Israel Patent Office Closures – October 2016

September 28, 2016

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

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

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


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

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

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

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

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

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

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

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

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

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

Formalities May be a Big Deal

September 20, 2016

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

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

big deal storeynet big-deal

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

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

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

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

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

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

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


Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized)

September 12, 2016

pliskaIsrael Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized) was registered on 1 September 2014 for alcoholic drinks in class 33. On 24 March 2005 half the ownership was transferred from Capital Food Company ltd. to D.I.L. Trade (Maglan) ltd.

On 2 February 2016, Vinex Preslav Joint-Stock Company filed a request to have the trademark struck from the register due to alleged lack of use during the previous three years. Vinex Preslav Joint-Stock Company is a Bulgarian company that claims to have used the term Pliska for alcoholic beverages since 1994, and has registered the mark worldwide under the Madrid Protocol since 2005. Vonex Preslav claim to have sales in Israel.

Furthermore, Vinex Preslav notes that there is an agreement between the registered owners, Capital Food Company Ltd. and D.I.L. Trade (Maglan) Ltd, that was submitted to the Israel Patent Office, under which D.I.L. Trade (Maglan) Ltd undertook not to use the mark from 1 January 2005 onwards.

On 31 March 2016, Capital Food Company Ltd. submitted their statement of case. They claim that their rights to the Pliska trademark outweigh those of Vinex Preslav, that they have used the mark in recent years and intend to continue using it. Capital Food Company Ltd allege that a cancellation request filed 14 years after a mark was registered is surprising and itself indicates that the mark has a reputation.

On 25 May 2016, Capital Food Company Ltd submitted a request to transfer the mark to Vinex Preslav in accordance with an agreement reached between the parties. However, on 31 May 2016, Vinex Preslav submitted their evidence to have the mark canceled and requested a decision based on the evidence submitted without a hearing.

Vinex Preslav requested that the cancellation ruling be based on a statement by Mr Vadim Farber, the CEO of Carmi International Foods Ltd, who is the distributor in Israel that Vinex Preslav uses. Mr Vadim Farber affirmed the existence and contents of an agreement between Capital Food Company Ltd. and D.I.L. Trade (Maglan) Ltd. under which D.I.L. Trade (Maglan) ltd. were obliged not to use the mark, and he further affirmed that the mark had not been used in Israel over the previous three years.

Vinex Preslav also submitted a statement from Ronen Menashe, an investigator at SML Israel Intelligence Ltd, in which he affirmed that his investigations had yielded no evidence of usage by D.Y.L. Trade (Maglan) Ltd. today or over the past ten years. Mr Menashe had held a conversation with the director of D.I.L. Trade (Maglan) Ltd. who explained that he conducted his affairs via a further company, since D.I.L. Trade (Maglan) ltd.  is no longer active. Furthermore, the new company does not make any usage of Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА”. Mr Menashe also visited a number of shops spelling wines and spirits but none of them sold products with Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” on it, or any other products manufactured by D.I.L. Trade (Maglan) ltd.

On 21 June 2016, Capital Food Company Ltd announced that they no longer had any connection with D.I.L. Trade (Maglan) Ltd, would not be submitting evidence, and requested a ruling based on the material of record.


Section 41 of the Trademark Ordinance 1972 states:

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

The purpose of the section is to keep the trademark register clean from non-used marks. See BAGATZ 67/71 “Prem” Ltd. vs Registrar of Trademarks, p.d. 28(1) 802, 811, where, with respect to the previous version of the section it was ruled that:

Section 22 is intended, primarily, if not exclusively, to purify the trademark register of all marks that are not in use and without bona fide intent to use. This is a national issue, so that registers are not weighed down with theoretical marks. It was not incidental that the legislators required bona fide usage after registration.

The requester for cancellation first claimed that the owners had never used the mark in Israel. Following the request to transfer the mark to them by the current owners, there is no need to cancel the mark, but only to transfer ownership and to delete D.I.L. Trade (Maglan) Ltd from the register.

It will be noted that Section 41 of the ordinance allows for full or partial cancellation of a mark by narrowing the list of goods covered.  There is, however, no provision for cancelling some owners whilst leaving others as registered owners.

