IL 206845 to BioMarin Pharmaceuticals Inc. was refused under Section 21a of the Israel Patent Law 1967. The patent application was the national phase of a PCT application submitted on 6 January 2009. The national phase entry was submitted on 6 July 2010 and claims priority from US applications filed on 7 January 2008 and 22 April 2008.
On 30 January 2013, the Applicant was sent an Office Action to which the Applicant had four months to respond. No response was forthcoming. Following the extensions available under Circular 005/2011 then in force, on 5 March 2014 the Applicant was informed that the file would be closed if no response was submitted within 30 days. This letter went unanswered and the file was closed on 23 June 2014.
Three years and three months later, on 15 October 2015, the Applicant requested a retroactive extension to respond to the notice of abandonment.
The request was accompanied by an Affidavit that testified to the developments leading to the case becoming abandoned.
In 2005, Merck Serono purchased all rights to the Kuvan medical product, and to the process for manufacturing the active ingredient claimed in the application.
This transfer of rights was not recorded in the patent register and the Application was filed in the name of Biomarin.
In 2012, Merck Serono decided that it was not interested in the patent issuing in Israel and told Biomarin not to respond to the Office Action.
In 2015, Biomarin repurchased their rights to the invention and in 2016-2017 reviewed the usefulness of getting the patent to issue in Israel.
Following the reconsideration, the present request for extension of time to respond was submitted in October 2017.
The Applicants argued that their repurchasing of their rights and their reconsideration of the portfolio provides sufficient justification for reconsidering the refusal of the patent. Furthermore, unlike in the US and Europe, there is no legal requirement for abandonment so thus, even if the abandonment was following an intentional decision by Applicants or the predecessor thereof, this does not mean that, following a change of circumstances, this cannot be reconsidered and they are entitled to a further opportunity
Sections 21 and 21a of the Law set out the normative arrangement for these matters as follows:
21. If the Applicant did not remove the grounds for the Application not being approved within the timetable set out in the regulations or did not correct the lacunae under Section 20, the Commissioner will refuse to allow the patent.
21a. If the Commissioner refuses the patent under Section 21, he can, at the request of the Applicant, reconsider the refusal provided that the request to do so was submitted within 12 months of the refusal.
The period laid out in Section 21a of the law is extendable under Section 164 of the Law at the Commissioner’s discretion. The Commissioner’s discretion is summed up in the phrase “if he sees a reasonable basis for so-doing” which is found in Section 164a. The Commissioner’s considerations will change with circumstances, and as Judge Naor stated in Appeal 826/04 Commissioner of Patents vs. Recordati Ireland Ltd (26 June 2004):
The policy regarding different requests for extending deadlines that are brought before the Commissioner, will change with circumstances and with the nature of the proceedings for which an extension is requested.
Similarly, the Commissioner has the authority to make the extension dependent on “conditions that he considers to be correct” as stated in Section 164b of the Law.
In cases such as this, there are two main interests. Firstly, that of the Applicant who wishes to protect his invention and, secondly, that of the public which can benefit from inventions that are not patent-protected and are thus in the public domain. It is noted that this case is the national phase of a PCT application and the application and its status is published under section 16a of the Law.
The Deputy Commissioner Ms Jacqueline Bracha considers that the period given in Section 21a, though long, is limited. This protects the public and brings matters to a close. The period given in the Law is a balance between the competing interests.
Ms Bracha does not consider that the Applicants’ request can be considered reasonable with respect to the delay incurred or the justification to reopen the file. The request to reopen the file was received 39 months after the case was closed. This is 27 months after the usual deadline which is a long time.
As to the submission that the client changing their mind is grounds for opening an intentionally abandoned application, the Deputy Commissioner does not find this convincing. She finds support in Appeal 83/86 Sokol vs. Yismach, p.d. 40(1) 577 cited in the Sadovsky case, where it is stated that:
The discretionary authority to extent deadlines is intended to overcome mishaps and externalities that are beyond the litigant’s control.
One cannot consider a decision not to continue prosecuting as being an external cause, a mishap or an error. Ms Bracha notes that the circumstances described in the Affidavit show that the error we are dealing with is imported from Contract Law and is at best “a mistake in the equity of the deal” which is not grounds for cancelling a contract.
In a similar manner, it has been determined that not paying a renewal of a patent due to a determination that it is not worthwhile to do so is NOT considered as a reasonable ground for reinstatement, and that is where we are dealing with an actual right that the patentee was awarded and not with a pending application as in this case. See Request for Reinstatement of IL 177522 of “Yad Conena Ltd from 9 June 2014:
The circumstances of the case before me do not fulfill the above requirements. A decision was taken not to pay the Renewal fee. The patentee knew that the there was a need to pay the renewal fee as this was not the first time that he had needed to pay it. One can assume that after the case lapsed and was reinstated in 2011, the patentee made inquiries regarding the next renewal. From the Affidavit it transpires that the patentee made an informed decision NOT to pay the fee. In these circumstances one cannot conclude that the fee was not paid in reasonable circumstances that justify reinstatement. The economic difficulties that the Applicant noted are not considered reasonable grounds for not paying the renewal, particularly where no evidence of the debit was submitted.
True, there is validity to the suspicion that certainty may be damaged when a court comes to interpret the Law (Aharon Barak Legal Interpretation, Interpreting Legislation Volume 2 583 (1993). Nevertheless, this is one consideration amongst many that can be used where there is nothing in the wording of the Law or elsewhere to directly contradict this. In this instance, it appears that the legislators did not put the question of certainly regarding when a patent lapses as the main consideration.
In other words, the consideration of certainty is an important consideration but where the wording of the Law or its purpose indicate that the legislators preferred some other consideration, the Court will interpret the Law accordingly.
Ms Bracha does not consider that in this instance the Law or the case-law expounding the Law indicate that the legislators preferred the interest of the Applicant over that of public certainty, She considers that to the extent that there is a legal tradition for interpreting Sections 21a and 164 of the Law, it is one that requires the Applicants to provide a real and reasonable cause for incurring a delay, and this is necessary since there is public reliance on the patent lapsing.
The Applicants also requested to learn from what is stated in foreign legislation, that what is not stated in our Law is not a requirement. That is, that whereas other laws explicitly state “unintentional” this implies that there is no such requirement in Israel Law. Whilst it is true that Section 21 does not require abandonment to be unintentional, it does provide a normative timeframe for reinstatement, whereas the US and European law do not. Any deviation from this period is considered in the mirror of Section 164 which is interpreted in light of the nature of the deadline to be extended and the type of proceeding before the Commissioner. This was detailed above, and will not be repeated. It is sufficient to note that one cannot rely on the inclusion or omission of a word in the Israel Law as the basis for its interpretation whilst ignoring the case-law.
It seems that the circumstances are such that the case was abandoned intentionally and can only be rectified if this was not legal. The request is refused.
IL 206845 to Biomarin: refusal to reinstate application, Deputy Commissioner Ms Jacqueline Bracha, 17 April 2018.
I am frankly surprised by the audacity of the Applicants’ representative for trying to argue that this knowingly abandoned patent application could be revived more than 12 months after going abandoned and am pleased that the Deputy Commissioner came to the decision that it could not be.
High Adventure Ministries sued Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe (presumably Taylor?) for using “the Voice of Hope” for spreading evangelical messages.
This case related to a Request to Appeal a refusal to grant a temporary injunction that was issued by Judge M Amit-Anisman of the Tel Aviv – Jaffa District Court on 27 November 2017
The background relates to the parties activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.
