Can Non-Israelis be Subpoenaed to testify in Opposition Proceedings?

June 10, 2018

novartis

Israel Patent Application No. 176831 to Novartis is titled “COMPRESSED PHARMACEUTICAL TABLETS OR DIRECT COMPRESSION PHARMACEUTICAL TABLETS COMPRISING DPP-IV INHIBITOR CONTAINING PARTICLES AND PROCESSES FOR THEIR PREPARATION”. It is the national phase entry of PCT/EP2005/000400.

Unipharm

On allowance, Unipharm filed an Opposition to the patent application being granted.  Within the Opposition proceeding, Unipharm, who for this case, have dispensed with the services of Adv. Adi Levit, their legal counsel and have been handling the Opposition unaided by attorneys, have requested that the Israel Patent Office subpoena  John Hutchinson and Mr Kowalski, workers at Novartis to give testimony.

This request follows an earlier request to reveal documentation regarding testing that was appended to the Expert Witness testimony of Professor Davies, Novartis’ expert witness, which was ordered in an earlier interim ruling of 3 January 2018.

Discovery

In response to the discovery request, Novartis submitted an Affidavit with various appended papers. In light of this, Unipharm now alleges that the Affidavit implies that Novartis has not revealed all documents it should have. Unipharm further indicates that the explanation proffered by Hutchinson, who is signed on the Affidavit, “appears to be odd”. Therefore, Unipharm wish to Subpoena him to cross-examine him on this.

lab bookUnipharm further claims that a document titled “Certificate of Authenticity” was included with respect to the laboratory notebook, parts of which were included in the appendices attached to the affidavit. According to Unipharm, Mr Kowalski, who was one of the named inventors, is signed on this document. Consequently, Unipharm requested to cross-examine him as well.

Novartis requests that Unipharm’s request be rejected. They claim that the Commissioner does not have the authority to subpoena witnesses not within the judicial territory of the State of Israel, who are not direct parties in a proceeding. Novartis also notes that Mr Hutchinson’s signature on the Affidavit accompanying the discovery documents was done in the framework of his employment as a patent attorney in the Legal Department of Novartis. Novartis claims that ALL information regarding the management of the proceeding is subject to legal confidentiality and may also be considered as being a trade-secret.

As to Mr Kowalski, he never signed an Affidavit of Evidence in the process and is not a party to it. Similarly Novartis claims that Unipharm has not stated why they need to cross-examine that inventor who was one of three named inventors.

Discussion

The witnesses that the Opposer wished to interrogate are beyond the territorial jurisdiction of Israel and are not parties in the case. Thus the Applicant is correct that Section 163b of the Patent Law 1967 that Unipharm referred to is not a legal basis for their being subpoenaed. The references that Unipharm related to in their request, dealt with witnesses that gave Affidavits or expert witness testimony, and thus could be subpoenaed for cross-examination purposes.

A party that wishes to subpoena a citizen or foreign resident to testify must do so under the International Inter-State Legal Assistance Law 1998. See Appeal 3810/06 Dori and Zacovsky Building and Investments Ltd vs. Shamai Goldstein, paragraph 17, 24 September 2007.

Section 47 of the Legal Assistance Law states:

The Authority is allowed to request from another country, that testimony be collected, including that physical evidence be transferred for display in Israel, if the court allows that the evidence is required to hold the trial in Israel; regarding this law, and where the case is pending, the term court refers to the tribunal that is hearing the case.

From the wording of this Section, it transpires that the court will open a proceeding to summon foreign witnesses to a hearing only if it is convinced that their testimony is necessary to conduct the proceeding. In this instance, the Commissioner considers that there is significant doubt as to whether the presence of the witnesses for cross-examination purposes is really required.

Unipharm has requested to cross-examination Mr Kowalski regarding an Affidavit for discovery that he is signed on. The purpose of the discovery process is to enable the main proceeding to be handled efficiently; legal proceedings with face-up cards where each party knows what documents the other parties hold to prevent surprises at the hearing. By this means, unexpected delays are prevented, allowing the court to reveal the truth. Appeal 4235/05 Bank Mizrachi United vs. Ronit Peletz, 14 August 2015.

Opposite the principle of discovery, there are other interests such as efficiency of the court proceeding, defense of the legitimate interests of the party revealing documents, and preventing damage to the interests of third parties – See Appeal 2534/02 Yehuda Shimshon vs. Bank HaPoalim ltd. p.d. 56(5) 193. So the case-law has ruled more than once that it will not allow cross-examination of affidavits of this kind, if they are properly presented (see Appeal 2376/13 Rami Levy Shikma Marketing Ltd vs. Moshe Dagan 8 July 2014, and Zusman Civil Procedures 7th Edition, page 436.

