Coexistence Agreement Rejected and Attorney Accused of Conflict of Interest

August 17, 2016

Kennedy Electricity and Assets Ltd filed Israel Trademark Application Number 246560 for “Belissima”.

Belissima

The application was filed on 15 May 2012 in class 8 for “hair straighteners, hair removers and hair curlers, electrical tongs, shavers et al.” and for hair dryers in class 11. The original application was for a somewhat wider range of goods, but this was narrowed in response to an office action on 31 July 2014.

Bellisima ImetecBefore this mark was registered, the Tenacta Group S.p.A. filed Israel Trademark Application Number 251952 for “Belissima Imetec”. The application was filed on 26 July 2012 under International Application Number 1140345 claiming priority from European trademark number 011073319, and was submitted for “Electric and electronic apparatus and instruments for curling, cutting, waving, straightening, styling, trimming hair; electric epilators; electric pulsed light epilators; electric razors; electric and non-electric apparatus for cutting nails; manicure sets, pedicure sets; electric apparatus for removing, softening nails, corns, bunions ; in class 10 for Ultrasound electric apparatus for medical purposes for cleaning the face and reducing wrinkles; electric radio-frequency apparatus for medical purposes for reducing wrinkles and toning the skin; electric apparatus for the care of skin and acne; electric apparatus for medical purposes which vibrates or rotates for the cleaning of the face, body and for massaging the body; electric apparatus for medical purposes for microdermabrasion and electrostimulators for toning the body”; in class 11 for “hair drying apparatus, electric; heated or LED apparatus for reducing blemishes or imperfections on the skin; electric apparatus for drying nail polish or for decorating the nails; steam facial apparatus (saunas)” and in class 21 for “Electric and non-electric apparatus for removing make-up; brushes and sponges for body care; combs”.

On 7 September 2015 the Trademark Department at the Israel Patent Office informed the applicants that in view of their not reaching agreement, a competing marks procedure would ensue under section 29 of the Trademark Ordinance 1972. On 21 September 2015 the parties submitted a joint statement to the effect that they did not consider the marks confusingly similar and would cooperate to prevent confusion and mistakes by the public. On the basis of this agreement the parties requested that the Section 29 objection be removed.

On 22 October 2015, the Examiner refused to retract the competing marks assessment and to allow coexistence, resulting in the case being transferred to the Commissioner for judicial review.

edward scissorhands

On 9 November 2015 the parties submitted their coexistence agreement to the Commissioner of Patents and Trademarks. The parties agreed between themselves that the marks could be registered in parallel. The Tenacta Group undertook to only use the term Belissima in conjunction with either Imetec or Italia to differentiate between the marks. The parties stated that the term Imetec is a trademark that is associated with  the Tenacta Group. Furthermore, the parties undertook to clarify any confusion, should it occur.

In her decision of 18 November 2015, the Deputy Commissioner Ms Jacqueline Bracha rejected the coexistence agreement. In that decision she ruled that:

From the agreement it transpires that not only is there no difference in the goods sold under the two marks, but that the first applicant (Kennedy Electricity and Assets ltd.) would be the distributor of the Tenacta Group’s products.

So the parties were invited to state their claims.

sweeneytoddOn 2 March 2016 the parties submitted a joint notice that the first applicant (Kennedy) will remove all goods in classes 8 and 11 from their application, and the Patent Office was asked to reconsider its ruling in light of this development.

In her ruling of 3 March 2016, Ms Bracha stated:

“After reviewing the details of the goods covered by the two marks it is possible to accept the coexistence agreement on condition that ‘combs’ are removed from the list of goods in class 21 for the 251952 mark and that the 246560 mark be combined with Kennedy’s logo and only used therewith. These conditions are intended to protect the public from confusion since the relevant public and the distribution channels are identical.”

Following this decision, the parties submitted additional notices. On 10 March 2015, the Tenacta group announced that its application was only for the stylized mark shown above that includes the term INTETEC and that its mark was for registration in classes 10 and 21 only, and that Kennedy was not attempting to register its mark for goods in those classes. Consequently there was no reason not to allow coexistence. However, Kennedy claimed in a notice of 13 March 2016 that it was not prepared to limit its application to goods carrying the Kennedy logo together with the stylized Belissima mark since it was not marketing the Belissima brand under the Kennedy logo, and they requested reinstatement of the competing marks procedure.

