Ignorantia juris non excusat – “ignorance of the law excuses not” and ignorantia legis neminem excusat – “ignorance of law excuses no one”.
This legal principle holds that a person who is unaware of a law may not escape liability for violating that law merely because one was unaware of it.
A commercial Broadcasting Authority sued ‘Pizza Slice’ for broadcasting the 2016 European football matches without obtaining a license for public showing.
The owner of the pizza shop claimed the defense of ignorance under Section 58 of the Israel Copyright Law. Somewhat surprisingly, the court accepted that he wasn’t to know that there were rights in the broadcast that prohibited public exhibition.
Patent Application IL 201320 to Pfizer is titled “CRYSTALLINE FORMS OF 6-[2- (METHYLCARBAMOYL) PHENYLSULFANYL]-3- E -[2- (PYRIDIN2- YL] ETHENYL] INDAZOLE SUITABLE FOR THE TREATMENT OF ABNORMAL CELL GROWTH IN MAMMALS”.
On allowance, it published for Opposition purposes, and Unipharm submitted an Opposition.
Prior to publication following allowance, Applicants have very wide discretionary powers to amend claims or submit new claims, provided the claimed mater is supported from the specification. After publication, in response to Oppositions, or even after grant, the Applicant/Patentee is only allowed to correct obvious typographical errors or to narrow the scope of protection by cancelling claims or by amendments that clearly narrow the scope of protection. Nothing that protects matter previously not within the ambit of the claims can be allowed.
In this instance, during the Opposition proceeding, Pfizer requested a narrowing amendment to the specification to clearly define the term ‘substantially pure’ that appears in claim 2. Commissioner Alon allowed the amendment in a ruling of 5 March 2018, and gave the parties a window to amend their Statements of Case to take the amendment into account.
Unipharm, who had already submitted their evidence, decided not to amend the statement of claims, but Pfizer submitted an amended Statement of Claims that was wide ranging. This included background to the development of the invention and eleven appendices.
Unipharm then requested that Pfizer’s amendment be struck from the record, arguing that amendments to the claims following amendments to the specification should be based on those amendments to the specification. Pfizer disagrees. They note that the Law does NOT require that amendments to the counter-statement of claims be related to the earlier amendments to the statement of claims at the start of the Opposition proceedings, or that they be based on the amendments to the specification. Furthermore, the interim ruling allowing amendments to the statement of case did not include such limitations.
The Applicant drew a parallel to civil court proceedings, however the Commissioner does not accept this since in civil court proceedings, when the plaintiff amends his Statement of Case, he can expect the defendant to be allowed to amend their Statement of Case, whether in direct response, or to broaden their position, and this is the risk taken when amending the Statement of Case once the proceeding is underway.
In contrast, in Patent Opposition proceedings, it is the Applicant that has a right to amend the specification, not the Opposer. In this instance, it is the Applicant that causes the Statement of Case to need to be amended, and he can therefore expect that the Opposer will also amend his Statement of Case , and will not restrict himself to amendments resulting from the Applicant’s amendment. If the Opposer does amend their Statement of Claims, the Applicant can make their amendments.
So what is the appropriate Law if the Opposer does NOT amend their Statement of Case? The Commissioner reasons that the Applicant can certainly correct their Statement of Case with respect to anything that needs correcting. Whenever the specification is amended, the main points of disagreement often shift. The Opposer deciding not to amend the Statement of Claims does not prevent the Applicant from relating to new issues raised by the amendment to the Specification, and to redirect his allegations to these issues. This serves the procedure and focuses the Statement of Case on the real issues. The Commissioner considers that the term “issues arising from the amendment” should be interpreted broadly, in light of the relevant case-law.
Nevertheless, where the amendment to the Statement of Case is totally disconnected to the amendment to the specification, it becomes a regular amendment to the Statement of Case which should be subject to the regular criteria. The submission should be accompanied with a statement justifying the amendments and explaining why they could not have been included originally, and why they should be allowable. This is necessary to prevent the amendment to the Specification becoming a technical tool for allowing unlimited amendments to the Statement of Case whenever the Specification is amended.
In this instance, the amendment to the Statement of Case was the addition of background relating to the development of the XLI formulation. From Examination of the amended Statement of Claims, the Applicant did not indicate any connection, even minimal, between the amendments to the specification and the amendments to the Statement of Case. Furthermore, the Applicant did not justify why the amendment was required now, and was not part of the original Statement of Case, or why the Statement of Case was not amended earlier.
In these circumstances, the Commissioner considers that the Opposer is correct, and the amendments as submitted should not be allowed. The Applicant is given 15 days to refile an amended Statement of Case whose claims are related to the amendment to the Specification, or to state that they do not wish to file an amended Statement of Case. Alternatively, the Applicant may submit a request to amend the Statement of Claims justifying the amendments submitted.
The deadlines for submitting evidence that were given in the interim ruling of 5 March 2018 are canceled. New deadlines will be given once the Applicant files his Statement of Case.
Costs for this will be considered when ruling costs for the main ruling.
Interim ruling by Commissioner Ophir Alon Concerning Unipharm’s Opposition to IL 201320 to Pfizer
Exforge is a blockbuster drug sold by Novartis for lowering blood pressure that combines two medications in a film-coated tablet It contains amlodipine, a dihydropyridine-type calcium channel blocker, and valsartan, an angiotensin II receptor antagonist (ARB or A2RA); typically formulated as the benzenesulfonate salt.
The drug, whose patent protectiton expires on July 9, 2019, had a world turnover in 2016 of $926 million dollars.
TEVA successfully opposed Novartis’ patent application no. IL 140665 “USE OF COMBINATION COMPOSITIONS COMPRISING VALSARTAN AND AMLODIPINE IN THE PREPARATION OF MEDICAMENTS FOR THE TREATMENT AND PREVENTION OF DIABETES ASSOCIATED WITH HYPERTENSION” in Israel. However, they failed in their opposition to the corresponding patent in Europe.
On June 7, 2018, the Paris Court of First Instance (Judge Marie Courboulay) issued a preliminary injunction against Teva’s generic version of the drug on the basis of Novartis’ European Patent EP 2 322 174. The dispute was subject to parallel proceedings in several EU countries. In fact, an injunction was issued in Gewrmany on 14 December 2017, but injunctions were refused by the courts in Spain and Switzerland. After these earlier rulings, TEVA decided not to proceed with the planned commercialization of the generic version in Austria and Finland.
0n October 16, 2017, Novartis discovered that Teva was commercializing generic versions of the pharmaceutical in France. By February 2018, Teva had cornered 42% of the market.
Novartis sued for infringement of claims 1 and 2 of EP 2 322 174, while Teva counterclaimed alleging the invalidity of the patent based on double patenting, insufficiency, extension and obviousness. In a 42-page ruling, the Court reviewed and individually rejected all of Teva’s invalidity arguments which had also been rejected in the Opposition proceedings.
One central issue related to the sufficiency of disclosure. Teva claimed lack of sufficiency since the dosages used in the clinical trials on rats were not sufficiently specified and the exact dosages to be administered to humans were unclear. The Court clarified that the patent in question does not protect a second medical indication of a known substance, but rather the combination of two known substances with known medical indication. The inventive character of the specific patent lies with the clinical superiority of the combination itself. The Court found that clinical trials on rats were sufficiently documented and that it is well-known to persons skilled in the art that the dosages administered to humans are not the same as those administered to rats.
