UNILAK

January 6, 2017

Israel Trademark Number 121683 to Industrias Titan, S.A. is for the word UNILAK covering paints, colours, varnishes, lacquers, enamels; all included in class 2. It was registered back in 1999.

On 16 October 2015, Israel paint company Nirlet LTD filed a request to have the mark canceled due to lack of use. A notice of the cancellation request was sent to Industrias Titan, S.A., but they ignored it, and did not respond in any way.

Nirlet claims that Industrias Titan has not used the mark in Israel over the past three years and there are no extraordinary reasons justifying this lack of use.

Section 41 of the Trademark Ordinance 1972 states that:

“…any interested in so doing can file a trademark cancellation request on the basis of there never being an intention for bona-fide use or that the there was no bonafide use during the three years prior to submission o

 

Trademarks are property rights that are not trivially

f the cancellation request.”disposed of, and the burden of proof lies with the requester for cancellation -see Bagatz 476/82 Orlogad vs. Commissioner of Patents, p.d. 39 (2) 148. This burden of proof switches from one party to another throughout the cancellation proceeding, but there remains a requirement for the requester of cancellation to bring supporting evidence of the alleged lack of use. Only if this burden of proof is met, does the onus transfer to the mark owner to overcome the evidence provided by the challenger and to show that the mark is indeed in use. Cases that are not clear-cut work in favour of the mark owner – see Bagatz 296/89 Moorgate tobacco Co. vs Philip Morris Inc, p.d. 41 (1) 485 on page 493.

Regulation 70 of the 1940 trademark regulations provides the procedural requirements:

A request to correct the register or to cancel a mark from the register will detail the interest of the requester, the facts and the requested change in two copies: one for the Commissioner and one for the registered owner.

The adjudicator of IP, Ms Yaara Shoshani Caspi, ruling on the case, was convinced that the mark owner was served the papers. Consequently, regulation 71 comes into effect:

With such a request, and a copy sent to the mark owner, the procedural arrangements of regulations 37 to 46 come into effect (with the necessary changes as appropriate):

The mark owner should have submitted a counter statement of case by 16 December 2016, but failed to do so. Consequently, regulation 71a comes into effect:

If the mark owner does not submit a response within two months, the patent office will give the challenger two months to file his evidence.

Thus in absence of a Counter Statement of Case from  Industria Titan, the challenger is given two months to file their evidence and to send a copy to the Industria Titan.

Interim Ruling re Cancellation of Israel Trademark 121683, Ms Shoshani-Caspi, 25 December 2016.

 


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

October 10, 2016

dormeo

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

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

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

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

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

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

 

 


Revival of IL 132540 Opposed

September 18, 2016

chequeBack in June 2015 we reported that an attempt by the patentee Yehuda Tsabari to revive Israel Patent Number IL 132540 titled “A method and System for Direct Transfer of Funds via Magnetic Cards” and covers using credit / debit cards to gift money into the account of celebrants. It is designed for use by guests at weddings and Bar Mitzvas, and is a variation of what a refer to as a hardy perennial – it is the sort of invention that seems to be reinvented every few months, and I have provided consultations to several would be entrepreneurs, and have even drafted and successfully prosecuted patent applications for variations of the invention in the past.

paymentTsabari’s patent was abandoned due to failure to pay the fourth renewal for years 14 to 18. The Patent Office agreed to allow the revival subject to their decision publishing for opposition purposes. On publication, Going Dutch Ltd opposed the revival claiming that the patent was knowingly and intentionally abandoned, and the present decision is a substantial ruling on their opposition.

