Publication on the Internet Prior to filing Israel Design Applications

July 26, 2016

Shoe publicity     Shoe publicity 2

Background

This ruling clarifies the extent that apparently pre-filing date publications on the Internet may be used to prevent design registration in Israel.

Although there is draft legislation making its way through the system, in Israel designs are currently protected by the archaic Patent and Design Ordinance of 1924, a legacy from the British Mandate. One of its oddities is that absolute novelty is required and there is no grace period. An even odder oddity is that only absolute local novelty is required and someone bringing a design into Israel for the first time is entitled to register it prior to importing and is entitled to up to 15 years of protection.

The previous Commissioner, Dr Meir Noam, grew tired of waiting for the Knesset and the Ministry of Justice to get their acts together and in a Commissioner of Patents Circular decreed that publication on the Internet, particularly in the design registers of foreign patent offices that are accessible on line from Israel via their websites,  would be considered as available in Israel and novelty destroying. Although arguably ultra vires, the Circular was never challenged. There remains a question as to what other Internet publications are novelty destroying, and the present ruling addresses this issue.

A third oddity is that unlike much of the rest of the world where Examination of designs is only for conformance to formalities, in Israel design applications are substantively examined in terms of novelty and the Examiners may search newspaper press-releases, Applicant’s website and, it transpires, various web-sites offering goods for sale.

This case

Naalei Nayot (1994) LTD submitted several Israel design applications including Application Nos. 55280, 55283,55288, 55289, 55291, 55270, 55271, 55278 and 55279. All these applications were submitted on 26 February 2014 in class 2(04) that covers footwear, socks and stockings.

The applications were submitted together with other design applications that were either registered or were abandoned due to issues raised during the examination process. These nine applications were rejected in a single office action of 17 June 2015 which resulted in the Applicant requesting a hearing that was subsequently held on 18 October 2015.

The nine applications fall into three categories as follows:

  • Applications 55288, 55291, 55270 and 55279 were considered as lacking novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924. These rejections were based on two Facebook advertisements on the Applicant’s Facebook page. These advertisements from 20 February 2014 preceded the application date and appeared to show the shoes.
  • Applications 55280, 55283, 55289, 55291 and 55271 received office actions on 5 February 2012 that alleged a lack of novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924 on the basis of sales illustrations from various advertisements. When the applicant responded to the objection, the Examiner again forwarded a publication on Naalei Nayot’s Facebook page.
  • Application 55278 was rejected on the basis of an advertisement on the Applicant’s website. In this instance, during the hearing, the Applicant withdrew the application and a decision issued on 18 October 2015.

Regarding the other eight applications, the Applicant does not consider the advertisements and the Facebook advert that the Examiner cited as being novelty destroying prior art.

The Applicant argued that advertisements by others are third-party Internet adverts that are not connected to the Applicant and should therefore be considered carefully. The websites are frequently updated marketing sites, and so their trustworthiness is suspect. In particular, the dated consumer comments relating to products, some of which are anonymous, may not have related to the specific products at all!

The Applicant supported their position from a ruling by Deputy Commissioner Jacqueline Bracha concerning design application 51593 and 50594 Tequila Cuervo, S.A. DE C.V. (9 June 2014), to the effect that a publication on a sales website does not necessarily knock out the novelty of a subsequently filed design application. As stated in paragraphs 44 and 45 thereof:

In our case, due to the nature of the website, it is reasonable to accept that the images and prices of goods shown will be updated in response to market changes. Unlike news-like content that is clearly dated or official press-releases and the like, the contents of advertising websites cannot be clearly dated and thus cannot be used to reliably establish a date for information published.

The above should not be understood to imply that only official websites of patent offices around the world have the required standard for the patent office circular (which states that applications for designs submitted in other jurisdictions that are accessible over the internet from Israel are considered as prior art preventing design registration in Israel where, under the current regime from 1924, only local novelty is required – MF) The circular allows other official publications to be relied upon including internet catalogs, and applicant’s websites so long as they enable a clear date to be established. Where the source of the advert is the applicant itself, in a press release or on applicant’s website, the applicant can respond to allegations of prior publication.

The challenge to the Office Action is, therefore, the date and trustworthiness of the advertisement cited by the Examiner as being prior art.

The applicant’s challenge to the Facebook publications cited by the Examiner fall into two categories. The first is that they are not full disclosures in that they do not show the design in full. Applicant submits that the cited publication shows a cupboard or a shoe box and the shoes included are not fully visible. The view is from above and from a distance, and does not teach the design to the extent it is taught in the application itself. The Applicant claims that the Facebook advertisement is not directed to consumers and is inherently different from sales sites that enable to the consumer to select and rotate the image of products displayed. They are inherently different from a catalogue or from a vendor’s website.
A second challenge raised by the Applicant is that the Facebook citations against the second group were first raised in a second office action during reexamination. Thus, with regard to the Facebook citation, we are not concerned so much with the fact of publication as per section 30(1) of the Ordinance, but with the degree of exposure of the design in the advertisements predating the filing date, with respect to their photographic quality.

Publication on General Sales Sites

After examining all the publications in vendors’ websites, the present Commissioner, Asa Kling, declared that the publications are reliable. As to the date of the publication, where this is not included within the advertisement on the website, it is possible to determine this from readers’ feedback which is dated. One can assume that if on a specific date there is a web surfer’s comment on an Internet page regarding a product for sale, that product was on sale at least on the date of the response. The content of the responses leaves no doubt that the products illustrated were those that are under discussion in this ruling.

One has to be careful when relating to Internet publications (see Request for Trademarks 187385 and 187386 (GHI) and the opposition to trademarks 200701 and 200702 (GHI stylized) in Gemology Headquarters International vs. Gemology Institute of America 28 May 2012 (henceforth GHI). In our case, after further consideration of the publications that the Examiner relied upon, it is determined that there is reliable information regarding the publication of the design in the general sales sites. As the inquiry stands up to the warning given earlier with regards to the Tequila case, the burden of proof is on the Applicant to show that the publication relied upon by the Examiner is unreliable and insufficient to serve as prior publication of the requested design.

As stated in GHI, the assumption may be rebutted by an expert opinion of by other means that the publication was not at the time indicated on the site, but the Applicant has failed to bring such proof.

This is similar to citations brought as prior art in patent applications. Of relevance in this regard is the notice from the European Patent Office concerning Internet citation (Official Journal EPO 8-9/2009 (the underlining is by Commissioner Kling):

“Establishing a publication date has two aspects. It must be assessed separately whether a given date is indicated correctly and whether the content in question was indeed made available to the public as of that date. The nature of the internet can make it difficult to establish the actual date on which information was made available to the public: for instance, not all web pages mention when they were published. Also, websites are easily updated yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public – including examiners – to establish precisely what was published and when…. Finally, it is theoretically possible to manipulate the date and content of an internet disclosure (as it is with traditional documents). However, in view of the sheer size and redundancy of the content available on the internet, it is considered very unlikely that an internet disclosure discovered by an examiner has been manipulated. Consequently, unless there are specific indications to the contrary, the date will be accepted as being correct”.

It is emphasized that as far as the surfers’ comments are concerned, it is evident that the website content was available for a long period, and this is sufficient to remove the novelty of (anticipate) subsequently filed design applications in Israel where there is no reason to assume that a host of readers comments all had their dates changed.

Having ruled that the dates are reliable, there is no dispute that the designs in the Internet website are fully disclosed and this renders the discussion regarding the quality of the Facebook publication moot, as is the question of when the partial publication on Facebook occurred. Thus the website publication of 55271, 55280, 55283 and 55289 is considered sufficient to render the applications unregisterable and the Examiner was correct to refuse them.

Publication on Facebook

There is a further claim that the publication on Facebook was never intended for the consumer. The Commissioner admits that he didn’t understand this claim. The intended recipient of a publication is irrelevant to the fact that there was a publication. The Examiner was correct that the fact the pictures were publicly available is sufficient to destroy the novelty of a subsequently submitted design application. This position is supported by the authors of Russel-Clarke and Howe on Industrial Designs, 8th ed., Sweet & Maxwell (2010), where, on page 13 it is stated:

In general there will be publication if articles to which the design is applied are manufactured, displayed or used in such a way that members of the public will or might see them. It is not necessary that the articles should have been sold. Prior use does not mean use by the public, but use in public as opposed to use in private.

According to the Examiner, the illustrations allow the shoes to be appraised by a visual test, in that the pictures of the featured design may be compared with other designs and what is required is a general appreciation of the design and not all the minor features thereof. The Examiner considered that the Facebook advertisement shows that stylistic elements of all the shoes shown in the illustration in sufficient detail to be novelty destroying.