The Appellant, High Adventure Ministries, has used the mark for many years, and sued the defendants Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe in the Tel Aviv – Jaffa District Court claiming passing off, Unjust Enrichment and infringement of a well-known trademark albeit not registered in Israel.
During the proceeding, they submitted a request for a temporary injunction to forbid the defendants using the mark. This interim injunction (Case 65046-06-17) was refused by Judge M Amit-Anisman on 27 November 2017. She ruled that the Plaintiff had a case, at least under the tort of passing off, but considered that the significance of the case, the balance of convenience and justice considerations tilted the scales in favour of the defendants, stressing that:
The defendants had used a radio station named Voice of Hope for a number of months and its establishment had required an investment of millions of dollars.
The radio station broadcasts in Arabic and is directed to listeners in various Arab countries, whereas the plaintiff’s transmissions are in English and are directed to English speakers.
The plaintiff had known about the intention to establish the radio station at least a year ago but had been tardy in filing a complaint and so was not deserving of a temporary restriction order.
The plaintiff claims that the defendant’s website includes English and so they also direct their efforts to English speakers. They argue that it is not proven that a temporary injunction will cause the defendants damage, however NOT granting a temporary injunction will do them damage, and they contested the allegation of tardiness. They argued that they had a good case and accused the defendants of inequitable behaviour. The defendants meanwhile, argued that the Court of First Instance was correct to refuse to grant a temporary injunction and did not consider that the case should be appealable.\
This issue is one of temporary injunctions, which are relevant to trademark issues. In this field, the Court of First Instance that considers the case has wide discretionary powers and the Court of Appeal has limited authority to intervene where the Court of First instance has the information before it and hears witnesses and gets an impression of their reliability. There are, however, exceptional cases where intervention is justified, but is this one of them?
Whether or not to grant interim injunctions depends on two main variables: the likelihood of prevailing, and the balance of convenience.
The court of first instance determined that there was a case to be answered. However, it was the balance of convenience and considerations of justice that tilted the scales into not issuing the temporary injunction. Thus despite considering that there was a case, it was the balance of convenience issue that was considered more important. Here, both sides argued that it was not proven that the other party would suffer irreversible damage. In this regard, Judge Handel emphasized two points:
Firstly, apart from general waffle, neither party provided concrete data supporting their suspicions that the damage they would suffer would be irreversible. For example, the defendants invested significant sums in establishing their radio station but did not show that much of that investment was in branding, and that changing the name of the channel temporarily would adversely affect their profitability. That said, since they are already broadcasting under the name Voice of Hope, there is no doubt that a temporary injunction would inconvenience them, not so much due to the start-up investment costs, but because a change of name could cause confusion and lose them listeners.
The plaintiff Appellant did not indicate why failure to grant a temporary injunction would cause him damage. Here the emphasis is on the fact that the radio station broadcasts in Arabic, whereas those of the plaintiff Appellant are in English. So the target audience is different, and there is no support to the claim that the plaintiff Appellant will suffer damage, and thus no support that he would suffer irreversible damages. In this regard, Judge Handel considered the claim that the plaintiff Appellant had a world-wide reputation as the Voice of Hope, but as the District Court stated, in the request for a temporary injunction, the plaintiff Appellant failed to provide the a factual basis for the claim that Arabic speakers are familiar with the Voice of Hope and would link the defendants station with the Israeli body that uses that name. Thus even if Judge Handel would accept the claim that the name Voice of Hope is indeed a well-known mark around the world that is associated with the plaintiff Appellant, that would not be a sufficient basis to grant the temporary injunction. See for example, the Opposition to Israel Trademark Application Number142266 “No limits eyewear” (2 May 2004). It is noted that the burden of proof is on the plaintiff who wants the temporary injunction, expect for one exception, and here the second consideration comes into play.
Secondly, the defendant’s Internet site gives the impression that the radio station is the one established in 1979-2000 that no longer broadcasts, For example they state:
“In 2014 we restablish the VOICE OF HOPE radio station which had broadcast from South Lebanon from 1979- .2000 The airwaves have been silent for 17 years, until today!
In other words, the defendants are glorifying themselves as reestablishing the station that the plaintiff had owned. Since the word mark is the same for the two stations, and the dove logo is similar, there is indeed likelihood that English speakers would erroneously conclude that the defendant’s station is associated with the plaintiff. Similar erroneous messages are found in other English advertisements used by the defendants, appended as annexes 4-8 of the Appeal.
This suspicion of misleading the consumers throws a special light on this proceeding which relates to trademarks. Unlike other civil disagreements such as contract law, with regards to intellectual property, there is a third wheel to the conflict – the public.
This is true for main trademark proceedings, such as registration of a mark in the trademark register, but it is also true for temporary injunctions. Just as it is important to consider the public in the main rulings, it is also important to consider them when considering issuing temporary injunctions since temporary injunctions are designed to serve the main ruling. The extent that NOT granting a temporary injunction would lead to the public being mislead should be considered when considering temporary injunctions.\
It will be noted that the first point emphasized the commonality of civil law including trademarks, whereas the second point emphasized the uniqueness of trademarks. This is not contradictory. Just as one has to consider the likelihood of a proceeding being successful in prevailing with regard to a specific law, one has to consider the uniqueness of trademark law where the specific law is the Trademark Ordinance. The difference is that one also has to relate to the third wheel – the public. This is the commonality with Administrative Law, although the public interest is different in the two areas. Whereas trademark Law is still personal law, in this regard it is on the seam between personal private law and public law.
In this instance, the existence of two entities transmitting Evangelical Christian messages under the same trademark, where one body publicises itself as related to the other body before the same target group, is likely to mislead the English listening demographic. This has an independent weight in both the considerations of public interest and in the balance of convenience. The risk is not that the listening public will be confused, as the transmission languages are different. The risk is in the advertisements in English. In these circumstances, it is fitting to not allow the appeal apart from with regards to one point.
That is to say, that the District Court was correct to refuse to grant a temporary injunction to the extent that it would be inappropriate to interfere, due to the large investment, the different target audience and language and the delay – even if it resulted from a lack of clarity regarding the defendant’s intentions following exchanges of letters and it is not clear if there was tardiness, or if the plaintiff thought things were resolvable without going to court, but the findings of the Court of First Instance were reasonable.
Together with this, the Court of First Instance was wrong with regard to the request to remove advertisements that create an association between the defendants and the plaintiff. The defendants are required to remove all references to the historic Voice of Hope channel belonging to the Appellant, and similarly to cease and desist from any publication that implies a connection between the parties. Alternatively, the defendants are allowed to leave the advertisements in place, but to add a clear and unequivocal clarification that they are not related to the English Voice of Hope, so that advertisers will not be mislead. If the parties are not happy with this, they are invited to raise their claims with the Court of First Instance, but it appears that the parties can settle this between themselves without referring back to the courts.
In Judge Hendel’s opinion, this is the correct balance between the plaintiff, the defendant and the public. The defendants can continue broadcasting in Arabic under the name Voice of Hope to the residents of Lebanon and Syria, since in the framework of the request for a temporary injunction, no risk was substantiated that Arabic speakers would be misled regarding a relationship with the plaintiff’s station that closed in 2000, and so there is no risk of damaging that station. This considers the target audience of the radio station, and the minor differences in the marks, See Nazareth Civil Action 613/95 Arditi Americano vs. Harush, paragraph 6 (17 March 1996), and also considering that no evidence was produced to substantiate the claim that the mark was well known amongst Arabic speakers. As to English speakers, only the plaintiff transmits in English, and the defendants admit that their usage of English is only for written advertising purposes. Thus there is no likelihood of confusion regarding the transmissions themselves, but only with regard to the advertisements and these are mitigated by the steps ruled above.