In its ruling, the Court ordered Teva to pay €5,846,628 to Novartis Pharma AG, the Swiss company which owns the patent, and €7,308,285 to Novartis Pharma SAS, the French licensee) as an advance on damages, prohibited further production of the generic medicines and required that Teva provide Novartis with the names and addresses of those involved in the production of the generics, information on the quantities produced, as well as to submit all relevant documentation related to the acts of infringement.
On 30 November 2016 Panama Jack International Inc filed a request to cancel Israel TM No. 79829 for Panama Jack in class 25. The registered trademark, then owned by Grupp Internacional S.A., is shown alongside.
Back in March 2017, the Adjudicator of Intellectual Property Ms Yaara Shoshani Caspi issued an interim ruling that since Grupp Internacional S.A., though represented by an Israel Law firm, did not file a response to the cancellation proceedings instituted by Panama Jack International Inc., Panama Jack can supply their evidence and she would rule on the cancellation proceeding if the arguments were persuasive.
On 2 April 2017, Panama Jack International submitted an Affidavit from Mr Erez Drucker, director of Access (Xes? Axes? Excess?) Private Investigators, to support their allegation that the mark was not in use by Grupp. Again Grupp failed to respond, despite having legal representation back then.
On 21 August 2017, Panama Jack International requested a decision despite the lack of response. On 28 March 2018 they requested to add a further Affidavit, this time from Mr Ronen Menashe, director of “”Information Services of Israel”. Again, the owner failed to respond.
(On 2 October 2017, Grupp’s attorneys requested to cease representing their client for various reasons that Ms Shoshani Caspi considers justified. On 10 October 2017 they submitted an affidavit to the effect that the client’s local attorney in Spain knew about the hearing. On 23 October 2017, Ms Shoshani Caspi assented to the request).
Now, on 23 May 2018, a hearing was held before Ms Shoshani Caspi, which Grupp and their representatives did not bother attending, despite knowing about the date thereof. Panama Jack International requested to withdraw the Affidavit by Mr Erez Drucker and to replace it with that of Mr Ronen Menashe who was available for questioning at the hearing. This request was granted. During the hearing, a recording of conversations between Mr Menashe and the Spanish office that was referred to in the Affidavit was also listened to.
Discussion and Ruling
The question in this instance is whether there is justification to cancel the issued mark. Section 41(a) of the Trademark Ordinance states:
[a] Without prejudice to the generality of the provision of indicate sections 38 to 40, application for the cancellation of the Registration Madrid of a trade mark regarding some or all of the goods or classes of amendments goods in respect of which a trade mark is registered (hereinafter – goods regarding which the cancellation is requested) may be made by any person interested on the ground that there was no bona fide intention to use the trade mark in connection with the goods for which it is registered in connection with the goods regarding which there is a request to cancel the registration and that there has in fact been no bona fide use of the trade mark in connection with those goods in connection with the goods regarding which there is a request to cancel the registration, or that there had not been any such use during the three years preceding the application for cancellation. [b] The provisions of subsection (a) shall not apply where it is proved
Thus the relevant period regarding usage of the mark by Grupp is from 30 November 2013 to 30 November 2016 when the cancellation request was submitted.
In this instance, as stated above, the mark owner failed to respond to the cancellation request, and did not even request extensions. Panama Jack International, did however, submit their evidence.
During the hearing, Mr Menashe’s integrity was examined and from his evidence and responses, Ms Shoshani Caspi was assured that he was trustworthy. Mr Menashe’s opinion included a survey and investigation of the relevant markets in Israel (i.e. clothing and footwear) in an attempt to find stores that sold goods bearing the Panana Jack man in the relevant time-period. In addition, his office searched the Internet for evidence that goods bearing the mark were available in Israel at the relevant time. He determined who owned the mark and the identities of the leading employees of the company to contact them directly to determine usage of the mark in Israel. Within the framework of Mr Menashe’s investigation, neither he nor his investigators found any indication of sale of goods under the Panama Jack trademark in the relevant time period.
It is established case-law that a registered trademark is a property right for all intents and purposes, that cannot be whittled away without cause. The burden of proof that a mark was not used lies with the challenger of the mark. See for example, Bagatz 476/82 Orlogd ltd vs. the Commissioner of Patents p.d. 39 (2) 148. During a proceeding, the burden of proof passes back and forth. Thus the requester for cancellation of a mark has to bring evidence that a mark is not in use. If this is proven, the burden of proof then falls on the mark owner to attack the challenger’s evidence and to establish that the mark is indeed in use.
The challenger has more than met the initial level of proof required to establish a prima facie case that the mark is not in use, and the mark owner failed to even attempt to rebut this position, and thus the apparent lack of use remains unchallenged. The Adjudicator considers the evidence that the mark has not been in use for three years prior to filing the cancellation submission and thus it is fitting to cancel the mark.
In light of the above and in like of claims made at the hearing, it is clear that the mark owner has intentionally ignored the challenge to the mark and the cancellation proceedings submitted to the Israel Patent and Trademark Office. In addition to concluding a lack of usage, one can only conclude that the mark owner is simply holding the mark for no purpose. One would expect the mark owner to acknowledge and respond to the cancellation proceedings by abandoning the mark, thereby rendering this proceeding unnecessary.
The mark is therefore cancelled. Using her authority under Section 69 of the Ordinance, Ms Shoshani Caspi has also issued relevant costs in the proceeding, based on the work done by the challenger, and rules 9000 Shekels costs, which the mark owner is informed of via the address in the register.
Competing Marks Proceeding – DMI Dental Supplies vs. DMI Innovative Medic al Technologies ltd.
Where there are two competing pending trademark applications in Israel, unless the parties can agree to co-exist under conditions acceptable to the Israel Patent and Trademark Office (i.e. not confusing to the public), a special proceeding occurs under Section 29 of the Trademark Ordinance 1972, to determine which application should be examined first, usually barring the other application from registration. The first to file is considered less important than the usage of the mark and the investment in promoting it. As always, inequitable behaviour trumps other considerations, and where proven, the mark of the guilty party is generally cancelled.
This interim ruling focuses on admissibility of late submitted evidence.
On 15 April 2018 there was proceeding under Section 29a of the Trademark Ordinance 1972 during which DMI Dental Supplies was ordered to produce an audited financial statement for 2017 showing sales of the company in Israel.
On 15 May 2018, DMI Dental Supplies submitted the document together additional documentation not requested, including a balance sheet, profit and loss account and explanations.
The same day, DMI Dental Supplies submitted an urgent request to add further evidence. The evidence in question was a short statement from Mr Zaza Debershvilli that attempted to establish that the name was registered since 2012. This was appended to the Affidavit of Mr Alon, a witness for DMI Dental Supplies whose Affidavit was already on file. The affidavit itself was appended to the request to allow its submission.
On 21 May 2018, DMI Innovative Medic al Technologies ltd requested that this additional, submission be removed from the file, or they be allowed to submit their balance sheet. Prior to obtaining permission, DMI Innovative Medic al Technologies ltd simply ssubmitted their balance sheet. DMI Innovative Medic al Technologies ltd opposed the additional submissions from DMI Dental Supplies claiming that they were attempting to strengthen their position and this was not allowable at that stage of the proceeding. Simultaneously they claimed that the additional evidence did not add anything new, and that its submission was acceptable if given negligible evidentiary weight as an affidavit that is not cross-examined, and that costs be awarded to them.
