Decision shows perils of seeking reinstatement of opposition

Among the trickiest issues in Israel trademark practice is whether an action can be taken by one of the parties after the time prescribed in the statute has expired. The matter arises most often in connection with the failure of one of the parties in an opposition or cancellation to make a filing within the prescribed time. In such a situation, are there circumstances in which such a party may still be permitted to make the requested submission?

This question arose in MD Fast Food Limited v McDonald’s Corporation (Opposition to Application No 234206, August 6 2012), which concerned an application for the mark MAC DAVID (and design) (Application 234206), filed in Class 43 of the Nice Classification for “preparation of take-away and fast food; operating fast food restaurants”. The application was accepted but an opposition was lodged against the registration by the McDonald's Corporation, which filed an appropriate statement of claim. The applicant failed to file its counter-statement within the two-month period prescribed by the Israel Trademarks Ordinance.

The Trademark Office then issued a notice that it was closing the application in accordance with Section 24(e) of the ordinance, which provides that, in the event that an applicant fails to file its counter-statement in a timely fashion, “it is deemed to have abandoned its application”. Some two months later, the applicant filed a request, supported by an affidavit, for reinstatement of the application. The opponent opposed the applicant’s request.

In support of its request, the applicant pointed, in particular, to two sources of authority - namely Section 33 of the ordinance and Guideline No 2. The commissioner rejected both of these grounds.

With respect to Section 33 of the ordinance, the commissioner noted that the provision for reinstatement therein applies only to a registered mark for which no renewal fee has been timely paid by the registrant. In such a case, there is a 12-month window in which reinstatement may be possible. In the instant case, however, the mark in question had not yet been registered. Thus, Section 33 did not apply.

Guideline No 2 sets out circumstances in which an applicant that did not provide a response in a timely fashion may seek to reinstate the application. The commissioner observed that “it is doubtful” whether these provisions can be deemed to apply to a situation where reinstatement of an opposition is requested. In support, the commissioner pointed to Section 24(e) of the ordinance, which, as noted above, states that, where no counter-statement is filed, the application is to be deemed as abandoned. The purpose of the provision is to achieve 'finality' of the matter. In any event, a statutory provision supersedes any arguably contrary provision in a guideline. Based on the foregoing, the commissioner denied the request for reinstatement.

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