Following Kennedy’s submission, Ms Bracha gave the parties two months to submit their evidence. Some days later, the Tenacta Group again requested coexistence of the marks. On 18 April 2016 Ms Bracha again requested that the parties submit their evidence. On 19 April 2016, the Tenacta Group restated that the parties had reached agreement and that the marks could coexist. On 20 April 2016 Ms Bracha ordered the Tenacta Group to clarify how their notice fulfilled her request. In the same decision it was clarified that this clarification did not extend the deadline for submission of evidence. On 2 May 2016, the Tenacta Group detailed why coexistence was in order. Read the rest of this entry »


Co-op Shop Again

August 15, 2016

Back in February we reported on the Co-op Shop Decision. Essentially, in light of an early registrations for Co-Op and Super Co-Op trademarks, both owned by Mega Retailers who had bought out Blue Square, the Co-op Israel Supermarket Chain LTD were unable to register their logo, TM co-opshop.

The Deputy Commissioner Ms Jacqueline Bracha accepted that the registered marks may not be in use and gave Applicants 30 days to file a cancellation proceedings, offering to suspend her final ruling, pending a decision of non-use should it be filed.

coop   super-coop

The marks were indeed challenged in a cancellation proceeding filed on 12 April 2016, and this ruling relates to the cancellation of TM 83846 and TM 98697 for Co-Op and Super Co-op which were registered in June and November 1996 respectively, both in class 35.

In the cancellation request, Co-op Israel alleged that the marks were not in use and had not been since 2003. Furthermore, there were no extraordinary circumstances justifying the non-use. Therefore the marks should be cancelled. However, Coop Israel did not provide any evidence supporting its allegations.Section 41a of the Trademark Ordinance 1972 states:

“...Any interested person may request that a trademark be cancelled on the grounds of lack of bona fide use and lack of bona fide intent to use the mark over the previous three years.”

It is a matter of case-law that trademarks are property rights in all respects, and these may not be simply nibbled away. There is a burden of proof that the mark owner did not use the mark that rests on the shoulders of the party requesting that mark’s cancellation. See Bagatz Orlogad Ltd vs. Commissioner of Patents, p.d. 39 (2) 148. 

The burden of proof shuffles back and forth: the party requesting cancellation of the mark has to bring initial evidence of non-use of the registered mark. If it is accepted as sufficient to make a case, the burden of proof shifts to the mark holder to refute the challenger’s evidence and to show that the mark is in use.Failure to show lack of use works in the interest of the mark owner. See Bagatz 296/89 Moorgate Tobacco Co. Ltd. vs. Philip Morris Inc. p.d. 41 (1) 485 page 493.

With respect to the order of the proceedings in a challenge to a trademark registration on grounds of lack of use, regulation 70 of the 1940 Trademark regulations states:

A request to correct the Register or to delete a trademark from the register should detail in duplicate, the applicant, the facts on which the request for cancellation are based and the desired correction. A copy of the request should be sent to the mark owner.

There is no indication that the request for cancellation was sent to the marks owner who is not represented in this instance.

According to regulation 71 one should act as follows:

With the filing of the request and sending a copy to the registered owner, the commissioner should inform the Applicant and the Applicant should submit his evidence within two months of the notification.

In light of that said previously, and in view of the absence of a statement of case by the mark owners, I give the requester of cancellation two months to submit their evidence.. similarly, and in the same time-frame, they are to provide proof of delivery of the application to the marks owner.

The Court secretariat will ensure that this decision is delivered to the non-represented marks owner.

Interim ruling re cancellation of TM 83846 and TM 98697 for Co-Op and Super Co-op, Ms Shoshani-Caspi, 26 July 2016.

COMMENT

red kingThis reminds me
of the Red King in Alice Through the Looking Glass noting how good Alice’s eyesight was for being able to see nobody on the road at a distance where he would have trouble seeing anybody. In other words, it is difficult to show that something is not happening. How can prove that a mark is not in use???

 

 

 


Big Deal

July 20, 2016

big deal

Israel trademark Application Number 131862 to H.A.B. Trading LTD is for the words “BIG DEAL” for Shop services for toys, kitchenware, disposable articles, houseware, clothing for children, and drawing books in class 25.

Yidiot Internet filed a request to have the mark canceled.

For those of you wondering what’s the big deal, the following images may help clarify:

H.A.B. Trading have stores of discounted goods and Yediot Internet (YNet) has an internet special offer website.

H.A.B. Trading LTD has now requested that Yidiot Internet’s counter-evidence be deleted from the file. Yidiot countered the request, but H.A.B. Trading did not respond before 15 June 2016 when Ms Yaara Shoshani-Caspi, Adjudicator at the Israel Patent Office gave the following decision.