Section 2 of the Ordinance defines a design as follows:

“Design” does not only mean the outline, shape, example or decoration that makes a mass-produced article distinctive, whether by hand, by machine, by chemical treatment, by a separate shape or an adjoined part, as it appears to the viewer in the finished product, and as can be visually determined. The term design does not include any method or principle or anything else other than a mechanical object.

In Appeal 7125/98 “Miforal Industries Jerusalem vs. Klil Industries LTD 57(3) 702 Nevo 8 May 2003, in paragraph 10 of the ruling this is explained:

The correct comparison needs to be made by comparing the general impression that a design makes on the eye of the relevant consumer. The emphasis is on the general impression from the article considered in its entirety., where the assumption is that the consumer does not have an experts attention to detail, but is also more interested that a passer-by Appeal 1187/94 Sela Concrete Devices LTD vs. Ackerstein Industries LTD [8] 291.

Thus in many fields, a design will be examined in its entirety rather than being analyzed into constituent elements. See  Patent Office ruling concerning designs 22424, 22433, 22783, 23767 Klil Industries LTD of 7 August 1997

By applying the general visual appearance test of the Ordinance as fleshed out in the case-law, the question in our case is whether the normal consumer exposed to a picture in an advertisement on Facebook would be sufficiently impressed by the general appearance that he would identify the shoes for which design applications were filed. The Commissioner considers this unlikely.

The nature of the Facebook advertisement is high-resolution coloured photographs. However, the photos show some of the shoes almost in their entirety and others are only partially visible. The soles of none of the shoes are visible.

As the Applicant noted, viewing the photographs on Facebook is insufficient to give a feel for the whole shoe, since each show is only shown from one specific angle which is a general front birds-eye view. The photos do not show the design elements of each shoe, such as decorative elements in detail. As the Applicant explained, apart from the question of the intention of the advertisement, the publication of the shoes in these advertising photographs is not the same as their display on a website showing all angles.

Furthermore, with respect to the articles under discussion,one cannot deny that the heel of a shoe is a significant design consideration. For many of the shoes shown, the heel is not illustrated, nor is the view from behind, which is of significance to the purchaser as will be detailed hereinbelow.

For example, with reference to design application number 55288,  the Facebook illustration does not show the heel engaging straps of the shoe, but only the front upper section.

With reference to Application Number 55279, the Facebook photograph leaves a difficulty in determining whether the shoe is a high-heeled shoe or a platform shoe. There is also a difficulty in understanding the internal profile of the shoe which is clear from the figures submitted. The show of design application number 55291 is not clear from the Facebook image which does not show clearly if the shoe has a high heel or not, and what the back-of-heel straps look like. These are, however, clear from the images of the application as filed.

Application 55270 is shown on Facebook, but the position of the back-of-heel strap and of other elements such as floral decorations is not clear. Thus it appears that the Facebook images do not reveal the design in its entirety.

Applications 25280, 55283, 55289, 55291 and 55271 are not clearly shown on Facebook.

In conclusion, Application numbers 55288, 55291, 55270 and 55279 were rejected whilst Applications 25280, 55283, 55289, 55291 and 55271 were allowed to be registered, (as noted previously 55278 was abandoned prior to the hearing).

Ruling by Commissioner Kling concerning various shoe design applications submitted by Naalei Nayot, 1 June 2016.

COMMENT

This ruling provides much needed clarification regarding to what extent a design shown in a photograph on an Internet website is novelty destroying. However, I respectfully submit that the commissioner is wrong in this case. (Actually that’s not strictly true. The Commissioner is right by definition. It is only a court ruling that can over-turn his decision. What I mean is that I think that the standard for an image to be novelty destroying should not be the same as for registering a design. A registration should include front, back, left, right, top and bottom plan views, and also a perspective view. I think that an earlier publication of a view that observers see should be adequate to anticipate a design application and to render it non-registerable.

After the Christian Loboton case, I understand that some people choose shoes because they have a particular colour sole and are willing to pay a premium for this. Actually this isn’t true. Some people are willing to pay more for a particular designer’s products, and will accept red soles as a distinguishing trademark. Clearly the arrangement of grips and studs on the soles of sports shoes have a purpose, and whether the ankle is strapped in or not is also of some interest, but, like the height of a heel, it is functional. Women wear high heels to look taller (yes I’ve also seen Kinky Boots and accept that they also cause the buttocks to clench sexily). Essentially heel size is functional. I think that people primarily choose the aesthetic elements of a shoe design based on the impression it provides to someone looking down from in front. It is for precisely this reason that the Facebook adverts show the shoe from this perspective.  A good design will be available for different sports with different grips on the sole and, I suspect, will be available in low, medium and high heel options. Furthermore, whether a shoe has high heels or not is usually visible from a raised front view.

Without viewing the particular images and the specific shoe designs it is difficult to challenge the Commissioner’s ruling, but I am skeptical.  I think that Former Deputy Commissioner Smulevezh was correct in the Ackerstein kerb-stone decision to rule that one views kerb-stones from the top and front and thus a publication not showing the underside and back surfaces is still a publication. I think this should apply to shoes as well; most people wear them on their feet at ground level. They chose shoes to compliment outfits based on what the shoes look like from a bird’s-eye view from the front. This is not a bird’s-eye view at all. It’s the view that others, and indeed the wearer himself / herself see.

I can accept that a purchaser may be interested in what the inside of a shoe looks like, but I do not consider this to be part of the aesthetic design protected by a design registration. Shoes are designed to be worn. When worn on a foot, the inside design features of a shoe are hidden, as is the sole.  I would expect Naalei Naot to complain about competitors making shoes that are otherwise identical except viewed from underneath or when considering the inside. This is why they register designs. An otherwise identical shoe to one that is registered design, that is differentiated by having a tartan lining and a manufacturer’s signature written on the part of the sole connected to the heel that does not get appreciable wear, should, in my opinion, be considered infringing.


Shabbat Lifts Not for the Public Good

July 18, 2016

 

shabbat liftG.L. Glatt Lift Company Ltd. filed a patent application for a Shabbat Lift; an elevator that may be used on the Jewish Sabbath without transgression of the holy day. (The term Glatt relates to a standard for Kosher beef that the generally accepted Ashkenazi authorities consider a stringency. By transference, the term implies super-Kosher, or something similar. Many Jewish authorities allow usage of a lift that stops automatically, or riding in a lift in a hospital or similar if someone assumed to be non-Jewish operates it for their benefit. Other authorities are stricter. More discussion on this is given at the end of this article).

Maalit ShabbatIn this instance, the Applicants have filed a patent for a technological Hallachic solution that is allegedly novel and inventive and that is claimed to overcome the reservations of those Hallachic authorities that do not allow usage of the type of ‘Shabbat Lifts’ that are common in apartment blocks with religious residents.

Israel Patent Application No. IL 221842 titled “Shabbat Lift” was submitted on 9 September 2012. The application claims priority from a US provisional application number 61/533,244 that was filed on 11 September 2011, and a corresponding PCT application, No PCT/IB2012/054604 was also filed.

On 13 October 2015, the Applicants received a Notice Prior to Examination to which they responded on 1 February 2016 with a list of prior art. The submission of a response to the Notice Prior to Examination creates a state of affairs by which the application is ready for examination (see section 5.3 of the Examination Procedure for Examiners).

On 1 February 2016 the Applicant also submitted a request for accelerated examination, which is a petition to make special. The justification for the request was that awarding the patent was in the public interest.

The Applicant claimed that the lack of appropriate Shabbat lifts prevented high-rise accommodation for the Ultra-Orthodox and the proposed solution would overcome this barrier. The Applicant considered that his invention would facilitate high-rise Ultra-Orthodox accommodation and thereby minimize land usage (by increasing the population density) and would thereby lower building costs.The solution would also make life easier for the ill, the elderly and children who could not use elevators on Shabbat. Various articles regarding the lack of accommodation for the Ultra-Orthodox were appended.

The statement was not specific, but it appears that the legal support was claimed from Section 19a (v) and (vi) that state that:

An applicant for accelerated examination with reasonable arguments may submit a reasoned request, together with a statement supporting the facts; all of the following, inter alia, may be considered reasonable justification:

(5) common good;

(6) special justifying circumstances.

Generally patents are examined in turn so ‘first come, first served’ as per Section 9 of the Patent Law:

If more than one applicant request a patent for the same invention, he that first applied will prevail. 

The order of examination is generally on a ‘first come, first served’ basis as per Section 34a of the regulations:

34a the applications will be allocated to each internal classification group and within each classification group, will be examined in turn. 

Examination in turn both facilitates Section 9 and also ensures that relevant prior art is available to the Examiner. The first come, first served regime is itself in the public interest – See ruling re Petition to make special Israel Patent Application no. IL 216870 to Cimas Limited, 24 March 2014.

