May 2018 be considered.

deadlineThe Israel Trademark Department considered that the final date for opposing the mark was 28 May 2018, three months after the mark published for opposition purposes on 28 February 2018. Furthermore, the Commissioner of Patents and Trademarks does not have the authority to extend the deadline for filing oppositions. So the Opposition submitted on 30 May 2018 was not considered as being timely filed and was ignored.

BarillaBarilla Ger Fratelli, represented by Dr. Shlomo Cohen Law Offices argued that the deadline for filing the opposition was the end of May, and they had until 31 May 2018, so the opposition was timely filed. To support their contention, Barilla’s representatives referred to Section 10b of the Law of Legal Interpretation 5641 and argued that Patent Office Circular M.G. 46 titled “Calculating Deadlines provided in Months or Years” contradicts the law and adversely affects Barilla’s rights. Barilla’s legal representatives claimed that the Opposition was filed after they had consulted with the trademark department and appended an Affidavit of Adv. Talia Punchick, a former employee of Dr. Shlomo Cohen Law Offices.

Section 24a of the Trademark Ordinance 1972 states:

Within three months of the date of publication, anybody can submit an Opposition to a trademark issuing.

Section 23 states that:

If a trademark application is accepted, whether as filed or with limitations, the Commissioner will publicize in the determined manner, that the mark was accepted and any limitations applied.

The date that the mark published under Section 23 for opposition purposes, was 28 February 2018. Since the period for submitting an Opposition is three months from 28 February 2018, and under the Section reproduced above, the final date for submitting Oppositions is 28 May 2018. This is the date required by Section 10b of the Law of Legal Interpretation which states:

A period provided as a number of months or years after a specific event will end on the final month on the day having the same date as the event, and if that month does not have that day, on the last day of the month.

Barilla’s representative’s claim is surprising, as if this law reduces the period given in the law, since the months provided for the opposition (March, April and May) that were at Barilla’s disposal, are all full months. Barilla chose not to take advantage of this time period.

Beyond that required, it is noted that the final date for submitting the opposition, i.e. 28 May 2018, was noted in the publication of the notice of allowance in the journal and also on the second page of the journal itself.

To remove any doubt, it is noted that Section 10(a) of the Law of Legal Interpretation which states that where a period is provided in days or weeks, the day that the period starts is not included in the calculation is not relevant to the present case, since it relates to days and weeks and not to a number of months, unlike Section 24(a) of the [Trademark] Ordinance. Thus the claim that the number of months starts from the 1 March 2018 (and should therefore finish on 1 June 2018), rather than starting on 28 February and finishing on 28 May is groundless.

This conclusion would be changed if, for example, an allowance was published on 30 November of some year, and thus the final day does not exist since February has only 28 (or 29 days). In such a case, the deadline would be 1 March.

In light of the above, the example given in Circular M.G. 46 is correct, and the final date for publishing an opposition to something that publishes on 28 February is 28 May.

There is no request to extend the Opposition period, which in any event is not within something that the Commissioner of Patents has the authority to do as is evidenced in a long list of Patent Office decisions. Commissioner Ofir Alon’s ruling in the request for extending the Opposition period in re Israel TM Application number 283942 Mindspace ltd vs Merkspace Europe BV from 28 June 2017:

As explained in the Decision of then adjudicator of IP concerning the Opposition to Israel Trademark Application Numbers 182779 and 182780 for stylized marks to Baltika Breweries vs. S & G Intertrade ltd from 5 November 2006:

Retroactive extensions of opposition periods is what Section 7 of the fifth amendment to the Ordinance was designed to prevent, as can be learned from the words of explanation of the Proposed Law 34 from 16 June 2003, on page 492:

It is proposed to cancel the Commissioner’s authority to extend the Opposition period. This step is intended to increase the efficiency of the consideration of the registerability of trademarks.  

Similarly, see for example, the decision regarding the Request to extend the Opposition for Israel Trademark Application Number 245038 Dynasoi Elastomeros, SA de CV bs. SK Global Chemical Co. Ltd, from3 October 2013.

From examination of the Opposition file, it transpires that a notice of the untimely filing of the trademark Opposition was sent to Barilla’s representatives on 30 May 2018, immediately after the opposition was filed. The Adjudicator does not accept that the opposition was submitted after consulting with the Trademark Department. The Affidavit by the attorney states that the matter was told to her to the best of her knowledge. No details of when and how the alleged conversation was supposed to have taken place are provided, the identity of the Examiner who allegedly gave the wrong advice is not provided. Nor are the exact contents of the alleged conversation. Due to this lack of clarity, the Adjudicator is unable to rely on this affidavit to support Barilla’s contention. Anyway, the Law itself over-rides any other guidance. Any attorney, and particularly one with trademark expertise, is expected to refer to and rely on the Law and not on vague guidance to the extent that such existed.

It is noted that Barilla still has legal options, and can request that the mark be cancelled under Sections 38 or 29 of the Ordinance. In such a cancellation proceedings, all their arguments and contentions will be fully considered.

The request for accepting the Opposition as timely filed is refused.