The mark owner (H.A.B. Trading LTD) claimed that Yediot Internet were tardy and missed the deadline for filing their counter-evidence with the court and with the mark owner.Furthermore, the counter-evidence was unacceptable in that it was not provided as an affidavit, did not include a warning from the attorneys to tell the truth or suffer the consequences, and did not include the title “expert opinion”.

Yediot Internet responded H.A.B. Trading LTD’s request for cancellation was niggardly and superfluous. They consider that the counter-evidence was timely filed, were in the appropriate form, and if the court rules otherwise, they should have an opportunity to repackage the response in an appropriate manner.

RULING

The correct way to present evidence in a trademark proceeding are given in regulations 38 and 40 of the trademark regulations 1940.

Regulation 38 states:

The opposer has to submit all his evidence within two months of receiving the applicant’s response.

Regulation 40 relates to the response to the opposer’s response to the applicant’s evidence and states:

In response, the opposer may submit counter evidence within two months and deposit a copy with the applicant.

Ms Shoshani-Caspi concluded that the last date for the applicant for cancellation to file counter-evidence was 6 April 2016,. The evidence was filed on 7 April 2016 – i.e. a day late. The mark owner only received a copy by registered mail on the 17 April 2016 .

The language of Regulation 40 should be understood as instructions for one party to provide evidence to the other party simultaneously with submitting the evidence to the patent office and not afterwards. However, as a matter of principle, disputes should not be decided based on procedural issues only where there is no irreversible damage to the opposing party. See 189/66 Asiz Sasson vs. Kedma LTD  – Car and Equipment Factory P.D. 20(3) 466, 479. In this instance, the procedural irregularities do not cause irreversible harm to the mark owner since the next stage of the proceedings is to fix a date for a hearing. The tardiness does not justify cancelling the proceedings.

That said, the document titled “Response to Dr Sarid’s Opinion has a signed blank sheet attached that casts aspersions regarding whether the signature belongs with the response, as there is no reason for the last page not to be signed. The document does not include the name of the expert who wrote it and is undated. It is also not endorsed by a lawyer. So whilst cancelling the evidence and closing the case on procedural grounds is a drastic step, this does not mean that anything is acceptable.

Consequently, the applicant for cancellation has 14 days to resubmit the expert opinion as a proper signed and dated affidavit with appropriate lawyer’s warning within 14 days, and to ensure that the trademark owner’s counsel receives a copy in this period as well. Interim costs of 800 Shekels + VAT are awarded to the mark owner, to be paid within 14 days.

 


Ful – the Broad-bean Ruling

July 15, 2016

It is generally known that the Lilliput wars were fought over which side one should crack to access the contents of soft-boiled eggs.

Zeno Eitam owns registered Israel trademarks 262406 and 258737 reproduced above.  The words mean “House of Ful (broad-beans), Tasty and Healthful Since 1952.

Apart from Iraqi Jews who have G6PD, i.e. a recessive hereditary disease, causing a lack of the glucose-6-phosphate dehydrogenase enzyme, Ful is a common food amongst oriental Jews. Ful has been tasty and healthful (at least for those not allergic) far longer than since 1952, but the legendary Ful outlet in Beer Sheva was apparently established back then.

The Ashkenazi clan (that’s their surname, not origin, and one assumes they are actually Mizrachi, probably Moroccan or Tunisian) filed to have the marks cancelled due to lack of use.

Yitzhak, Shalom, Yaakov, Moshe and Yoseph Ashkenazi were represented by Adv. Einat Noy Peri. On 10 May 2016 she submitted a hand-written note to the Trademark Office withdrawing her representation, however no explanation or justification was given. On 15 May 2016, the Trademark Office ruled that she could not simply withdraw, and remained the attorney-of-record until someone else is appointed, and gave her until the following day, 16 May 2016, to state whether her evidence was provided to the other side or not, but, to date, she has not complied.

On 22 May 2015, Yitzhak Ashkenazi filed to have the cancellation proceedings abandoned. As of 24 May 2016, Yitzhak Ashkenazi has been represented by Adv. Yoram Dadia.

On behalf of Mr Eitam, Adv. David Walberg (pronounced Deivid and not Dah-vid, so presumably both Ashkenazi by extraction if not in name, and probably an import from an English-speaking country) accepted the abandonment of the cancellation proceedings. He considers that Adv. Yoram Dadia should be considered as acting on behalf of all plaintiffs, and anyway, the cancellation proceedings should be thrown out since the plaintiffs requesting cancellation did not submit any evidence supporting their claims.