This general rule has two exceptions: The first is that where reading of the Affidavit alone or with reference to its citations, that the Affidavit is defective, the court can order the party revealing documents to file a further Affidavit. Second, where the issue of confidentiality is used, the court can examine the document and decide if this claim is reasonable (see for example, Appeal 240/73 Baruch Vilker vs. Dov Tishler, 205, 2 December 1971 and Appeal 6823/05 Abraham Roimi vs. Bank Leumi of Israel, 12 January 2016.

In this instance, Unipharm did not append an Affidavit, detail or justify why they considered that the current case is one of these exceptions. Thus the Commissioner cannot rule that this is the case, and so the request is rejected.

As to the evidence of Mr Kowalski, Unipharm did not claim that there was any connection between the documents appended to the Affidavit of the Discovery and to the experiments that were appended to Novartis’ evidence, which was the basis of the original discovery request. Note, Mr Kowalski’s signature is only on the Certificate of Authenticity taken from the lab-book that was appended to some pages therefrom that were submitted in the discovery documents. In these circumstances, it is not clear what value Mr Kowalski’s testimony has, even were he to be subpoenaed.

In light of this, the Commissioner does not consider that the requirements of Section 47 of the Law of Legal Assistance are fulfilled with regard to Mr Hutchinson or Mr Kowalski.

The Request is refused. Unipharm will cover Novartis’ costs and their legal expenses to the tune of 2000 Shekels + VAT. These costs will be paid within 30 days.

Interim Ruling in Opposition to IL 175831 Ofer Alon, 30 April 2018.

Comment

It is possible that Mr Tomer has indeed bitten off more than he can chew by handling legal issues procedural issues such as requesting subpoenaing witnesses without legal counsel. However, the costs ruled against him are trivial when considering the issue in question. The Unipharm’s Expert Witness cannot testify to things that he does not know such as what else was in the lab-book, and in Opposition proceedings there is no assumption of validity of the patent. Thus it would be premature to write this request off as a strategic or even a tactical error.


Speedo vs. Brooks A Non-Sporting Trademark Opposition

May 29, 2018

Brooks logoBrooks Sport submitted TM Application No. 238375 back in June 2011, for clothing, shoes and headgear in class 25.

speedo-logo

Speedo Holdings BV filed an Opposition the mark under Sections 11(6), 11(9), 11(13), 11(14), 11(5) and Section 39(a1) of the Trademark Ordinance 1972.

The Opposition was based on the alleged similarity to three Speedo marks, registered on July 1993 and shown below.

Opposer’s (Speedo’s) Statement of Case

speedo

The Opposer claims to have been established nearly 100 years ago, and to being one of the leading sports clothing manufacturers, particularly for sea and pool wear. Since the Seventies, the company has used their logo on swimwear, goggles, swimming caps, pool footwear (flip-flops?) and the like, but also for clothing for wearing in fitness centers and during aerobic activities.

The Opposer claims that due to their wide advertising and marketing activities and the quality and reliability of their products and the Speedo image, their logo has received wide acclaim worldwide, including in Israel. Their sports goods all sport their logo which is thus well-known.

Speedo has registered trademarks in classes 25 (clothing) 28 (games and exercise devices) 12, 14, 18 and 5.

In this regard, the three logos depicted above, Israel Trademarks 76627, 76632 and 76637 are cited.  76627 is just for the graphic logo. 76632 and 76637 include the graphic logo with the word SPEEDO. All three logos cover all goods in class 25.

The Opposer alleges that these marks are to be considered well-known marks as defined by Law due to their wide usage worldwide in general and in Israel in particular, and due to the publicity and advertising. The Opposer alleges that their logo is identical or at least very similar to Israel TM application no. 76627 to Brooks Sport, which also covers goods in class 25.

The Opposer further alleges that composite marks including the logo of Israel TM application no. 76627 and wording are also confusingly similar to Speedo’s marks, since the graphic element is dominant. The Opposer considers that allowing Israel TM application no. 76627 to register would cause the mark to be confused with their marks and would thus mislead the public regarding the source of the goods.

Since their mark is a well-known mark, it provides protection for similar but not identical goods, and so the fact that Speedo specializes in swimwear and Brooks in sports shoes, is of no consequence, and the bar for widening the protection is low and Speedo easily overcomes it.