Tsabari’s application was filed on 24 October 1999 and the patent was allowed on 13 April 2004. The fourth renewal was due on 24 October 2013 but was not paid, and six months later, the patent lapsed as per Sections 56 and 57 of the Israel Patent Law 1967.

reinstatementOn 7 July 2014, Mr Tsabari filed a request for reinstatement together with an affidavit, arguing that the reminder was sent to the wrong address as the Israel Patent Office has failed to update its records with his new address, despite his updating them. According to the Affidavit, in 2005, on receiving the patent, Mr Tsabari requested that a change of address from the address of the Attorney-of-Record to his own address be entered into the Patent Office records. Despite his request, the Israel Patent Office sent a reminder for the renewals to the offices of Dr Mark Friedman, the Agent of Record. According to Tsabari, it was this mistake by the Patent Office that caused the patent to become abandoned. In support of his contention, Mr Tsabari produced a receipt for 272 Shekels which was the fee for updating the patent office register. Tsabari further claimed to have wanted the patent to remain in effect and had attempted to enforce it both in the District Court and in the Patent Office. Furthermore, he’d taken immediate action for reinstatement as soon as he’d learned that the patent had become abandoned.

reinstatement2In light of the circumstances described in the request for reinstatement, Deputy Commissioner Jacqueline Bracha was convinced that conditions for reinstatement under Section 60 of the Israel Patent Law 1967 were met, and, in her ruling of 24 July 2014, she ordered the notice of intent to reinstate published in the patent office journal for opposition purposes.

On 23 November 2014, Going Dutch Ltd opposed the reinstatement. Going Dutch Ltd brands itself Easy2give and was active in an initiative to provide a credit card based gift service at functions and events.

oppositionIn their Opposition, Going Dutch Ltd claimed that the reinstatement was contrary to Section 60 and should not have published. As a fall-back position, they argued that if the revival be upheld, they should be considered as having relied on the patent lapsing and should be indemnified from being sued for infringement, and could continue to utilize the patent under Section 63 of the Law.

In their counter statement of case, the Applicant contended that they did NOT want the patent to lapse. In support of this contention, the Applicant described attempts to commercialize the invention, and included a few appendices to support the claims. However, the Applicant requested that the appendices remain confidential, claiming that they were trade-secrets under the 1999 trade-secret act, and, in her decision of 7 May 2015, The Deputy Commissioner agreed to these remaining confidential.

The patentee also described attempts to enforce the patent against Check-Out Ltd in the District Court, and Check-Out Ltd.’s attempts to have the patent cancelled in a proceeding before the Israel Patent Office. Also, attempts at collaboration with Check-Out Ltd. that were aborted for financial reasons were described.

The Opposer’s Claims and Evidence

The Opposer, Going Dutch Ltd claimed that the reinstatement was contrary to Section 60. They contended that no reasonable excuse was given for the renewal not being timely paid and they argued that the request for reinstatement was inequitable. The 272 Shekels receipt shown by Tsabari was not for a change of address at all. Rather, it was the second renewal paid in 2005 and so the Applicant did not show evidence that the patent lapsed unintentionally. It was evident that the payment in 2005 had nothing to do with the patent lapsing since five years later, in 2010, despite the change of address, one of the owners managed to renew the patent.

The Opposer alleged that Tsabari wanted the patent to lapse. The Opposer learned this from Tsabari’s lack of activity in this area from when the patent was filed until the date of the Opposer’s submission, which indicates that the business had failed and the applicant had lost interest. The business failure of Check Out Ltd. which was a potential partner, further supports the allegation that Tsabari had abandoned the patent.

In cross-examination in February 2013, it transpired that Tsabari was aware of the Opposer’s activities back in 2013, and this supports the opposer’s contention that reinstatement was not sought immediately on learning that the patent had been abandoned.

As supporting evidence to their claims, the Opposer, Going Dutch Ltd, submitted an affidavit of Mr Guy Giyor, who was a founder and former CEO of the Opposer. Mt Giyor testified that the Opposer was established as a company offering various event related services including credit based presents at events. Mr Giyor testified that the Opposer had relied on Tsabari’s patent lapsing and Tsabari’s lack of  business activity  in developing their own initiative. Furthermore, Mr Giyor testified that Going Dutch Ltd started marketing in June 2014, after the patent had lapsed.