The Adjudicator of IP, Ms Yaara Shoshani Caspi ruled that she could not ignore the protocol of a discussion between Yitchak Ashkenazi and Ms Osnot Askenazi and Ms Bar Ashkenazi that took place on 17 April 2016 before the Been Sheva District Court Judge Ms Rachel Barkai (12737-10-15) that endorsed a compromise agreement between the parties under which the Ahkenazis would withdraw the cancellation requests in the current case.

The problem is that there is that the parties in the present case are not identical to those that were party to the case before  the District Court, and, apart from YItzhak Ashkenazi, the other parties to the trademark cancellation proceedings remains Adv. Einat Noy Peri until she manages to extricate herself from her obligations. The other plaintiffs have not agreed to have the cancellation proceedings closed, nor have they accepted Adv. Dadia as their representative. Therefore, the Court Protocol cannot be relied upon in this instance.

The question remains whether there are additional grounds for cancelling the proceedings? From reviewing the cancellation application it appears that the evidence for cancellation was submitted on a portable disk that cannot be reviewed. It is also not clear that these were provided to the mark holder. The Applicants for cancellation should be given an opportunity to provide the evidence to the court and to the mark owner in readable form.  That said, it seems pointless to order the submission of evidence in an acceptable form from plaintiffs that want to withdraw their case.

Ms Shoshani Caspi separately ordered all three lawyers, Ms Noy-Peri, Mr Dadia and Mr Walberg to inform all plaintiffs within seven days that they have 45 days to submit their evidence for cancellation in an acceptable, accessible form to the Trademark Office and to Mr Zeno Eitam or the case will be closed.

Interim ruling by Ms Yaara Shoshani-Caspi concerning cancellation proceedings against Israel trademarks 262406 and 25873 to Eitham, 6 June 2016.

 

 


Israel Patent Office Report 2015

June 13, 2016

Doch 2015.png

PATENTS

The Israel Patent Office has just published its report of 2015. Following the origami theme, and in an escalation from paper darts through hot air balloons, this time the cover shows an origami rocket. However, instead of plumes of gases, the rocket leaves a wake of bubbles. Go figure.

In 2015, 6,904 new applications were filed with the Israel Patent Office. This is the highest number since 2010, but still significantly less than 2006-2008. Noticeable increases in filing have occurred in chemistry, life sciences and computing related inventions. This reflects worldwide trends, as discussed by the EPO in their 2015 report.

The number of priority applications first filed in Israel was 830, which is up from 835 in 2014. It is still lower than any other year in the past decade. The number of non-priority applications, including Paris and PCT national phase filings, was 6074. This follows the over all new filing trends, and is more than any other year from 2011 to 2015, but less than 2006 to 2010.

Only 9.2% of Applicants for patents in Israel were Israelis. Indeed, the percentage of Israeli applicants has been steadily declining over the past decade, from 14.5% in 2006. The reduced filing fees for first time filers, which is similar to the US provisional filing fees using an agent, seems to have done nothing to encourage Israelis to first file in Israel, although I think there are significant advantages in so-doing, compared to going the US provisional route. Oddly however, there has been a steady rise in the percentage of Israel originating applications that are being allowed, when looking at the over-all allowance rate. Indeed, some 17.4 % of all patents allowed were filed by Israeli applicants.  The logical conclusion is that Israeli Applicants have an easier examination than their foreign counterparts. I doubt that this is the case. What may be happening is that Israeli Applicants are having interviews with Examiners and negotiating something allowable.

Applications are examined between two and three years from filing date, on average 30.4 months from filing (for PCT applications, this is from the PCT filing date, not national phase entry date). On average, cases take a further 29 months to allowance.

Who is filing into Israel?

Of the PCT national phase entries, 2911 originated with the USPTO as receiving office, 1203 with the EPO as receiving office, 454 with the International Bureau, 414 were national phase entries of PCTs filed with the Israel Patent Office as the receiving office. 194 cases came from Japan, 612 from China and 38 from Korea. Without the country of origin of the cases filed with the International Bureau being known and with a massive 626 originated ‘elsewhere’, it is not clear what this data really means. I suspect that a significant number of cases have come from the Swiss, DE and UK patent offices, but could be wrong.