On 28 May 2018, DMI Dental Supplies responded to DMI Innovative Medic al Technologies ltd, objecting to the awarding of costs for the additional submission. Furthermore, they argued that since DMI Innovative Medical Technologies ltd’s balance sheet was not audited, it could not be considered as evidence, particularly as it related to foreign entity that was not a party to the proceeding.
Section 41 of the Trademark Ordinance 1940 states:
No party my submit additional evidence in any hearing before the Commissioner, however the Commissioner may, at any time permit the Applicant or Opposer to submit any evidence under conditions that he considers appropriate, regarding costs or other matters.
In general, parties should submit all their evidence in one go, and not in a trickle (Appeal 579/90 Rozin vs. Bin Nun, p/d/ 46(3) 738, 742 (1992), and Zusman, Civil procedures 509-510, 7th edition, 1995. Whilst it is true that the court can accept additional evidence during the proceeding and even during summations, (Appeal Shenzer vs. Rivlin, p.d. 45(2) 89, 95 (1991) and even during Appeal (Shenzer 95. Regulation 457 of the Civil Court Procedure Regulations, 1984).
Together with this, the court has to be very wary and careful when exercising this discretion “and in general should be careful to follow civil procedures, including the submission of evidence at the appropriate time” (Shenzer, page 95). The rationale for this principle is general efficiency of the handling of the case and of the court system in general.
There are four criteria to allow the submission of evidence at a different stage than that specified in the Civil Court Procedures:
The most important is the importance of the evidence to ensure that justice is dispensed. This requires consideration of the new evidence in deciding the case, and the weight given to it, since it was not timely submitted.
The amount of damage (evidentiary and with regard to the hearing) that would be caused to the opposing party If the evidence is accepted, which would alter the balance between the parties.
The reasons why the evidence was not timely submitted and, the responsibility of the submitting party for the lateness of the submission and whether they can be considered of acting inequitably by withholding the evidence until its late submission. (see Appeal Shasha Securities ltd vs. Adanim Mortgages and Loans ltd. p.d. 42(1) 14, 18)
The damage to the effective management of the proceeding (re Rozin, page 743).
Applying these principles to the present case leads to the decision not to allow either party to submit additional evidence regarding the extent of their sales, since she does not consider that the evidence helps determine making a correct ruling or uncovering the truth. The deadline for the timely submission of evidence has passed, and neither party provided justification for their late submissions. The evidence has been heard and the parties should be making their summations.
Ms Shoshani Caspi is less than enamoured with the behaviour of the parties, who chose to submit their additional evidence without waiting for authorization to do so. It is well-known that one should only submit late evidence after receiving authorization. Submitting the evidence together with the request does not accord with the Supreme Court ruling in Appeal 6658/09 Multilock ltd. vs Rav Bareakh ltd, 12 January 20110 on page 11 paragraph 12:
Until there is a judicial ruling allowing submission of additional evidence, a party to a proceeding is not allowed to relate to that evidence in his claims. Under the guidance 1/92 published by the Chief Justice, a request to submit additional evidence should “describe the purpose of the evidence without attaching it (section 1 of the guidance). This guideline attempts to strike a balance between the requirement not to expose the court to the additional evidence prior to being authorized to do so, and the need for the court to have an understanding of the nature of the evidence in order to consider whether it is relevant and significant.
As to the additional affidavit that DMI Dental Supplies wished to submit, Ms Shoshani Caspi considers that it should be allowed, despite it being submitted prior to receiving authorization. This is since DMI Innovative Medic al Technologies clearly stated that they do not object to its submission. However, DMI Innovative Medic al Technologies are correct that it should be given little weight since they cannot cross-examine the witness. However, she does not agree that DMI Innovative Medic al Technologies should be allowed to continue to cross-examine, as the new evidence does not add anything new. Since DMI Innovative Medic al Technologies did have to relate to the new evidence, they are indeed entitled to costs.
In conclusion, DMI Dental Supplies cannot submit the new material. DMI Innovative Medical Technologies are not allowed to submit their balance sheet. DMI Dental Supplies can submit their Affidavit and costs of 350 Shekels (just under $100) are ruled to DMI Innovative Medic al Technologies.
The period for submitting summations starts today, 29th May 2018.
Interim ruling by Ms Shoshani Caspi re DMI competing marks proceeding, 29 May 2018.
Building products sold by length, such as aluminum profiles used for window frames creates a problem. Leading manufacturers in this competitive market want to mark their products to discourage customers purchasing cheaper alternatives. Quite apart from the fact that end users do not generally want makers marks conspicuously showing on their window frames, such marks have to be stamped on which is time consuming.
In the past, Adv. Adi Levit, then of Seligsohn et Gavrieli representing Klil, a leading aluminum profile manufacturer, created a new solution; registering profiles as design applications.
Strictly speaking, this could have been viewed as manipulating the system since most of the elements of the profile are strictly functional. Elements that are not viewable in the finished product when installed are not really design elements, and extruded scratch marks are more correctly trademarks, but often lack the inherent user recognition to be registered as such.
The Deputy Commissioner Jacqueline Bracha has now revisited this somewhat specialist issue. The name of applicant, representative and details of the design application number have been witheld so this case can be referenced as Ruling re Design XXX to Applicant YYY represented by ZZZ, by Jacqueline Bracha, 27 May 2018. The pictures used to illustrate this write-up, are just that pictures. They may or may not represent the product ruled on here
This ruling concerns a couple of design applications submitted on 1 Feb 2016 and 17 March 2016 respectively, both for profiles. The first Application was examined on 20 April 2016, and the Examiner considered them lacking in novelty in light of earlier registered designs of the same Applicant and thus registration was prohibited by Section 30(1) of the Patent and Design Ordinance 1924. The second application was examined on 14 June 2016 and a similar Objection was raised.
On 7 June 2016, representatives of the Applicant met the Examiner and the Head of the Trademark Department with the intent to persuade them otherwise based on the differences between the application and the registered design as viewed. The Applicant argued that the differences were more than the similarities, and were not purely functional. The Applicant showed examples of window frames made from both the registered and the new profiles to emphasize the difference between them. At the end of the meeting, the Applicant was invited to submit their claims regarding each application in writing, emphasizing the differences.
On 21 July 2016, the Applicant responded to the Office Actions and emphasized the differences, referring to the drawings.
There were several further rounds of correspondence between the Applicant and the Examiner, during which the Applicant was requested to provide images of the finished product [presumably the window frame – MF]. The main difference that the Applicant noted, was that the new Applications show a ‘clean’ window frame, whereas the previously registered ones have a ‘rustic’ look, since the slot running along the front surface of the profile was removed.
On 20 April 2017, the Applications were rejected. Hence the appeal before the Deputy Commissioner.
It is emphasized that Design Application No. WWW had successfully been registered, despite the similarities to other registered profiles since the Examiner was persuaded that the differences were significant. It is noted that also in this case, the differences are on the front of the profile, which creates a new impression due to the lack of the slot.
The Applicant submits that the Examiner should have registered the design applications since other designs in the same series have been registered. Furthermore, all the designs in the series could be registered as a system.
The Deputy Commissioner notes that to the extent that other designs were erroneously registered, this does not oblige the Patent, Design and Trademark Office to repeat that mistake. See for example Appeal 66183/06/11 Shmuelovich vs. State of Israel, 26 October 2014.