The request to cancel the mark focuses on a lack of usage by D.I.L. Trade (Maglan) Ltd, and the investigator did not attempt to determine whether or not Capital Food Company Ltd was using the mark. Mr Farber testified that the owners were not using the mark, but Capital Food Company ltd themselves claimed usage in recent years but did not substantiate this with any evidence. Furthermore, Capital Food Company ltd transferred their share in the mark to Vinex Preslav, leaving the fate of the mark with the Commissioner, and without making any demands themselves.

The net effect of this is that the request is really one of correcting the register by deleting D.I.L. Trade (Maglan) Ltd as an owner. Section 38(a) of the ordinance states:

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

The requester for correcting  the register is an aggrieved person and is covered by Section 38a). It has previously been established that an “aggrieved person” is no different from the “interested party” referred to in section 41 of the Ordinance (- see Seligsohn “Trademarks and Related Laws” 1973, page 105. The Supreme Court related to this in Civil Appeal 941/05 Wine Maker’s Cooperative of Rishon l’Zion and Zichron Yaacov  vs. The Kerem Company Ltd. p/d/ 61(3) where it is stated:

The phrase “he that is disadvantaged” is explained liberally in the case-law to include someone who suffers some disadvantage in some manner vis-a-vis some third-party who enjoys a trademark registration that they are not entitled to. This explanation is based on the English phrase “Aggrieved Person” as understood in the English Law that the  Ordinance brings into Israel Law.

 The requester for cancellation fulfils this precondition since, according to his statement, he’s used the mark in his home country for decades, has usage abroad and is interested in using the mark in Israel.

The Commissioner’s has wide authority in this regard, a previous commissioner ruled regarding Israel Trademark No. 66312 “NIPRO” in Abbott laboratories vs. Nissho Corporation 13 July 1999:

Since Section 38 deals with various changes to the register, from cancellation due to lack of distinctiveness and including transfer of rights in a mark from one entity to another, the considerations behind allowing amendments depends on the underlying justification and on the scope of amendment requested. There are cases where a Section 38 amendment will be allowed and others where it will not.

This is demonstrated by the fact that the legislators limited the period under which a mark may be cancelled due to non-registerability, but did not limit the period during which the register could be amended (see section 39(a1) of the Ordinance, and also the words of explanation (published on 27 July 1999 Page 525 in the protocols of the Law for amending Intellectual Property legislation in light of the TRIPS agreement 1999, Book of Laws 1721 from 30 December 1999, Page 48, which resulted in this section being added to the Ordinance.

Nevertheless, when considering a request to amend the register, it is necessary to consider the rights of third parties that could be disadvantaged by the amendment. Such third parties are not merely the parties themselves, but include competitors who if the amendment is not allowed, could file for cancellation of the mark due to lack of use.

Furthermore, the requester of the cancellation wishes to be registered as the user themselves, after testifying that the mark is not actually in use. The correct procedure is to have the non-sued mark cancelled and then to file a new application. The new application is then open to third-party challenges by way of opposition and allows other parties, their say.

Additionally, if the mark is indeed dormant for so long, this increases the likelihood that other parties may be using the mark and assigning the mark in this manner could leave such other parties exposed to infringement actions.

Thus even if the end result is that the requester of the cancellation be registered as the mark owner, this result should be achieved with consideration for the rights of others, and not by devious means.

In light of the above, Deputy Commissioner Ms Jaqueline Bracha rules as follows:

  1. The request to amend the register such that D.Y.L. Trade (Maglan) Ltd is replaced by Vinex Preslav as the owner is not acceptable
  2. If Vinex Preslav wishes to continue with the cancellation request, they have 30 days to show lack of use of both owners. Since Capital Food Company Ltd. have stated that they will not be submitting evidence themselves, the decision will issue based on the submission by Vinex Preslav only
  3. Vinex Preslav may abandon the cancellation request within 30 days; the mark will remain owned by two parties and Vinex Preslav may substitute themselves for Capital Food Company Ltd as the part owner as per the transfer of ownership record that was submitted.

Cancellation or Change of Ownership of Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized) Ms Jaqueline Bracha, 22 August 2016




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”.


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.


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.


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.