The possibility for making an application special is an exception to the general rule. It undermines the principle of ‘first come first served’, makes the examination more difficult and arguably damages the quality of the examination.  For example, a queue-jumping application may be examined and allowed without realizing that an earlier filed application that was not examined challenges the novelty or inventiveness of the claims. Any fast-tracking results in other applications being delayed and is thus against the public interest.

Fast-tracking risks unfairness, but the legislators allow it under circumstances detailed in Section 19a of the Law where there is an over-riding public interest or special circumstances. Section 19a was legislated in the 10th amendment to the patent law that came into effect on 12 July 2012. From examination of the discussion at the committee state it is clear that the Commissioner has the discretion to explain the law. It is clear that the type of justification that is acceptable is extreme circumstances. For example: there could be circumstances that a dramatic discovery is like an earthquake and is positive for the State of Israel. Isaak Herzog, Knesset legislative committee discussion of 13 March 2012.

The justifications listed in Section 19a were actually those for third parties to request an application be fast-tracked but there is no reason to suppose that they are not applicable to requests by the Applicant himself. Nevertheless it appears that what the legislators intended was something of interest to the entire population as of national interest for the whole population and not for micro-economic interests of one sector or another. There is an underlying assumption of public interest in all patents. The only justification for ever granting a patent (i.e. a monopoly, albeit limited in time and geographical application) is that there is a national interest in micro-economic profits and technological progress.

No-one challenges the fact that each patent provides a different public interest depending on the type of invention and its application. There is no clear economic or social scale that can be used to rank different patents. However the same term is generally understood in the same manner in different legislation to provide coherency (see Aharon Barak, Volume 2, Legislative Interpretation, Nevo 1993 pages 313 and 321. Thus the term “common good” in Section 19a of the patent law is a priori similar to the term in Section 122 which discusses forced licenses. Section 122 states:

The Commissioner, where he comes to consider the request for a compulsory license under Section 117 should consider, inter alia:….

….

(2) the common good generally obliges that all inventions should provide the protected goods by manufacturing or import, so enable widest possible supply in the circumstances, without delay.. 

The District Court ruled in 881/94 Eli Lilly and Company vs. TEVA Pharmaceuticals LTD 25 November 1998:

In the field of patents, the common interest is the main and dominant cause for determining balances and rights. There may be a specific basis for worrying for private interest of the specific owners, and a patent an be considered as a reward that the legislators bestows on the entrepreneur. But the main justification of the patent system is the public considerations of utility and profit that affect the community taken as a whole. Whilst it is true that a patent provides protection to an individual, the existence of the right and its extent are determined by how much they fulfill the public interest. In this regard a patent is like a compulsory license. In both cases a personal right is provided to an individual but the underlying rationale for granting the rights is the common good. Just as the compulsory license is not granted for the benefit of the applicant, similarly a patent is only granted to the owners because it is in the public interest. It is not a balance between private rights and the public interest, but rather a balance between different public interests that together define the common good.

Thus the common good in this instance, as with compulsory licenses, is the result of balancing different public interests. Where the Applicant desires to depart from the general balance of interests including the principle of ‘first come first served’, the justification for jumping the queue has to be something weighty of significance to the wider public or a positive macro economic effect.

Furthermore, from when the application is filed until it eventually issues as a patent, there is nothing preventing the applicant from implementing the invention described in the patent application, enabling the public to benefit immediately. The enforcement of a patent is of economic interest to the patentee only. First tracking is not in the public interest at all. It only serves the applicant.

Without addressing the issue of patentability at all at this stage, the Commissioner does not thing that the present invention is more ‘public good’ than other inventions and, as the applicant himself testified, it serves a specific population segment only. The petition to make special did not include any economic calculation to show why it was justified.

Although the above arguments relate to the ‘public good’ they are equally applicable to the ‘special reasons justifying advancing the examination’. Consequently the application for fast-tracking is rejected and the application will be examined in turn.

Ruling by Commissioner Asa Kling Concerning Making Special Israel Patent Application Number IL 221842 to Glatt Lifts LTD., 14 June 2016 

COMMENTS

Very few inventions positively affect everyone. If something could help 10% of the population, it seems to me that it should be considered of significance, whether the population is women, AIDS sufferers, people living near the Gazan border, parents of small children or the Ultra-Orthodox. I don’t see any reason why common good should be interpreted as of value to people across the population without regard to race, age, religion, religiosity or sexual orientation.

The underlying presumption of the Applicant is that conventional elevators do more electrical work for each passenger riding in the elevator and that this is against the laws of Shabbat to rely on Shabbat settings on lists. If this assumption is true, it affects all Jews and most of Israel’s population is Jewish. Even if many Jews are not Observant, and many more are not persuaded that using currently available Shabbat lifts are not acceptable I suspect that from the Applicant’s perspective, Shabbat observance is of value and desecration is problematic regardless of the religious philosophy of the Jew in question. It may be what’s preventing the Messiah from coming. Furthermore, the State of Israel accepts the principle of Shabbat observance as being of national interest by not allowing trading on Shabbat and by not having Shabbat desecration by the Head of State, ambassadors, etc. and by requiring Shabbat observance on army bases apart from where security considerations take precedence.

For more details of the ruling (wrongly???) attributed to Rav Elyashiv, see here. See also a report in the Yeshiva World (sic) and one from the UK’s Daily Telegraph. Rabbi Yisrael Rozen’s ruling allowing both ascending and descending in Shabbat Elevators and listing what modifications are required to enable an elevator to be used on Shabbat may be found here (Tchumin 5, 75; see also article by Professor Lev in same volume, page 58).

I took the liberty of reviewing IL 221842 to Glatt Lifts LTD and its claims. If I was examining it for patentability, I would disallow it as not being enabled. It may be enabled from the perspective of the Hallachic problem it is trying to solve, but in my opinion, it does not provide a solution that enables a person of the art to go away and build a working lift without undue experimentation which is the standard for which patent applications are judged.


Israel Commissioner Vindicated by Supreme Court

June 22, 2016

appealMerck & Co. LTD is the exclusive licensee of IL 110956 for Ezetimibe owned by Schering Corporation. The patent protects the active agent Ezetimibe as found in the pharmaceutical Ezetrol, or Zetia, which reduces the amount of cholesterol in the human body. The original 20 month patent term lapsed on 13 September 2014. However, on 22 September 2005 the patentee received a patent term extension until 23 June 2017. Later however, in September 2014, following a submission by the Association of Industrialists in Israel, the Commissioner of Patents, Assa Kling, ruled that the patent term extension for IL 110956 for Ezetimibe be shortened until 22 January 2016 on the basis of the subsequently issued, shorter patent term extension of the corresponding US patent, and awarded costs of 40,000 Shekels from Merk to the Association of Industrialists.

constitutionalMerck, represented by Liad Whatstein, appealed the ruling, using arguments that failed to persuade the Commissioner, including that the law itself was unconstitutional since it destroyed property rights which were recognized in basic laws (section 8 of the Basic Law of Human Dignity and Freedom. 1980. Furthermore, the fact that the subsequent amendment to this section is not retroactive supports the allegation of lack of constitutionality.

In Appeal number 5407-11-14, the Jerusalem District Court upheld the constitutionality of the Law but recalculated the extension until October 2016 based on the duration of the corresponding German patent.  On 11 April 2014, a tribunal of Supreme Court Judges Danziger, Hendel and Shaham heard an Appeal by Merck on the constitution issue, and one by the Association of Industrialists in Israel wanting the shorter term calculated by the Commissioner to be restored. The Association of Industrialists in Israel were represented by Adv. Tal Band, and the Legal Counsel to the Govt. Ms Shimrit Golan joined the Appeal on behalf of the government.

On Appeal Judge Hendel of the Israel Supreme Court reviewed and justified the various amendments and ruled that shortening the period of a previously ruled Israel Patent Extension Order during the 20 year pendency of the original patent was constitutionally sound, as was doing it on the basis of a subsequently issued shorter protection period from a recognized country.  Judge Handel painstakingly but beautifully explained the background to the patent term extension legislation and why it was filling to link Israeli extension periods on those granted abroad. He jsutified the extension regime which is an exception to patent norms, and threw out Merck’s argument. The rigorous analysis was concluded by a section on comparative law where Judge Handel first related to Mishpat Ivri (Jewish Civil Law) and showed that there were echos of intellectual property rights in the Talmud, and that scholars of the 19th to 21st centuries related to patent law. He argued that the Jewish tradition recognises both quasi-property rights in inventions and creative activity but frowns upon tradesecrets, particularly with respect to pharmaceuticals, noting the case of Rabbi Yohanan a handsome scholar that lived in Zipporis in the Galilee who contracted scurvy, and then broke the trust of a roman matron that cured him, revealing the cure in his sermon, because of the public interest. The analysis of the Jewish sources was masterful. Then Judge Hendel briefly reviewed the US law and its developments, concluded that the US and Israel were both trying to create a fitting balance between the needs of the drug developers to benefit from a real period of protection after obtaining regulatory approval to enable them to sell their drugs at a premium and recoup their investment, and the needs of local generic drug companies to be able to compete with their foreign counterparts but them being able to conduct acts required to obtain regulatory approval during the extension period. Judge Handel noted that there was public interest in encouraging drug development by pharmaceutical companies who had to make enormous investments to bring new treatments to the market. However, there was also significant public interest in widespread and affordable drugs.