The Authority can change its ruling from a decision given in error and is not obliged to repeat that error.
It will be noted that the Registrar of Designs is NOT authorized to cancel a registration unless a third party requests cancellation based on an prior art publication – Appeal 733/95 Arpel Aluminium ltd vs. Klil Industries ltd, 51(3) 577. Thus even if Ms Bracha decides that the current designs should not be registered, and if this implies that previously registered designs were allowed in error, that does not authorize her to rule that such previously registered designs should be cancelled. In light of this, Ms Bracha refrained from opining on how this decision affects previously registered designs.
The Applicant’s Claims
Miscellaneous extrusion profiles
The Applicant claims that there is room to allow the registration of the series of designs as a system application, since the profiles will be purchased together to assemble a finished article, such as a window. The Applicant submits that this assertion conforms to previous patent office rulings.
As to the registration of the designs, the Applicant submits that there are significant differences in form between the previously registered designs and the that of the current application. These include both elements on the visible surfaces of the installed frame, and indentations and slots that are not visible in the finished window, and that the new designs presents a clean modern line, whereas the registered designs present a more rustic appearance. The slot [could be indentation. some sort of depressed feature is indented –MF] along the front face has been cancelled, and this creates a purposefully different appearance. Furthermore, this results in additional differences in other parts of the profile.
The Applicant further claims that in light of the similarities between the inner lines of the design, they are registerable with a declaration of novelty that regarding the front surface. Furthermore, the relevant ‘eye’ is that of the end user and the architect, and thus it is the visible surface of the installed window frame that matters.
Section 30(1) of the Patent and Trademark Ordinance 1924 sets out the conditions for design registration as follows:
(1) The registrar may, on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not previously published in Israel register the design under this Part.
The main question in this instance, is whether, under the Ordinance, the applied for designs are new with respect to the registered designs. In other words, are the changes that the Applicant proposes sufficient to establish novelty or not.
There is established case-law that requires that when making the comparison between products, or a design Application and the prior art, the design should be considered in its entirety, but with an emphasis on the features that draw the eye, however functional elements should not be considered . Thus the similarity in the functional elements does not hinder registration, but the differences do not help either (see Russell-Clarke and Howe on Industrial Designs, 8th Ed., p. 146 (2010). See also the ruling regarding design applications 50200, 50202, 50519, 50902 and 60909 to Victualic Company, 12 February 2012.
These considerations are the result of the intention that design registration protects new forms of desirable objects that attract the eye of the consumer, as ruled in Appeal 7125/98 Mipromal Industries Jerusalem vs. Klil Industries p. d. 57(3) 702, , 8 May 2003, on pages 710-711 of Judge Rivlin’s ruling:
The design registration is intended to provide protection for novel forms of products. The protection is intended to protect the individual’s interest, but also that of the public by encouraging the development of new or original aesthetic designs. The protection is given for the unique form of the product, as the eye discerns it…the form should draw the eye of the relevant consumer in a manner that influences his choice of a specific product. Together with this, in addition to the positive requirement of drawing the eye, protection is not available – due to the end of the clause – for articles that are fully functional, i.e. having purely functional forms.
Given this general rule, one has to consider whether the differences are sufficient, and in this regard, it is not the number of differences that matters, but the affect of them taken together.
However, minor differences need to be significant and not merely minor differences that are known in the relevant industry.
As a rule, the design should have a form or decoration that is substantially different from that known previously, and minor differences as generally accepted in industry are not sufficient to render a design novel or original under the ordinance. See Seligsohn, The foundations of Copyright, trademarks and Designs, page 196.
Application of these general rules to this instance leads the Deputy Commissioner to conclude that the present applications cannot be registered. The differences that the Applicant points to boil down to the removal of a slot on the front face of the assembled frame. The other differences are simply the result of the cancelling of this slot.
The Applicant’s claim that the relevant eye is that of the customer or the architect does not help, since if this was the case, there would be no point registering the hidden surfaces [typically the section through the profile – MF] but only the form of the finished window. However, the Applicant has registered hundreds of profiles that include internal cavities and inner surfaces that are not visible in the assembled and installed frame, and many of them claim novelty for the inner parts.
Even if she were to accept the Applicant’s position that the current applications be considered, unlike in the past, only with regard to the visible surface of the assembled and installed window frame, the Deputy Commissioner ruled that a smooth frame without any extruded protrusions or indentations is not new. Although the cited frames did not have a clean front surface, such a front surface is known in other extrusion profiles for frames.
In other words, when considering the profile as a whole, it is insufficient to refer to differences that exist in the concealed parts of the product and on the front face. These differences are trivial and do not impart novelty to the design. As to the front surface alone, the appearance is regular and accepted in the industry. It is noted that if the Applicant desires to be examined on the front face alone, the remaining sections should have been disclaimed with dashed lines. By not doing so, the Applicant has indicated that the concealed parts are integral to the design and the extrusion should be considered in view of its cross-section under Section 2 of the Ordinance.
Not only the Applicant considers that the profile is the complete article, but the Supreme Court in re Klil held this and accepted the finding of the District Court and ruled that:
In this instance, the District Court held that the correct comparison between the products has to be by comparing the profiles as sold – as six meter long extrusions, piled up on shelves such that the customer can see the section – and not as they appear when joined with other elements and installed. In consequence, it is insufficient to consider only the external appearance of the profile, as they appear to the final customer, rather one has to consider the similarities prior to assembly, from all angles, including the section.
Similar to the Court of First Instance, I also hold that the differences indicated are insufficient to rule out infringement, since the general impact of the appearance of the section and the visible surfaces leads one to conclude that the new profile is a blatant copy of the registered design. When applying the appearance test it is insufficient to go into the minor aspects of the design and there is no need to examine the product with a magnifying glass to determine the differences. As the District Court found, the profiles have the same slots, protrusions and indentations, and similar dimensions. The differences noted are insufficient to be memorable and so the District Court seems to be correct that the relevant consumer is likely to confuse the profiles, particularly where he comes across them separately. It is noted that the District Court determined as a matter of fact that shelf fillers do not necessarily pile up these profiles in adjacent piles.
Since the Israel Supreme Court has ruled on how profiles are to be considered under the Patent and Design Ordinance, the Deputy Commissioner did not see herself as having the freedom to dissent from their determination. However, she noted that it is possible that with the entry into force of the Design Law 2017, it may be appropriate to reconsider the appropriateness of this case-law with respect to registered designs.
The Design Law draws inspiration from the European legislation COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs and the basic definitions of the design and product in the (new) Law are taken from it – see the words of explanation of the new law from 6 July 2015).
The term product (מוצר) [perhaps literally object of manufacture] replaces the [archaic] term חפץ [desirable in the sense of a product, chattel?] that appears in Section 2 of the Ordinance, and is similar to the term that appears in the European legislation. The definition reflects, inter alia, the changes in technology since the Ordinance was legislated.
The term ‘design’ replaces the term ‘example’ that appears in the Ordinance. The term is not intended to widen or narrow the scope of protection that the law provides. The new term implies, inter alia, the technological changes that have occurred since the ordinance was legislated. The definition is the same as that found in the European Law, and emphasizes that the design is the general appearance of the object or a part of it, that consists of its visual elements.