Israeli Universities

Surprisingly, Ben Gurion University with 23 applications filed in 2015, has overtaken Yeda (Weizmann), Technion and Yissum (Hebrew University) as the most prolific University Tech Transfer filing in Israel. All the universities are down in Israeli filings compared to 2014 figures, except for the Haifa Technion. However, when PCT applications are considered, the number of cases filed last year is much higher, and is led by Yissum, Yeda, Technion, Ben Gurion and Tel Aviv in that order. What we suspect is happening is that Ben Gurion is first filing in Israel, whereas the other universities are first filing US provisional applications.

The Israel Patent Office has offered a 40% discount to Israeli universities but this doesn’t seem to have impacted their filing strategy. We are not surprised by this since the savings are marginal when considering the cost of drafting.

Other large filers

Biosense Webster, Israel Aerospace, Iscar, Elbit, Smart Medical Systems, Verint Systems and Omrix Biopharmaceuticals are major filers in Israel, and Corning, Oridion and Tel HaShomer hospital are significant local PCT filers.

Facebook Inc. Is the largest foreign filer into Israel, with a massive 136 applications in 2015. The next 14 companies are mostly pharmaceutical developers.

Divisionals

Chemistry, Pharma and Biotech applications are most likely to spin off divisional applications. This is not surprising, since the Specifications tend to be longer and less focused than mechanical, physics, medical device and computer type applications.

Applications that don’t get allowed

A significant number of Applications filed in Israel simply lapse. In 2015, 3,730 cases lapsed, 24 were rejected and 130 were expressly abandoned by the Applicant.

Section 17c allowances dropping

Only 14.5% of patents that issued were allowed under Section 17c of the Law. The number of 17c based allowances has been dropping steadily since 2010. In my experience, the Israeli Examiners are more likely to reject 17c requests based on their understanding of the art.

Fast tracking

Usage of the Patent Prosecution Highway (PPH) has increased, with some 390 cases being fast-tracked under the PPH (up from 96 in 2014) and a further 160 cases being made special for other reasons (age of applicant, suspected or actual infringement, etc.). So far, neither route has resulted in a significant number of cases being allowed.

Since the Green channel was established in 2010 for nothing to declare environmentally friendly patent applications, 133 cases have been fast-tracked.  In 2015, some 13 cases qualified and a whopping 3 patents issued.

Going full term

Hardly surprising, Chemistry related patents are the most likely to be renewed full term.

PCT Applications

Israelis filed 1329 PCT Applications with the IPO as receiving office and a further 128 applications filed by Israelis directly with the International Bureau selected the IPO as the International Search Authority. Interestingly, some 195 Applications filed with the USPTO as receiving office specified the IPO as the International Search Authority. In total, the Israel Patent Office issued some 1085 International Search Reports.  Israelis can choose to elect the USPTO, the EPO or the IPO as the International Search Authority. 819 out of 1329 (61.6%) chose the IPO which is marginally cheaper than the USPTO which handled 193 cases for Israeli Applicants, but significantly cheaper than the EPO which handled 317 cases.  It seems that the EPO is still considered the ‘gold standard’. EPO examiners are fluent in three languages as a requirement for their job. (I suspect from their names, that there are a very large number of US examiners who also speak a foreign language, often Vietnamese or Korean, but USPTO searches are usually very US focused).

TRADEMARKS

trademarks

The number of trademarks filed into Israel has stayed more or less constant since 2011.There has, however, been a significant rise of 23% in the number of International Applications filed with the Israel Patent Office (Trademark Division).  The numbers are a little distorted since until 2010, only single class applications were accepted. Now multiple class applications are allowed. If one considers new applications multiplied by the number of classes, in 2015, some 20,525 new cases were filed which is almost double the number of cases in 2005.

Some 24% of trademark applications filed in Israel are filed by Israeli companies. An almost identical percentage (23.7% were filed by US corporations. 6.7% were from Germany, 6.1% from Switzerland, 5% from France, 4.3% from China, 3.9% from UK applicants, 3/5% from Italy, 2.2% from Japan and 1.7% from Turkey. The remaining 18.8% came from other places. Since 2010, the proportion of Applications filed in Israel by foreign entities has crept up from 70% to 76%.

On average, applications take nearly a year and a quarter for examination to commence, but then things move quickly and typically applications are then allowed within 3 1/2 months.  Unlike patent applications where acceleration is discretionary and requires due cause, trademark applications may be accelerated merely by paying a fee. 438 cases were fast tracked in this manner.

By the end of 2015, there were 144,490 registered trademarks in effect, or 184,840 cases if multiple class marks are considered as separate cases.

Under the Madrid Protocol, and lumping Europe together as marks designating the EUIPO, Israel is the 18th most popular destination trailing Vietnam and Kazakhstan but ahead of Belarus and the Philippines.