Merck’s appeal was rejected by Judge Handel and Judges Danziger and Shaham concurred without comment. Judge Handel noted that were Merck NOT to have appealed, the Appeal by the industrialists on the District Court’s actual calculation would not have been heard, so Merck’s second appeal actually resulted in a shorter patent term extension than they would have received otherwise.

I consider this ruling objectively important and very well written. Due to the significance of the issues raised, I have translated the entire ruling to make it available to non-Hebrew speakers, noting that computer translations were of little value. I have posted the full translation below the following page break as a public service. I have not used the term ‘ethical’ which Judge Handel used to refer to the drug developing countries, and occasionally have not translated idioms, or used an English language metaphor where it appears to be appropriate. The illustrations to the ruling are my contribution. I think they liven things up a bit. If you find them distracting, adjust your settings to view text only! Please note, translating this took a few days and I put billable work aside to the chagrin of various clients. I would appreciate that anyone using this translation has the decency to attribute and to link to this blog.

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Can a Patent Opposition be Suspended?

June 14, 2016

On IL 181596 to Insight Biopharmaceuticals LTD titled “PROCESS FOR PREPARATION OF MIXTURES OF POLYPEPTIDES USING PURIFIED HYDROBROMIC ACID” publishing for opposition purposes, Teva Pharmaceutical Industries LTD filed an Opposition.  However, just before publication, Insight filed a Divisional Application (IL 241702).

Teva requested that the Opposition be suspended, pending Examination of the Divisional application claiming that the claims of the two cases are substantially identical and that Insight agreed to the suspension.

Ms Jacqueline Bracha has given Insight 14 days to agree to concur to the request to suspend the Opposition and to explain why it is an appropriate action to take in this case.

 


Chabad and Lubavitch – who owns the name?

June 9, 2016
chabad

Group photo of Chabad Emissaries

Israel trademark applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English) were submitted by two non-profit organizations: (1) The Chabad Hassidic Association in Our Holy Land, and (2) The young Chabad Association (Zeirei Chabad). The marks are for the words without graphic elements.The Commissioner refused to allow the marks as he considered the terms as referring to a lifestyle that anyone can adopt and that names of religious movements cannot be monopolized.

Background

Chabad is an acronym for “Chochma Bina Daat” meaning “wisdom, understanding and knowledge” which are the top three spheres of the Kabbalistic tree of life. It is the name adopted by Lubavitch, a cult Hassidic sect  that does wonderful work promoting Judaism to Jews of all levels of religiosity, and maintains Habad Houses – Outreach Centers offering religious services and hospitality around the world, which this non-Hassidic writer frequently visits for Shabbat hospitality when travelling. Chabad is Orthodox, Zionist and nationalistic. It differs from other Hassidic groups in that it is not insular, and sees a respondbility for and has a love for all Jews. However, their atitude is moe missionary than pluralistic. It has often said that “The movement does not recognize political or religious distinctions within Judaism. It has refused to cooperate formally with any identifiable organization or institution. It recognizes only two types of Jew, the fully observant and devout Lubavitcher Jew and the potentially devout and observant Lubavitcher Jew.”

messiah poster.jpg

The last ‘Rebbe’ (spiritual leader) saw signs of the Messianic Era approaching with the return to Zion, Jewish statehood and various other developments of the latter half of the 20th Century. Some of his followers considered him the obvious candidate Messiah, and, having suffered a stroke that affecting his speaking, wherther or not he was so inclined, the Rebbe was ineffective at persuading them otherwise. Rabbi Menachem Mendel Shneerson passed away in 1994, and some followers had problems coming to terms with this and got caught up in a Messianic fevor reminiscent of the Shabtai Zvi incident. Chabad is currently without a supreme leader, but most followers have come to terms with the Rebbe’s lack of immortality.

I am aware that there are Israel IP practitioners and Examiners who affiliate with the movement. If you consider that anything I write here is inaccurate, offensive, or you  simply disagree, you are cordially invited to comment.

The trademarks

In Israel trademark applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English) were submitted by two non-profit organizations:
(1) The Chabad Hassidic Association in Our Holy Land, and (2)
The Young Chabad Association (Zeirei Chabad).
The marks are for the words without graphic elements.

The Applications cover a wide range of goods and services including Section 16 for pamphlets, advertising and guidance manuals; section 25 for clothing, shoes and head coverings; section 26 for embroidery and embroidered articles; Section 28 for toys and games; Section 29 for meat, fist, poultry, milk and milk products, section 30 for flour and grain based products; section 31 for fresh fruit and vegetables and live flowers; section 35 for advertisements, business management, services to business and office services; section 43 for finance and philanthropy; section 41 for education services and propaganda explanatory literature relating to religion and tradition; section 43 for Science and technology, research and design related to these services including design and development for computer software and hardware;section 43 for food, beverage and temporary accommodation, and section 45 for providing help and support for the needy.

As to the Chabad mark, the Israel trademark examiners found the mark non-registerable as they considered it contrary to Section 8(a) of the Trademark Ordinance 1972, considering the marks lacking distinctive character for the goods and services provided as they describe a movement or way of life that anyone can adopt. The Examiner noted that the acronym Chabad related to a Religious-Hassidic-Philosophical lifestyle originating in the 18th Century and that the name embraces many organizations, institutions and communities, and allowing one such organization to monopolize the name will prevent others from using it. This will confiscate something already in the public domain and thus is not allowable.

The Examiners also considered the marks to be non-registerable under section 11(5) of the Ordinance, as giving one organization a monopoly of the name would prevent others using it, and the name was for a way of life or religious movement and its registration as a trademark was contrary to public interest.  Similarly Lubavitch, as a synonym for Chabad, could not be registered, and it was also non-registerable under Section 11(11) of the Ordinance being a place-name in Russia.

The Applicants requested a hearing and, after various postponements, this was held on 20 May 2014, and, in addition to their legal representative, Adv Amnon HaLevi Gat, the organizations were represented by Rabbi Ariel Lemberg. The Applicants  main argument was that they acted under the direction of the 7th Lubavitcher Rebbe from 1951 to 1994, and if the mark is not registerable, it will damage the public as other organizations may call themselves Chabad. The Commissioner considered that many of the arguments raised were not relevant to trademark registration. At the end of hearing, the Applicants were given permission to address specific issues raised under Sections 8(a) 11(5) and 11(11).

three crates

Eventually, after further delays, on 28 January 2015, A Statement from Rabbi Lemberg was submitted together with three crates of appendices. The appendices included copies of hand-written instructions from the Lubavitcher Rebbe in which he requests or commands the Applicants to manage the movement in Israel; research on Chabad leadership in Israel, files of supporting letters from Chabad Emissaries in Israel, most of which followed a template, and various papers about Chabad institutions and associations and their activities, books, photo-albums, pamphlets and flags, packages of Shabbat candles, bags (for prayer shawls?) and other paraphernalia.

chchabad leadership

The Commissioner claims that the evidence was carefully and deeply considered. One document titled “Who did the Rebbe Authorize to lead Chabad in Israel?  – Fundamental Research and a Thorough Analysis of the Rebbe’s Writings and Archives on the Issue”. The document was authored by Menachem Bronfman. It was not clear where, if at all, the paper was published and, according to the ruling, it appears to have been prepared for the purpose of this Application .  This document included the literature submitted by Rabbi Lemberg. That as may be, the document cannot be considered as evidence as its provenance was not clarified, despite Applicants being given an opportunity to provide additional information. That as  may be, if any weight is given to the document, it clearly shows that there are other Chabad organizations beyond the two that applied for the marks. The Applicants consider that the other organizations are internal divisions and that they alone have the authority to represent the extended Chabad organizational structure to the outside world.  The Commissioner is skeptical that a divisional between internal and external organizations is relevant where trademarks are in rem. That as maybe, the Commissioner did not consider that the Applicants had shown that an up-to-date-list of official Chabad organizations had provided up-to-date authority to the two Applicants to represent them.

Rabbi Lemberg denied that the words Chabad and Lubavitch were in the public domain and argued that the terms where the property of the Applicants who had caused them to penetrate the public awareness through their activities during the past 80 and 70 years respectively.  He submitted that the requests should be considered attempts to anchor the rights of the Applicants in the Law, and not as attempts to take over names in the public domain.