 Applicant’s Claims and Evidence

The Applicant detailed his attempts to monetize the patent, and repeated his claims from the application to revive, that the patent had lapsed due to a technical error of the Israel Patent Office, which continued to send reminders to the wrong address, despite a request to change the address of record submitted in 2005.

The Applicant also claimed that the Opposer was acting inequitably and in bad faith since the opposer had started commercializing their invention before the patent had lapsed, and had, in fact, infringed the patent. The Applicant for revival substantiated his claim by submitting newspaper articles that showed that Mt Guy Giyor had taken actions in 2012 and had set up a company in 2012 with the intention as stated in its constitution, of enabling wedding presents to be made at events via credit cards. The Applicant backed his claims with an affidavit.

On 3 February 2016 a discussion was held before the Deputy Commissioner, Ms Jacqueline Bracha, during which both the Applicant and the CEO of the opposer were cross-examined on their affidavits.

Discussion

The legal basis for opposing reinstatement of a lapsed patent is Section 61 of the Law, as follows:

Anyone may oppose a request to reinstate a patent within three months of the decision to allow reinstatement publishing, based on a claim that the Commissioner should not have authorized reinstatement.

The Commissioner’s authority to publicize the decision to reinstate a patent is based on Section 60 of the Law, which defines three conditions for reinstatement that are all required to be fulfilled:

  1. The renewal fee was not paid for reasonable reasons
  2. The patentee did not intend to abandon the patent
  3. The request for reinstatement was filed soon after realizing that the patent had lapsed.

When ruling on an Opposition to reinstatement, the Commissioner has to reconsider whether the conditions are fulfilled in light of the evidence brought during the opposition.

There is a difference in evidentiary requirements for authorizing reinstatement subject to publication of the decisions for opposition purposes as per Section 60 of the Law, and the evidentiary requirements to affirm that decision under Section 61 of the Law. During an opposition, the Opposer challenges the Commissioner’s determination that there are grounds for reinstatement and has to provide a strong case that the Commissioner erred in the assessment.  For more details, see the discussion on reinstatement of IL 15211 which lapsed due to failure to pay the fee; Gershon Eckstein et al. vs. Mezer Peles, Limited Paretnership of Kibbutz Mezer, published 1 April 1984.

After consideration of the claims and evidence of the parties, the Deputy Commissioner concluded that the non-payment of the renewal fee was not actually due to reasonable circumstances.

In the request for reinstatement, the Applicant claimed that the non-payment was due to a mistake of the Israel Patent Office, which, despite his request to the contrary, did not change the address of record. consequently, reminders sent  from the Patent Office did not reach their destination. As evidence of the request to change the address of record, the Applicant produced a receipt for payment of a Patent Office fee of 272 Shekels.

Here it is noted that in the past, as ruled in the Gershon decision, lack of payment of Renewal fees due to the Patentee forgetting has been recognized as a scenario where reinstatement is possible under Section 60 of the Law. See the Eckstein ruling and also the Opposition to reinstate IL 14548 Reuven Margulies vs. Exra Darrel et al. , 12 January 1972. However nowadays, in a slew of decisions on this matter, it has been ruled that failure of the Israel Patent Office to send reminders does NOT constitute reasonable grounds for revival, since tracking these deadlines is the responsibility of the patentee. See, for example, the decision re IL 185526 Chaled A’quad et al. from 24 October 2012, since we are now in an age where the patentee can easily track renewal dates, the onus is on him to show that a patent lapse wasn’t due to negligence or abandonment.

In the decision to allow reinstatement, the Deputy Commissioner had noted applicant’s attempt to update their address and their apparent relying on the Israel Patent Office to remind them of the renewal and the Patent Office’s apparent failure to do so. However, in the hearing on the Opposition to that decision it transpired that back in 2005, a payment was made to renew the patent and not to request updating of the patentee’s address. In a more rigorous examination of the patent office records it transpires that there is no evidence of any request to update the patent office record as to the address of the patentee and no evidence that any fee for this was paid. Back then, the fee for renewals was 272 Shekels and for amending the register was 204 Shekels, so it clear that the payment receipt was for the renewal and not for amending the register.