Applicants’ (Brooks) Statement of Case

Brooks claims to be a long established, large and well-known manufacturer of shoes and sports goods, established back in 1914.

brooks earlier markBrooks considers that the pending mark is only minimally different from their registered Israel TM No. 82353 shown alongside.

Brooks submits that, by analogy, the new mark can also coexist with Speedo’s marks.

Brooks also considers that their graphic mark and Speedo’s mark are significantly different and there is no likelihood of consumers being misled. They note that Speedo have not documented any instances of actual confusion due to the alleged similarity and there are thus no grounds for concluding a real danger of misleading.

Brooks further notes that their goods and Speedo’s are very different, are intended for different consumers and are marketed in different ways.

Finally, the Applicant notes that Speedo have failed to establish any reputation in their logo alone (without wording) and so the claim that their mark is well-known should be rejected.

The Evidence

To support their claim, the parties submitted their evidence as follows. On 26 April 2014, Speedo submitted evidence with an affidavit from Mr Andrew Michael Long. On 21 July 2014, Brooks submitted their evidence with an affidavit from Mr David N Bohan and Mr Ilan Benisti. On 10 July 2015, Speedo forewent submitting a counter-statement in response.

Following submission of evidence, a hearing was set for 21 January 2016. Not long before this date, Speedo (represented by Pearl Cohen) submitted various interim proceedings and requests to postpone the hearing. On 17 January 2016, Speedo forewent cross-examining Brooks’ witnesses. In a ruling of 18 January 2016, the Adjudicator, Ms Yaara Shoshani Caspi rejected the interim requests and ordered Speedo’s witnesses to be available for the hearing.

Despite this, Speedo’s representative did not attend the hearing and was thus not available for cross-examination. This raised the question of whether their witness’ statement could remain on file, and what its evidentiary weight should be considered as being. On 1 February 2016, the Adjudicator ruled that the Affidavit should remain part of the file, but should be given low evidentiary weight.

DISCUSSION AND RULING

We are dealing with an Opposition to a trademark registration proceeding in which the burden of proof that the mark IS registerable, is initially on the applicant. However, the Opposer has to bear the burden of proof required to establish their opposition. If they succeed in so doing, the burden of proof moves from one side to the other as the proceeding proceeds. See, for example, Opposition to Israel TM Applicant No. 17051 Orange Personal Communications Services Limited vs. Gemcom LTD. 11 October 2009, and Opposition to Israel TM Application Numbers 175808 and 175809 Gizeh Manufacturing Company Greek Cooperative Cigarette vs. Raucherberdarf GmbH S.A. Sekap S.A. 6 February 2012.

Are the marks well-known?

It seems indisputable that the wordmark Speedo is well-known in Israel, and the Applicant and their witnesses do not dispute this. However, the question remains whether Speedo’s logo is now well-known in Israel. Speedo considers this to be case and relies on the long and wide-scale usage and the significant sums spent on promoting the brand around the world.

The term well-known mark is defined in the Ordinance as follows:

“Well-known trade mark” – a mark that is well-known in Israel as a mark owned by a person that is a citizen of a member state. A permanent resident of such state or who has an active business or factory in such state, even if the mark is not a trade mark registered in Israel or if there are no users of the mark in Israel; for the purposes of determining whether a trade mark is a well-known in public circles relating to it and the extent to which it is known as a result of marketing, shall be taken into account, inter alia;

As known, the sight and sound test is the central test of the three, and it considers the appearance of the marks in their entirety, emphasizing the first impression made by the comparison. The importance of the first impression is due to the simple reason that consumers do not stop to consider marks in their entirety. See for example, Appeal 6658/09 Multilock ltd. vs Rav Bareakh Industries ltd. paragraph 9 (12 January 2010).

In the Opinion of the Adjudicator, the graphic symbol of the Opposer is Israel TM No. 76627 which is very similar to the applied-for mark.

The Adjudicator does not consider the fact that Opposers’ mark is filled and the Applicant’s mark is defined by an outline as sufficient to create distinctiveness and to prevent confusion between them, particularly as it seems that Brooks uses the filled-in symbol. Nevertheless, she does not consider that one can fairly consider the combination marks of symbol and word Speedo of the Opposer with the symbol of Brooks.

