Adjudicator sets out criteria for amending specification of registered mark

What are the parameters for amending the specification of a registered mark? This seemingly straightforward question recently arose in the context of a jointly filed request by the parties to an opposition proceeding to amend the specification both of the application at issue and of three related registered marks. While the amendment to the specification of the pending application raised no substantive issue, the adjudicator, Jacqueline Bracha, found reason to pause before setting out in a decision, given on August 11 2015, the criteria for amendment to a registered mark. In so doing, she has provided guidance on how to address the issue going forward (Laboratoire HRA Pharma v Actelion Pharmaceuticals (Opposition to the registration of the mark TURLEBO, Application No 250509)).

At issue was the construction of Subsection 36(3) of the Trademark Ordinance [New Version] 5732-1972, which provides that the commissioner is authorised “to strike out goods or classes of goods from among those for which the mark has been registered”. The question that arises from this provision, according to the adjudicator, is “whether it is proper to construe Subsection (3) as providing for the narrowing of the specification via striking out portions of the specification or merely providing the consequences of the change but not specifying the means for doing so”.

Having regard that the Trademark Ordinance is derived from English trademark law, the adjudicator observed that, while the relevant statutory language in the English law is similar to Subsection 36(3), no decision was ever given under English law on the proper construction of this provision. Treating the issue as one of first impression in Israel, she framed the question as whether a strict or purposeful construction of the provision is appropriate. If the former, then the only means for amending the specification is by way of striking parts of the specification; if the latter is the correct approach, various forms of amending the specification are available, provided that the result does not broaden the scope of the specification.

The adjudicator adopted the purposeful construction approach, pointing to three considerations:

1. Guideline No 39, which deals with the scope of a specification for medical devices and pharmaceutical products under international Class 5, has adopted a purposeful construction approach. She found nothing in the language of the ordinance that supported a conclusion that there should be a distinction in this respect between the Guidelines and the application of Subsection 36(3).

2. The commissioner has broad powers to amend a registration in the context of an action to expunge a registration. There is no reason why the same approach should not apply as well to an action to amend a specification pursuant to Subsection 36(3).

3. A strict constructionist approach to Subsection 36(3) does not provide for any more legal certainty.

The adjudicator buttressed her conclusion by quoting from the highly influential treatise - “Constructive Construction in the Law”, by former Chief Justice Aharon Barak - which states as follows:

“The conclusion that emerges is that a law must be construed purposively (subjectively and objectively). This purpose includes the goals, objects, interests, values, policies and functions that the law is intended to achieve.”

The adjudicator recognised that her approach will require that more of the substance of a requested amendment to a specification be considered. However, in her view, the benefit of achieving a more precise specification merited this approach.

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