Such intermediate rulings are possible in trademark case which can result in two similar marks coexisting where there is a ruling that creates a difference that mitigates the likelihood of confusion, such as with regards to Israel TM no 6140 Domino Pizza which then Commissioner Michael Ophir Z”L allowed to coexist with Pizza Domino, in light of the different colour schemes, signage and newspaper articles stressing the lack of connection between the two chains. This is not a common occurrence, but it is fitting in a temporary injunction, as it balances the three interests, including that of the consumers.
All of the above only relates to the temporary injunction. It does not nail down the final ruling. The parties disagree regarding many factual matters, such as whether the plaintiff has a reputation, and the extent of that reputation, how well the Voice of Hope is known around the world and so on. Although these issues are considered with respect to whether a temporary injunction is appropriate, this in no way decides the trademark issue or nails down the main ruling, but merely attempts to minimize damage to both sides before the full ruling issues. See Appeal 4196/93 Shefa Bar Management and Services 1991 led.vs Shefa Restaurants Production and Marketing of Prepared Meals 1984 Ltd. p.d. 47(5) 165 (1993). The appropriate temporary injunction and the appropriate main ruling have different considerations. The court’s main consideration with respect to temporary injunctions is to enable the main proceeding to take place without creating irreversible damages, whilst noting that the apparent facts and working hypotheses are liable to change, as is the perceived public interest, throughout the case, and the court will have to make a final ruling in due course.
The Appeal for a temporary injunction is partially accepted and the costs awarded against the plaintiff by the Court of First Interest are cancelled. The defendants will bear plaintiff’s costs and legal expenses of 18000 Shekels.
High Adventure Ministries vs. Strategic Group and the Voice of Hope LTD; ruling on interim injunction by Judge Hendel 7 May 2018.
I think this ruling is balanced. It is in stark contrast to the en banc decision in the Bagatz ruling on the legality of the lex-specialis Arutz Sheva where the Supreme Court overturned a Law that legalized the station, basing themselves on the spurious argument that allowing the station would interfere with other station’s being able to attract advertising revenue, alleged to be a fundamental right under the quasi-constitutional Basic Law – Freedom of Occupation, whilst ignoring the fact that the appellants acted in bad faith (Yossi Sarid was simultaneously campaigning for Abu Nathan to get the Nobel Peace Prize for the Voice of Peace), and with no mention of the other quasi-constitutional right, that of Freedom of Speech, defended successfully by Judge Agranat in 73/53 Bagatz Kol HaAm vs. Ministry of Interior, 1953 where..
Oh, better far to live and die
Under the brave black flag I fly,
Than play a sanctimonious part,
With a pirate head and a pirate heart.
Away to the cheating world go you,
Where pirates all are well-to-do;
But I’ll be true to the song I sing,
And live and die a Pirate King.
From 2006 to 2014, we have noted that Israel has been on the United States Special 301 priority watch list of countries having allegedly innadequate IP protection. The main criticism was the pharmaceutical extension regime in Israel which was believed to be too liberal to generic manufacturers. The amendment of the amendment was reamended and Israel’s status was upgraded.
A second criticism was that Israel’s copyright regime did not provide tools to hold Internet Service Providers (ISPs) responsible for preventing free access to copyright materials such as songs, movies and television series over the Internet. There are good arguments for and against making service providers responsible. They are not policemen and should not be. There is a perceived problem that without monetary compensation for their creative output, producers and artists will not create.
There is a new copyright bill pending legislation in Israel that addressed this issue, and a copy of which may be found here. The purpose of the bill is to try to reduce copyright piracy on the Internet, particularly of audio-visual works.
The following analysis is based on (plagiarises with permission) a summary sent to me by Howard Poliner, who works in the Justice Department on IP legislation.
The bill contains four elements:
An expansion of the concept of indirect infringement, to include websites that offer viewers access to unauthorized content such as movies and TV series. The indirect inclusion includes links to an offshore location in cases of actual or constructive knowledge of the act and intent to profit.
This element will have utility to the extent that the Israeli courts can thereby obtain jurisdiction over the operators of the web site that aggregates the links. However, where this entity is not identified, then this part of the amendment won’t have much real world effect.
Blocking Orders. While some courts have issued these in the past, other courts claim that without specific authorizing legislation they do not have authority to grant blocking orders. Hence the legislation.
This element is likely to become the best tool for disrupting internet piracy. The proposal also clarifies that the cost of the blocking order will be borne by the applicant and not the Internet Service Provider (ISP). Apparently, there are actual costs in carrying out such blocking order.
Discovery of the identities of up-loaders of infringing content.
Enhanced criminal penalties.
Tel Aviv Law School (Amnon Goldenberg Institute run by Professor Michael Birnhack) has published their comments on the bill, as have others, and it is scheduled to be debated by the Economics Committee of the Knesset on 21 May 2018.
The goal of the Ministry of Justice in formulating the bill was to find language that would be wide enough to catch pirates, but narrow enough to not cause any unwanted collateral damage. This goal was difficult to achieve in the proposed 48A.
Content developers and rights holders would prefer that the legislator err, if at all, on the side of over-protection, whereas the advocates of fair use and free speech prefer that the legislator err, if at all, on the side of under protection.
What is not included in the Bill, despite calls for such, is:
The “notice and takedown” case-law seems to work, so why fix it? Although we have heard comments from legitimate web sites that a “safe harbour” might help them should 48A prove to broad in practice.
Currently, Israel does not have technical performance measures (TPM), something mandated by the 1996 WIPO treaties and intended for a different era, but which may have some unintended relevance in a world where content is no longer delivered on DVD, but rather through on-line subscription services. The Israel Justice Ministry does not have any a priori objection to either of these matters, however they are both incredibly complex to draft and if drafted improperly can have grave unintended consequences. For example, an overly broad TPM provision might have unintended consequences for tech companies and their developments.
The Justice Ministry considers that both of these issues are worthy of further study, but to move forward with them considers they should get the full legislative process by issuance of a proposal, requesting public comment, the drafting of a bill, and Knesset discussion, rather than a last-minute add-on to a pending bill.
The current bill is cautious and conservative, with the drafters having the perception that it is easier to add measures than to cope with overly broad powers and runaway judges.
The proposed legislation seems balanced and well-considered.
Certainly consumers of content should compensate the developers of the content for their efforts, and have little patience for those that download films and series, arguing that the developers don’t lose anything as they wouldn’t pay for it anyway. Traditionally, Jewish Law did not generally recognize non-tangible property rights, although entertainment, such as a dance could have value and be used instead of a ring, for marriage purposes. The modern economy and civilization has moved on and IP rights are an essential development. Israel should be a light to the world in judicial matters. However, where there are widely accepted minimum standards of behaviour, it is important that Israeli legislation and private behaviour does not fall behind. That said, I don’t think that there is any basis for assuming that people write songs or create films for revenue in 70 years time or for 50 years after death. The actuarial depreciation of such revenue streams to the time of writing results in such future profits as being negligible. I would prefer that:
laws on copyright infringement be coupled with the need to register copyright (as once required in the US, and required for trademarks, patents and designs.