Decision by Ms Yaara Shoshani Caspi re Barilla’s Opposition to Israel Trademark No. 288045 to  to R & S Food Import Export.   

COMMENT

This is not the first time that the Patent Office has ruled that the three month trademark opposition period is not extendible. See here for another example.


Opposition to IL 201320 to Pfizer & limits to amending the Statement of Case

July 2, 2018

Patent Application IL 201320 to Pfizer is titled “CRYSTALLINE FORMS OF 6-[2- (METHYLCARBAMOYL) PHENYLSULFANYL]-3- E -[2- (PYRIDIN2- YL] ETHENYL] INDAZOLE SUITABLE FOR THE TREATMENT OF ABNORMAL CELL GROWTH IN MAMMALS”.

On allowance, it published for Opposition purposes, and Unipharm submitted an Opposition.

Prior to publication following allowance, Applicants have very wide discretionary powers to amend claims or submit new claims, provided the claimed mater is supported from the specification. After publication, in response to Oppositions, or even after grant, the Applicant/Patentee is only allowed to correct obvious typographical errors or to narrow the scope of protection by cancelling claims or by amendments that clearly narrow the scope of protection. Nothing that protects matter previously not within the ambit of the claims can be allowed.

In this instance, during the Opposition proceeding, Pfizer requested a narrowing amendment to the specification to clearly define the term ‘substantially pure’ that appears in claim 2. Commissioner Alon allowed the amendment in a ruling of 5 March 2018, and gave the parties a window to amend their Statements of Case to take the amendment into account.

Unipharm, who had already submitted their evidence, decided not to amend the statement of claims, but Pfizer submitted an amended Statement of Claims that was wide ranging.  This included background to the development of the invention and eleven appendices.

Unipharm then requested that Pfizer’s amendment be struck from the record, arguing that amendments to the claims following amendments to the specification should be based on those amendments to the specification. Pfizer disagrees. They note that the Law does NOT require that amendments to the counter-statement of claims be related to the earlier amendments to the statement of claims at the start of the Opposition proceedings, or that they be based on the amendments to the specification. Furthermore, the interim ruling allowing amendments to the statement of case did not include such limitations.

The Applicant drew a parallel to civil court proceedings, however the Commissioner does not accept this since in civil court proceedings, when the plaintiff amends his Statement of Case, he can expect the defendant to be allowed to amend their Statement of Case, whether in direct response, or to broaden their position, and this is the risk taken when amending the Statement of Case once the proceeding is underway.

In contrast, in Patent Opposition proceedings, it is the Applicant that has a right to amend the specification, not the Opposer. In this instance, it is the Applicant that causes the Statement of Case to need to be amended, and he can therefore expect that the Opposer will also amend his Statement of Case , and will not restrict himself to amendments resulting from the Applicant’s amendment. If the Opposer does amend their Statement of Claims, the Applicant can make their amendments.

So what is the appropriate Law if the Opposer does NOT amend their Statement of Case? The Commissioner reasons that the Applicant can certainly correct their Statement of Case with respect to anything that needs correcting. Whenever the specification is amended, the main points of disagreement often shift. The Opposer deciding not to amend the Statement of Claims does not prevent the Applicant from relating to new issues raised by the amendment to the Specification, and to redirect his allegations to these issues. This serves the procedure and focuses the Statement of Case on the real issues. The Commissioner considers that the term “issues arising from the amendment” should be interpreted broadly, in light of the relevant case-law.

Nevertheless, where the amendment to the Statement of Case is totally disconnected to the amendment to the specification, it becomes a regular amendment to the Statement of Case which should be subject to the regular criteria. The submission should be accompanied with a statement justifying the amendments and explaining why they could not have been included originally, and why they should be allowable. This is necessary to prevent the amendment to the Specification becoming a technical tool for allowing unlimited amendments to the Statement of Case whenever the Specification is amended.

In this instance, the amendment to the Statement of Case was the addition of background relating to the development of the XLI formulation. From Examination of the amended Statement of Claims, the Applicant did not indicate any connection, even minimal, between the amendments to the specification and the amendments to the Statement of Case. Furthermore, the Applicant did not justify why the amendment was required now, and was not part of the original Statement of Case, or why the Statement of Case was not amended earlier.

In these circumstances, the Commissioner considers that the Opposer is correct, and the amendments as submitted should not be allowed. The Applicant is given 15 days to refile an amended Statement of Case whose claims are related to the amendment to the Specification, or to state that they do not wish to file an amended Statement of Case. Alternatively, the Applicant may submit a request to amend the Statement of Claims justifying the amendments submitted.

The deadlines for submitting evidence that were given in the interim ruling of 5 March 2018 are canceled. New deadlines will be given once the Applicant files his Statement of Case.

Costs for this will be considered when ruling costs for the main ruling.

Interim ruling by Commissioner Ophir Alon Concerning Unipharm’s Opposition to IL 201320 to Pfizer


Panama Jack Cancellation Proceeding – Proving Something Did not Happen

July 1, 2018

Panama JackOn 30 November 2016 Panama Jack International Inc  filed a request to cancel Israel TM No. 79829 for Panama Jack in class 25. The registered trademark, then owned by Grupp Internacional S.A.,  is shown alongside.