On presentation of the evidence that the fee paid was for the renewal, the Applicant for Reinstatement (Patentee) was unable to provide further evidence for requesting a change of address and, since he’d kept a copy of the renewal fee, one assumes that he would have kept a copy of the fee for change of address had it been paid. The Applicant neither provided evidence for the alleged request to change address nor any other reasons or evidence justifying the renewal not being timely paid.

The patentee who was not represented, requested to understand why he was being cross-examined, and this was explained to him as follows:

The relevant questions as far as this hearing is concerned are whether you wanted to abandon the patent, and, if you did not intend abandoning the patent, was the failure to pay the renewal fee due to a reasonable reason, and so the question as to whether you were informed of the renewal and whether you are still in contact with Dr Friedman (the agent of record) or not, are the the most relevant questions to this discussion. (Protocol Page 26 line 12).

In addition, the Deputy Commissioner was somewhat surprised that the patentee did not call Dr Mark Friedman to testify that he had not sent a reminder regarding the fourth renewal. Dr  Friedman’s testimony would have shed light on whether actions were taken after issuance to keep the patent alive and what instructions were given to Dr Friedman regarding renewal of the Patent.

The failure to provide testimony from Dr Friedman has negative evidentiary weight. Without a reasonable explanation, one can assume that Dr Friedman’s testimony would not have helped the patentee – See Civil Appeal 548/78 Ms. Anonymous vs. Mr Anonymous, p.d. 35(1)736, 760 (1980):

The Courts have always considered that a party to a decision will not fail to provide evidence that is in his favour. Failure to bring such evidence without clear explanation indicates that such evidence would act against his interests. This assumption is well rooted in both civil and criminal rulings, and the more important the evidence, the more clearly is it not being brought indicative that were it to be brought, it would act against the party bringing it. See Civil Appeal Naftali Schwartz vs. Raminoff Company for Trading and Building Equipment LTD. (Nevo 27 July 2008).

The lack of a connection between the change of address of the patentee and the non-payment of the renewal is evidenced by the fact that eight years later, in 2013, the patentee did pay the third renewal. This was clarified after the hearing when the Patent Office checked their records. This fact was reported to both sides in the 22 February decision, but the patentee did not relate to this in his summation.

The above is sufficient for the opposition to reinstatement to be successful.

Although not necessary to do so, the Deputy Commissioner added that the evidence shows that the patentee was tardy in monetizing his intellectual property. The Applicant showed that four years passed between the patent issuing and the first draft of an agreement with a credit company, and that agreement was never signed. Nearly 5 years passed from the patent issuing until the patentee had a detailed specification for a system based on the invention. The various cases between the patentee’s company Shai For You (Shai means gift) and Checkpoint seemed to have lapsed with Checkpoint going bankrupt in 2014 (see 8870-10-09 Shai For You vs. Check Out LTD 7 January 2014) and Checkpoint’s challenge of the validity of this patent was also abandoned in November 2012.

It is noted that patentee alleged that Check Point abandoned their case due to them collaborating with the patentee. However, since Check Point had requested an extension of time, doubt is cast on the patentee’s version of events.

The Applicant testified that he’d known about the Opposer’s actions back in 2013, which he alleged, infringed the patent.However, the Applicant failed to take any action, and did not even send a Cease and Desist Letter. This also indicates that the Applicant had lost interest in the patent.

CONCLUSION

Instead of justifying his request for reinstatement, the Applicant chose to attach the Opposer, accusing him of tardiness and inequitable behaviour and of attempting to commercialize the patent before it was abandoned.

Mr Giyor even testified that he knew about the patent and undertook various examinations via a private detective t ensure that the sole licensee, Shai Four You LTD> was no longer active. This indicates that he thought that Shai Four All’s patents could be enforced against him. Since Giyor’s company was established in 2012, it does not seem that Giyor had relied on the patent lapsing, and had launched his competing service in May 2013, as is clear from one of his publicity films on the Internet.