Rabbi Lemberg considered that the last Rebbe, Grand Rabbi Menachem Mendel Schneerson, had commanded the two Applicants to manage everything with the Chabad seal on it, and that the seal means trademark. In this regard, he cited an open Responsa letter from the  Rebbe from 13 Kislev 5712  (1951 CE) where it is stated that:

“…there should be one representative of all the institutions, and this should be the Chabad Association which should represent all Chabad institutions in the Holy Land to the outside world, as and when required.”

The Commissioner notes that even if great weight should be placed on this instruction, the organization mentioned is called “Chabad Association”. The Applicants testify that they are the Chabad Association, but since there are other Chabad institutions, the Applicants should have provided evidence that they were the Chabad Association and have failed to do so.

Rabbi Lemberg claimed that there is consensus among all Chabad organizations that the commands and orders of the Rebbe are binding on all groupies members and extrapolates that the Applicants are the authorized parties to register the mark in their name. The young Chabad Association is the executive arm of the Chabad Hassidic Association in Our Holy Land (also not mentioned in the Rebbe’s letter) and  Chabad’s internal Rabbinic Courts have thus determined things (also not supported by any evidence submitted).

As to the authorization of the Rebbe during his lifetime as testified in a book published by  the Chabad Hassidic Association in Our Holy Land, the Commissioner failed to see the relevance of that or other books being published by the organization as proof of the Rebbe’s wishes or rights to the requested marks.

Applicants claimed that their activities as laid out in their charters as non-profitable organizations were authorized by the Rebbe. However, the charters were not submitted in their entirety.

tug of war

Rabbi Lemberg’s affidavit stated that the  Chabad Hassidic Association in Our Holy Land was authorized to : “Represent Chabadniks not other represented, mediate between institutions, externally audit Chabad institutions, to be aware of developments in Israel, to be responsible for Public Relations, to guard Chabad’s status as a non-political organization, to make contact with public figures and rabbis, to look after the form and opening of Chabad synagogues to the public, to provide funds and to strengthen Judaism, and to obtain manuscripts of the various Rebbes.

The second applicant,  the young Chabad Association is the representative arm of the Chabad Hassidic Association in Our Holy Land. The organization is responsible for outreach work in Israel, teaching the Jewish Heritage to children, youth and adults, disseminating Chabad Hassidic teachings, aid and help to the needy and lonely and providing rescue services.

According to the Commissioner, review of the lists and the exciting material submitted provides evidence of important and blessed activities by the two Associations. However, he does not see how one can prevent someone who believes in the lifestyle of Chabad; who puts the values of Wisdom, Understanding and Knowledge before him; but who does not follow the Applicants, from engaging in the activities listed and calling himself a Chabadnik.

As to Section 11(11), Rabbi Lemberg submitted that although Lubavitch is a place in Russia, the term has come to represent the Hassidic sect and is of no relevance to those identifying with Chabad Hassidim. For most of his life, the Rebbe lived in Brooklyn, New York, USA and earlier Rebbes also were not domiciled in the town of Lubavitch. That said, Rabbi Lemberg claimed that the association of the term Lubavitch with the organization was the result of 70 to 80 years activity by the Applicants.

In light of the above, the Commissioner was not convinced that the term Chabad was exclusively identified with the Applicants, nor was this claimed. The Applicants do not dispute that the terms Chabad and Lubavitch are  identified with a religious movement and faith-based lifestyle. Nevertheless, the Applicants consider themselves entitled to a monopoly over these terms when applied to a wide range of disparate commercial services and traded goods.

Since the marks are not necessarily uniquely identified with the Applicants, they do not fulfill the basic requirements of registration, which is inherent or acquired distinctiveness of the source of goods, as stated in Section 8 of the Trademark Ordinance:

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

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

The marks Chabad and Lubavitch are not identified by the public  as originating with the Applicants, but are rather identified with a particular teaching and lifestyle. It is, however, also necessary to consider if these marks have acquired distinctiveness with the Applicants and this is also not the case. Here the Commissioner cited the Toto Zahav and ORT decisions. (The ORT case is about two philanthropic organizations each calling themselves ORT, based on their history, and is particularly relevant -MF).

The Applicant’s claim is really one of having the right to franchise the name to other service providers. This could be considered under Section 14, but in light of the other issues discussed is unlikely to be considered registerable under this either.

The Applicants claim is that their unique mandate as far as Habad activities in Israel are concerned, were bestowed by the Rebbe as the head of the movement. The problem is that Applicants themselves accept that from its founding in the 18th Century by Rabbi Schneur Zlaman of Liady, Chabad had six Rebbes prior to Rabbi Menachem Mendel Schneerson.

RebbeThere is no doubt that Rabbi Menachem Mendel Schneerson expanded the movement by an order of magnitude, but Chabad became a worldwide international movement prior to his reign and Chabad activity in the Holyland precedes 1951. With a 230 year history, not all of Chabad’s reputation can be ascribed to the Applicants.

During the hearing, the Applicants were referred to Haifa District Court Ruling No. 5969/04 Young Chabad Organization vs. The Tent of Menachem Lubavitch (in name of and under Presidency of the Lubavitcher Rebbe, the Holy Messianic King. That court found that:

There is no doubt that both parties are non-profit organizations of Chabad Hassidim. Te parties agree that there are many other non-profits established by Chabad. There are different non-profits since there are different shades of thought and intent among Chabad Hassidim.

Both the parties claim that the Rebbe of Lubavitch – who both sides follow – determined whilst he was alive and well, that they were the exclusive organization that would represent the Chabad Movement. The parties disagree but I cannot determine who takes precedence within the framework of this ruling. What I will say is that while the Applicant in this instance has shown that they were authorized by the Rebbe, they are not actively guided by the Rebbe and do not include the entire movement. COnsequently as far as this ruling is concerned, we are not dealing with arguments between branches of an inclusive organization with institutions that all members follow, but with different non=profits.. The significance of the distinction is that it undermines claims of sole representation of one body or another, such as a Rabbinic Court, and blurs its significance.

 In that ruling the Court refused to grant the plaintiff (who is one of Applicants in this instance) an injunction against the defendant using the names that are the basis of the present application.

From this ruling it is apparent that the Applicants DO NOT have sole discretion over the interests of the Chabad Movement in its widest sense and consequently do not sole rights over the terms Chabad or Lubavitch. for the range of goods and services requested. Despite the wealth of evidence submitted the Commissioner sees no reason to come to a different conclusion. The court ruling was from 2004 and the crates of evidence submitted in this instance do not provide a more up-to-date picture that indicates that the ranks have closed around the Applicants.

The Applicants further submitted that they enjoyed a unique status with the registrar of non-profit organizations and has the right to decide who could and could not use the terms Chabad and Lubavitch in their names. However, the Commissioner found that back in September 2011, the Registrar of non-profits stated “There appears to be a division in the Chabad Hassidic sect and the Applicant no longer represents all the variant streams within the sect”. 

The Applicant submitted lots of evidence to support their claims to the marks. However, much of the evidence is not dated although seems to be recent. It does seem that generally the term Chabad is used in conjunction with the full name of one or other Applicant, and sometimes with a graphic logo and the slogan “Wholeheartedly to All”. The Commissioner took this as evidence that the Applicants themselves felt the need to differentiate themselves from other Chabad entities, emphasizing that they didn’t or at least no longer had exclusivity to the terms.

The crates of evidence included contracts with emissaries who were enjoined to only use the term Chabad or Chabad House for certain activities and other activities were to be marketed under the Zeirei Chabad name. A letter from September 2005 stated that a certain Rabbi was responsible for Chabad activities on behalf of Zeirei Chabad in a certain community, and included a disclaimer that the organization (applicant 2) was not responsible for any communications or business transactions made in the name of Chabad. The Commissioner took this as evidence that the second Applicant differentiated itself from Chabad per se. and referred to itself by its full name. This undermines the Applicants claiming exclusivity to the term Chabad.

The Commissioner considered that even if the terms Chabad and Lubavitch could fairly be registered, it was not clear that the Applicants owned the marks. However, he was not convinced that the marks were registerable at all, and considered that the words alone were in the public domain and could be used by all.

In this regard, the Commissioner cited the Baal Hatanya Seligsohn  1973, page 22:

Marks that should stay available for trade are in a totally different category. Here one is not concerned with marks actually used in trade, but with marks that common sense or conscience obliges should remain non-monoplized and available to all.

 The Applicants allege that the marks are necessary to prevent third parties passing themselves off as Chabad without consent or supervision. Whilst it is true that the purpose of trademark registration is to prevent misleading the public (see 10959/05 Delta Lingerie, vs. Tea Board), in light of above, it is not clear that the concept of misleading is appropriate in this instance.