Distribution Channels and Customers

In this instance, the Applicant argues that the applied for mark and the Opposer’s marks are not used on the same goods. Their position is that although both Applicant and Opposer manufacture sports goods, their goods are nevertheless in different categories since the Applicant’s goods are for running, whereas the Opposer’s goods are for swimming and water sports. It would appear that there is no need to give this further consideration since the Adjudicator has already ruled that these are goods of the same type. However, since we are considering the likelihood of misleading under Section 11(9) one has to consider the details of the mark. From this consideration it transpires that the Opposer’s (Speedo) marks are registered for the entire class 25, covering clothing per se, whereas the Applicant (Brooks) have applied for only some of the goods in class 25. From this it is clear that there IS overlap between the applied for range of goods of the Applicant and the range of goods covered by the Opposer’s mark. Because of this, the Applicant’s point that the marks are used for a different range of goods in practice is not acceptable.  Any consideration of the goods bearing the mark HAS to relate to the range of goods covered by the mark.

As to the customers, it seems that both Applicant and Opposer market their goods to the entire spectrum of people who engage in sporting activities, both professionals and amateur. So the customer base is identical. Nevertheless, it is likely that professional sporting people will be careful about what goods they purchase and will know the logos well. They will be more alert as the matter is of importance to them, so it is not reasonable to assume that this population will be misled. See re Bank Igud page 676, 673. However, this is not the case with amateurs, who purchase goods without much consideration, particularly when dealing with sports goods. For these consumers, it is not inconceivable that they will not be sufficiently attentive and could be confused or misled. In this instance, due to the similarity in goods for which the Speedo mark has been registered, it is not inconceivable that the Opposer will widen the scope of their business and only use the graphic element without the word Speedo. This could create misleading regarding the origin of the goods of Opposer and of the Applicant, which are both for class 25 and for the same family of goods.

As to marketing channels, the evidence shows that the Applicant’s goods are sold in both brand stores and general retail stores; however Speedo’s products are ONLY sold in Speedo stores. However, the Opposer, having a registered mark, could widen their distribution and sell in regular stores as well. So this test does indicate a danger of consumer confusion. See Appeal 4116/06 Gateway Inc. vs. Soundtrack Advanced Technologies ltd. 20 June 2007.

 Other considerations and Common Sense

This test includes the other case-specifics that should be considered when determining the likelihood of consumers being mislead by the similarity between the Applicant’s and the Opposer’s marks.

In this regard, the Adjudicator was not persuaded that the Applicant’s mark had acquired such significant recognition that overcome the risk of confusion with the Opposer’s graphic mark. There is a strong similarity between the visual appearance of the marks and between the goods covered, the customers and distribution channels.

Furthermore, the Adjudicator does not accept that the mark should be registerable since the sports field includes other marks that are very similar. This claim contradicts the Opposer’s other claim that the graphic marks of the Applicant and Opposer are distinctive and different.

A further claim raised by the Applicant was that their mark and the Opposer’s mark carry a different conceptual message. See paragraph 21 of Bohan’s affidavit. Whereas Speedo’s mark conveys the message of hydrodynamics, the Applied for mark is like a path and is more rounded and gives a sensation of flexibility, solidity and movement. The comparison of marks in light of subliminal messages was discussed at length in Appeal 8441/04 Unilever Plc vs. Eli Segev 23 August 2006 (Dove). The Opposer considers that this difference, even if acceptable, is not sufficient to overcome the similarities between the marks.

The Adjudicator does not accept the claim that the marks conjure up different messages. As the court ruled in the Dove decision, such messages are of value to the extent that they create a linkage between the product and the idea in the eye of the customer. In this instance, the Adjudicator is not convinced that the consumer would identify the Applied for mark with flexibility, stability and motion, and certainly this is not proven to be the case.

The Adjudicator also does not accept the Applicant’s claim that in this instance there is no likelihood of confusion since, despite the usage of both companies, there has never been a complaint of being misled in practice. The Adjudicator does not consider this lack of a complaint to be significant in establishing that there never was confusion or that there never will be confusion.

In light of the above, the triple test leads to the conclusion that there is a likelihood of confusion similarity between Speedo’s graphic mark and the applied-for mark. So Brook’s mark is refused under Section 11(9) of the Ordinance.

It is noted that to reach the conclusion of non-registerability under Section 11(9), the Adjudicator did NOT rely on the evidence supplied by the Opposer.  The burden of proof of registerability lies with the Applicant. The Adjudicator did not consider that the Applicant supplied sufficient proof, and so the onus was not transferred to the Opposer who did not need to demonstrate that the mark could not be registered.

The grounds of Opposition under Sections 11(5) and 11(6) and section 39a1 are moot.

Conclusion

In light of the above, the Opposition to Israel TM No. 238375 is accepted.

