Commissioner's discretion trumps language of rule of procedure

One of the most distinctive characteristics of Israel trademark practice is the treatment of rules of procedure, especially in opposition and cancellation actions. A small number of rules of longstanding, which constitute a limited framework for governing contentious proceedings, were enacted decades ago and, as amended, continue to be in effect. The difficulties that arise from this scheme derive primarily from the lacunae that are created by the partial treatment of procedural rules as provided in the rules - to what extent can the Rules of Civil Procedure be applied to fill in these procedural lacunae? Problems can also surface over the construction and application of a given provision of the extant rules.

One of the most recurring and vexing examples of this latter problem is the issue of a deadline for the submission of evidence or the filing a response. In many circumstances, the rules provide both for a deadline and the consequences for failure to take the necessary step in a timely fashion. What happens, however, when a party makes a submission after the deadline has passed, without having sought a timely extension?

As seen in the case of DA Health Center Ltd v Aminach Bedding & Furniture Manufacturers Ltd (Application No 233,949, August 22 2012), when the result under the relevant rule of a late filing is loss of rights of an opponent to continue to pursue the opposition, the commissioner is reticent to order such a result.

In this case, the opponent filed an opposition to the registration of the mark applied for. Rule 38 of the Trademark Regulations provide for a two-month period (or the grant of an extension by the Registry) for the opponent to file its evidence after the applicant filed its statement of assertions. However, the opponent filed its evidence only three-and-a-half months after the applicant filed its statement of assertions.

In such a situation, Rule 39 provides in pertinent part that, "if the opponent does not file its evidence [in a timely fashion], it is deemed as if the opponent has waived the opposition, unless the commissioner rules otherwise". The commissioner stated that the language of Rule 39 grants the commissioner:

"the authority to permit the continuation of the maintenance of the opposition even if the opponent failed to meet the deadline for the submission of evidence, even by the grant of an extension retroactively. Thus, for example, it is possible for the commissioner to enable the continuation of the maintenance of the opposition even if the opponent does not submit evidence, so long as the opponent still wishes to continue with the opposition."

Based on the foregoing, the commissioner granted to the opponent the right to continue to maintain the opposition. The commissioner pointed to the balance of interests in such a situation and efficiencies in the proceeding with the hearing in denying the applicant's motion to terminate the opposition. Nevertheless, the commissioner imposed upon the opponent attorney fees in the amount of approximately $1,750.

The commissioner's decision can be questioned. It is true that the rule does grant the commissioner the right to exercise his/her discretion in the event that the opponent files its evidence in a late fashion - but the commissioner does not provide any operable rule by which to determine whether or not to exercise this discretion in a given situation. The imposition of attorney's fees on the opponent may or may not materially impact on the applicant. Indeed, for sizeable companies, the sum awarded may be insignificant. More importantly, for a trademark system that is already plagued by uncertainty in many aspects of procedure in contentious matters before the Registry, the commissioner's approach to the application of Rule 39 only serves to muddy the procedural waters further and to bring even less certainty about outcomes under the Israeli Trademarks Ordinance 1972 (New Version) and the rules.

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