Two applications filed for the registration of the designed word "Valentino" and the designed sign "V".
The Commissioner rejected the applications due to their similarity to already registered marks of the company Valentino S.P.A. (hereafter: the registered marks).
The Commissioner held that the registered marks were classified within categories related to fashion, the same as requested for the filed marks.
The Triple test for examining whether a mark is confusingly similar to another includes three factors: 1. the sound and appearance, 2. the type of customers and merchandise used and 3. other circumstances.
According to those factors, the marks filed are confusingly similar to the registered marks (and the fact the word "Jeans" was added to them does not detract from their similarity as this word is Generic). In addition, the word "Valentino" is a key word within well known marks. Finally, other factors show that selecting the mark was not coincidental but an attempt to copy the famous known mark with intent to confuse the public. In fact it was showed that a photo the taken from one of the publication of the registered marks and was altered in anon professional way. As for the question of good faith is selecting the filed marks, this question can be discussed but it is obvious that coping a well known mark demonstrates that the applicant had an intent to confuse the public with the filed marks.
Turbo Tecstile – Ex- parte decision.
Yaara Shoshani
Appelfeld Zer Fisher
Friday, December 7, 2007
Thursday, December 6, 2007
Trademarks: An appeal on a decision within competition procedure may prevent filing an opposition
The applicant, Tenuva Ltd, filed for the registration of a mark "Eshel", and was later successful in a competition procedure (Article 29 Of the Trademarks Ordinance of 1972). Yotveta Ltd., the rival company within the above mentioned procedure, appealed to the Supreme Court. Within a parallel procedure, the mark was allowed for registration by the Commissioner of Patents and Yotveta filed an opposition. The opposition procedure was put on hold until the Supreme Court concluded its decision, in which the appeal was rejected. Accordingly, Tenuva filed to dismiss Yotveta's opposition. The Commissioner stated that dismissal of a request all together should remain an exceptional remedy as it is always better to hear the parties and to clarify the issue. Nevertheless, this remedy should be available whenever there is a court ruling, since such ruling anchors in itself rights and interests which are not less strong than the right of a party to be heard. In this case the opposing party had exhausted its right to argue against the applicant within the competition procedure, and later within the appeal. Those arguments related not only with the question whose right to register the mark prevails, but also arguments which dealt with the marks qualifications to be registered. Therefore, the Commissioner decided to dismiss the opposition.
Tenuva vs. Yotveta
Yaara Shoshani
Appelfeld Zer Fisher
Tenuva vs. Yotveta
Yaara Shoshani
Appelfeld Zer Fisher
Trademarks: Request to revoke a mark filed by its Owner during proceedings for cancellation needs the Commissioner's approval
A request by Zol Lamehadrin, an Israeli food chain to cancel the registered of a mark owned by its competitor, Shupersal, was filed with the Commissioner of Patents.
Within the proceedings, the owner of the mark requested to revoke the mark. The Commissioner held that revocation of a mark is the owner's right, but when requested within proceedings, it amounts to a request to put a hold to proceedings, and would therefore need the Commissioner's approval. Such request must be considered against the rival's interest, in a way which will not deprived the rival from the right to get a final decision in its favor which will conclude the proceedings.
It was further held that proceedings would be ended since the party filing for cancellation of a mark did not request its continuation. Accordingly, the mark was revoked as requested by the owner, and the request for cancellation was deleted. The Commissioner ruled that the owner of the canceled mark has been prolonging the proceedings and by that lead to high costs spent by the party filed for the cancellation of the mark. Hence, the owner was obliged to pay actual compensation amount to 45,000 NIS.
Zol Lamahadrin Ltd vs. Shupersal Ltd.
Yaara Shoshani
Appelfeld Zer Fisher
Within the proceedings, the owner of the mark requested to revoke the mark. The Commissioner held that revocation of a mark is the owner's right, but when requested within proceedings, it amounts to a request to put a hold to proceedings, and would therefore need the Commissioner's approval. Such request must be considered against the rival's interest, in a way which will not deprived the rival from the right to get a final decision in its favor which will conclude the proceedings.
It was further held that proceedings would be ended since the party filing for cancellation of a mark did not request its continuation. Accordingly, the mark was revoked as requested by the owner, and the request for cancellation was deleted. The Commissioner ruled that the owner of the canceled mark has been prolonging the proceedings and by that lead to high costs spent by the party filed for the cancellation of the mark. Hence, the owner was obliged to pay actual compensation amount to 45,000 NIS.
Zol Lamahadrin Ltd vs. Shupersal Ltd.
Yaara Shoshani
Appelfeld Zer Fisher
Copyrights: Copyrights in articles - who owns them?
The applicant was employed by an Israeli Newspaper as a journalist. The Newspaper was giving copies of his articles to a company which operates a news website. The applicant claimed he owned the copyrights in his articles. This was claimed in accordance with the Israeli Copyrights Ordinance, Article 5(1) (b) that states that in the absence of an agreement between the author and his employer, the author reserves the right to prevent the publication of the article in a media which is not a newspaper, magazine or periodical. The District court, in an appeal and as opposed to the opinion of the magistrates’ court, ruled that the right granted by the Ordinance is not a mere declarative right to veto the publication his articles, but a copyright. It was held that publication on a website is not equal to a publication within a newspaper, magazine or periodical and hence the publication of the articles in it without an express approval of the author are prohibited.