Anyone can oppose the reinstatement of a patent. The incentives for so doing are usually economical, typically the desire to utilize the patented invention. In this instance it appears that the Opposer started using the patent prior to it lapsing and waited for the patent to lapse rather than cooperating with the patentee.

equitableIt will be appreciated that the Duty of Equitable Behaviour applies to all fields of law (see Sections 39 and 61 of the Law of Contracts 1973), and the rights to a hearing are not exceptions to this rule see Bagatz 566/81 Eliyahu Amrani vs. The Supreme Rabbinical Court p.d. 37(2) 1 (7 August 1982).  Although this cannot be taken into account in the Opposition itself,  and the Opposer has proven that the patentee had not shown that the abandonment was unintentional as required by Section 60 of the Law, this can be taken into account when ruling on costs. Consequently, due to the Opposer utilizing the patent knowingly prior to it lapsing, no costs are awarded.

Opposition to IL 132450 to Yehuda Tsabari (Shai Four You) by Going Dutch Ltd, ruling by Ms Jacqueline Bracha, 31 August 2016.

 


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???

 

 

 


361°

March 8, 2016

361

Dalitex owns three trademarks for 361°. TM 192322 and TM 192323 are for bullet-proof vests and flak jackets in Class 9 and for packpacks, bags, cases and pouches in class 18.TM 192324 covers clothing and footware in class 25, specifcially choes, socks, coats, storm-suits, both fabric and synthetic, and hats.

Sanliuyidu (Fujian) Sports Goods Co., Ltd filed a request to cancel the marks due to lack of use. They themselves wish to register a slightly different mark in Israel, via the Madrid Protocol. Their mark is shown below.

361

The cancellation proceedings were initiated due to the Patent Office’s resistance to allowing Sanliuyidu (Fujian)’s mark.

Dalitex failed to respond to the cancellation action and Sanliuyidu (Fujian) filed their evidence and waived the need for a hearing.

Sanliuyidu (Fujian) submitted an Affidavit from Ding Huihuang, President of Sanliuyidu (Fujian), who claimed that they had been using their mark for 14 years and that it was registered in China, Korea, the US, Japan and the European Union. He further testiifed that Dalitex had not used their mark in Israel for over three years and that their website http://www.dalitex.com was innactive.

Sanliuyidu also filed an affidavit by a private investigator that he was engaged by Sanliuyidu to find articles carrying the Dalitex mark, and that he had found Dalitex’s address and spoke to the son of the share-holders who volunteered that the company had filed the marks with the intention of selling goods but had never actually used it. The Private Investigator further testified that he had visited various stores and also conducted an internet search, but failed to find any goods with Dalitex’ 360 logo on.

Section 41 allows third parties to bring cancellation proceedings if a mark has not been in use for 3 years or if ther is no intention to use the mark. The purpose is to keep the register free from placeholder marks.

Sanliuyidu have brought the cancellation proceeding as they wish to use the mark themselves. Since trademarks are property rights, the patent office will not cancel them without evidence, but in this instance, the private investigator had provided a prima facie case of non-use that the trademark owner had failed to challenge.

In the circumstances, Dalitex’ marks are cancelled and they are ordered to pay costs of 2000 Shekels and 2500 Shekels in legal fees to Sanliuyidu.

Cancellation of Israel Trademark Numbers 192322,  192323 and 192324  (361°) to Dalitex; Ruling by Ms Jacqueline Bracha,23 February 2016.


Elle

February 14, 2016

Elle

Hachette Filipacchi Presse is an international publishing house which amongst other activities, publishes the magazine ELLE which covers fashion, beauty, health and entertainment. Hachette Filipacchi Presse owns Israel Trademark No. 74356 for “ELLE” for all goods in class 25. The mark was registered in September 1994.

Mr Shimon Budkof who is a wholesale shoe distributor submitted an Application to have the ELLE mark Cancelled.

