New opposition period can be set, confirms hearing officer

In Baltika Breweries v S & G Inter-Trade Ltd (Applications 182779 and 182780, November 5 2006), a hearing officer at the Trademark Office has rejected an application to dismiss in limine two oppositions that were filed one day after the three-month opposition period. It was further held that an opponent who raises a claim of confusing similarity between its mark and that of the applicant must annex to the statement of opposition an image of the mark or at least include a reference to the registration number of its trademark in case such exists.

According to Section 24(a) the Trademarks Ordinance [New Version] 5732-1972

"within three months from the date of publication or within any other period that was set, any person is entitled to submit to the registrar a notice on its opposition to the mark."

Pursuant to Section 10 of the Law of Interpretation 5741-1981, when a period is set in months or years after a certain event, such period shall end in the last month thereof on the date as that of the event, and if the month were missing same date - on the last date of said month.

In the matter at hand, the trademark applications were advertised for opposition on April 30 2006, and hence the period for filing an opposition ended on July 30 2006. However, S & G Inter-Trade Ltd filed oppositions on July 31 2006, namely a day after the end of the opposition period.

The applicant for registration, Baltika Breweries, contended that the registrar of trademarks is not authorized to extend the opposition period beyond the statutory three-month period, while basing its claim on the parallel provisions in the Patents Law 5727- 1967, which stipulates that the three-month period of opposition to patent applications may not be extended by the registrar. Baltika further relied on Section 7 of the Law for the Amendment of the Trademarks Ordinance (5) 5763-2003 (Amendment 5), which will come into force at the end of three months from the date that Israel becomes a party to the Madrid Protocol and will remove the wording "within any other period that was set" from Section 24(a) of the Trademarks Ordinance.

The hearing officer held that parallels may not be drawn from the Patents Law, which includes a specific statutory provision negating the registrar's authority to extend the opposition period. The ordinance, however, does not include a similar provision with respect to opposition to trademarks. In fact, the hearing officer held that the opposite was correct, namely that Section 24(a) of the ordinance stipulates that the registrar may set another period for filing an opposition. The hearing officer further noted that as Amendment 5 has not come into force, the law should not be construed in accordance therewith. This purported amendment of the ordinance should be read in its context, namely Israel's intended entrance to the Madrid Protocol and Israel's obligation with respect to applicants from other countries that they be informed within a specified period whether their mark will be registered without delay.

The hearing officer asserted that S & G Inter-Trade's delay in filing the opposition of one day alone probably emanated from a mistake in calculating the dates. A delay of a single day did not create an unreasonable injury to Baltika, and it was proper that the opposition should be heard on the merits before the trademark is registered.

Under the circumstances, the hearing officer (i) accepted S & G Inter-Trade's application for extension of time by one day until July 31 2006, according to Section 24(a) of the ordinance, and (ii) rejected Baltika's applications to dismiss in limine the oppositions.

At the end of his decision, the hearing officer accepted Baltika's position that the statement of opposition was lacking in the sense that one of the grounds for opposition was that the proposed mark was similar to S & G Inter-Trade's mark without any reference in the Statement of Case to a specific mark owned by S & G Inter-Trade.

He therefore ordered that S & G Inter-Trade amend its statement of opposition by way of including the image of the mark that formed the basis of the opposition, within 21 days.

David Gilat, Gilat Bareket & Co, Tel Aviv