That the period of protection be significantly shortened to perhaps 10 or 15 years.
That after initial launch in cinemas or as albums, that movies and songs become available for reasonable cost over the Internet by legitimate streaming services, and that viewers can choose between premium advertisement-free access and sponsored access.
there should be broad fair use exceptions.
I am very put out that academic papers are developed by public universities and that access often requires payment. I want to see access for all with the universities sponsoring the publication rights, and more journals being exclusively on-line. Knowledge should be in the public domain, but authors should be recognized. There seems no place for commercial publishers of academic journals in the modern world.
Ilan Cohn, Dorit Karine and Former Commisioner Asa Kling are to be congratulated for organizing a balanced high level program with parallel sessions relating to different aspects of IP, that was fairly well-structured. It was less schleppy than the 2016 reincarnation, but was nevertheless not inspiring. AParticipants returning to their offices would probably use terms like OK (בסדר) to describe the event to their colleagues. However, I can’t see anyone telling those colleagues that they missed out by not attending. Attendance levels were high for an Israel IP event, but low when considering the potential and the resources invested.
As in previous years, the event was held at the prestigious David Intercontinental in Tel Aviv. There were over a hundred speakers, but luckily they were spread out over two days and with three sessions running in parallel and most having panels of four or five speakers, this was less overwhelming than it sounds.
After the usual self-congratulatory opening remarks, the conference kicked off with Judge Asher Grunis former Head of Supreme Court criticizing Judge made law, specifically the infamous A.Sh.I.R. ruling. Being a formalist myself, it was enjoyable hearing a Supreme Court president criticizing judges doing what they like.
It would have been nice would have been reference to the recent injunction against Rami Levy in the Baladi case and also the controversial Unipharm vs. Sanofi which both related to Unjust Enrichment in IP matters. Then again, Rami Levy recently appealed the pasta injunction and may well be appealing the minute steak injunction, and Unipharm vs. Sanofi is under appeal, so perhaps he was correct not to address these cases.
It is not every day that one gets to hear a former Head of the Supreme Court discussing judicial legislation which is a hot topic at present due to attempts by the Justice Minister to reign in judicial activism.
Unfortunately, Judge Gronis didn’t bother using visual aids, and did not balance his talk by showing how judicial creations such a contributory infringement and indirect infringement (Srori, Rav Bareakh) can be valuable.
The conference was wide-ranging, with sessions on various aspects of patenting, including pharmaceuticals and computing which are always controversial.
There were also sessions on the interfaces of trademarks and designs and copyright and designs. The issue of content piracy over the Internet and new legislation addressing this issue was presented. There was a session on trade secrets and one on copyright infringement over the Internet, so there was much to interest IP lawyers and not just patent attorneys.
New tax issues relating to international companies were discussed, and how this would likely affect Israel. I took the opportunity to ask the panel about the VAT issue, and Adv. Ayal Shenhav confirmed my understanding that services relating to an asset in Israel do indeed incur VAT. This is a practical issue that affects IP practitioners. I would have preferred some sessions on such practical matters, as there is confusion among practitioners.
There was a session on the fashion industry and one on IP rights and competition law. Licensing agreement and Medical devices were discussed, as was the Internet of Things and standard non-discriminatory licenses. There was also a session on traditional knowledge.
Apart from the keynote lectures and the final session, there were generally three parallel and diverse sessions going at any time, so everyone could find something of interest; whether related to their practice or a window on some other aspect of IP.
As I had to pick and choose myself, although I did try to slip in and out to get some sort of feel for the different sessions running in parallel, it is difficult to give a fair overview of the entire event. It is certainly possible that the scheduling resulted in me totally missing sessions that I would have thoroughly enjoyed.
I rather enjoyed a session on the Interface Between IP Law and Competition Law, where Judge Grosskopf (now of the Supreme Court) related to the groundbreaking Unipharm vs. Sanofi ruling he gave in 2015. Adv. Liad Whatstein who is appealing the ruling gave an impassioned speech arguing that it was unprecedented and problematic. I’ve read and indeed translated that ruling. I marveled at Adv. Adi Levit and the Tomer clan having the audacity to bring the charges and Adi’s skills in obtaining the ruling. Most litigators are very clearly pro-generic or pro-drug developers depending on who their clients are. Nevertheless, it was fascinating to see Adv. Liad Whatstein sitting next to Judge Grosskopf and eloquently advocating for the pharma industry and condemning the decision. I suspect however, that those less familiar with the case, could have benefitted from an overview and introduction.
When questions were taken from the floor, I tried to obtain a straw poll from the panel on the legality of compatible refills for coffee machines, which was on topic for the interface between IP and competition law, and is something I am working on. It is also a down-to-earth issue that anyone present could relate to, whereas the pharma case was very specific. Unfortunately, none of the panelists wanted to go on record one way or the other.
Dr Gil Tomer then posed a question, except it was actually a little PR speech. I am used to his father Dr Zebulun Tomer doing this at IP events, but this was the first time I’ve seen the son doing the same thing.
I think there are more interesting and engaging ways to relate to the issues raised, such as by a formal moderated debate between industrialists and litigators representing the pharma and generic industries. This is, I am afraid, a general criticism of the conference as a whole. There was little thought in how to present the various issues in an entertaining manner. Many speakers forgo the use of slides, and those that did use them, tended to cram in too much information and then to read it.
Dr Shlomo Cohen chaired a session on A Start Up Nation Israel’s Experience that I slipped into and found fascinating. Professor Oded Shoseyov showed how tobacco plants could be engineered to grow proteins such as collagen for wound healing of diabetics and others with leg ulcers and wounds that weren’t otherwise healing.
I attended a session on 3D printing that was nicely chaired by Heidi Brun, but left in the middle. The reason she gave for exploring three-dimensional printing was because she wondered if the wide dissemination of product related data for home printing would revolutionize consumerism and disrupt markets in the way that digital music files and digitalization of data over the Internet has revolutionized music and data consumption. Heidi is particularly well-known for writing up patent applications for communication systems. Data transmission enables digital printing of objects. Printing does not give the structural integrity required for many purposes. Three dimensional printing is very expensive and slow. It is good for one-offs which is why it is popular for prototyping and also finds use in fabricating prosthetics. Printing provides a flexibility for manufacturing stacked and interlocking parts that traditional manufacturing is unable to accomplish. As a materials scientist, I find some aspects of the technology interesting. However, I don’t find the legal aspects exciting or in any way stimulating, and think that there is a lot of hype and less substance. At IP conferences abroad I have attended sessions on digital printing that were more informative and better presented. Still it is an area that the trade journals and blogs do discuss. Possibly for the same reasons that I found the biotechnology fascinating, people not familiar with materials processing may have found this three-dimensional printing session more worth-while.
Tamir Afori chaired a session on copyright infringement. Mr Yoram Mokady, the VP of content at HOT described how HOT invests in creating new local content, but increasingly Israelis stream episodes and films over the Internet from illegal hosting websites, and don’t even use the cheap App that is available for a nominal fee. I found his references to piracy excessive and his terming the issue theft, simply wrong. Coyright infringement is not theft. He noted that Israelis have learned not to pick wild flowers, and that Israel can apparently develop software and infiltrate and interfere with software running centrifuges in Iran so that if there was interest, the problem could be dealt with.