It is noteworthy that in 2014, the European Office for Trademarks and Designs (then the OHIM and now the EUIPO) by which the majority of the elements of a profile are not registerable as a design, appear from the front face and marks thereon:
“As far as understood from the submission of the Holder technology driven features and mechanical fittings form up to 95% of the design of the profile, and the only features in which the competing products may differ, are those indicated in its submission, i.e. curving of the walls and the marker. In other words, all essential features, 95% of the appearance of the profile, fall in the exclusion pursuant to Articles 8(1) and (2) CDR. Should it be the case, the design has to be excluded from the protection as it does not fulfill the requirements of protection of a Community design. (ALUPROF S.A. v. ALU SYSTEM PLUS JJM KUCHARSCY  OHIM)
The European Trademark and Design Office recently affirmed this ruling in re INDECO INDECO S.A v. BONARI Sp. z o.o.  p.5 EUIPO (published by Darts IP).
The Deputy Commissioner considers that this sheds light on the question raised by the Applicant as to whether the profiles can be registered as systems of manufacturables under regulation 5 of the Design Regulations 1926, which will be replaced by Section 1 of the Law when it comes into effect.
The condition for registering manufacturables under the as a system under the Law, is that “the visual differences are trivial.” If we consider the appearance of an extrusion profile from all sides, including internal elements, and relate to the differences between the projections, protrusions, slots, as significant and important differences, then any differences in such protrusions and slots, even those required for coupling the different elementstogether, would be sufficient to prevent them from being registered together. However, if the profile is examined ONLY from the outer face visible to someone looking at a window or door frame, all the profiles that link together to create the door frame could be registered as a system since they would then have identical appearances, or only insignificant differences.
That said, since there was no request to register the profiles as such a system in this case, and since she had determined that the designs are not new, the Deputy Commissioner did not see herself required to address this question under the current law.
In conclusion, the application for registration is rejected.
Ruling re Design XXX to Applicant YYY represented by ZZZ, by Jacqueline Bracha, 27 May 2018.
We note, without enthusiasm, that the Deputy Commissioner has asserted the existence of flat front faces of extrusions in the prior art. We think that that this is unworthy without referencing at least one example – not necessarily from the register and not necessarily manufacuted by the Applicant whose name was withheld from the ruling.
Without images available, it is very difficult to truly appreciate the differences between the profiles, but the lack of a slot running along the visible surface does create a smooth frame lacking all distinguishing features so it seems reasonable to conclude that this is not new and cannot be registered. I tried to argue a case for registering a gabled beverage carton lacking the standard screw topped spout but featuring a score line along the roof and ridge for easier formation of a spout for pouring. I was unsuccessful, and it is comforting to see that other Attorneys are having similar difficulty registering variants of previous designs. However, Israel does not have a petty patent system. Arguably there is a need to prevent objects of manufacture being immediately copied by competitors such that customers cannot tell where their product originates.
There has recently been a sea change in the registerability of designs in Israel. The Ordinance is archaic and only requires absolute local novelty. Examination was more based on formalities and less on substance. However, what the Israel Design Examiners are now doing, is to look for some sort of design step and not merely for absolute novelty. In my opinion this places the bar for registerability too high. It should be possible to register unique items of manufacture tha may be near variants of previously existing designs, combining different features known from different competing products. In many jurisdictions registration is just that, there is no substantive examination for novelty, but merely a comparison of the various views for internal consistency. That said, the current decision is in line with other recent rulings, both published ones and rejections I’ve had from Examiners based on the differences between the application and the prior art being insufficient to provide novelty and originality.
The Manufacturers Association of Israel opposed an ex-partes decision to allow a patent term extension for Dexlansoprazole, and New Commissioner Ofer Alon has disallowed the extension accepted by his predecessor.
Dexlansoprazole is used for treating gastro-reflux and for treating or preventing digestive ulcers.
IL 145996 to Takeda is a patent for Dexlansoprazole that claims various crystalline forms of the salt, a pharmaceutical preparation including the forms, and methods of treatment or prevention of digestive ulcers.
After Takeda successfully obtained regulatory approval for Dexilant. (Dexlansoprazole) which is the R enantiomer of Lansoprazole, they applied for a patent term extension, which was refused by the Deputy Chief Examiner on 30 June 2016 on the grounds that the registration of Dexlansoprazole is not the first approved medical usage of the active ingredient in Israel, as the racemic mixture of the same active ingredient (Lansoprazole) is already registered.
Racemic Lattice for Shoes
In a response filed on 28 August 2016, the Applicant acknowledged that the racemic mixture Lansoprazole includes the R-enantiomer Dexlansoprazole, but the R-enantiomer cannot be separated from the racemic mixture since the crystals themselves contain both the right and the left enantiomers within the same lattice, creating a new complex that is different from the separate enantiomers.
The Applicant submitted that previously registered Lansoprazole is thus not a racemic mixture but rather a racemic compound and consequently the Dexlansoprazole crystals are substantially different from those of Lansoprazole and should, therefore, be registerable.
The Applicant distinguishes between racemic mixtures and racemic compounds with reference to Mitchell AG, Racemic drugs: Racemic Mixture, Racemic Compound, or Pseudoracemate? J. Pharm Pharmaceut Sci 1(1):8-12, 1998).
Dexasportshoe Crystalline Structure
On 27 October 2016, the Deputy Chief Examiner understood the argument as stressing that the enantiomer is more efficacious than the racemic mixture and rejected the request for the patent term extension citing former Commissioner Meir Noam’s ruling concerning Unipharm’s opposition to IL 90465 to A/S Lundbeck (3 February 2009), which ruled that the higher efficacy of enantiomer with respect to the racemic mixture was patent worthy, but did not provide a new material in the sense required for a basic patent that is eligible for patent term extensions.
On 24 November 2016, the Applicant appealed this decision to the Commissioner of Patents, reiterating the arguments that were rejected. Then Commissioner Asa Kling accepted that the enantiomer was not found in the racemic compound and agreed to a patent term extension of 959 days until 30 January 2023 (see ruling re IL 145996 to Takeda from 12 Feb 2017:
In paragraphs 24 to 26 of his decision, then Commissioner Kling stated:
I have been convinced that Lansoprazole is a compound of the enantiomers and it is not possible to isolate Dexlansoprazole from the racemic compound, in contradistinction to the state of affairs in Unipharm vs. Lundbeck where the racemic mixture could be separated into the enantiomers.
Where the relative efficacy is different, Applicants assertion that Lansoprazole is NOT a racemic mixture but rather that the enantiomers share the crystalline structure, one cannot isolate the R enantiomer.
On 25 May 2017, the Association of Israeli Industrialists opposed the ex-partes decision to issue a patent term extension, based on Section 64g(a) of the Israel Patent Law 1967 for the following reasons:
the registration in the register of medical formulations which was the basis for the patent term extension was not the first registration for the active ingredient, contrary to Section 6d(3) of the Law.
The Applicant concealed significant relevant facts from the Patent Office. So the Application for a Patent Term Extension is contaminated with inequitable behaviour and is contrary to Section 64b(1) of the Law.
These claims were supported by an expert opinion from Professor Menachem Kaftori dated 24 May 2017.
The Opposer relies on the Lundbeck ruling (Appeal 223/09 Lundbeck vs. Unipharm ltd from 25 May 2009 which asserted that the various terms for material in Section 64a include enantiomers, and wherever the material is an active ingredient or form of the active ingredient that is found in a prior medical formulation that is listed in the register, it cannot be considered as being a first registration under Section 64d(3) of the Law.