Kaufman vs. Walla
Yaara Shoshani
Appelfeld Zer Fisher
Kaufman vs. Walla
Yaara Shoshani
Appelfeld Zer Fisher
Passing Off: Unjust Enrichment denied by court. Reason: the alleged infringed product was not innovative
The Plaintiff claimed the defendant copied its bath products and argued the establishment of the wrongs passing off and unjust enrichment. The Israeli district court rejected the claims explaining that for Passing off the two required elements – 1. Proof of reputation of the products and 2. Reasonable risk for deception of the public, were not established. First the plaintiff failed to prove the product acquired reputation with end users. It was held that acquiring reputation among suppliers is irrelevant. Second it was held that the public was not mislead by the defendant's products as the defendant acted to distinct its product from that of the plaintiff's by using a different logo, and different rapping box.
As for unjust enrichment, it was held that the first element i.e. Enrichment was established as the defendant entered a new market where the plaintiff had no business in, with no need to invest in the product's design. The second element, i.e. enrichment on the expense of the plaintiff- was established as well, as the defendant practically made a product which is identical to the one produced by the plaintiff. However the third element that is needed for the establishment of unjust enrichment was not found according to the court. Proving the existence of this element requires evidence that the product is innovative, or that large amount of resources and time was invested in its development. In this case there was no such evidence. The product was held to be simple of no special features making it difficult to copy. Hence, the third element was not established.
The court therefore rejected the plaintiff's claim as a whole.
Ozgum Ltd. Vs Treplex Pal Yam Ltd
Yaara Shoshani,
Appelfeld Zer Fisher
As for unjust enrichment, it was held that the first element i.e. Enrichment was established as the defendant entered a new market where the plaintiff had no business in, with no need to invest in the product's design. The second element, i.e. enrichment on the expense of the plaintiff- was established as well, as the defendant practically made a product which is identical to the one produced by the plaintiff. However the third element that is needed for the establishment of unjust enrichment was not found according to the court. Proving the existence of this element requires evidence that the product is innovative, or that large amount of resources and time was invested in its development. In this case there was no such evidence. The product was held to be simple of no special features making it difficult to copy. Hence, the third element was not established.
The court therefore rejected the plaintiff's claim as a whole.
Ozgum Ltd. Vs Treplex Pal Yam Ltd
Yaara Shoshani,
Appelfeld Zer Fisher
Monday, November 26, 2007
Patents: Invalidation of a patent by court during discussion concerning an infringement
The plaintiff (Hereafter: Ana Lotan) was in the business of producing and marketing of cosmetics and is the proprietor of a registered patent (no.106392) for skin peeling creams. The plaintiff argued that the defendant (Balmon) was producing a product for scrubbing and peeling of the skin, and by this is infringing the registered patent.
The district court rejected the claim and argued as follows:
1. The invention was not patentable due to already existing American patents which destroyed the invention's novelty, and hence should have not been registered as a patent (Articles 3-5 Israeli Patent Law).
2. According to Article 3 of the Israeli Patent Law, an invention worthy of a patent must be novel, i.e was not presented publicly, world wide prior to filing date, and be considered as an "inventive step", namely that an ordinary person skilled in the art would have been able to create the invention, based on the existing knowledge in the relevant field.
3. In a previous case (CA/4867/92) discussed by the Supreme Court, it was held that when an infringement of a patent right is considered, the court not only examines the extent of the patent's claims, but also looks into whether the allegedly infringing patent contains the same core of the invention as the allegedly infringed patent. Similar, when novelty of a patent is examined, the court can look not only into publication which contains the invention's components but also one that includes the core of the invention.
In this case, there were two patents registered prior to filing date of the complainant's patent application. In both patents information that could have lead to a person skilled in the art to allegedly infringed invention was disclosed. In addition, the core of the invention was identical in both patents (i.e. an abrasive component), and the fact that the chemical structure was different in both of them was found to be irrelevant.
District court 1179/00 -Ana Lotan vs. Balmon
The district court rejected the claim and argued as follows:
1. The invention was not patentable due to already existing American patents which destroyed the invention's novelty, and hence should have not been registered as a patent (Articles 3-5 Israeli Patent Law).
2. According to Article 3 of the Israeli Patent Law, an invention worthy of a patent must be novel, i.e was not presented publicly, world wide prior to filing date, and be considered as an "inventive step", namely that an ordinary person skilled in the art would have been able to create the invention, based on the existing knowledge in the relevant field.
3. In a previous case (CA/4867/92) discussed by the Supreme Court, it was held that when an infringement of a patent right is considered, the court not only examines the extent of the patent's claims, but also looks into whether the allegedly infringing patent contains the same core of the invention as the allegedly infringed patent. Similar, when novelty of a patent is examined, the court can look not only into publication which contains the invention's components but also one that includes the core of the invention.
In this case, there were two patents registered prior to filing date of the complainant's patent application. In both patents information that could have lead to a person skilled in the art to allegedly infringed invention was disclosed. In addition, the core of the invention was identical in both patents (i.e. an abrasive component), and the fact that the chemical structure was different in both of them was found to be irrelevant.
District court 1179/00 -Ana Lotan vs. Balmon
Plant Varaieties: Breeder's consent for use of varaiety is not required after sale
The plaintiffs are in the business of varieties breeding. The plaintiffs argued that according the Israeli law of Variety Breeding 1973, (hereafter: the law), they have registered varieties as to Gerbera varieties which were breaded by them. In addition it was argued that the defendants were using these varieties without permission of the plaintiffs. The Israeli district court ruled that the proprietor of varieties is entitled for payment for using the registered variety. However, after selling the variety, the breeder's consent is not required for purposes of additional use of that variety, unless this additional use is defined as reproduction of the variety (Article 36 of the law). The argument that the defendant admitted that reproduction of the varity took place for the purpose of establishing an infringement of registered variety.