COMMENT

In general, the Adjudicator would be correct to give little weight to the fact that in the past, there has been not a single recorded case of customer confusion. However, in this instance, both Speedo and Brooks have a hundred year history.

nike

Not taking into account other marks has some validity, but in this instance, Brooks earlier registered mark is far closer to Speedo’s. Furthermore, there are a whole slew of other somewhat similar marks, such as Nike’s mark shown alongside.

Although Speedo has indeed registered their graphical mark for all goods in class 25 they do not make and have never made running shoes. The graphical mark was registered in 1990. 28 years later, if Speedo have not expanded into running shoes and there is no bona-fide indication that they intend to, Speedo’s registration should be amended to limit the range of goods to exclude running shoes. Possibly this should require Brooks and their representative to request this, but there is no overlap. There is no likelihood of confusion, and the marks are different.

In the circumstances, to rule that Brooks did not make a sufficient case to move the burden of proof to Speedo is frankly ridiculous.

 


Shuka – A Trademark Parody

April 22, 2018

Shoka 1Shuka is a fictitious insurance broker used in a long running and highly effective, humorous series of advertisements by IDI, an insurance company offering direct insurance services over the phone by dialing 9,000,000.

I

IDI is an insurance company. They applied for Israel Trademark No. 264302 for the word שוקה (Shuka) covering financial transactions, insurance and life insurance in class 36 on 2 April 2014. The mark was allowed on 16 July 2015.

The Association of Insurance Agents in Israel, which is a non-profit organization representing thousands of licensed insurance brokers, opposed the mark on 11 August 2015, alleging that it was misleading and its registration was contrary to Section 11(6) of the Trademark Ordinance 1972. The grounds of the Opposition were that the Applicants gave the impression that they were licensed insurance brokers and this is not the case.

Shoka 2There was a proceeding between the parties in the Tel Aviv District Court (28223-03-12) in which the Opposer requested that the court issue an injunction against the Applicant to stop their advertising which was alleged to be insulting slander and misleading, and created unjust competition. The District Court partially accepted the Opposer’s claims and forbade the Applicant from using the advertising campaign clips and radio advertisements and various other advertisements.

Shoka 4

On appeal to the Supreme Court, this decision was overturned. In Civil Appeal 3322/16 and 4313/16 IDI Insurance ltd vs. The Association of Insurance Agents in Israel, 30 April 2017, the Supreme Court ruled that the advertisements did not create a tort and the appropriate grounds for the complaint was the Libel and Slander Act. However Section 54 of the Act relates to any community that is not a company, and so the civil case was inappropriate. The Court stated this in Section 31 of the ruling:

However, in this instance we are dealing with humorous advertisements wherein insurance brokers are indirectly represented in jest and parody that is so exaggerated that it is clear that the reasonable viewer will consider the claims accordingly. That as may be, one cannot state that, following the advertisements, a reasonable person would consider that the characteristics ascribed to Shuka in the advertisements, hedonistic, archaic, etc) apply to specific insurance brokers, and there isn’t even a hint of this.

The Supreme Court also ruled that the advertisements were not an insulting description, since the viewer would not consider the advertisements as information imparted to him seriously due to the dominant humorous elements of the advertisements (paragraph 64 of the advertisement.

The Association of Insurance Agents in Israel requested reconsideration.

Read the rest of this entry »


Abandoned Patent Opposition Converted into Ex-Partes Procedure

April 20, 2018

Israel Patent Application No. 220476 to Mapi Pharma titled “Long Acting Depot System Comprising a Pharmaceutical Acceptable Salt of Glatiramer” was allowed and published for opposition purposes. Teva filed an opposition under Section 34 of the Law.

glatiramer

The application relates to a dosing regime of Glatiramer and salts thereof. The drug is an immunomodulator medication used to treat multiple sclerosis.

The application is a national stage of a PCT filed on 19 August 2010 which claims priority from an American patent application of 4 January 2010.

The patent was examined and published for opposition purposes on 31 March 2016. On 28 June 2016, Teva filed an opposition. After the parties submitted their statements of case, Teva withdrew their opposition for commercial reasons.

Under Section 34 of the Patent Law 1967, the Commissioner has to decide whether the suspended opposition provides a sufficient basis for the patent to be granted.

In their Statement of Case Teva raised various issues regarding the patentability of the claimed invention. Since no evidence was submitted, the Deputy Commissioner concentrated on the allegation that the publication of WO2005/041933 from 12 May 2005 anticipates the invention and negates novelty.

Claim 1 recites:

“A long acting parenteral pharmaceutical composition comprising a therapeutically effective amount of a pharmaceutically acceptable salt of glatiramer, the composition being in a sustained release depot form which releases a therapeutically effective amount of the pharmaceutically acceptable salt of glatiramer over a period of about one week to about 6 months.”

