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
Monday, November 26, 2007
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.
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