(Flouriest de Quakel BW vs. Hajag Baruch, District Court 25 October 2007)
(Flouriest de Quakel BW vs. Hajag Baruch, District Court 25 October 2007)
Thursday, August 23, 2007
Copyrights: 'Hiking Tracks' are not Protected by Copyrights
An Israeli court for small claims held (16 August 2007) that copyrights laws cannot protect hiking tracks. The plaintiff, an owner of company for planning field tracks, claimed copyright infringement in relation to three hiking tracks.
The defendant argued that it did not copy the hiking tracks as these tracks are in fact dictated by the Jordanian Tourist Office and their description is a mere translation of a text given by Jordanian travel agents.
The judge held that hiking tours cannot be considered as original work as neither the tour setting itself nor the selected wording of which lack creativity and originality. The claim was rejected, and the plaintiff was ordered to pay the defendant 1000 NIS.
Yaara Shoshani, Applefeld Zer Fisher
23 August 2007
The defendant argued that it did not copy the hiking tracks as these tracks are in fact dictated by the Jordanian Tourist Office and their description is a mere translation of a text given by Jordanian travel agents.
The judge held that hiking tours cannot be considered as original work as neither the tour setting itself nor the selected wording of which lack creativity and originality. The claim was rejected, and the plaintiff was ordered to pay the defendant 1000 NIS.
Yaara Shoshani, Applefeld Zer Fisher
23 August 2007
Patents: US `Continuation in Part` (CIP) Patent, as a Basis for an Accelerated Examination Process in Israel
The Israel Commissioner of Patents held (20 August 2007) that a CIP patent is slightly different than a regular patent and would not be easily the basis of a request for an accelerated examination of an Israeli patent application, claiming priority of that equivalent CIP.
Patent application No. 136482 was filed on 31 May 2000 claiming priority of a US patent application No. 09/329374 (Patent No. 6218584) dated 10 June 1999 which forms a link in the chain of CIP applications. The Israeli application was accepted and published within Israel Patents and Designs Gazette on March 12, 2006.
Within the opposition procedure, the opponent filed a motion to dismiss the Israeli application, since its notice of acceptance was based on Article 17 [c] of the Israel Patent Act of 1967. Under Article 17 [c] the process of examination of an Israeli patent application can be shortened significantly, if a proper search was already been carried out for the same invention in one of 12 specified countries (such as US, UK, Japan etc.) and a patent was already granted. In which case, the invention would deemed by the Israeli Patent office to be novel, non-obvious and having unity of invention and adequately drafted claims and specifications.
The opponent claimed that a CIP application cannot be used for purposes of Article 17 [c] as the validity of the claims in terms of novelty and non-obviousness in such applications are not adequately verified by the USPTO as a matter of law, and yet for US purposes, these claims enjoy the priority date of the parent application. The opponent further claimed that as the Israeli law does not provide for a similar status to CIP patents, any previous publication of applications within the CIP chain, including the parent application, can be used as a reference against the Israeli application claiming priority of the CIP patent.
The Israel Commissioner of Patents held that in principle, a CIP patent can be the basis of a request for an accelerated patent examination of an equivalent Israeli patent application, under Article 17 [c]. This determination, in fact, upholds Commissioner Regulations (No.33) dated 19 October 2004.
However, the Commissioner proceeded to explain that the presumption under Article 17(c) as to novelty and non-obviousness of the Israeli application claiming priority of a CIP patent cannot, a priori, be established. All previous applications within the CIP chain which were published, must be carefully examined against such an Israeli application. It was further asserted that a request for an accelerated examination process under Article 17 [c], will be accepted only if none of the earlier applications within the CIP chain were published in the US, previous to the priority date to which the Israeli application is entitled.
In this case, a few publications of application within the CIP chain were found to carry a date prior to the priority date claimed for the Israeli application, and therefore a request under Article 17[c] should have been rejected. However, the Commissioner held that since an opposition was filed against this patent application, during which questions of novelty and non obviousness will be determined, there is no relevance to the fact that rule 17 [c] was wrongly applied.
Yaara Shoshani, Appelfeld Zer Fisher
23 August, 2007
Patent application No. 136482 was filed on 31 May 2000 claiming priority of a US patent application No. 09/329374 (Patent No. 6218584) dated 10 June 1999 which forms a link in the chain of CIP applications. The Israeli application was accepted and published within Israel Patents and Designs Gazette on March 12, 2006.
Within the opposition procedure, the opponent filed a motion to dismiss the Israeli application, since its notice of acceptance was based on Article 17 [c] of the Israel Patent Act of 1967. Under Article 17 [c] the process of examination of an Israeli patent application can be shortened significantly, if a proper search was already been carried out for the same invention in one of 12 specified countries (such as US, UK, Japan etc.) and a patent was already granted. In which case, the invention would deemed by the Israeli Patent office to be novel, non-obvious and having unity of invention and adequately drafted claims and specifications.
The opponent claimed that a CIP application cannot be used for purposes of Article 17 [c] as the validity of the claims in terms of novelty and non-obviousness in such applications are not adequately verified by the USPTO as a matter of law, and yet for US purposes, these claims enjoy the priority date of the parent application. The opponent further claimed that as the Israeli law does not provide for a similar status to CIP patents, any previous publication of applications within the CIP chain, including the parent application, can be used as a reference against the Israeli application claiming priority of the CIP patent.
The Israel Commissioner of Patents held that in principle, a CIP patent can be the basis of a request for an accelerated patent examination of an equivalent Israeli patent application, under Article 17 [c]. This determination, in fact, upholds Commissioner Regulations (No.33) dated 19 October 2004.
However, the Commissioner proceeded to explain that the presumption under Article 17(c) as to novelty and non-obviousness of the Israeli application claiming priority of a CIP patent cannot, a priori, be established. All previous applications within the CIP chain which were published, must be carefully examined against such an Israeli application. It was further asserted that a request for an accelerated examination process under Article 17 [c], will be accepted only if none of the earlier applications within the CIP chain were published in the US, previous to the priority date to which the Israeli application is entitled.