That as may be, misleading the public is only one consideration. Another is freedom of occupation and freedom of speech. As the Supreme Court stated in 941/05 Wine Makers of Rishon L’Zion and Zichron Yaakov Cooperative vs. the Vineyard Company LTD p.d. 61(3) 350:

The Ordinance (new version) is intended to protect registered trade names as possessions where a person or entity has acquired the reputation through usage. in addition to the mark holders rights, the ordinance protects the public in two ways: the first is that the public should not be mislead by non-approved usage of the mark, and the second is that the public should not be put out by over registration of terms used in trade that should remain in the public sphere.

The balancing of these conflicting rights requires careful consideration. In sections 8, 9, 11 and 12 of the Ordinance, the legislators defined marks that the upset the balance between the different interests and details marks that cannot be registered. the main section is Section 11 which lists 14 exceptions to what may be registered.

One of the exceptions is 11(5) that states: marks that damage or are likely to damage the public interest.

Since the UK has joined Europe, the term ‘public interest’ in UK trademark law has been interpreted as meaning ‘accepted principles of morality” and “public policy” and is applied to marks that may upset a sector of society on basis of race, gender, faith, and general issues of modesty and bad taste. See Kerly’s Law of Trade Marks and Trade Names, 15th edition, 2011, page 248. This explanation was adopted in the decision concerning Israel trademark no. 146483 “Lenoplast” from 2005. [I can’t follow the relevance of this section – MF].

Now the Commissioner draws an analogy to Christian Science. Note he does not actually compare Chabad to the Church of Christian Science, but rather compares the present Application with a trademark cases ruled by the Supreme Court of the State of New Jersey, concerning a movement established in the 19th Century, whose central institution requested to register the name.

Mary_Baker_Eddy

As we have pointed out, the religion of Christian Science was founded at least thirteen, and possibly twenty-three, years before establishment of the Mother Church, the organization now centered in Boston. Although the Boston organization has now co-existed with the Christian Science religion for close to a century, an understanding of this case requires recognition of two significant, related facts: first, the religion and the organization are conceptually separate; and second, the religion pre-existed the organization.

If in the late nineteenth century, in the early, formative stages of both the religion and the Mother Church, the founders of the Plainfield Church had chosen to practice the religion of Christian Science by following the religious teachings of Mary Baker Eddy, but had decided that their church should not become a member of the Mother Church organization, it is certain that there could have been no restraint on their use of the name “Christian Science Church.” In fact, not even Mrs. Eddy, founder of the religion and of the Mother Church, would have been empowered by law to prevent defendants’ use of the name “Christian Science Church,” provided that name were truthful (in the sense that it accurately referred to the religion practiced by defendants).” (Christian Science Bd. of Directors of First Church of Christ, Scientists v. Evans, 520 A.2d 1347, 1352-1354 (N.J. 1987).

In another instance, the Appeal board of the USPTO considered the term Seventh Day Aventist:

 “…because the Seventh-day Adventist religion pre-existed the formation of the Seventh-day Adventist Church (as the General Conference is often informally referred to), it is clear that these proceedings involve a designation which was inherently generic rather than one which initially was a valid mark” (Stocker v. Gen. Conference Corp. of Seventh-Day Adventists, 39 U.S.P.Q.2d 1385, 1996 WL 427638, at 30 (T.T.A.B. Apr. 25, 1994))

The Applicants do not claim that third parties using the terms Chabad and Lubavitch do not act in accordance with the belief system of the movement. The claim is rather that such third parties are not necessarily connected with them and Applicants do not have control over the actions of such third parties.The Commissioner does not consider that this type of deception is that which the Trademark Ordinance is designed to prevent. The opposite is true. The ordinance does not prevent free speech and does not prevent religious freedom. These are covered by section (5)11 of the Ordinance which rules that such marks are against the public interest.

Religious streams are not tradable entities. Laws for commercial campaigns are not applicable for religious movements. With reference to the wide range of goods and services for which registration of the marks was applied for, it should be noted that a religious movement is not a commercial enterprise and its purpose is not to provide consumer goods.

The commissioner was not swayed by arguments that defective mezuzot (ritual Amulets for affixing to door posts, containing ninlical verses (Deuteronomy 6:4-9 and 11:13-21) which discuss the obligation, could be sold under the Chabad brand, or that non-authorized speakers could appear at army bases, and did not feel that a trademark registration could prevent someone claiming allegiance to one sect or another.

In light of the wide dispersion of the Lubavitcher Rebbe’s teachings and the widespread usage of the term Chabad and Lubavitch by the public, the words are generic and should remain in the public domain. There is nothing submitted that justifies removing the names from the public and making them controllable brand names.

In light of the above, the Commissioner does not think that additional material or a further hearing will help Applicants. He rules that the applied for marks are not registerable and the Applications are denied.

Asa Kling, 22 May 2016

COMMENT

A non-profit organization acting in a commercial world should be entitled to use trademarks to protect its branding. Chabad’s activities are largely supported by public donations. The public should know that money donated to someone collecting on behalf of Chabad is collecting for the organization and that there is some central control on what the money is being used for.

Chabad does indeed provide education services, philanthropy and humanitarian services, including looking after Jewish youth (now older) from the Chernobyl region in an institute in Kfar Chabad who suffered radiation effects after the nuclear disaster. I have three Chabad cousins (that I get along well with so long as we don’t discuss theology or Ritual practice). One of them will only eat meat from animals that were ritually slaughtered by members of Chabad. There are various laws governing fruit and vegetables such as ritual tithes (now symbolic), restrictions on fruit from trees and vines during the first four years and in some instances, the clock is restarted where trees are transplanted. Chabad emissaries are noticeable due to their unique garb. Children’s clothing and toys may include images of kosher animals like ducks and cows, but some members are strict about not allowing their kids to wear or play with images or toys of teddy bears, kittens and other non-Kosher animals. I can’t see anything on the list of goods and services that goes beyond what the movement might be interested in selling under Chabad supervision or authorization.

The Commissioner has ruled that Chabad is a religious movement, and, as such, its purpose is not commercial vending. This does not reflect reality. Judaism in general, at least orthopractic varieties, which are mainstream in Israel, is a way of life and governs every day activities. Chabad certainly does not see itself as a religion in a theological sense, but rather as an all-encompassing way of life. There is, therefore, a fundamental difference between a church and a Hassidic sect, and the Christian Science ruling in the US is of limited relevance when discussing Chabad.

Whether or not the evidence submtted proves it or not, Chabad is less fragmented and more unified behind mainstream leaderships than it was in 1994. Those with strong Messianic beliefs seem to have toned their comments down. Actively viewing the Rebbe as Messiah and seeing his death as a temporary state prior to imminent resurrection is more difficult as time goes by and noone under the age of 25 remembers the Rebbe’s passing.  The real problem that mainstream Chabad faces, is the Messianic offshoots that are reminiscent of early Christianity or at least of Shabtai Zvi. A careful reading of the Seder haggadah seems to show Rabban Gamliel and others making statements as to what is and is not the Passover Sacrifice and teaching away both from Christian interpretation of the Last Supper, and from Rabbi Akiva’s support of the Bar Kochva Messianic rebellion against the Romans that proved futile. Certainly no longer a mass movement of improtance, there are still  small communities of Christians, Moslems and Jews in Turkey that consider shabtai Zvi to be the Messiah.

grumpy

It is difficult for me, as an outsider, to gage the extent that different types of Chabad followers, that I’d conveniently classify as Classic Chabad, Messianic Chabad and Chabad Lite each consider the previous Rebbe as actually being dead in the conventional sense, or alternatively as being in some positive limbo state as various legends, is Merlin, Jesus and Elijah.  I don’t know to what extent self-identifying Chabadniks consider the last Rebbe as the Messiah, or take note of the Maimonides discussion of Bar Kochba in the Laws of Kings, where he points out that since he died without rebuilding the Temple, it was clear that he wasn’t in fact the Messiah.

Rabbi Yosef Aharonov, the former head of Zeirei Chabad (one of the Applicants) is currently in an Israeli jail for pocketing 3.5 million shekels donated to Chabad. This may go a long way to explain the days in producing evidence, and also illustrates that the possibility of Chabad representatives engaging in activities that are beyond what the organizations rightfully consider acceptable is not beyond the realm of possibility and there does therefore seem to be justification for central control over who can use the term Chabad for fundraising and other purposes.

I assume that the Commissioner did not actually compare Chabad to the Church of New Science in any meaningful Theological or even socialogical way, but rather noted similarities regarding trademark disputes in a fragmented religious group.

These issues do not only affect Chabad of course.