Adv. Ayelet Freedman of the IP Law Department of the Ministry of Justice described recent legislation that addresses this issue. I was placed to see that the legislation was a little more balanced than the HOT presentation. One requires a court order to have ISPs block websites, giving judicial oversight. Infringers have a right to privacy. Such a court ruling was recently issued in Australia. I am all for giving junior colleagues a chance to present and to give women more prominent roles, but think that in this instance, it would be have been better had Howard Poliner made the presentation.
I noted that my friends from the IP department at Cisco (formerly News Datacom) who attended the IPR conference last month, did not attend the AIPPI event. This was a shame as they actually develop software for precisely this type of thing. It might have been interesting to hear an overview of the technical challenges and solutions and not just the legal ones. I agree that the solution includes education, and perhaps the educationalists on the morning plenum could have addressed how such issues should be taught. Some of the issues are moral and ethical and one wonders, with half a dozen of Israel’s patent attorneys being trained rabbis, if inviting one of them to provide a perspective might have been interesting. I believe that copyright protection is far too long tto provide any sort of incentive to create, and it would be nice to see this issue addressed. I note that Gad Oron, the Director of CISAC, the international Confederation of Unions of Creator and Composers. is in Israel next week as a keynote speaker at the Gabrieli Memorial Conference. Having such an event the week after the present conference is unfortunate, but a memorial lecture is generally at the same time each year. If the conference..
Nahum and Ehud Gabrieli of Seligsohn Gabrieli & Co. are hosting a conference in memory of Arnan Gabrieli at Airforce House Herzliya on 8th May 2018. The event is cosponsored with the Haifa Center for Law and Technology and AKUM – the main Performers Copyright Collection Society in Israel.
The program features a lecture by Gad Oron who now manages CISAC, the international Confederation of Unions of Creator and Composers , and Jennifer Bernal, the Public Policy Manager of Google.
Scholarships for outstanding IP Students in memory of Arnan Gabrieli will be awarded.
I worked for Seligsohn Gabrieli & Co. back in Arnan’s day, when the firm was called Seligsohn et Gabrieli before I left in 2004 to set up my own patent attorney firm. Back in those days, Gad Oron was busy running around the District Courts as, on behalf of AKUM, the firm sued restaurants and hairdressing salons for streaming Israeli music without license. Gad went to London where he did an LLM under Professor Jeremy Phillips at Queen Mary College, which eventually led to his current position.
This conference is a fitting tribute to Arnan who was both a practitioner and scholar.
Back in February, we reported regarding a temporary injunction that Barilla obtained in the Tel Aviv District Court against Rami Levy, requiring them to remove packages of pasta that came boxed in blue boxes with cellophane windows and similar packaging to Barilla’s range of pastas.
The image above shows Rami Levy’s packaging under the Olla own-brand on the left, and the Barilla packaging on the right.
Whilst it is true that the Olla packaging does state Rami-Levy – Shivuk HaShikma (Sycamore Packaging), and the name of the pasta is written in Hebrew, it is also true that both brand-names end with the syllable and letters lla, and the fonts are italicized and slope to the right.
Rami Levy appealed the decision to the Supreme Court but Judge Solberg upheld the temporary injunction pending a full trial and ruling, and also widened it to cover pasta sauces, noting that like Barilla, Rami Levy uses glass jars with blue lids for their tomato sauces. Costs of 40,000 Shekels were awarded to Barilla for having to deal with the appeal.
We note that Rami Levy has a further on brand packaging for dried pasta (on the right), where Taaman (whose own packaging is blue) package their pasta for Rami Levy in cellophane bags that seem inspired by Osem’s Perfecto range (on the left) so they can simply pour out the boxes and bag in cellophane, at least until Osem sues them.
We also note that Rami Levy (on the left) recently jumped into the frying pan with minute steaks, using a packaging scheme not vastly dissimilar from Baladi’s (on the right), and that Judge Avrahami of the Petach Tikveh District Court granted a temporary injunction requiring Rami Levy to adhere a sticker that is not red, white or black to their frozen meat package of minute steaks that should be at least 11 cm by 8.5 cm, that is clearly printed and which states that the product is under Rami Levy’s own label. The sticker must not include the price or he words “Special Offer”, that could dilute the effect of differentiating between the products. The sticker is to be applied to the front of the packaging at the top, under the term “Maadaniyah” (delicatessen).
Shuka is a fictitious insurance broker used in a long running and highly effective, humourous series of advertisements by IDI, an insurance company offering direct insurance services over the phone by dialing 9,000,000.
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.
There 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 Opposers claims and forbade the applicant from using the advertising campaign clips and radio advertisements and various other advertisements.
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, hedonisic, 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. The Chief Justice rejected this request on 30 July 2017, summarizing as follows:
In the ruling, the court reviewed the various claims of the Association of Insurance Agents in Israel and the relevant law and concluded that there is no legal basis to prevent he advertisements from being aired. There advertisements are not libelous under the Law of Libel and Slander 1965, since even if they were to be libelous which is no clear, Section 4 of the Law differentiates between individuals and groups….
The Deputy Commissioner saw fit to quote from this ruling since the parties disagree with what the Supreme Court actually ruled, and the Association of Insurance Agents in Israel brought the ruling in support of their position.
Summary of Grounds for the Opposition
The Association of Insurance Agents in Israel (Opposer) claims that the that the term ‘Shuka’ does not serve as a trademark or a service mark since it parodies the services of others rather than indicates the services of the applicant. IDI Insurance does not offer products or services under the name Shuka.
The Opposer claims that the name lacks distinctiveness since it is intended to be a general name for all insurance brokers and was used that way in trade purposes and so is ineligible for registration under Section 11(1) of the Ordinance. They claim that the term represents a parody of an insurance broker and is thus descriptive and ineligible for registration under Section 12 of the Ordinance.
The Association of Insurance Agents in Israel also claim that the term is contrary to public order and is anti-establishment in that it laughs and mocks the community of insurance brokers and encourages unfair competition. Consequently registration of the mark is contrary to Sections 11(5) and 11(6) of the Ordinance. The Opposer considers it wrong to allow the Applicants to perpetualize this fictitious image of insurance brokers via trademark registration.
In their statement of case, the Association of Insurance Agents in Israel alleged that the mark was the name of another, and its registration was thus contrary to Section 12 of the Ordinance.
The Opposer submitted an Affidavit of Arieh Abramovitz, the chosen president of the Association of Insurance Agents in Israel. Mr Abramovitz testified in this affidavit that the Applicant does not offer any service or product under the name “Shuka”, and the registration of the mark could deceive the community into believing that the Opposer acts via Insurance Brokers. A Statement of Case regarding a legal proceeding between the parties was appended to this Affidavit.
Applicant’s Claims and Evidence
The Applicant claims that the issue of whether the character Shuka is slanderous or not is irrelevant and the issue is whether or not this mark is registerable.
The Applicant also claims that the Opposer considering the marks as descriptive and thus non-registerable is an illegal widening of the Statement of Case and did not bring evidence to support this contention. The Applicant claims that the mark is distinctive since today the mark is strongly identified with the Applicant as testified by their witness, Mr Ronen Saad. The Applicant claims that there is nothing preventing an imaginary character as a trademark, even if the character is not a product being sold.
The Applicant further claims that the Opposer has to prove that the mark creates unfair competition since they themselves used the mark prior to the use made by the Applicants and the Applicant tried to build its reputation on this mark. The Applicant [probably the Opposer is intended –MF] coined the mark so their claim should be rejected.