In this case, a few publications of application within the CIP chain were found to carry a date prior to the priority date claimed for the Israeli application, and therefore a request under Article 17[c] should have been rejected. However, the Commissioner held that since an opposition was filed against this patent application, during which questions of novelty and non obviousness will be determined, there is no relevance to the fact that rule 17 [c] was wrongly applied.
Yaara Shoshani, Appelfeld Zer Fisher
23 August, 2007
Monday, August 20, 2007
Trademarks: Interference Procedure: Cell for Life vs. Cell for Life Guarding what is Most Precious
Application No. 178634 ("Cell for life") filed by Medifreeze Ltd and No. 178799 ("Cell for life is guarding what is most precious") filed by Creo-Life Ltd in relation to preserving umbilicus cells. An interferance procedure was applied by the Israel Patents Authority.
The Israel Commissioner of Patents, Trademarks and Designs, has recently ruled (9 August 2007) that examination procedure for application No. 178634 would remain and denied the registration of the trademark subject of application No. 178799. It was held there is no dispute as to the confusingly similiarity of the two marks. Hence, am interference procedure was correctly applied by the Authority. Within this procedure, one mark is accepted while the other is denied based on three tests. These tests and their application to this case is explained below:
1. Time of filing the application – Who filed first?
The Commissioner asserted that the two applications were surprisingly filed almost at the same time. Filing an application two days before the other would not -per ce- indicate that the right in the mark should belong to the first to file.
2. The extent of using the mark – Who was using the mark more extensively?
The Commissioner found that Medifreeze was constantly using the mark while Creo-life has failed to use the mark not only prior to filing but also subsequently. It is well established that non use of the mark after filing can be considered within interference. Creo-life was held to have no intention of using the mark at all and by this has ultimately proved lack of bad faith.
3. Selecting the marks – Were the parties acting in Good faith?
It was asserted that Medifreeze was able to demonstrate the exact process in which the mark was carefully selected. On the other hand, Creo-life was unsuccessful in explaining the reasons for the abandonment of a former application for the same goods, and subsequently selecting a mark closely similar to this of Medifreeze and filing an application for the registration of which. This clearly indicates that Creo-life was acting in bad faith.
As to the slogans of the two companies, it was decided that Medifreeze did not and could not duplicate Creo-life's slogan as it had no access to it. The argument that Medifreeze was acting in bad faith when selecting a similar slogan for its goods (questionnaire and collecting kit) was rejected, as lack of good faith is to be examined in relation to selecting of the specific mark by the parties and not in connection with conducting the business. Finally it was decided that Medifreeze could not have bad intentions when using an image similar to that used by Creo-life, as this image is typical to this area of commerce (preserving umbilicus cells) and therefore could not cannot be used exclusively by one trademark owner.
Yaara Shoshani (LLM), Appelfeld Zer Fisher
The Israel Commissioner of Patents, Trademarks and Designs, has recently ruled (9 August 2007) that examination procedure for application No. 178634 would remain and denied the registration of the trademark subject of application No. 178799. It was held there is no dispute as to the confusingly similiarity of the two marks. Hence, am interference procedure was correctly applied by the Authority. Within this procedure, one mark is accepted while the other is denied based on three tests. These tests and their application to this case is explained below:
1. Time of filing the application – Who filed first?
The Commissioner asserted that the two applications were surprisingly filed almost at the same time. Filing an application two days before the other would not -per ce- indicate that the right in the mark should belong to the first to file.
2. The extent of using the mark – Who was using the mark more extensively?
The Commissioner found that Medifreeze was constantly using the mark while Creo-life has failed to use the mark not only prior to filing but also subsequently. It is well established that non use of the mark after filing can be considered within interference. Creo-life was held to have no intention of using the mark at all and by this has ultimately proved lack of bad faith.
3. Selecting the marks – Were the parties acting in Good faith?
It was asserted that Medifreeze was able to demonstrate the exact process in which the mark was carefully selected. On the other hand, Creo-life was unsuccessful in explaining the reasons for the abandonment of a former application for the same goods, and subsequently selecting a mark closely similar to this of Medifreeze and filing an application for the registration of which. This clearly indicates that Creo-life was acting in bad faith.
As to the slogans of the two companies, it was decided that Medifreeze did not and could not duplicate Creo-life's slogan as it had no access to it. The argument that Medifreeze was acting in bad faith when selecting a similar slogan for its goods (questionnaire and collecting kit) was rejected, as lack of good faith is to be examined in relation to selecting of the specific mark by the parties and not in connection with conducting the business. Finally it was decided that Medifreeze could not have bad intentions when using an image similar to that used by Creo-life, as this image is typical to this area of commerce (preserving umbilicus cells) and therefore could not cannot be used exclusively by one trademark owner.
Yaara Shoshani (LLM), Appelfeld Zer Fisher
Trademarks:Kangaro, an Unregistered Trademark in Israel Would not Enjoy protection under Israeli IP laws
The plaintiffs, Kangaro Industries Regd, and Chan Stationary Ltd (Kangaro's Israeli representative) filed for an injunction against the Israeli defendants Guard stationary and others, for preventing the defendants from importing, ordering, selling or marketing staplers and punchers placed in a package which allegedly infringes the plaintiffs' rights in its unregistered trademark :"Kangaro". The plaintiffs accused the defendants with the liability for "passing off", unjust enrichment and infringement of copyrights.