DESIGNS

During 2015, the Israel Patent Office Design Department underwent major efficiency improvements. The backlog from filing to examination was reduced to 5 1/2 months and during 2016, is expected to be reduced still further, to only three months. The Examiners have begun listing all required amendments in each office action, so there are typically fewer iterations and applications are typically allowed within a year of filing. This is considered highly desirable as designs typically have an ever shorter commercial life as product lifespans decreases. Published designs are now searchable on-line, making redundant trips to the Israel Patent Office merely to inspect the records.  The full design registrations may be downloaded at the press of a button. There is a brand new Design Law making its way through the Knesset, which should replace the current 1924 Design Ordinance. During 2016, on-line registration and prosecution should be possible.

in 2016, a total of 1532 design applications were filed. This is about average for the last decade with a high of 1775 applications filed in 2008 and a low of 1351 in 2013. A total of 1,744 applications were allowed, which is the highest number ever.

14.4% of design applications (221 in total) were for building elements in class 25. 11.7% (180) were for containers. 10.6% (163) were for clothing; 8/1% (125) were for furniture, and  6.8% (105) for other household goods. 72% of Applications were for Israeli designs; 9% for designs originating in the US, and 4.5% for designs from Brazil. This anomaly is due to Grendene – a shoe manufacturer, and Stern a jewelers. 3% of designs come from Switzerland and from Holland, and 2% each from Italy, Luxembourg, France and the UK.

The new and somewhat Draconian three-month to respond to an office action regulation coupled with the requirement for examination to be completed within 12 months, has resulted in 1,178 applications being rejected.

It seems that most designs are renewed for a second five-year period, but few are kept in force for the maximum 15 years.

The major applicants is Klil, a manufacturer of aluminium profiles for window frames and the like, with 81 applications This is followed by Naot, a shoemakers, with 64 applications. Monkey Business Design Israel LTD and Ototo Design LTD have 34 and 18 applications respectively. Other local users of the design registration system include another aluminium profile manufacturer, a further couple of design houses, another shoe manufacturer, Karshi, a manufacturer of mass-produced Judaica and Hassidic figurines, and Keter Plastics.

 

 

Overall, Israel ranks 15th for PCT applications and 30th for both trademarks and designs applications. Considering the relatively small population, this is quite significant.

 


Scratch Those Marks

June 13, 2016

240139

Back in February we reported on an Opposition to Israel trademark application 240319 and 253416 both filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co.).

The Opposition was filed by Exstal who succeeded in opposing the marks, claiming that they were the true owners, despite their allowing their registrations to lapse.

The marks are for a single 60 degree triangular protrusion or indentation along an aluminium profile, and both were rejected as confusingly similar to Exstal’s earlier registered marks.

The opposition is under Appeal.  Napco turned to the District Court for an extension to Oppose Exstal’s marks. This was not granted since the Court could not understand why an Opposer to a mark known to be published for opposition purposes in January, waited until April to request a time extension.  Substantively, the Opposer had 3 months to file an opposition and had a remaining two week window. The Courts considered that the Opposer should file their opposition and then would start the process giving them an opportunity to have their case heard. In addition, since the Commissioner would be a party to such an extension, various guarantees would be required.

The Commissioner accepted the Courts position.  NAPCO had a window of opportunity to oppose the marks and this does not create irreversible damage to them. During that window, they could make any claims they saw fit to submit.  If NAPCO felt that with a pending court case, the IPO should suspend the proceeding before it, the onus was on NAPCO to submit a appropriate request.

Central to this issue is the fact that NAPCO is petitioning to cancel a decision that followed the Commissioner accepting Exstal’s opposition, and no request was made or given to suspend implementation of that decision. The Commissioner did not consider that any mistakes were made in granting the marks, not under the Israel Trademark regulations 1967 and not under the Law of Interpretation 1981. Consequently the request is denied.

The marks published for opposition purposes on 31 January 2016 and the request to cancel the notice of allowance was made on 10 April 2016, three weeks before the deadline for filing oppositions. Exstal filed their response and Napco requested permission to answer and did so a day before the Pesach break when the Israel Patent Office was closed. Napco’s behaviour put unnecessary pressure on the patent office and on Exstal.  Consequently, regardless of the outcome of the wider issues, Napco should pay 5000 Shekels costs for this request.

Interim ruling re Israel TMs 240319 and 253416 by Jacqueline Bracha, 21 April 2016.


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.


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