Paragraph 20 of the Statement of Case which from paragraph 58 of their counter statement, it appears the patentee accepts, construes claim 1 as follows:

  1. A long acting pharmaceutical composition
  2. For parenteral dosing
  3. comprising a therapeutically effective amount of a pharmaceutically acceptable salt of glatiramer,
  4. the composition being in a sustained release depot form
  5. which releases a therapeutically effective amount of the pharmaceutically acceptable salt of glatiramer over a period of about one week to about 6 months.

Read the rest of this entry »


A Fresh Trademark Opposition Costs Ruling

March 23, 2018

be fresh

On 14 April 2015, Benny Pauza Sumum (2009) ltd. submitted Israel trademark application no. 273816 in classes 32 and 33 for Be Fresh, as shown. The mark was allowed on 4 May 2017 and published for opposition purposes. On 27 July 2017, a Turkish company called Cakiemelikoglu Maden Suyu Isletmesi Sanay Ve Ticaret Anonim Sirketi filed an opposition against the class 32 registration. On 27 September 2018 the Applicant filed a counter-statement of case. The Opposer chose not to file their evidence and on 1 January 2018, the agent-of-record of the Applicant approached the Opposer directly. In the absence of a response, three weeks later, the Applicant requested that the Opposition be rejected and that costs be awarded.

Ruling

Under Section 38 of the Israel Trademark Ordinance 1940, the Opposer should have filed their evidence by 28 September 2017. Until now, the Opposer has failed to submit evidence in an Opposition proceeding they themselves initiated. Consequently, under Section 39, the Opposer is considered as a party that abandoned a legal proceeding that they themselves initiated.

If the Opposer does not submit evidence, he is considered as having abandoned the Opposition unless the Commissioner rules otherwise.

In this instance, the Applicant requested real costs of 21,060 Shekels including VAT for filing the counter Statement-of-Case and also for filing the request to close the file. The request was accompanied by a tax invoice showing that the charges were indeed incurred.

It is true that the winning side is entitled to real costs, i.e. those actually incurred. However, the Arbitrator is not required to award the costs incurred, and should consider the circumstances and legal policy. See Appeal 6793/08 Luar ltd vs. Meshulam Levinstein Engineering and Sub-contracting ltd, 28 June 2009, and particularly section 19 thereof.

The case-law requires the party requesting costs to show that they are reasonable, proportional and necessary for conducting the proceedings in the specific circumstances. See Bagatz 891/05 Tnuva Cooperative et al. vs. The Authority for Import and Export Licenses at the Dept of Industry, 30 June 2005, p.d. 60(1) 600, 615. The purpose of the reasonable, proportional and necessary limitation is:

To prevent a situation where the costs are so high that they will discourage parties from filing suit, create a lack of equality before the law and make litigation too expensive to enable access to the judiciary. (Appeal 2617/00 Kinneret Quarries Partnership vs. the Municipal Committee for Planning and Construction, Nazareth Elite, p.d. 60(1) 600 (2005) paragraph 20).

The amount of work invested in the proceeding and in the preparation of legal submissions, the legal and factual complexity of the case, the stage reached, the parties behavior to each other and to the court and any inequitable behavior are all taken into account in the ‘specifics of the case’.

The reasonableness of actual costs was considered in Re Tnuva on page 18 paragraph 24, and it was ruled that where an issue is significant to a party it is reasonable for him to invest more heavily in the legal proceedings and doing so is likely to be considered reasonable.

That said, the more a cost claim appears exaggerated, the more evidence is required to substantiate it. See for example, the Opposition to IL 153109 Unipharm vs. Merck Sharp & Dohme Corp, cost request paragraph 9, 29 March 2011. 

Section 69 of the Trademark Ordinance 1972 states that:

In all hearings before the Commissioner, the Commissioner is entitled to award costs he considers as reasonable.

The Court of the Patent and Trademark Authority has previously ruled that simply submitting a copy of an invoice is insufficient. The requester for costs should detail the actions performed, and why they were reasonable, and similarly for the other parameters detailed in re Tnuva. From the submission it is apparent that the Applicant has not submitted sufficient evidence to support the cost claim to justify it. Consequently the Adjudicator Ms Shoshani Caspi estimates appropriate costs for the work involved.

In this case the mark holder had to file a counter-statement-of-case and a costs request. The case does not appear to be particularly complicated and the Applicant did not have to file evidence since the case was abandoned. Nevertheless, the Opposer initiated and then abandoned the procedure and didn’t even bother telling the Patent Office that they had done so.