In Israel, liability for Passing off depends on the ability to demonstrate the existence of both two elements:
1. Acquired distinctiveness – that consumers in the marketplace exclusively associate the mark, as used on the identified goods, with a particular commercial origin or source (namely. the trademark owner), and:
2. Confusion – that consumers mistakenly confuse the goods of the defendant with those of the trademark owner.
According to Israeli case law, for establishing acquired distinctiveness, it must be clearly evident that the consumers identify the true origin of the goods, due to the specific trademark placed on them. In addition, evidence must be brought as to show that the mark was used for a long period of time; that the mark was well advertised and that efforts were made so that consumers would associate the trademark with the goods produced by the trademark owner. The court will also consider the following elements: whether the consumers care as to the identity of the producer of the goods, and not purchase them merely based on their shape and qualities; whether the demand for the goods is influenced by the well reputation of the producer him/her self.
The court held that the plaintiff was unable to demonstrate the existence of the first element and therefore the judge did not proceed to verifying the existence of the second one.
As to the plaintiff's other claim for liability for unjust enrichment, it was held that the plaintiff was unable to demonstrate the presence of a just interest worthwhile of protection in addition to showing the mark was used by others. In the absence of evidence as to efforts and budget allocated to make the trademark associated with the goods, the plaintiff could not show the defendants were liable for unjust enrichment.
The claim for copyrights infringement was rejected as well due to lack of originality and creativity within the features of the packages produced by the plaintiff.
Yaara Shoshani (LLM), Appelfeld Zer Fisher
In Israel, liability for Passing off depends on the ability to demonstrate the existence of both two elements:
1. Acquired distinctiveness – that consumers in the marketplace exclusively associate the mark, as used on the identified goods, with a particular commercial origin or source (namely. the trademark owner), and:
2. Confusion – that consumers mistakenly confuse the goods of the defendant with those of the trademark owner.
According to Israeli case law, for establishing acquired distinctiveness, it must be clearly evident that the consumers identify the true origin of the goods, due to the specific trademark placed on them. In addition, evidence must be brought as to show that the mark was used for a long period of time; that the mark was well advertised and that efforts were made so that consumers would associate the trademark with the goods produced by the trademark owner. The court will also consider the following elements: whether the consumers care as to the identity of the producer of the goods, and not purchase them merely based on their shape and qualities; whether the demand for the goods is influenced by the well reputation of the producer him/her self.
The court held that the plaintiff was unable to demonstrate the existence of the first element and therefore the judge did not proceed to verifying the existence of the second one.
As to the plaintiff's other claim for liability for unjust enrichment, it was held that the plaintiff was unable to demonstrate the presence of a just interest worthwhile of protection in addition to showing the mark was used by others. In the absence of evidence as to efforts and budget allocated to make the trademark associated with the goods, the plaintiff could not show the defendants were liable for unjust enrichment.
The claim for copyrights infringement was rejected as well due to lack of originality and creativity within the features of the packages produced by the plaintiff.
Yaara Shoshani (LLM), Appelfeld Zer Fisher
Saturday, August 11, 2007
Israel - trademarks - Important rulings were given by the trademark office, concerning a petition to erase a trademark due to lack of use
In a decision about the trademark "MIG" (a petition to cancel the registered trademark no. 138834) the registrar considered a petition to dismiss a trademark due to lack of use.The owner of the trademark and the petitioner both work in the Russian journalism field in Israel and publish magazines in the Russian language for the Russian public in Israel.The newspaper of the petitioner is published under the name "MIG" which is similar in its design to the registered trademark of the owner.The petitioner requested to cancel the trademark since the owner of the trademark had not been using it for 3 years except for a single use, which was allegedly performed in bad faith.The petitioner claimed that the main use of the registered trademark relates to its graphical design, publishing workbooks and advertising brochures. These uses, so was claimed, were unrelated to journalism since 1999. It was argued that the brochure was published in bad faith and not as real business activity. The trademark was registered as a "defensive trademark". The petitioner claimed that on his part, he had been publishing a weekly magazine and a website since 2003. The choice the name "MIG" is purely coincidental since it is the initials of the company's name and has a meaning in Russian.The trademark owner argued that, he did not use the trademark since the Israeli market is too small for two newspapers using the same name. He claimed that large amount of money had to be attributed in litigation against the petitioner. The aggressive competition that the petitioner created prevented him from continuing to publish the newspaper. Finally, he asserted that the petitioner acted in a bad faith.
The decision:As to the use of the trademark:The trademark owner failed to convince the registrar that the publishing the brochure in 2003 is enough to be considered as "use" according to clause no. 41 of the Trademark Ordinance. The website is non-relevant, as it is not considered "use" in the same class.The fact that the newspaper was published only once can not be considered as a "normal use" in a "normal business". In addition the timing was odd and the explanation was not satisfying. Therefore, the registrar ruled that the trademark owner did not use the trademark according to the relevant goods it was registered for, during the last 3 years before the petition to erase was filed.Special circumstance in trade: The Trademark Act requires the prove of "special circumstance in trade" for non-use. The trademark's owner claimed that even if the registrar rules that there was no a use of the trademark within the last 3 years before the petition to cancel was filed, there were special circumstance in trade that prevented the use of the mark. He explained that in fact, the acts of the petitioner had created a "block market and wild competition".The registrar held that the reason for lack of use is mainly due to lack of finance and profitability potential in publishing a newspaper. It was held that the aggressive competition indicated by the trademark owner can not be considered a special circumstance in trade. Competition exists in almost every field. A competition in a market where the trademark's owner works, hard as it may be, can not be considered as special circumstance that justified lack of use. Actually, the competition was supposed to encourage the trademark's owner to use their trademark even more in order to maintain their status in the market.The registrar ruled that special circumstances in trade which justify the lack of use did not exist. Therefore, the petition to erase the trademark was accepted.Migdor Ltd. v. Boris Gail and Oleg Kaldovasky- A petition to dismiss a registered trademark no. 138834.