In addition to the cancellation proceeding, Hachette Filipacchi Presse is opposing a trademark application no 242680 filed by Mr Shimon Budkof for “יופי שנח לך ELLA” – literally “ELLA – Beauty that is Comfortable for You”. That opposition is partly based on the current mark and was combined with a further opposition filed by VF Inc. Intellectual Property Services for Ella Moss. In the circumstances, before considering the Oppositions, Ms Yaara Shoashani Caspi, Adjudicator of IP at the Israel Patent Office decided to consider the validity of the present mark first.

Section 41(a) allows third parties to file cancellation procedures against marks that were not filed in good faith or without a genuine intention to use them, or  marks that have not been in use for at least three years.

In this instance, if Mr Shimon Budkof can show that the ELLE mark has not been in use between 21 January 2011 and 21 January 2014 when the cancellation proceedings was filed, the patent office could cancel the registration. However, in addition to the mark not being in use, the patent office has to consider whether there were special reasons for the mark not being in use. Even then, the cancellation is discretionary on the Commissioner.

The onus is on the third party challenging the mark to show that it has not been in use. This is difficult to prove but nevertheless a case must be made, and then the mark owner can attempt to show that there was in fact usage.

In this instance, Mr Shimon Budkof  and two other shoe vendors, Eddy Shaharbani and Abraham Feiner, testified to never having come across shoes or garments sold in Israel under the brand ELLE. Eddy Shaharbani and Abraham Feiner are both long-term players in the Israel shoe industry. However they retailers that sell Mr Shimon Budkof’s shoes, which causes reliance on their statements to require caution. Furthermore, neither are familiar with shoe importing from abroad.

Mr Shimon Budkof claims to know Israel she importers, but he is a party to the cancellation  procedure. There is no indication that Mr Shimon Budkof took pains to survey the industry and one cannot judge the objectivity of his conclusions.

A report from an independent private investigator that neutrally examined the extent of usage of ELLE as a mark for shoes would have been valuable but was not provided. In this instance, citing the Israel Trademark No. 207810 RICHEMONT INTERNATIONAL decision and citing Kedmi Rules of Evidence Section 3 page 1391,  Ms Shoshani Caspi considers the failure to provide this type of evidence as undermining the case for cancellation.

In the circumstances, Ms Shoshani Caspi considers that Mr Shimon Budkof has failed to make a case that the Elle mark is not in use for shoes.

Hachette Filipacchi Presse submitted an affidavit from Mr Fabienne Sultan who claims that JB Martin is a shoe importer that is authorized to use the ELLE branding in Israel and submitted three separate invoices that indicate that shoes are being sold in Israel under the ELLE brand. Although the quantity of shoes indicated is not large, it is sufficient to show some usage and to prevent the mark being cancelled.

Some allegations that Sultan’s evidence was inadmissible were raised but these were not sufficiently substantiated and Budkof declined to cross-examine Hachette Filipacchi Presse’s witness.

I conclusion, the cancellation attempt is  dismissed, and costs of 4000 NIS are awarded to Hachette Filipacchi Presse.

COMMENT

Elle is a magazine that was founded in 1945. With a circulation of over a million copies a month, it is the world’s most popular woman’s magazine. Although translated into some two dozen languages, there is no Hebrew edition. The word Elle means She. It has been the subject of a trademark dispute in the past See here.

 

 

 

 

 

 


Orchid Mark Not Defended by Rolex, and Apparently not in use in Israel, but partially maintained anyway

January 20, 2016

Rolex SA make watches. They obtained Israel trademark number 148809 for Orchid.  The mark covered a variety of chronology related goods but also bracelets, diamonds, earrings, chains, brooches, jewelry and other items.

Rolex Orchid

On 20 August 2015, Lily Diamonds fined to have the mark canceled for all goods other than watches, on the basis of lack of use. They claimed that the mark was never used in Israel and certainly not in the past three years.

