Adjudicator considers when it is permissible to file additional evidence in opposition actions

One of the defining characteristics of practice before the Israel Trademarks Registry is the registry's reliance on the rules of civil procedure, especially in connection with opposition and cancellation actions. While the Israel Trademarks Ordinance and the implementing regulations provide only a skeleton set of provisions in this regard, over time decisions by the commissioner and adjudicators have filled in various lacunae, in the main by relying on the rules of civil procedure that govern civil actions in Israel.

The most recent example is the decision given by the adjudicator on May 26 2015 in connection with a motion by the opponent, Ophir Tours, to file additional evidence (Ophir Tours Ltd v Cruise Travels Haflagot Nofesh Ltd (Opposition to Application No 262378 for the stylised mark CRUISE1)). The affiant on behalf of the opponent had already filed an evidentiary affidavit in accordance with the regulations to the Trademark Ordinance. At issue in the motion were three documents - accountant certifications for the opponent’s sales figures for the years 2013 and 2014, respectively, and advertising expenditures by the opponent for the years 2010-2014. The opponent argued that these documents, whose provenance was a third-party accountant, could not have been provided previously and supported the claims made by the affiant in his affidavit.

The applicant argued in reply that the evidence had been filed only after a long delay and that it would not have a reasonable opportunity to study these documents. The applicant also pointed to the fact that these documents were not supported by an affidavit from the accountant.

The basic rule under the Trademarks Ordinance is that all evidence should be submitted together by a party via an affidavit. Should the party wish to submit additional evidence, it may be so only upon motion. The commissioner has broad discretion whether or not to grant the motion, subject to the following considerations:

1. the timing of the motion;
2. the extent to which the additional evidence is essential to enable proper cross-examination;
3. the damage that will inure to each of the parties should the motion be granted; and
4. the ease by which the other party can deal with the new evidence.

Based on these criteria, the adjudicator ruled in favour of the motion, pointing to the following. First, the evidence appeared to be essential for cross-examination because it addressed the scope of use of the trademark, as well as the investments made in advertising. Second, denying the motion would harm the opponent; under such circumstances, reliance on procedural considerations should be made only after carefully weighing all of the circumstances. Third, the evidence would not open up new lines of inquiry, because the opponent’s affidavit had already made reference to them. Fourth, the motion had been filed before the evidentiary hearing was set to take place, such that the applicant would have sufficient time to prepare as appropriate. The adjudicator noted that, even if the motion had been filed in an untimely fashion, this could be remedied by an award of costs and by granting the applicant the right to respond.

Accordingly, the adjudicator granted the motion. She did not rule on the issue regarding the fact that the documents were not supported by an affidavit from the accountant, reserving for the applicant the right to further argue this claim. She awarded costs to the applicant in the amount of IS6,000 (approximately $1,600).

Neil Wilkof, Dr Eyal Bressler & Co, Ramat-Gan