Back in March 2017, the Adjudicator of Intellectual Property Ms Yaara Shoshani Caspi issued an interim ruling  that since Grupp Internacional S.A., though represented by an Israel Law firm, did not file a response to the cancellation proceedings instituted by Panama Jack International Inc., Panama Jack can supply their evidence and she would rule on the cancellation proceeding if the arguments were persuasive.

On 2 April 2017, Panama Jack International submitted an Affidavit from Mr Erez Drucker, director of Access (Xes? Axes? Excess?) Private Investigators, to support their allegation that the mark was not in use by Grupp. Again Grupp failed to respond, despite having legal representation back then.

On 21 August 2017, Panama Jack International requested a decision despite the lack of response.  On 28 March 2018 they requested to add a further Affidavit, this time from Mr Ronen Menashe, director of “”Information Services of Israel”.  Again, the owner failed to respond.

(On 2 October 2017, Grupp’s attorneys requested to cease representing their client for various reasons that Ms Shoshani Caspi considers justified. On 10 October 2017 they submitted an affidavit to the effect that the client’s local attorney in Spain knew about the hearing. On 23 October 2017, Ms Shoshani Caspi assented to the request).

Now, on 23 May 2018, a hearing was held before Ms Shoshani Caspi, which Grupp and their representatives did not bother attending, despite knowing about the date thereof. Panama Jack International requested to withdraw the Affidavit by Mr Erez Drucker and to replace it with that of Mr Ronen Menashe who was available for questioning at the hearing. This request was granted. During the hearing, a recording of conversations between Mr Menashe and the Spanish office that was referred to in the Affidavit was also listened to.

Discussion and Ruling

The question in this instance is whether there is justification to cancel the issued mark. Section 41(a) of the Trademark Ordinance states:

  1. [a] Without prejudice to the generality of the provision of indicate sections 38 to 40, application for the cancellation of the Registration Madrid of a trade mark regarding some or all of the goods or classes of amendments goods in respect of which a trade mark is registered (hereinafter – goods regarding which the cancellation is requested) may be made by any person interested on the ground that there was no bona fide intention to use the trade mark in connection with the goods for which it is registered in connection with the goods regarding which there is a request to cancel the registration and that there has in fact been no bona fide use of the trade mark in connection with those goods in connection with the goods regarding which there is a request to cancel the registration, or that there had not been any such use during the three years preceding the application for cancellation. [b] The provisions of subsection (a) shall not apply where it is proved

Thus the relevant period regarding usage of the mark by Grupp is from 30 November 2013 to 30 November 2016 when the cancellation request was submitted.

In this instance, as stated above, the mark owner failed to respond to the cancellation request, and did not even request extensions. Panama Jack International, did however, submit their evidence.

During the hearing, Mr Menashe’s integrity was examined and from his evidence and responses, Ms Shoshani Caspi was assured that he was trustworthy. Mr Menashe’s opinion included a survey and investigation of the relevant markets in Israel (i.e. clothing and footwear) in an attempt to find stores that sold goods bearing the Panana Jack man in the relevant time-period. In addition, his office searched the Internet for evidence that goods bearing  the mark were available in Israel at the relevant time. He determined who owned the mark and the identities of the leading employees of the company to contact them directly to determine usage of the mark in Israel. Within the framework of Mr Menashe’s investigation, neither he nor his investigators found any indication of sale of goods under the Panama Jack trademark in the relevant time period.

It is established case-law that a registered trademark is a property right for all intents and purposes, that cannot be whittled away without cause. The burden of proof that a mark was not used lies with the challenger of the mark. See for example, Bagatz 476/82 Orlogd ltd vs. the Commissioner of Patents p.d. 39 (2) 148. During a proceeding, the burden of proof passes back and forth. Thus the requester for cancellation of a mark has to bring evidence that a mark is not in use. If this is proven, the burden of proof then falls on the mark owner to attack the challenger’s evidence and to establish that the mark is indeed in use.

The challenger has more than met the initial level of proof required to establish a prima facie case that the mark is not in use, and the mark owner failed to even attempt to rebut this position, and thus the apparent lack of use remains unchallenged.   The Adjudicator considers the evidence that the mark has not been in use for three years prior to filing the cancellation submission and thus it is fitting to cancel the mark.

In light of the above and in like of claims made at the hearing, it is clear that the mark owner has intentionally ignored the challenge to the mark and the cancellation proceedings submitted to the Israel Patent and Trademark Office.  In addition to concluding a lack of usage, one can only conclude that the mark owner is simply holding the mark for no purpose. One would expect the mark owner to acknowledge and respond to the cancellation proceedings by abandoning the mark, thereby rendering this proceeding unnecessary.

The mark is therefore cancelled. Using her authority under Section 69 of the Ordinance, Ms Shoshani Caspi has also issued relevant costs in the proceeding, based on the work done by the challenger, and rules 9000 Shekels costs, which the mark owner is informed of via the address in the register.