Lily Diamonds filed the cancellation request as they intended to register Israel Application Number 259590 for “Orchidea” for cut and polished precious and semi-precious gemstones, watches encrusted with cut and polished precious and semi-precious gemstones and accessories for the above in class 14. Their application was refused based on the Examiner’s opinion that there was a likelihood of confusion with Rolex’s mark.

The cancellation request was sent to Rolex’ representative, but they did not file a counter-statement. On 13 December 2015 a hearing was set but since the cancellation request was unopposed, Lily Diamonds requested that the Commissioner rule on the material submitted.

The Ruling

Section 14 allows interested parties to request cancellation of marks that were not used or were filed without intent to use for the goods covered, or were not used within previous three years.

Although such marks may be cancelled, since trademarks are property rights, cancellation may occur only after careful consideration.

Although Rolex make and sell watches, some of the goods claimed are accessories for watches and a mark for a watch may provide protection for other goods in the same class.

Lily Diamonds submitted an affidavit from a private investigator who visited two Rolex stores and 10 precious watch stores and claimed that none of them sold or had heard of Rolex watches or anything else called Orchid. Nevertheless, since Rolex did not defend the mark, the Deputy Commisioner Ms Bracha who heard the case was suspicious that Lily Diamond was prepared to leave the mark for watches and only challenged it for other goods.

Using her discretion to do a bit of snooping as per Supreme Court Ruling 941/05  Agudat HaKormim vs. HaKerem LTD, the Deputy Commisioner Ms Bracha googled Rolex Orchid and discovered that there was such a line and they were still available on the second hand market. Since Rolex trades in second hand watches, this was considered adequate usage.

The classic Israel trademark treatise by Seligsohn which predates the sections of the ordiance that deal with well-known marks states that usage abroad may be sufficient to maintain a mark in Israel.

With reference to foreign trademark law, the ECJ only requires sufficient usage for the purpose of preserving or creating market share to prevent a third party cancelling a mark.

James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkeley in  “Kerly’s Law of Trade Marks and Trade Names“, 15th ed. (2011) p. 352-353 3  also shows that “In essence, use of a mark on a website will only constitute use in a particular territory if the website is specifically aimed at and used by consumers in that territory.”

However,”McCarthy on Trademarks and Unfair Competition”

states that:

“While both aspects are relevant to the ultimate determination of whether an abandonment has taken place, where the firm claims that it had an intent to resume use and has some evidence to support, the primary emphasis should be on the degree to which will result in a likelihood of confusion. Consumers know nothing of the state of mind of the former trade-mark user, but they may well mistakenly think that a new use of that mark by another is a renewed use by the former user. While the state of mind of both the former user and the purchasing public are both important, in a close case, the state of mind of the public should prevail.

and that:

“Famous automobile marks of models no longer in production retain their recognition value and good will as a result of continuing public use of such relatively long-lasting products.”

Although Rolex did not defend the mark, where a mark has a reputation and the product has a long life, the reputation may still exist and the commissioner may be required to uphold the mark to prevent confusion. Furthermore, Lily Diamond did not file to cancel the mark completely, only to restrict it to watches.

In conclusion, the mark is canceled for bracelets and jewelry and the like, but remains in effect for: Anchors (clock and watch-making), atomic clocks, barrels (clock and watch-making), cases for clock and watch-making, cases for watches (presentation), chronographs (watches), clock cases, clockhands (clock and watch-making), clocks, clocks and watches electric, dials (clock and watch-making), movements for clocks and watches, pendulums (clock and watch-making), sundials, time clocks (master clocks), watch bands, watch cases, watch chains, watch glasses, watch springs, watches, wrist watches, all included in class 14.

Rolex will  pay Lily’s costs of 2500 Shekels and 2500 Shekels lawyer’s fees. The fees were estimated as no affidavit was filed by Lily’s lawyers.

Cancellation of 148809 for “ORCHID” to Rolex – ruling by Ms Jacqueline Bracha, 30 December 2015.

COMMENT

The ruling seems a fair compromise if a little timid.