The decision:As to the use of the trademark:The trademark owner failed to convince the registrar that the publishing the brochure in 2003 is enough to be considered as "use" according to clause no. 41 of the Trademark Ordinance. The website is non-relevant, as it is not considered "use" in the same class.The fact that the newspaper was published only once can not be considered as a "normal use" in a "normal business". In addition the timing was odd and the explanation was not satisfying. Therefore, the registrar ruled that the trademark owner did not use the trademark according to the relevant goods it was registered for, during the last 3 years before the petition to erase was filed.Special circumstance in trade: The Trademark Act requires the prove of "special circumstance in trade" for non-use. The trademark's owner claimed that even if the registrar rules that there was no a use of the trademark within the last 3 years before the petition to cancel was filed, there were special circumstance in trade that prevented the use of the mark. He explained that in fact, the acts of the petitioner had created a "block market and wild competition".The registrar held that the reason for lack of use is mainly due to lack of finance and profitability potential in publishing a newspaper. It was held that the aggressive competition indicated by the trademark owner can not be considered a special circumstance in trade. Competition exists in almost every field. A competition in a market where the trademark's owner works, hard as it may be, can not be considered as special circumstance that justified lack of use. Actually, the competition was supposed to encourage the trademark's owner to use their trademark even more in order to maintain their status in the market.The registrar ruled that special circumstances in trade which justify the lack of use did not exist. Therefore, the petition to erase the trademark was accepted.Migdor Ltd. v. Boris Gail and Oleg Kaldovasky- A petition to dismiss a registered trademark no. 138834.
Israel - trademarks - Supreme Court Faces Novel Trademark Issues
In a recent decision, the Israeli supreme court faced some novel issues converning the trademark practice.
The supreme court faced an appeal by Pascol advanced technologies inc., on the trademark adjudicator´s decision to allow the trademark Gatewave for registeration, despite appealant registered trademark "Gateway 2000".
As a part of the decision, the supreme court faced the following novel and important issues:
A. Should new trademarks registered by the trademark owner (appealant) during the opposition proceeding be granted any weight in the decision?
The court ruled that even new trademarks cannot be ignored if they were registered in good faith.
B. The extent of the protection of a generic/descriptive trademark after registeration
The supreme court ruled that even after registeration, a descriptive or generic mark will be granted less protection, and even a mark with minor changes may lead to the conclusion that there is no infringment.
C. When checking whether there is a risk for misleading consumers, Should the court rely only on the registered description of goods and services, or should the actual use of the trademark be taken into account.
The court ruled that while the starting point is the trademark registry, the actual use of the trademark should not be ignored, and the registeration should be considered as giving some "space" to the trademark owner to extend his use.
Zeev Fisher, Adv. 23/6/2007
The supreme court faced an appeal by Pascol advanced technologies inc., on the trademark adjudicator´s decision to allow the trademark Gatewave for registeration, despite appealant registered trademark "Gateway 2000".
As a part of the decision, the supreme court faced the following novel and important issues:
A. Should new trademarks registered by the trademark owner (appealant) during the opposition proceeding be granted any weight in the decision?
The court ruled that even new trademarks cannot be ignored if they were registered in good faith.
B. The extent of the protection of a generic/descriptive trademark after registeration
The supreme court ruled that even after registeration, a descriptive or generic mark will be granted less protection, and even a mark with minor changes may lead to the conclusion that there is no infringment.
C. When checking whether there is a risk for misleading consumers, Should the court rely only on the registered description of goods and services, or should the actual use of the trademark be taken into account.
The court ruled that while the starting point is the trademark registry, the actual use of the trademark should not be ignored, and the registeration should be considered as giving some "space" to the trademark owner to extend his use.
Zeev Fisher, Adv. 23/6/2007
Trademarks: Israeli trademark office rules that "Once Weekly" is a descriptive term and isn´t eligble to be registered as a trademark
In a recent decision, the Israeli Trademark Office ruled that the term "Once Weekly" cannot be registered as a trademark which relates to a drug, as it is descriptive.
The proceeding was an appeal on the trademark examiner´s decision that "Once Weekly" is a descriptive term, and therefore, did not allow it to be registered as a trademark.
The applicant claimed that the term is implying, at most, and not descriptive, as it concerns the dosage of the drug and not the drug itself. The applicant further claimed that the drug has aquired distinguishing value among its customers.
The adjudicator ruled that:
"I find the examiner´s rulling correct and lawful. The terms ´Once Weekly´ in English or in Hebrew are with such a broad extent of descriptive value, that even if distinguishing value is proved, they are not eligible to be registered as trademarks, since it would not be appropriate to deprive the general public or other practitioners the right to use these terms".
The adjudicator also ruled that nevertheless distinguishing value was not proved.
Zeev Fisher, Adv. 21/6/2007
The proceeding was an appeal on the trademark examiner´s decision that "Once Weekly" is a descriptive term, and therefore, did not allow it to be registered as a trademark.
The applicant claimed that the term is implying, at most, and not descriptive, as it concerns the dosage of the drug and not the drug itself. The applicant further claimed that the drug has aquired distinguishing value among its customers.
The adjudicator ruled that:
"I find the examiner´s rulling correct and lawful. The terms ´Once Weekly´ in English or in Hebrew are with such a broad extent of descriptive value, that even if distinguishing value is proved, they are not eligible to be registered as trademarks, since it would not be appropriate to deprive the general public or other practitioners the right to use these terms".
The adjudicator also ruled that nevertheless distinguishing value was not proved.
Zeev Fisher, Adv. 21/6/2007
Tuesday, August 7, 2007
Trademarks:Israeli Commissioner erases "Love Parade" trademark application
The Israeli Trademark office rules to allow an Israeli company ("Musica Plus") to continue with registration of the trademark "Love Parade", and erased applications of Love Parade Berlin GmbH, a German company holding "love parades" all over the world.