The Opposer further alleged that the applicant had already acknowledged that the active ingredient Dexlanoprazole is included in the racemic Lansoprazole in the pharmacology report for Kapidex in a request to market a formulation including Dexlansoprazole in the US (NDA 22,287) which was appended to the ex-partes submission.
Based on Professor Kaftori’s opinion, the Opposer further alleged that coupling between the different molecules in the crystal were inter-molecular bonds and not intra-molecular bonds, so that on dissolution into water a racemic mixture of the enantiomers results.
The active ingredient of Dexilant is Dexlanoprazole and not the crystal, and the morphological structure of the crystal has no relevance to the issue of patent term extensions. The racemic compound is no different to a racemic mixture as has as the difference between its components, apart from the crystal structure of the raceme. The inclusivity of the re Lundbeck decision does not relate to the isolation of the material by separating the basic cell of the crystalline structure whilst in a solid state, but to the possibility of any separation.
The Opposer further argues that the efficacy of the enantiomers when considered separately or as part of the racemic mixture is not relevant to the question of whether the application in question relates to the first formulation that allows the material to be used for medical purposes in Israel.
The Opposer further claims that the Applicant concealed the fact that the material was previously registered in the Lansoprazole registration, and the experimental evidence used to justify the registration were those using Lansoprazole which the Applicant had asked to be relied upon. Similarly, the Applicant had concealed the fact that Lansoprazole had been defined by themselves as being a racemic mixture and not, as they now claimed, a racemic compound, for example, before the Canadian Federal Court of Appeal.
Takeda reiterated the arguments submitted in the ex-partes hearing by former Commissioner Kling, his ruling of 12 February 2017, and an Opinion of Professor Avi Bino of 19 September 2017.
Furthermore, Takeda rejected the allegation of inequitable behaviour noting that the racemic material Lansoprazole was disclosed and related to in their submission for a patent term extension, and reiterated that it was a different material.
Furthermore, in their response of 28 August 2016, they clarified that Lansoprazole is racemic compound that is optically active in a different manner to that of the enantiomer. The XRay diffraction pattern of Dexlansoprazole is different, and it is a different chemical entity. The Applicant further claims that the request for a Patent Term Extension is based on a registered product and not on a material after subsequently undergoing any type of process within the human body [apparently dissolution is intended – MF].
The Applicant alleged that the Opposer did not provide support for the contradiction in Mitchell’s paper, and did not provide scientific textual support, experimental evidence or research to challenge the validity of the evidence submitted by themselves in the ex-partes proceeding.
In the pharmacology submission for Kapidex which includes Dexlansoprazole there was experimental evidence relating to pregnant women which included one test conducted with Dexlansoprazole and one test conducted with Lansoprazole. Thus contrary to Opposer’s assertion Dexlansoprazole was examined, and the testing of Lansoprazole was additional data.
Although the therapeutic results themselves are insufficient to prove that a patent term extension is justified, they do teach that there is a difference between the materials that allows a patent term extension.
Takeda referred to the definitions of racemic mixture, raceme and racemic compound in the IUPAC gold book which is the definitions used by the International Union of Pure and Applied Chemistry and which they claim accords with Mitchell’s paper.
Finally, Takeda submits that the Commissioner is not able to sit in judgment and rule on a ‘kind of appeal’ of his own decision, or that of his predecessor.
Discussion and Ruling
For sake of clarity, the Commissioner notes that the term raceme relates to racemic mixtures of S and R molecules in equal amounts, or to racemic compounds where there is a repeating arrangement of the two enantiomers in different proportions within a crystal,
The legal authority of the Commissioner to rule on the Opposition
Commissioner Alon dismisses the allegation that he cannot hear this case. Section 64f of the Law allows anybody to oppose patent term extensions or their duration. Under section 64g, ANY reason that the Commissioner should not grant a patent term extension is a valid reason for opposing the extension. The right of the Opposer is independent of whether the extension was the result of an ex-partes ruling or otherwise.
The logic is clear. In the ex-partes hearing, one side presents THEIR arguments, evidence and documentation supporting the issuance of the PTE. The opposition is an adversarial proceeding whose purpose is to allow third parties to challenge the granting of the PTE, Once an Opposition is filed, the Commissioner is obliged to consider the issues raised and to reconsider the determination that a PTE is justified in light of the claims and evidence of the parties.
Registration of Lansoprazole allowed usage of Dexlansoprazole
Section 64d of the Law sets out the conditions for obtaining a Patent Term Extension. Inter alia, it states that one can only obtain an extension for a material listed in the pharmaceutical register, and only if that registration is the first registration of the material for medical use.
It does not appear that there is any dispute between the parties regarding the following facts:
The crystal of the Lansoprazole raceme is a racemic compound, which is difference from the enantiomer of Dexlansoprazole (Cross-examination of..
I have been attending INTA for some years now. This year the conference clashed with Shavuot (Pentecost), and so I would have been unavailable on Sunday and Seattle has never been a city of major historical or cultural importance. I was therefore pleased to be invited to attend ECTA, the European Community Trademark Association Conference in Athens which is a city I had never previously visited.Some
The ECTA conference had some 800 registered participants which made it only about a tenth the size of INTA. However, there is a limit to the amount of people one can shake paws with and collect business cards from in a three-day period anyway, and 800 participants seemed more manageable.
I did not know what to expect, and arrived at 10 am Wednesday morning for a scheduled meeting with a Korean attorney who had reached out to me, and didn’t realize that for non-committee members, there was absolutely nothing to do other than to collect one’s name tag and conference tote.
On reflection, I should have toured the Acropolis with my wife, but instead, with the taxis on strike, I explored the neighborhood and park across the road from the Intercontinental, which was the conference hotel. There were loads of people just sitting at cafes and on benches in the streets and parks. I saw two men playing dominos and a further seven watching. Dominoes has never struck me as a spectator sport. This indicated that Athens was still deep in recession with high unemployment. Nevertheless, even now, after 5 years of negative growth, it ranks among the top countries in the world in terms of GDP. Earnings are low for the EU, but still above those of all the ex-Eastern bloc countries and far ahead of the developing countries of Africa and Asia. Over the three days of the conference there was a taxi strike and then a metro and tram strike. However, the World Cup football probably did its bit to prevent demonstrations.
The Acropolis dominates the city, and there are many impressive neoclassical buildings from the late 19th century to the early part of the 20th century. However, despite the glorious past, the present is seedy. Pavements are uneven. There are many closed shops, graffiti covered hoardings and walls, piles of rubbish on main pedestrian precincts, and no one seems bothered.
I found Athens a little confusing at first. The signs were a nightmare of algebra, and totally incomprehensible. The language sounded nice, but I didn’t understand a word. One can’t help thinking that a little more effort could be made to cater for tourists.
The weather on Wednesday was humid, but despite the dress-code being described as casual on the programme, I was giving my jacket and tie their annual outing. Once I realized that others were dressed down, I gratefully left these in the hotel and wore trousers and a button down shirt as I do in Israel. In fact, the climate, body language, smell of olive oil and pace were very similar to Israel and I felt comfortable walking around Athens.
These are a few of my favourite things!