The Applicant claims that the mark Shuka is not identical to the name of another individual. That the mark was the name of Insurance Broker Joshua Zohar was first raised in the proceeding, but it contradicts factual findings ruled in a different procedure between the parties (Civil Proceeding 37333-03-11 Zohar and Others vs. Chular et al.). This claim even stands in contradiction to the Opposer’s claim that Shuka is a fictitious character.
Mr Raanan Saad the Deputy CEO and Head of Marketing of the Applicant testified on behalf of the Applicant. He claims that the mark is identified by consumers with the Applicant which deals with direct sales of insurance without using brokers. Mr Saad related to previous proceedings between the parties and to attempts by the Opposers to prevent Applicant’s advertisements being screened by the Second Authority.
The Opposer’s Statement of Case does not relate to the claim that the mark is used in trade under Section 11(10) of the Ordinance and that the mark opposes the Public Order contrary to Section 11(5) of the Ordinance. These claims also do not find factual support in the Opposer’s evidence. The Opposer claimed in their counter-summation that we are dealing with legal claims that it was legitimate to raise even in the summation stage, basing themselves on Civil Appeal 724/87 Kalfa vs. Gold, p.d. 48(1) 220 where the court ruled that:
The Exception – in this case is to raise the legal claim (in contrast to factual claims) which are part of the basic grounds for complaint and which arise from the legal and factual data laid out before the Court and before the opposing side. Claims of this type (such as that before us) – should not lock the door to them being raised at the time of the Appeal.
As to the allegation that the requested mark is descriptive or acceptable in trade, the Deputy Commissioner does not think that there is sufficient evidence to support the allegation that the Opposer wishes her to conclude. It will be remembered that we are dealing with a fictitious character of an insurance broker. Even Mr Arieh Abramovitz notes this and points to it in his Affidavit, section 4:
Shuka is an imaginary character, a creation of the Applicant’s advertising campaign that makes fun of insurance brokers as parasites that are unnecessary and unwanted.
The name Shuka is an ‘imaginary’ insurance agent, i.e. a fabrication, a fictitious person who does not exist.
Also Mr Saad’s evidence on behalf of the Oposer supports the contention that we are dealing with an invented character:
The campaign made use of the fictitious character Shuka, after the Applicant ensured that there is no insurance brokers or insurance broker that has the fictitious name used in the advertisement.
There is an internal contradiction in the claim of the Opposer that the name is used in the trade and the claim that the character bearing the name slanders insurance brokers as parasites, since the Deputy Commissioner does not think that we are dealing with a mark that is in general use to describe insurance brokers and the services that they provide. On page 35 of “Trademark Law and Related Legislation” Seligsohn writes:
What is the meaning of ‘a mark that describes the services? First and foremost the intent is to the term used for and the name of the goods…
Then on Page 38:
The second type of descriptive marks are those that describe the nature of the goods and their properties. These include the general properties of the goods and the specific properties relating to specific goods.
From the files it is clear that not only was no evidence submitted to support a legal conclusion that the mark is used in trade and is therefore not registerable, but rather the evidence brought supports the opposite conclusion.
The claim that registration was contrary to public order or morality is not supported by the claims and evidence. Mr Abramovitz’ affidavit focuses on the allegation that the mark is misleading. So the Deputy Commissioner does not think that any factual basis was brought to support a conclusion that the mark was not registerable under Section 11(5) of the Law. The Deputy Commissioner herself does NOT think that the mark is contrary to public order or morality, as one is relating to a common personal name that is not insulting in Hebrew or any other language. It is also beyond dispute that the Applicants created the character and the mark as part of the company branding (see page 27 lines 9-18 of the protocol from the hearing of 16 May 2017), so the registration of the mark does not infringe the copyright of anyone.
As to the usage of the mark holder, this was widely discussed in the Supreme Court ruling which determined that the usage does not create grounds for awarding damages under the Law of Slander 1965, the Law of Trade Related Torts 1999 or the Law of Supervision of Financial Services (Insurance) 1981. To be accurate, it is noted that the ground of the Law of Supervision of Financial Services (Insurance) 1981 was rejected by the District Court and was not raised before the Supreme Court, so they did not relate to it.
Consequently, the Deputy Commissioner rejected the Opposer’s claims that the registration was against public order, as first raised in their summations in an illegitimate attempt to widen the basis of their opposition.
The discussion before us focuses on the Opposer’s claim that the trademark is likely to mislead the Committee regarding the services the Applicant offers. Section 11(6) of the Ordinance provides the normative framework of this allegation, and it states that:
These marks are not registerable:
(6) marks that are misleading to the public, a mark that includes a false indication of the source of goods that encourages unfair competition
As Seligsohn explained on page 30:
Marks that mislead the public: The mark itself needs to be misleading, and only in extreme cases is it possible to conclude that a mark includes this property, from usage of the mark.
In a similar way, J. Thomas McCarthy states in his book McCarthy on Trademarks (2014), pages 2-69:
“The consumer’s right to be told the truth not only extends to the facts about the nature and quality of the product, but also extends to the true facts about the source and sponsorship of the products purchased.”
The Opposer claims that the public are likely to believe that the applicants act via insurance brokers when in practice, they do not. The Deputy Commissioner does not consider that this claim was proven. Mr Abramovitz repeated this claim in their cross-examination, but this was not persuasive (Protocol page 18 line 27 to page 19 line 7:
Attorney: You think, I continue the question, you think that someone who sees the advertisements of the Applicant on television placed by Direct Insurance that feature the imaginary character of Shuka is confusing so that one might thing that they are actually insurance brokers?
Attorney: A person who sees the advertisements on television,
Abramovitz: My response was unclear? yes.
If the Opposers indeed think that someone watching advertisements believes that the Applicant operates via insurance brokers, the claim under Section 15 of the Complaint under the heading “The negative campaign of the Defendant that tries to undermine and wipe..
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.
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 submied 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 concerntrated on the allegation that the publication of WO2005/041933 from 12 May 2005 anticipates the invention and negates novelty.
Claim 1 states:
“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:
A long acting pharmaceutical composition
For parenteral dosing
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.
WO2005/041933 describes a process for creating nanoparticles for the slow release of glatiramer. The period over which the slow release takes place is not defined in the publication, but it is clear that a slow rather than instant release is intended. See page 10, lines 29-33 and page 10 lines 17-20 thereof. The publication also describes using the formulation in various ways, including intraveniously, for treating multiple schlerosis.
It appears that there is no argument that the preparation can be dispensed parenterally [i.e. not orally or rectally – MF] – seepage 13 lines 18-24.
It is also noted that WO2005/041933 notes that such nano-particles may be dispensed from a depot:
The Applicant claims that WO2005/041933 does not provide the duration of the slow release claimed in claim 1 [about one week to six months – MF] and so is not anticipated. The Applicant also alleges that WO2005/041933 teaches away from the invention but doesn’t explain how.
Despite this differences, here is nothing in the Applicants statement of case to indicate that the depot is prepared differently of that its elements are different from those of WO2005/041933. Any difference in the slow release period would depend on one or other of these. Thus it appears that the actual slow release period is simply the result of implementing the teachings of WO2005/041933 and is thus an inherent characteristic thereof. See 41362-07-15 DSM vs. PMS Shielding Factory ltd, 22 January 2017.
As to inherent characteristics, the US case-law relates to this in Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249, 66 S. Ct. 81, 84 (1945):
“Where there has been use of an article or where the method of its manufacture is known, more than a new advantage of the product must be discovered in order to claim invention. See De Forest Radio Co. v. General Electric Co., 283 U.S. 664, 682. It is not invention to perceive that the product which others had discovered had qualities they failed to detect. See Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 369.”