The trademark office ruled that in a proceeding according to section 29 of the Israeli Trademark Act (Competing Applications), the following considerations will be applied:
A. Good faith of the parties in choosing the trademark.
B. The extent of use in Israel up to the request for registration.
C.The dates of filing the trademark applications. The trademark office further ruled that in such a proceeding, the question is whom should the trademark office prefer as user of the trademark, and it is a factual question. Representatives from LPB did not attend the hearing and therefore, their affidavits were deleted, and they had no evidence to support any of their claims.
A trademark owner of a famous trademark should conclude from this ruling that it would be wise to apply to an Israeli trademark as soon as possible, as the protection of the famous trademark may not suffice.
Zeev Fisher, Adv.
25/6/2007
The trademark office ruled that in a proceeding according to section 29 of the Israeli Trademark Act (Competing Applications), the following considerations will be applied:
A. Good faith of the parties in choosing the trademark.
B. The extent of use in Israel up to the request for registration.
C.The dates of filing the trademark applications. The trademark office further ruled that in such a proceeding, the question is whom should the trademark office prefer as user of the trademark, and it is a factual question. Representatives from LPB did not attend the hearing and therefore, their affidavits were deleted, and they had no evidence to support any of their claims.
A trademark owner of a famous trademark should conclude from this ruling that it would be wise to apply to an Israeli trademark as soon as possible, as the protection of the famous trademark may not suffice.
Zeev Fisher, Adv.
25/6/2007
Appellation of origin: "Jaffa" registered on the name of the Israel Citrus Marketing Board, will remain registered
In brief, an appellation of origin refers to the geographical name of a country or region, which is part of the name of a product, and aims to communicate that this product originates in such location, and that its quality and/or features are primarily due to that geographical area and its characteristics.
The district court in Jerusalem, in its function as the board of appeal for decisions of the Patents Authority (In accordance with the Israel Appellations of Origin and Geographical Indications Law, 1965 ("AOGI" ), considered the appeal of the Israel Citrus Marketing Board, in relation to the Registrar´s decision (dated January 9, 2005) to revoke the registered appellations "Jaffa" (including: "Jaffas" and also "Yafo", "Jaffa" and "Jaffas" in Hebrew).
This appellation of origin was first registered in Israel on 5 November 1968. On 16 March, 1970 the appellation was registered with the International Bureau who administers the registrations in accordance with the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration" which came into effect on October 31, 1958. The registrations were renewed twice and on 24 October, 2002 the Israel Citrus Marketing Board ~filed a request to the Israeli registrar to renew it for 10 additional years.According to Article 22 of the AOGI, any unlawful use of the appellation is considered an infringement of the right of its owner. This, even if the true origin of the goods was mentioned and even if the appellation is translated to a different language or accompanied by expressions which indicate the disengagement with the original goods.Out of the 5 above mentioned names, Jaffa is the most reputable one in Israel as well as worldwide. It is the first and only Israeli appellation of origin. As was mentioned in the decision of the Israeli Registrar, Jaffa has gradually become an exclusive symbol of the Israeli export and specifically exported citrus.
Following the request of the Israel Citrus Marketing Board to renew the appellation "Jaffa", it was argued within submissions filed by Attorney Tal Band, that "Jaffa" has ceased to be an appellation as defined by AOGI. In brief, it was argued that the Israel Citrus Marketing Board has permitted the use of the appellation for citrus growing in Africa. The honorable Judge Shidlovsky Or of the court of appeals held, inter alia, that the Citrus Marketing Board is the owner of the brand "Jaffa". This right cannot be undermined in countries whereby the laws of appellation of origin are inapplicable. Such an outcome will defeat the right of an owner in his intellectual property. Hence, the appeal was allowed and Judge Or has ordered to renew the appellation for additional period of 10 years, as requested.
Amit Zuckerstein 16/7/2007
The district court in Jerusalem, in its function as the board of appeal for decisions of the Patents Authority (In accordance with the Israel Appellations of Origin and Geographical Indications Law, 1965 ("AOGI" ), considered the appeal of the Israel Citrus Marketing Board, in relation to the Registrar´s decision (dated January 9, 2005) to revoke the registered appellations "Jaffa" (including: "Jaffas" and also "Yafo", "Jaffa" and "Jaffas" in Hebrew).
This appellation of origin was first registered in Israel on 5 November 1968. On 16 March, 1970 the appellation was registered with the International Bureau who administers the registrations in accordance with the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration" which came into effect on October 31, 1958. The registrations were renewed twice and on 24 October, 2002 the Israel Citrus Marketing Board ~filed a request to the Israeli registrar to renew it for 10 additional years.According to Article 22 of the AOGI, any unlawful use of the appellation is considered an infringement of the right of its owner. This, even if the true origin of the goods was mentioned and even if the appellation is translated to a different language or accompanied by expressions which indicate the disengagement with the original goods.Out of the 5 above mentioned names, Jaffa is the most reputable one in Israel as well as worldwide. It is the first and only Israeli appellation of origin. As was mentioned in the decision of the Israeli Registrar, Jaffa has gradually become an exclusive symbol of the Israeli export and specifically exported citrus.
Following the request of the Israel Citrus Marketing Board to renew the appellation "Jaffa", it was argued within submissions filed by Attorney Tal Band, that "Jaffa" has ceased to be an appellation as defined by AOGI. In brief, it was argued that the Israel Citrus Marketing Board has permitted the use of the appellation for citrus growing in Africa. The honorable Judge Shidlovsky Or of the court of appeals held, inter alia, that the Citrus Marketing Board is the owner of the brand "Jaffa". This right cannot be undermined in countries whereby the laws of appellation of origin are inapplicable. Such an outcome will defeat the right of an owner in his intellectual property. Hence, the appeal was allowed and Judge Or has ordered to renew the appellation for additional period of 10 years, as requested.