The conference was very well-organized. People were friendly. Thought had gone into the sessions to try to be a little different. The first session open to the plebs was a workshop titled “Plain Packaging in the Industry”. The issue was legislation targeting cigarette manufacturers and forcing them to use plain boxes, sometimes with graphic images of diseased lungs, babies on respirators and the like. The premise was that trademarks were a form of property and property was a constitutional right. I suspect that those that expressed strong opinions represented the large and lucrative portfolios of Marlboro, British American Tobacco and other cigarette manufacturers. In my experience, intellectual property practitioners are largely intellectual prostitutes, i.e. professionals, willing to work for whoever is willing to pay. I have a friend that used to work for the Welcome Trust who was very opinionated regarding ethical drugs, and anti the generic players. Then she got a job with a generic drug manufacturer and her politics changed completely. Intellectual property is indeed a kind of property, but less so than, say real estate. One cannot do what one likes with one’s house or shop, and there are zoning requirements and planning permission. If the government wants to build a highway through one’s property, it will. Trademark Law prevents registration of marks that are against the public order. I recently explained to a client that he could register a mark for vodka in the relatively liberal Palestinian Authority of the West Bank, but not in Gaza since class 35 does not exist there. The issue seems to be a classical libertarian versus nanny state argument. True, legislation is creeping in to have salt and fat levels marked on food packaging and it is possible that cannabis will be legalized but there may be packaging rules and limitations on who can buy and in what quantity. Still the discussion was interesting, contemporary and different.
After a coffee break there was a second workshop on best practices for small and family law firms. The panel consisted of various senior partners in small businesses, who discussed the problems of having some partners that were members of the family and some that weren’t, the problems with employing and disciplining family members and whether it was a good idea for the next generation to get some experience in a different practice before joining the family firm. I met up with Udi Gavrieli, who was a partner in Seligsohn Gavrieli and Co. where I had qualified as a patent attorney and after starting a law degree, was informed by his late father that I should not have aspirations to becoming a partner. At that time, Udi was qualifying and when he got his license, his father wanted him to be made partner immediately. Then partner of the firm, and Israel’s most successful patent litigator, Adi Levit, became a named partner of Seligsohn Gavrieli Levit which lasted a very short period, before he branched out on his own.
Before joining Seligsohn Gavrieli, I worked for Luzzatto et Luzzatto, a fourth generation IP firm with Italian roots and various intergenerational issues. I later set up my own firm and actively used it to help various family members and old friends who were in professional ruts. I merged my practice with Jeremy M Ben-David & Co., a father and son team, so have experienced family practices from different sides. What the session missed, perhaps, was an academic overview of family businesses, since many of the issues are not particularly related to IP. Instead of anecdote, I would have preferred a more rigorous approach. Still the issue was clearly of relevance to a lot of conference attendees and is something that I have never seen tackled by an IP conference.
The third session was an overview of trademark search tools available from EUIPO and WIPO. The session was practical and comprehensive, if uninspiring. For illustrative purposes, LG’s famous logo was searched for in a graphic trademark database, before and after semantic tweaking. It is clear that artificial intelligence and search engines are getting more sophisticated, but still have where to go.
Participants were then bussed to the Zappeion Hall, a neoclassical cocktail venue built for the 1896 Olympics. A dozen local female students dressed in Greek tunics with long pencil skirts and tight bodices, holding torches greeted us on the stairs and added a certain ambiance. The food seemed varied and plentiful. There was pre-packaged Kosher food for the 3 or 4 of us who’d requested it that included a spinach in pastry boureki (μπουρέκι) and a Feta cheese in olive oil salad that helped one enter the spirit of things. The main food offering seemed to be a Greek style buffet.
I was staying at the Jason Inn, a hotel in Thissio opposite the two active Greek Synagogues. As it was a New Moon, I went to the morning service which started at 8.30 am and finished at about 10.00 am. The small congregation was mostly pensioners. As in North African style services, the psalms were chanted aloud, but the intonation was very Greek.
I missed the Annual General Meeting of ECTA, but suspect I would have found it less interesting. I am very pleased however, that Christ(os) Sozos Theodoulou from Cyprus has been appointed the new president. (When I congratulated him he noted it was condolence for losing the Eurovision. I am, of course, pleased that Israel won, but would be happier if the song was less embarrassingly awful. That said, appealing to the largely ignored but enormous poultry demographic was a brilliant tactic. It was essentially a repeat of Dana International’s 1998 win, where the anti-Israel/anti-Semitic/BDS anti-vote was split between various member states but Israel capitalized on the largely united LGBQTx vote).
There was a two-part session devoted to the latest IP news and trends and then a session on the status of implementation of the trademark directive (EU) No. 2015/2436 which regulates the interaction of European and local law with respect to trademarks. Attendance of the sessions was high. The subject matter was relevant and contemporary.
The large number of participants were split up into different restaurants and dining halls in the hotel, each named after a different Greek god. A generous buffet was provided, and once again, Kosher food was provided. This time it was chicken with olives – again a Greek inspired choice. Olive oil was provided to pour over the salad.
Israel Patent Application No. 176831 to Novartis is titled “COMPRESSED PHARMACEUTICAL TABLETS OR DIRECT COMPRESSION PHARMACEUTICAL TABLETS COMPRISING DPP-IV INHIBITOR CONTAINING PARTICLES AND PROCESSES FOR THEIR PREPARATION”. It is the national phase entry of PCT/EP2005/000400.
On allowance, Unipharm filed an Opposition to the patent application being granted. Within the Opposition proceeding, Unipharm, who for this case, have dispensed with the services of Adv. Adi Levit, their legal counsel and have been handling the Opposition unaided by attorneys, have requested that the Israel Patent Office subpoena John Hutchinson and Mr Kowalski, workers at Novartis to give testimony.
This request follows an earlier request to reveal documentation regarding testing that was appended to the Expert Witness testimony of Professor Davies, Novartis’ expert witness, which was ordered in an earlier interim ruling of 3 January 2018.
In response to the discovery request, Novartis submitted an Affidavit with various appended papers. In light of this, Unipharm now alleges that the Affidavit implies that Novartis has not revealed all documents it should have. Unipharm further indicates that the explanation proffered by Hutchinson, who is signed on the Affidavit, “appears to be odd”. Therefore, Unipharm wish to Subpoena him to cross-examine him on this.
Unipharm further claims that a document titled “Certificate of Authenticity” was included with respect to the laboratory notebook, parts of which were included in the appendices attached to the affidavit. According to Unipharm, Mr Kowalski, who was one of the named inventors, is signed on this document. Consequently, Unipharm requested to cross-examine him as well.
Novartis requests that Unipharm’s request be rejected. They claim that the Commissioner does not have the authority to subpoena witnesses not within the judicial territory of the State of Israel, who are not direct parties in a proceeding. Novartis also notes that Mr Hutchinson’s signature on the Affidavit accompanying the discovery documents was done in the framework of his employment as a patent attorney in the Legal Department of Novartis. Novartis claims that ALL information regarding the management of the proceeding is subject to legal confidentiality and may also be considered as being a trade-secret.
As to Mr Kowalski, he never signed an Affidavit of Evidence in the process and is not a party to it. Similarly Novartis claims that Unipharm has not stated why they need to cross-examine that inventor who was one of three named inventors.
The witnesses that the Opposer wished to interrogate are beyond the territorial jurisdiction of Israel and are not parties in the case. Thus the Applicant is correct that Section 163b of the Patent Law 1967 that Unipharm referred to is not a legal basis for their being subpoenaed. The references that Unipharm related to in their request, dealt with witnesses that gave Affidavits or expert witness testimony, and thus could be subpoenaed for cross-examination purposes.