In this spirit of comparative IP in religion, without drawing wider parrallels, I note that the Catholic Church has issued unique copyrights for the Papal figure. They want to control what is seen as official doctrine. Chabad no longer has a living Pope Rebbe who can issue guidance with Supreme authority, although this doesn’t seem to be preventing guidance from the Rebbe from being published as if he was alive – which may be the point for registration of the marks.

There was a power struggle in the Bobov dynasty which led to one faction submitting a range of marks to the USPTO. See here. it was argued the USPTO is not the correct court to decide who is the Rebbe and who is the pretender. Other Hassidic sects have split and fragmented. Vishnitz is a good example. There are different Vishnitz Rebbes in different towns. They all seem to be part of the same Hager clan but don’t have a Supreme Rebbe. I predict that at some stage, there will be a breakaway Satmar sect that will realize that in the light of subsequent history. Rabbi Yoel Teitelbaum was wrong. Already 25 years ago, I met a Satmar Chassid who was studying in Har Ezion, a Religious Zionist Hesder Yeshiva.

The commissioner is correct that once upon a time, many years ago, there was a Chabad organization led by previous Rebbes. However, this is not relevant. It does not affect current branding. There may have once been restaurants run by tartan wearing, bagpipe playing McDonald clansmen but that does not mean that now such a McDonald, opening a restaurant, should not have to face IP issues with the golden arched hamburger flippers.

Allowing the marks would not create a limitation on public usage of the name. It will merely provide some centralized control of what can legitimately be considered provided by Chabad and what cannot. It will mean that only someone selected by a committee can open a Chabad House and not anyone who likes the beards. I see this as a good thing. When in Orlando for INTA, I had a discussion with the Chabad Kashrut supervisor who had a problem with a restaurant in Orlando receiving Kashrut supervision from a Chicago Rabbinic court. I wondered if the issue was loss of protection money supervision revenue or a real problem with supervision. (The supevisors tales of rennet and pigs milk in non-supervised milk in America in the Sixties I take with a pinch of salt. I heard similar things from fundamentalist teachers in high school in the UK, and I assume that Rabbi Feinstein would have become aware of such issues and revised his ruling). In Israel, in addition to private Kashrut licenses, there is a state kashrut supervision and every restaurant calling itself Kosher has to have a certificate from the local, state authorized Rabbinic Council. I do not see a problem with Chabad as a movement wanting centralized control. Personally, I think they should appoint a Rebbe, but that is up to them.

Nowadays, no new Chabad emissary is being appointed by the Rebbe who has been inactive since 1991. There are new Chabad Houses being opened around the world, and I’ve visited them in different cities, including Cambridge, England, Rio de Janeiro, Shanzhen, Honk Kong, Shanghai, San Diego and Orlando. They each serve a slightly different purpose and different crowd. None of the Rabbis seemed as scholarly as Rav Shteinzaltz or the Late Rav Zevin. One was embarrassingly ignorant but  may, nevertheless, be providing Jewish services and serving a valuable purpose. Should anyone be able to open a Chabad House? If a dynamic and charismatic Chabad Rabbi writes books about Kosher Sex and becomes the spiritual leader of the late Michael Jackson, shouldn’t  the organization have the power to decide that he can not consider himself Chabad?

Autobiographical Footnote

Me? I do not have the temperament to be a Hassid. I benefitted from studying in a Talmudic college with two spiritual heads who were culturally very different, with different personalities and character traits. It taught me that noone has a monopoly on the truth and that Judaism is multifaceted. Whilst studying there, I used to travel to a nearby town to hear a third Rabbi who I still try to listen to before Pesach and Yom Kippur, and collect and read his books. I also enjoy the teachings of the previous UK Chief Rabbi and collect and read his books with great enjoyment. I never had one spiritual leader but seem to be at the liberal, intellectual end of the Orthodox spectrum. I admire Chabad’s outreach work immensely but find their philosophy less than unattractive. I don’t have the temperament to be a Hassid.


IPR’s Best Practices in Intellectual Property Conference 2016

June 5, 2016

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Despite having piles of work accumulating after INTA last week, I was privileged to attend the IPR conference in Tel Aviv on Monday and Tuesday. This was the fourth annual conference on Best Practices in Intellectual Property, and organizer Kim Lindy had lined up a well thought out program with some impressive speakers such as David Kappos, the former director of the USPTO and Dr Joo Sup Kim, the Vice President of IP at LG Electronics.

Most of the presenters and moderators were practitioners from abroad whose firms were subsidising the event. Nevertheless, the sessions were practical and meaningful, and the training sessions the following day were well constructed and well presented. The speakers took care not to cover the same material. The cost required from participants was low and the conference was very good value for money.

This was less academic and more practical than the AIPPI conference held a couple of months ago, . From a head-count, attendance hovered at the 100 mark including the numerous speakers. the audience consisted mostly of in-house counsel in industry but also some of the junior attorneys at a couple of the larger firms. As usual, most practitioners in private practice, particularly the senior partners, boycotted the event. However, to be fair, following closely both INTA and Biomed may have made it difficult for some to find the time. Clearly, from the non-attendance of the IPAA general meeting, that wasn’t a reason for service providers not attending as they ignored that as well, but the AIPPI conference being held in March instead of in the autumn can’t have helped.

As the topics covered included the new unitary patent in Europe, 101 rejections in the post Alice wonderland, EPO opposition procedures and other up-to-date topics, I think that those private practitioners who did not attend but continue to give expensive advice to clients are doing those clients a disservice.  I found the sessions sufficiently interesting that I chose from the three tracks on offer and did not flit from one session to another to be able to fairly review the event as a whole.

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The Sheraton is a quality hotel and the refreshments, from breakfast, through coffee breaks, three course lunch and Finnegan sponsored cocktail reception, reflected this.

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With typical American jingoism, former USPTO director (and Howard Poliner lookalike) David Kappos spoke about the importance of continued US preeminence in patenting after the forthcoming presidential elections, regardless of the outcome. Despite his convictions, and although finding Milton Freedman both more convincing than Marx and far more readable, I don’t see how a free market economy can compete with a directed, centralized economy having a much larger population and pursuing IP with vigour. I expect that over the next presidential term of office, the US will fall behind China in all meaningful measurements of IP. Personally, I found the presentation of the other keynote speaker, Dr Joo Sup Kim of LG, disappointing and lacking in deep insights.

fireside chat

Daniella Azmony and Michael Fink of Greenblum and Bernstein co-chaired a session on using IP to advance business objectives. On the panel, Gerson Panitch of Finnegan, Henderson, Farabow, Garrett and Dunner pushed the importance of patent mining. He noted that he was able to find inventions to be patented for his clients that the engineers considered obvious. This strategy may explain how Finnegan got to be the largest IP firm and why the firm was celebrating its 100th Israeli client (a number I surpassed years ago). The problem is that Finnegan’s Juristat_Top_100 (1) filing ranking of 22nd is far above their allowance ranking of 115, their number of office actions to allowance ranking of 115 and their time to allowance ranking of 126. In other words, it is not just the engineer inventors that are not convinced that their inventions are patentable, but Finnegan seems to have a problem convincing the Examiners as well! Where they do succeed, it is a long, hard slog. Thus their service is not merely expensive and overly US focused, but they don’t deliver the goods either. In a further session, Finnegan partner Jeffrey Berkowitz referred to the firm calling the director of the USPTO to complain about specific Examiners. This arrogant and aggressive tactic doesn’t seem to help them  get cases allowed either. Nevertheless, the canapes at their celebratory cocktail party after the conference were delicious, with seared tuna, smoked salmon, chopped liver pate, and other nibbles. The cocktails themselves were Bucks Fizz, and tasted like orange juice that has began to ferment. Finnegan also provided a live band (not Bucks Fizz, but a three-piece suite brass band). They certainly know how to throw a good party.

Dr Kim and  Barry Schindler (Greenberg and Traurig) held what was romantically called a fireside chat, but no fire was in evidence. There were parallel sessions for beginners and more advanced. There was little in the way of swag. Kim Lindy gave everyone a mobile phone charging lead on a reel that was apparently sponsored by Finnegan but for some reason did not have their logo on, IP Factor gave out boxes of their PC Teabags, a type of patent medicine and cure-all for treating IP related stresses, and Mintz Levin gave out a useful book reading lamp consisting of white LEDs on a flexible stem.

The following day had several parallel master classes. In the ones I attended, Jakob Pade Frederiksen of Inspicos P/S, a Danish firm gave a very good presentation about EPO Oppositions which are quite different from Israeli and US opposition procedures. This was followed by Barry Schindler (Greenberg and Traurig) who gave an excellent though quirky presentation, arguing that when responding to office actions in the US, accusing the Examiner of using inadmissible hindsight was a waste of time, as was citing case-law since very few examiners had a legal background.  Respectfully noting various arguments was unnecessary. He explained how examiners are taught to examine and the limited time available to them. He advocated citing from the M.P.E.P., amending claims to make the examiner feel good, incorporating explanatory wherein clauses from the specification and limiting substantive arguments to two pages. Much of what he said made sense, albeit some comments were somewhat exaggerated.