In a different matter:
“Finally, we address Bristol’s argument that new uses of old processes are patentable, that we should treat the expressions of efficacy as limitations because they distinguish the new use of the process over the prior art, and that claims should be read to preserve their validity. … Newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.
(Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001))
It is also noted that the figures of the application indicae tha there is a formulation that provides release over a 32 day period, and various amorphous statements that the depot can be adjusted to release the drug over periods ranging from two weeks to a number of months. See page 9 lines 16-18:
“Depending on the duration of action required, each depot or implantable device of the present invention will typically contain between about 20 and 750 mg of the active ingredient, designed to be released over a period ranging from a couple of weeks to a number of months.”
The period of freeing the formulation is described in examples 6 and 7 of the Application. These examples describe how the formulation was injected into animals over various periods of once weekly, once fortnightly and once monthly. There formulation was not injected less frequently. The results of these experiments is not given in the application.
From that stated it appears that the basis of claim 1 that differentiates it from WO2005/041933 is not supported by examples and there is therefore doubt whether it is supported. In other words, there is doubt if the invention is supported by the specification as required by Section 13 of the Law.
On the other hand, if the specification does provide sufficient support, and persons of the art can practice the invention based on the specification, then there is nothing to differentiate the invention from the teaching of WO2005/041933 which similarly provides rough guidelines regarding the slow release of the active ingredient.
Claim 16 claims a medical device for treating Multiple Schlerosis having the same elements as claim 1, so the above arguments apply to claim 16 as well.
Dependent claims 2 and 17 add introduction of the depot in an appropriate par of th ebody. The Deputty Commissioner does not consider that this adds anything patentable over WO2005/041933.is similarly problematic.
Dependent claims 5 and 20 detail the elements of Glatiramer. This is the active ingredient of Copaxone which predates the effective filing date.
Claims 6 and 21 define Glatiramer as including between 15 and about 100 amino-acids. The application itself teaches that this was known about Glatiramer Acetate prior to the effective filing data.
The Deputy Commissioner likewise find the other claims invalid for reasons sated by Teva in their Statement of Case.
Under Regulation 74 of the Patent Regulations 1968, the Applicant has 30 days to respond to this detailed ruling and can request a hgearing under Section 74(c).
Ex-partes ruling by Depuy Commissioner Jacqueline Bracha on patentability of IL220476 to Mipa, 22 March 2018.
Copaxone provided MS sufferers and TEVA with a lifeline for many years. Now the drug is off-patent and both Teva and various generic competitors have tried to monopolize dosing regimes to monopolize the treatment. Following losses, drop in share price and cuts to try to make the company viable, Teva have laid off a number of Patent Attorneys. This may be the basis of them abandoning the Opposition. The Deputy Commissioner is correct to consider whether the Statement of Case was adequate to challenge the assumption of validity.
Ro.R. Sheli ltd own Israel Trademark No. 233836 for “wok and walk noodle bar” shown alongside.
Wok to Walk Franchise B.V. filed a cancellation proceeding.
The mark owner has tried to have some sections of the request for cancellation struck from the record. Sections 18 -22 claim that the registration was in bad faith and so the trademarks should be cancelled under Section 39(a1) of the ordinance 1972. According to the mark owner, it appears that in an Affidavit by Rami Lev opposing expedited examination and registration of TM Application no. 291833 it is claimed that the franchise started trading in 2004. However the owner of the mark in question registered their mark back in 2000. So the trademark owner claims that there is no grounds to accuse them of acting in bad faith since their use of the mark preceded that of the party requesting cancellation.
Wok to Walk Franchise oppose this request and claims that now is not the time to relate to this claim and to do so at his stage is not in accordance with the civil procedure. Deputy Commissioner Ms Jacqueline Bracha concurs with Wok to Walk Franchise.
The test for whether or not there is a basis for suing on these grounds is whether “the plaintiff, on the assumption that the factual basis for the claim is proven, is entitled to receive the requested sanction (Civil Appeal 109//49 Engineering and Industry Company vs. Mizrach Insurance Services, p.d. 5, 1585, 1591 (1951). Cancellations of Statements of Case on the basis of lack of case should be allowed only in cases where were the plaintiff to successfully prove all the significant facts of the case, they would still not be entitled to a ruling since the statement of case does not include a legal basis for the claim that obliges the other party (Yoel Zusman “Civil Procedure 384-385, 7th Edition, edited by Shlomo Levine, 1995). The purpose of this regulation is to prevent purposeless hearings and expenses in unnecessary human resources considering pointless claims.
In this case, the request for cancellation and the sections to be cancelled are concerned with a bad faith allegation due to the mark owner knowing about the competing mark, and registered it to prevent the franchise going international. The franchise argue that their mark was well known even before the registered mark was applied for in Israel.
If the requester for cancellation is able to prove their claims, they will be entitled to the requested sanction and the registration will be cancelled. The mark owner’s contention is that this cannot be proven since the franchise only requested a business license in 2000. It is inappropriate to simply throw out this contention, since to throw out it in a preliminary action one has to establish that there is no legal basis, not that there is no evidence or insufficient evidence. Evidence is considered in the main hearing, and theoretically the bad faith allegation could be proven.
The mark owner also claims that it is appropriate to clarify the issues under contention and to create a list. It is true that the judge has the authority to hold a pretrial hearing and make such a list under Section 13 of the Civil Court Procedures 1984. But under the Trademark Regulations 1940 that apply in this instance, pretrial hearings are not generally conducted as the Trademark Regulations 1940 do not discuss these. As a general rule, hearings are scheduled after evidence is submitted (regulation 44).
That said, the Commissioner has the authority to grant a partial decision under Regulation 45(a1):
At any stage of the proceeding, can rule on any of the issues if it appears that the rest of the proceedings cannot affect the findings based on the evidence or the issues requiring a decision.
The Deputy Commissioner does not consider it possible or efficient to give a ruling requiring a decision on contested facts before the parties submit their evidence and witnesses are cross-examined on the testimonies. It appears that there is a difference of opinion regarding when the trademark holder’s activities started and which mark was used at that stage, and it is too early to make a ruling on this matters.
The request to have the issue struck from the Statement of Case Is dismissed. The mark holder will pay the challenger 2000 Shekels including VAT.
Interim Ruling concerning TM 233836 “wok and walk noodle bar” cancellation proceeding, 1 March 2018.
I think the interim ruling is correct. As the main issue is under judicial review I am refraining from commenting on it.
This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.
The claims of passing off and copyright infringement were considered unlikely to prevail and thus not grounds for a temporary injunction. However, Judge Avrahami saw fit to grant a temporary injunction on the grounds of unjust enrichment. Rather than have Rami Levy’s product removed from the shelves and repackaged which could result in the meat being lost, she ruled that a sticker in a contrasting colour should be attached to the packages indicating that Maadaniya was Rami Levy’s own brand. Rami Levy was also advised to work towards introducing a more different package. The parties were invited to try to settle their differences without the court having to hear the case in its entirety.
Baladi makes meat products including minute steak which are thinly sliced steak that can be roasted in a frying pan in one minute. Baladi claims to have designed the packaging that they use for minute steaks.
Rami Levi is a public company that runs supermarkets across Israel. The company stocks known brands and also sells popular products packaged for them under their own label.
Rami Levi sells Baladi products. It also sells minute steaks under their only label “Rami Levi’s Sycamore Marketing Delicatessen”. Rami Levi’s own label minute steaks are packaged by TBone Veal.