A party that wishes to subpoena a citizen or foreign resident to testify must do so under the International Inter-State Legal Assistance Law 1998. See Appeal 3810/06 Dori and Zacovsky Building and Investments Ltd vs. Shamai Goldstein, paragraph 17, 24 September 2007.
Section 47 of the Legal Assistance Law states:
The Authority is allowed to request from another country, that testimony be collected, including that physical evidence be transferred for display in Israel, if the court allows that the evidence is required to hold the trial in Israel; regarding this law, and where the case is pending, the term court refers to the tribunal that is hearing the case.
From the wording of this Section, it transpires that the court will open a proceeding to summon foreign witnesses to a hearing only if it is convinced that their testimony is necessary to conduct the proceeding. In this instance, the Commissioner considers that there is significant doubt as to whether the presence of the witnesses for cross-examination purposes is really required.
Unipharm has requested to cross-examination Mr Kowalski regarding an Affidavit for discovery that he is signed on. The purpose of the discovery process is to enable the main proceeding to be handled efficiently; legal proceedings with face-up cards where each party knows what documents the other parties hold to prevent surprises at the hearing. By this means, unexpected delays are prevented, allowing the court to reveal the truth. Appeal 4235/05 Bank Mizrachi United vs. Ronit Peletz, 14 August 2015.
Opposite the principle of discovery, there are other interests such as efficiency of the court proceeding, defense of the legitimate interests of the party revealing documents, and preventing damage to the interests of third parties – See Appeal 2534/02 Yehuda Shimshon vs. Bank HaPoalim ltd. p.d. 56(5) 193. So the case-law has ruled more than once that it will not allow cross-examination of affidavits of this kind, if they are properly presented (see Appeal 2376/13 Rami Levy Shikma Marketing Ltd vs. Moshe Dagan 8 July 2014, and Zusman Civil Procedures 7th Edition, page 436.
This general rule has two exceptions: The first is that where reading of the Affidavit alone or with reference to its citations, that the Affidavit is defective, the court can order the party revealing documents to file a further Affidavit. Second, where the issue of confidentiality is used, the court can examine the document and decide if this claim is reasonable (see for example, Appeal 240/73 Baruch Vilker vs. Dov Tishler, 205, 2 December 1971and Appeal 6823/05 Abraham Roimi vs. Bank Leumi of Israel, 12 January 2016.
In this instance, Unipharm did not append an Affidavit, detail or justify why they considered that the current case is one of these exceptions. Thus the Commissioner cannot rule that this is the case, and so the request is rejected.
As to the evidence of Mr Kowalski, Unipharm did not claim that there was any connection between the documents appended to the Affidavit of the Discovery and to the experiments that were appended to Novartis’ evidence, which was the basis of the original discovery request. Note, Mr Kowalski’s signature is only on the Certificate of Authenticity taken from the lab-book that was appended to some pages therefrom that were submitted in the discovery documents. In these circumstances, it is not clear what value Mr Kowalski’s testimony has, even were he to be subpoenaed.
In light of this, the Commissioner does not consider that the requirements of Section 47 of the Law of Legal Assistance are fulfilled with regard to Mr Hutchinson or Mr Kowalski.
The Request is refused. Unipharm will cover Novartis’ costs and their legal expenses to the tune of 2000 Shekels + VAT. These costs will be paid within 30 days.
Interim Ruling in Opposition to IL 175831 Ofer Alon, 30 April 2018.
It is possible that Mr Tomer has indeed bitten off more than he can chew by handling legal issues procedural issues such as requesting subpoenaing witnesses without legal counsel. However, the costs ruled against him are trivial when considering the issue in question. The Unipharm’s Expert Witness cannot testify to things that he does not know such as what else was in the lab-book, and in Opposition proceedings there is no assumption of validity of the patent. Thus it would be premature to write this request off as a strategic or even a tactical error.
Kerem Natural Foods Industry A. L. ltd applied for Israel Trademark Application Number 266067 for Jellies, jams, dried fruit, coconut oil, , black cumin oil, sesame oil, almond oil and other edible oils; Coconut milk, cream and butter; spreads, soup powders produced by cooking and preparing extracts of meat and vegetables, and soup powders for seasoning; all included in class 29, Date syrup, molasses; Coconut sugar and flour, molasses, honey, date syrup, crisp cakes, crackers, spreads and sauces; sweeteners made of stevia or other plants extraction; coconut flour and coconut flour baked products; all included in class 30 and for Fresh and unprocessed Coconut and other tropic Fruits and its products; all included in class 31.
Kerem is Hebrew for vineyards.
On 28 February 2017, HaKerem – Alcoholic Beverages ltd opposed the registration. On 8 June 2017, Kerem Natural Foods submitted their counter-statement. HaKerem – Alcoholic Beverages ltd had until 11 August 2017 to submit their evidence, but this deadline was extended twice, to 12 November 2017, but the evidence was not forthcoming and instead HaKerem – Alcoholic Beverages ltd withdrew their opposition.
Kerem Natural Foods Industry then submitted a request for costs of 62,450 Shekels accompanied by an agreement with their attorneys regarding their hourly rate and various receipts evidencing payment in practice.
HaKerem – Alcoholic Beverages objected to the costs requested. They prevailed in the Opposition proceeding and are entitled to costs under section 69 of the Ordinance which states that
In any hearing before him, the Commissioner is entitled to award reasonable costs.
The right of the prevailing party to receive actual costs incurred depends on the amount requested, that it is properly documented, and that it is reasonable, necessary and proportional. See for example, Bagatz 891/05 Tnuva vs. Ministry of Trade and Industry p.d. (1) 600, 615 (30 June 2005). However, the arbitrators are required to consider the case specifics and legal policy, and are not obliged to award full costs – see Appeal 6793/08 Loar ltd. vs. Meshulam Lewinstein Engineering and contractors LTD. 28 June 2009, at paragraph 19.
The case specific considerations do not form a closed list and each case should be considered on its merits. These include the behaviour of the parties. The way the case was handled, the complexity of the case, the time invested in the case, whether the case requires specific expertise, the importance to the parties, whether the case has public interest ramifications, and the like.
In the present case, the request for costs did not provide sufficient details to substantiate their claim, and did not explain the basis of the costs, the number of hours spent by their attorneys, etc. Consequently there is a real difficulty to determine whether the costs requested fulfill the considerations laid out in re Tnuva.
The Adjudicator of Intellectual Property, Ms Yaara Shoshani Caspi does not accept the claim of the enormous amount of work preparing evidence immediately on the filing of the Opposition, prior to the opposing counsel submitting their evidence. The Applicant did not explain why the Opposer should have to bear the burden of the Applicant’s obliging himself to pay global legal fees regardless of the work required, and also to provide a ‘bonus’ if the case is dismissed. The Adjudicator does not find this type of arrangement fulfills the ‘reasonable and necessary expenses’ requirement.
In this instance, the Opposition was abandoned at an early stage, after the filing of the counter-statement of case. The Applicant did not need to file evidence, there was no hearing and no summations were required. In such a case there is no justification to award costs of 62,450 Shekels as requested. Compare for example, the cost request for Cancellation of Israel Trademark No. 140219 BASF Poyurethanes GmbH vs. Pazker ltd, 12 September 2015.
Conclusion, by way of estimation, costs of 7000 Shekels including VAT are awarded, to be paid within 14 days, or interest will be accrued.