Error in applicant's name found not to invalidate notice of opposition

The degree to which Israel trademark practice before the registry continues to be influenced by general rules of civil procedure was emphasised once again in a decision given by the adjudicator, Jacqueline Bracha, on July 24 2014, in the case between opponent Super Medic (Medic Light) Inc and applicant The Procter & Gamble Company regarding the mark ACTIPEARLS (Application No 250720).

At issue was a motion filed by the applicant requesting registration of the mark following the expiry of the three-month opposition period. The motion was treated by the adjudicator as a motion for summary dismissal of the notice of opposition, on the ground that the notice had failed to identify the applicant correctly - namely, the applicant had been misidentified as Procter & Gamble Israel instead of Procter & Gamble Company. The opponent sought to correct the error, but the amended notice of opposition was served on the applicant after the expiry of the three-month statutory period for filing a notice of opposition and the applicant advised that it would not accept it.

The opponent argued that the alleged error was merely of a technical nature in the caption of the notice of opposition. Indeed, in the body of the notice of opposition, the opponent had referred correctly to the applicant and even mentioned that it was a non-Israeli entity. The error was corrected immediately upon having become aware of it and the applicant was in no way harmed by it. The applicant countered that not every error in a notice of opposition is correctable and, moreover, one could not extend the period for filing the notice of opposition, which would have the effect of prejudicing the applicant. The applicant also noted that there is no company in Israel called Procter & Gamble Israel and the number given for the corporation belonged to another company.

The adjudicator stated that it is not possible for the commissioner to extend the statutory period for the filing of a notice of opposition. As such, the question was whether an error in the captioned name of the applicant had the effect of invalidating the notice of opposition. The adjudicator stated that the notice of opposition had correctly indicated the application number and that the contents of the notice clearly indicated to whom it was intended. As such, the error was merely a technical one that could be corrected. In so ruling, the adjudicator rejected the claim made by the applicant that the correction had prejudiced it. The adjudicator reiterated that the notice of opposition had been filed in a timely fashion and thereafter served on the applicant. As such, in the words of the adjudicator, “the applicant was aware of the intention of the opponent to file the opposition such that the applicant had knowledge of the opposition, which in effect had been filed.”

Accordingly, the applicant’s request for registration, which was treated as a motion for summary dismissal, was rejected. Still, it is worth pondering what the test is for determining whether an error is merely technical and under which circumstances the error does not prejudice the other party.

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