If I have a criticism of the event, it is that I think that a session on prosecuting patent applications in Israel would have been a valuable addition. Some of the in-house counsel were involved directly or indirectly in expensive and time-consuming oppositions before the Israel Commissioner. Personally, I think that in the post IAI era, first filing in Israel makes sense, and filing in Israel offers a good tool against ex-employees competing with Israel companies. However, from issues discussed over coffee, it seems that one in-house counsel files provisionals and Israel applications simultaneously but can’t explain why, calling it inertia. One lawyer felt that standard assignment contract clauses were adequate, but admitted to having no idea of the case-law. When discussing a presentation made on behalf of the IPAA to entrepeneurs (where I was on the panel reviewing slides), it was clear that some eminent members of the profession were unaware of renewal schedules for Israel patents.  It seems that apart from occasionally reading this blog, many Israel Patent Attorneys do little to keep up with local developments once they are licensed. I think this is a shame.


Competing Trademark Applications for Epilaser

May 16, 2016

Epilaser

Epilady 2000 LLC filed Israel Trademark Application No. 258887 for “Epilaser” covering Domestic hand-operated cosmetic apparatus, namely, electronic aesthetic hair removal and skin treatment devices using multiple light sources such as lasers and LED’s based devices. The Application was submitted on 1 September 2013.

Epilady’s application was examined on 21 January 2015, but prior to allowance, on 4 February 2015, Mr Yitzhak Dwek filed Israel Trademark Application No. 272079 also for “Epilaser” covering Apparatus and instruments for hair removal by laser; all included in class 8 and Cosmetic services; hair removal services; beauty care for human beings; all included in class 44. Mr Dwek requested expedited examination and for some reason the Israel Patent Office failed to notice the competing mark.

The second mark was accepted for expedited examination and the Trademark Department informed Epilady that a competing marks procedure was initiated.

The parties failed to come to an arrangement and submitted their evidence for a Patent Office ruling. Both parties argued that their case should take precedence. Epilady submitted an Affidavit by Mr Yehuda Levi, the head of Epilady’s legal department, and Mr Dwek submitted an Affidavit as well.

Mr Levi submitted that Epilady had 30 years reputation for epilatory services and used the mark Epilady and derived marks.He further denied ever having come across Mr Dwek’s marks. Epilady further claimed to have spent hundreds of thousands of Shekels marketing Epilaser in Israel and abroad, over the period from 31 October 2014 to 3 February 2015. The Epilaser mark had been submitted for registration by Epilady in the US, EU and Japan.

Mr Dwek claimed usage since 2006 via his company Air Bus [MF – no explanation is given as to why Mr Dwek is using the name of a well-known European airplane manufacturer]. During that period, Mr Dwek claimed to have ordered 200 home use hair removal units from South Korean manufacturers. These units were sold in Israel under the Epilaser name. Mr Dwek further affirmed that from 2008, the mark was more widely used and that the TV sales chnanel had committed to purchasing 100 units under the Epilaser brand from him.

In cross-examination, Mr Levi further added that Epilaser is a natural development of their very well known main mark [MF – I think he means that the name Epilaser is a variation of Epilady, not that using lasers to remove hair is natural]. Epilady claimed to have used a foreign law firm to do an availability check for Epilaser prior to submitting their trademark application. Furthermore, the Epilaser mark was registered by a sister company, S&Y in Hong Kong.

The parties summarized their cases in writing. Epilady submitted additiional evidence of sales and orders in their summary, but Mr Dwek opposed this being added in the summation stage, and the Deputy Commissioner agreed that this evidence could not be considered.

Discussion

section 29a states:

If different persons independently submit identical or confusingly similar trademark applications for the same goods or for goods in the same category, and the second application is filed before the first application is allowed, the Commissioner may allow the parties to negotiate an arrangement and endorse this agreement, or may, if the parties fail to reach an agreement or if the agreement is unnacceptable, decide which mark takes precedence, giving his reasons for so-doing.

There considerations are given in the case-law and include which application was first submitted, the amount of usage and considerations of equitable behaviour. See 2498/97 Robby Boss vs. Hugo Boss PD 52(5) 665, 2498/97 Bacardi vs Registrar of Trademarks PD 25(2) 87, 91, and 8778/04 Yotvata vs. Tenuva 30 April 2007.

Since these marks are identical and cover identical goods, they cannot be registered in parrallel and so that option, given in Section 30 can’t be implemented. Furthermore, the parties did not request this.

Filing Date

Epilady’s request was the first to be filed. |However, this is a relatively minor cosnideration.

Equitable Behaviour

Mr Dwek provided a coherent and convincing explanation for why Epilady selected the Epilaser mark and filed applications in various jurisdictions. The Deputy Commissioner is in no doubt that Epilady is not trying to free-ride on Mr Dwek’s reputation in the mark. Back when Epilady filed their application, there is no indication that Mr Dwek was using the mark Epilaser and there is no doubt that Epilady is a very well known mark.

In 2006, Mr Dwek ordered 200 Epila Hair Removers which he sold under the Homepilaser brand. That was the name mentioned in advertisements from September 2008 and the communications with the TV sales channel also related to HOME PILASER.

In December 2014, Mr Levi wrote to the Ostra company about usage by Mr Dwek of the Epilaser name., and it transpires that in 2014, Mr Dwek was still using the Homepilaser mark for epilatory equipment. It was only after the communication with the Ostra company that Mr Dwek sought to register the Epilaser mark which was not then in use.

During this period of the end of 2014 and the beginning of 2015, Epilady was already using the Epilaser mark and had ordered a Facebook page, hoardings and a TV advertising campaign.

 

Thus it transpires that Mr Dwek filed his application knowing that Epilady was using the mark and had done so for 18 months or more. Apart from Mr Levi’s letter there is no evidence that Mr Dwek was using theEpilady mark.

In the circumstances, it appears that Mr Dwek’s application was not made in good faith.

Usage of the mark

Mr Dwek indeed sold 300 laser epilation units, but did so under the name Homepilaser. it is not clear whether the units ordered for the TV Sales channel included these. In the absence of contrary evidence it appears that the units advertised in 2014 are included in this number. In respect to all of these sales, the name Homepilaser and not Epilaser was used.

Epilady used the mark from 2013 and started advertising it heavily in 2014, spending over 1.5 million shekels in so-doing.

In his summary, Mr Dwek alleged that the advertisements themselves were not submitted, whereas as he himself was not cross-examined, his evidence was not challenged. As to the lack of cross-examination, Ms Bracha refers to paragraph 94 of the 4584/10 Israel vs. Regev Shovar ruling from 4 Dec 2012 and states that her conclusions were based on the evidence submitted:

As a general rule, there is an established ruling that failure to cross-examine works against the party that gives up this right. However, this does not mean that the evidence not challenged is accepted at face value and even if a party decides not to cross-examine the witness, the court is not obliged to accept the witness’s testimony if there is good reason not to do so. (see Kedmi on Evidence part 4 1953, (2009). For example, if the party not cross-examining brings additional evidence, the judge does not have to accept the testimony merely because it was not challenged.    Thus failure to cross-examine works against the party that does not use this right, but does not result  in the testimony being automatically accepted.

Thus Ms Bracha sees no reason to accept Mr Dwek’s evidence merely because it was not challenged by Mr Levi. Furthermore, since Mr Levi’s statement regarding advertising costs was backed by tax invoices, it may be accepted as being true.

Conclusion

In weighing the evidence, it appears that Epilady’s case is the stronger one in all three tests. Consequently it is allowed to register and Mr Dwek’s is refused. Since Epilady was only represented by inside counsel and did not incur additional legal expenses, they are not entitled to costs. See 166631 Unipharm vs. Neurocrine Biosciences LTD. 

COMMENT

Dwek means priest, and like his attorneys, Cohen-Zedek from Pearl Cohen, the name implies belonging to the priestly caste. This does not imply honesty or integrity, but we note that in Temple times, the priests did epilate.

Epilady is a market leader for epilatory devices and has been for decades. They are not entitled to monopolise the prefix epil since it is descriptive, but I am not sure that in Israel, many people using epilatory systems at home (as opposed to professional beauty salons) are aware of the word epilatory. That as mat be, the mark was not given due to Epilady having a similar mark, but this fact was merely used to collaborate their claim for choosing the mark in good faith. In this case, Dwek did not have a case and one wonders why he fought the opposition?

 

 

 


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