After humming and hawing detailed consideration and by her authority under Section 69 of the Ordinance, the Adjudicator ruled that 4500 NIS + VAT was appropriate and gave the Opposer 14 days to pay this, or to incur interest.

Opposition to Israel trademark no. 273816  “Be Fresh”, cost ruling by Ms Shoshani Caspi, 21 February 2018


Adding Evidence After Filing Statement of Case in Patent Opposition Proceeding

March 22, 2018

Plasto Vak ltd (1990) ltd filed Israel Patent No. 220639 titled “Disposable One Piece Container with a Removable Tear Strip Configured for Separation of the Lid and as a Tampering Alert.” On allowance, Vacotec Packaging ltd filed an Opposition.

lateBoth sides filed their statement of case, and then, at the evidence stage, Vacotec applied to reference two additional pieces of prior art. The Opposer justified the need to add these citations by arguing that the Applicant had taken an unexpected position in their Statement of Case and had post-dated the filing date due to amendments during the prosecution.  This resulted in them doing a further search and discovering the two additional references.

The Applicant , Plasto-Vak ltd denies that there was a change between the position they took during the prosecution and that taken during the Opposition in how the claimed invention overcomes the prior art. They further deny that they agreed to the application being post-dated due to significant amendments and argue that it is too late for Vacotec to file amend their Statement of Case.  They noted that they had submitted their statement of case 5 months earlier, and this request by Vacotec was tardy. Finally, Plasto-Vak ltd denies that the new citations are relevant enough to challenge the patentability of the claimed invention.

The invention in question is a disposable one-piece container. It is claimed as follows:

A disposable one-piece container [100] comprising first and second opposing sections [110 and 120], respectively, interconnected by a folding joint [130], said first and second sections [110 and 120] are separable by pulling said second sections [110 and 120] in opposite directions; wherein said folding joint [130] comprises an axis-segment [230] formed by a folding-line [210] adjacent to the second section [120] of said container [100] and a frangible folding-line [220] adjacent to first section [110] of said container [100]; said axis-segment [230] configured as a rotation axis between said two opposing sections [110,120] enabling the closure of said container [100]; further wherein said container [100] comprises a hold-tab [150] located at the first section [110] adjacently to frangible folding-line [220] and a hold-tab [160] located at said axis-segment [230] adjacently to frangible folding-line [220] and spaced apart from said second section [120]; said hold-tabs [150 and 160] are perpendicular to each other and grippable by a user for pulling in opposite directions.

The Application was submitted on 25 june 2012 and the examination was expedited. It published for opposition purposes on 30 November 2016 and the opposition was filed on 27 February 2017.

Discussion

The Applicant is correct that in general in opposition proceedings, the Opposer cannot rely on additional citations beyond those brought in the statement of case. Consequently, submission of additional references requires correcting the statement of case. See Appeal 47387-01-11 Bromium Compounds vs. Alvemarle Corporation USA 8 August 2011 and the IL 155919 Teva vs. AstraZeneca opposition from 5 December 2011.

Amendments to the statement-of-case are allowed where they help focus the discussion on points of disagreement between the parties, where there is no justification to prohibit the correction. See Opposition to IL 187923 Pimi Aggro Cleantech ltd vs Xena international 19 May 2013:

This forum has the authority to allow corrections to the Statement of Case in instances where the amendment focuses on the issues in question and where there are no reasons not to allow the amendment. Such reasons for refusing to allow the amendment include inequitable behaviour, denying the opposing party their rights in a way that may not be compensated for with monetary award in a costs ruling for the interim action, and tardiness in requesting the amendment (see interim request to amend the statement of case in cancellation proceedings against IL 154398 in Logo Engineering Development vs. State of Israel, Ministry of Agriculture, Volcani Institute 29 April 2004. Furthermore, exercising the authority to allow such amendments depends on the stage of the proceedings reached, since patent oppositions delay and prevent the Applicant from receiving the patent.

In this instance, there does not seem to be any real reason not to allow the amendment to the statement of case and the addition of these references since the Applicant can respond to the amended statement of case. The Opposer claims that their evidence is ready and can be submitted within a week so that no real delay will result from allowing the additional material to be submitted.

Two issues that the Applicant raises deserve responding to:

  1. The delay in filing the request
  2. The relevance of the new citations

It is preferable to conduct a proper search before filing the Statement of Case, and not have to subsequently amend it at the evidence stage. The Opposer claims that the search was based on the Applicant’s position as stated in the meeting with the Examiner and this resulted in the need to conduct a further search after receiving the Applicant’s statement of case.