Amit Zuckerstein 16/7/2007
Trademarks: The term "Nacterina" does not infringe the registered trademark "Tapuzina"
In a decision responding to an application for interim remedies, the honorable Judge Dani Zarfati of the district court in Nazareth ruled that the mark "Nacterina" does not infringe the registered trademark "Tapuzina" and that no elements of "Passing Off", or any other misappropriation were established.
The plaintiff argued that the defendant has been duplicating the features of the products marked "Tapuzina", including their brands, outward appearances, shapes and labels. The plaintiff has founded his arguments, inter alia, on proposals for the design of the products, ordered and received by the defendant (as the allegedly infringing products have yet to be commercialized).
The defendants argued that those proposals were ruled out and left unused.The honorable judge has ruled that it is unlikely that the plaintiff will be successful in showing that consumers may have been mislead despite the phonetic similarity between the two names. In addition, he asserted that there is dissimilarity in the use of fonts and labels of the two brands. Moreover, the judge ruled that since there are other brands worldwide, with the same suffix (e.g. "Orangina"), the consumer is deemed to be aware as to the existing differences between those brands.
In view of the above mentioned, it was held that the likelihood of the plaintiff to actually win the main lawsuit is small, and refused to grant the applied for court orders. We believe this decision is incorrect. Within the Israeli market, the trademark "Tauzina" is an extremely strong one, in which massive budget was invested for advertisement. When establishing a case for trademark infringement, and even according to common sense standards, the similarity between the products´ appearance is less significant than the actual and phonetic similarity between them.In addition, the existence of other brands with the same suffix has no substantial effect on the Israeli consumer, that his awareness as to the existence of those brands - which were never sold in Israel - is doubtful.
We predict the occurrence of a different scenario, namely that the reasonable consumer would perceive the existence of the new drink "Nacterina", as a new drink launched by the manufacture of "Tapuzina". Therefore. It is likely that the consumer would mistakenly assume that the origin of both drinks is one and the same, and by that would be mislead. Furthermore, it seems that the court has completely ignored the risk of dilution of the strong trademark "Tapuzina". It is probable that the frequent consumer of the drink "Tapuzina" would not be pleased of the new taste of the new product Nacterina, and consequently will form a negative view on the brand "Tapuzina" as a whole.
The real question which were never raised is why has the defendant elected a name which is so phonetically similar and which is aimed at the same market segment? Why could not it choose a name such as "Nacteron" or "Nacterit" or a less generic brand?
If it did not do so for the purpose of enjoying the plaintiff´s goodwill, why else?
Zeev Fisher, Adv. 15/7/2007
The plaintiff argued that the defendant has been duplicating the features of the products marked "Tapuzina", including their brands, outward appearances, shapes and labels. The plaintiff has founded his arguments, inter alia, on proposals for the design of the products, ordered and received by the defendant (as the allegedly infringing products have yet to be commercialized).
The defendants argued that those proposals were ruled out and left unused.The honorable judge has ruled that it is unlikely that the plaintiff will be successful in showing that consumers may have been mislead despite the phonetic similarity between the two names. In addition, he asserted that there is dissimilarity in the use of fonts and labels of the two brands. Moreover, the judge ruled that since there are other brands worldwide, with the same suffix (e.g. "Orangina"), the consumer is deemed to be aware as to the existing differences between those brands.
In view of the above mentioned, it was held that the likelihood of the plaintiff to actually win the main lawsuit is small, and refused to grant the applied for court orders. We believe this decision is incorrect. Within the Israeli market, the trademark "Tauzina" is an extremely strong one, in which massive budget was invested for advertisement. When establishing a case for trademark infringement, and even according to common sense standards, the similarity between the products´ appearance is less significant than the actual and phonetic similarity between them.In addition, the existence of other brands with the same suffix has no substantial effect on the Israeli consumer, that his awareness as to the existence of those brands - which were never sold in Israel - is doubtful.
We predict the occurrence of a different scenario, namely that the reasonable consumer would perceive the existence of the new drink "Nacterina", as a new drink launched by the manufacture of "Tapuzina". Therefore. It is likely that the consumer would mistakenly assume that the origin of both drinks is one and the same, and by that would be mislead. Furthermore, it seems that the court has completely ignored the risk of dilution of the strong trademark "Tapuzina". It is probable that the frequent consumer of the drink "Tapuzina" would not be pleased of the new taste of the new product Nacterina, and consequently will form a negative view on the brand "Tapuzina" as a whole.
The real question which were never raised is why has the defendant elected a name which is so phonetically similar and which is aimed at the same market segment? Why could not it choose a name such as "Nacteron" or "Nacterit" or a less generic brand?
If it did not do so for the purpose of enjoying the plaintiff´s goodwill, why else?
Zeev Fisher, Adv. 15/7/2007
Welcome!
Welcome,
In this blog, we will try to provide you with the most updated information about Intellectual Property in Israel: We will report on courts rulings, decisions of the Israel Commissioner of Patents, Trademarks and Designs, changes of national legislation and so on.
You are welcome to read and share your thoughts with us.
Appelfeld Zer Fisher
Advocates & Patent Attorneys
In this blog, we will try to provide you with the most updated information about Intellectual Property in Israel: We will report on courts rulings, decisions of the Israel Commissioner of Patents, Trademarks and Designs, changes of national legislation and so on.
You are welcome to read and share your thoughts with us.
Appelfeld Zer Fisher
Advocates & Patent Attorneys
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