In a preliminary ruling, Baladi claimed that minute steaks were not sold in supermarkets until they launched this product in November 2017 with a massive and expensive sales campaign. From the launch until 19 March 2018, the product sold well due to the marketing campaign. On 19 March 2018, suddenly, without notice, Rami Levi forbade Baladi to replenish supplies and blocked the product, and instead supplied minute steaks under their own label.
Baladi claims that the own-label brand is packaged in a copycat package of that of their product, and that this was a calculated, organized action of Rami Levi in bad faith, to ride on Baladi’s advertising campaign and product launch, benefiting from their investment. Baladi’s campaign has drawn customers to want to purchase their product. The customers go to the meat refrigerators and find the infringing product that is a copy of their package and are mislead into believing that they are purchasing Baladi’s product.
Baladi considers that the case is particularly serious since Rami Levi is a retailer that can block their product whilst offering the competing own-label product. This is particularly problematic since Rami Levi’s product launch was just before Pesach and close to Independence Day which is the start of the Israel barbecue season when sales go up significantly.
In light of the above, on 22 March 2018, Baladi sued for passing off, unfair trade practices, copyright infringement in the product package and unjust enrichment. They filed their case in the Tel Aviv and Jaffa District Court. Baladi requested a permanent injunction, compensation and production of sales data. For the purpose of assessing the court fees, Baladi assess the damages at 2,750,000 Shekels.
Baladi also requested a temporary injunction Rami Levi to prevent them using the product sold under their private label or at least to prevent them selling the product in the packaging used at the time of filing, and to cease from blocking Baladi’s products, and to enable their products to be sold on an equal basis with other frozen meat products. The Request was supported by an affidavit from Ms Irene Feldman, the VCFO of Baladi, and was filed as an ex-partes action for immediate attention since any delay will cause irreparable damage.
In response, Yossi Sabato, the VCEO of Rami Levy submitted an Affidavit claiming that Baladi was acting in extreme bad faith by not telling the court that they were conducting a parallel action against El Gaucho which is a label of TBone Veal in the Central District Court as 4347-01-18. In that instance, they made similar accusations which were rejected. This action, in a different court, against a different label, was a type of forum shopping that was indicative of bad faith and should be sufficient for the case to be thrown out. This was simply an attempt to corner the market and to prevent competition. The Ex-partes actions in both the El Gaucho case and in the present instance, are cynical exploitations of the legal system designed to get free publicity, and the plaintiff was suing for extreme damages without having first contacted the supermarket chain, which is itself inequitable behaviour for which the case should be thrown out.
With regards to the complaint itself, Rami Levy claims that Baladi is trying to obtain a monopoly on minute steaks, which is a term known in Israel and abroad and which they did not coin. Baladi also tried to obtain a trademark for this generic term. Minute steaks have been advertised in Israel in the past and are available in restaurants and from butchers, and even from supermarkets. Baladi has not been in the market long enough for minute steaks to be identified with them to the extent that they deserve a monopoly on the term (acquired distinctiveness), and a reputation that is protectable, and even Baladi does not claim to have rights to minute steaks but only to the sound of the name.
Rami Levy claims that their product package is completely different to Baladi’s, including writing and visual elements, and there is no likelihood of confusion. Baladi advertises their product with their trade-name Baladi clearly written thereon, and in the absence of this term, there is no likelihood of confusion. Rami Levy’s private label HaMaadaniya (literally the delicatessen) is well-known to Rami Levy’s customers as a low price brand, and there is no likelihood of confusion.
“Rami Levy” is written clearly on the front and back of the packaging, and is a super brand that does not need to ride on the reputation of Baladi or anyone else. The difference in price also prevents confusion, and all Rami Levy’s own branded products are clearly sold as such in their stores, and there are loads of examples of private labels being sold alongside branded goods and the public are not mislead in any way that they are purchasing something other than the own label.\
As to the issue of marketing Baladi’s products in Rami Levy’s stores, Rami Levy contends that they are under no obligation by general law (in rem) or by contract (in personam) with Baladi, to purchase any of Baladi’s products, including their meat products. Baladi’s goods are available in other chains. At present, Rami Levy stores DO stock Baladi’s minute steaks, but in view of the high price that Baladi dictates for their product, Rami Levy is under no obligation to replenish stocks of something much more expensive than their own label, which is against their policy.
In answer to Rami Levy’s response, Baladi reiterated that their issue is NOT the name ‘minute steak’, but the packaging and the product blocking. On 26 March 2018. a long hearing was held. There were many attempts to bring the parties into an understanding, and the affidavits were reviewed and the parties summarized their arguments. After the hearing the parties still refused to come to an understanding, and so there is no alternative but to reach a verdict in this instance.
It is known that the party requesting a temporary injunction has to convince the court, on the basis of apparently convincing evidence, that there is grounds for the complaint and the court then has to balance the ease of implementing the different actions, i.e. the damage to the complainant if a temporary restriction order is no issued, vs. the damage to defendant if a temporary restriction order is issued, but if it later transpires, should not have been. The court has to ascertain whether he temporary injunction was requested in good faith, and if the injunction is just and fitting in the circumstances and does not unduly damage the defendant – See Regulation 363 of the Civil Procedures Regulation 1984.
The main considerations for requesting a temporary injunction are the likelihood of prevailing and the balance of interests of the two parties, but where the court considers that the likelihood of prevailing is greater, they will be less concerned about the balance of interests, and the opposite is also true.
When deciding on a temporary injunction, the court also has to consider the honesty of the request and if it is appropriate in a specific circumstance. This necessitates the requester supplying ALL relevant information when making such a request.
The Supreme Court has ruled extensively on temporary injunctions. See for example CivilAppeal 6685/17 Mount of Salvation and Blessing ltd vs. Bank HaPoalim ltd, 10 September 2017;Civil Appeal 131/16 Ashbourne vs. Eisenberg 4 February 2016; Civil Appeal 8716/15 Maimon vs. Reitter 28 December 2015; Civil Appeal 5841/11 Axelrod vs. Bank Mizrachi 20 September 2011; CivilAppeal Representatives of the Communal House vs. Iyun 1 September 2009 and the appendices thereof.
The Question of Equitable Behaviour
Rami Levy raised the issue of whether Baladi had acted in bad faith by requesting a temporary injunction without relating to the corresponding “El Gaucho” case they had filed with a different court.
On examination of the Baladi vs. El Gaucho case it transpires that that proceeding relates to the same product as the present one, and the requested actions are similar. That said, the cases are not identical, since the El Gaucho case relates to calling the product Minute Steak whereas this instance relates to the packaging design. Indeed, Baladi has brought the El Gaucho package as an example of how a package can be designed in such a way that it is not confusingly similar. The present case also relates to Rami Levy blocking Baladi’s product from their stores.
The Judge Tamar Avrahami concurs that it would have been appropriate for Baladi to have informed the court regarding the action against El Gaucho in the Central District Court, if only since monetary damages were requested for alleged transgressions regarding the same product, and ex-partes requests for injunctions were filed, and such proceedings require full disclosure. Nevertheless, at this stage she does not find that there was forum shopping involved in deciding to file the present action in the Tel Aviv – Jaffa Court. This itself should not prevent Baladi from obtaining a temporary injunction
Rami Levy’s other claims against Baladi are more serious. Baladi filed their that Rami Levy’s packaging was confusingly similar..
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