In the prosecution, the Applicant claimed that the main difference between the applied for invention and the prior art in that the tabs are very close to the fold line.

“In response to the office action issued on 17.02.16, the applicant respectfully submits the following:

In item 1a of the office action, the examiner states that D1 discloses the present invention. The applicant interprets that the present invention is rejected as not novel. Meanwhile, the tabs functionally directed to separating upper and lower parts of the container are located in the positions absolutely different in comparison with the prior art document. Specifically, they are adjacent to the fragile folding line while, in D1, are located distantly. This limitation is the main discriminating constructive feature regardless of a material of the container.

…”

The Opposer submits that the Applicant is now claiming that there are additional differences that claim patentability due to other features as raised in the meeting.

To show that a claimed invention is anticipated, one has to find a piece of prior art that relates to all the features of claimed.  The claims are interpreted in light of the specification, and one cannot import features not described in the specification:

The correct interpretation is that terms in the claims should be interpreted in light of the specification to give them the meaning intended by the inventor. This can be narrow or broad, so long as the interpretation is anchored in the specification and is clear to persons of the art.

However one should differentiate between the ways that one can widen and clarify the monopoly and how one understands the invention. One can refer to the specification to understand the monopoly but that not claimed is not part of the monopoly. See Appeal  345/87 Hughes Aircraft Co. vs state of Israel et al. p.d. 44(4) 45, 70.

So even where the Applicant stresses one or other element in the claims or in the rest of the application during the examination or in the statement of claims, since the claims themselves were not amended in the opposition, the Opposer knew what the claimed elements to be searched were.  (this is not to be understood as license to ignore that claimed during the patent examination).

Nevertheless, the resulting delay is not serious enough to warrant forbidding the correction of the statement of case and the addition of the two new references and allowing it will not drag out the opposition. To the extent that the Opposer could have found these new citations 10 months ago, the damage to the Applicant by the resulting tardiness may be compensated for by awarding costs to the Applicant.

As to the alleged lack of relevancy of the new citations, there is no clear a priori basis to exclude the possibility that these publications are relevant to the patentability. The Applicant submitted a 23 paragraph statement to try to show why these citations are not relevant and so it seems reasonable to accept the possibility that the citations are relevant and to relate to them substantively in the Opposition proceedings instead of to prevent their being submitted.

In light of the above, Ms Jacqueline Bracha allows the statement of case to be amended to relate to the two additional citations as follows:

  1. The corrected statement of case and additional evidence must be filed within 7 days
  2. The applicant will file their statement of case and evidence within the following three months as per section 59(b) of the Regulations
  3. The Opposer will pay 5000 Shekels including VAT costs to the Applicant

 Re IL 220639 to Plasto Vak ltd (1990) ltd; Interim ruling by Ms Bracha on addition of Evidence not referenced in Statement of Case, 21 February 2018


NOCTUROL

December 20, 2017

NocturolWellesley Pharmaceuticals LLC submitted Israel Trademark Application No. 284926 for NOCTUROL; a Pharmaceutical preparations for reducing frequency of urination in Class 5.

NocturnoUnipharm, a large Israeli generic drug manufacturer and distributor that sells the mild hypnotic Zopiclone as a treatment for insomnia under the brand-name NOCTURNO opposed the mark on 10 September 2017.

On 11 September 2017, the Court of the Israel Patent & Trademark Office gave Wellesley Pharmaceuticals two months to file a counter-statement of case.

The deadline of 11 November 2017 passed without a  a counter-statement of case being filed, and on 20 November 2017, Unipharm requested that their Opposition be accepted and the application refused.

Section 24(v) of the Trademark Ordinance states:

If the Applicant does not submit such a response, it is as if they have abandoned their mark.

The Opposition to Israel Trademark Application No. 284926 is thus accepted.

In general, the prevailing party is entitled to costs. The considerations are the time involved, complexity, work done, equitable behavior, etc. Under her Authority given in Section 69, the Adjudicator, Ms Yaara Shoshani Caspi, ruled costs of 2000 Shekels including VAT.

COMMENT

Notably, the director of Unipharm, Dr Zebulun Tomer (who has more experience in patent oppositions than any mere lawyer or patent attorney) filed the trademark Opposition himself, without involving their legal counsel Adi Levit.

As Unipharm did not use legal counsel, they are not entitled to costs. This is clear from Patent Oppositions where they prevailed in similar circumstances. The cost ruling was given without sides requesting costs and is appealable to the District Court. However, the I would be surprised if Wellesley contests it.