Requests for assignment should not be taken for granted

One of the defining characteristics of current Israel trademark practice is the extent to which civil rules of procedure are applied to opposition and cancellation practice (and at times also to prosecution). Another reminder of this was found in opposition proceeding No 244831 between Puma SE (the opponent) and Ibd Alrazak Abido (the applicant)(June 30 2014). The procedural matter revolved around the issue of the motion filed by the opponent to strike the counterclaim of the applicant or, in the alternative, to strike the names of two of the parties named in the counterclaim, which the opponent argued had been unlawfully added thereto.

At the centre of the motion filed by the opponent was the request that had been filed by the applicant for partial assignment of the mark to two assignees (a company and a partnership); the request had been filed one day before the filing of the counterclaim. Chapter G of Commissioner Guideline 15/2012 provides in Section 48 that “a request for assignment…, when other parties are involved in an action before the commissioner, shall be filed at the earliest opportunity to the commissioner and shall indicate the matter that is taking place before him”. Section 50 further provides that the “request shall be submitted in parallel to all other parties in the action taking place before the commissioner, and such parties are entitled to respond within 14 days from its receipt”.

In the view of the adjudicator, it followed that the applicant, as assignor, was required to submit a copy of this request for partial assignment to the opponent, who then had 14 days to respond. However, the applicant did not act in accordance with these instructions. Instead, one day after filing the request for assignment, it filed the counterclaim in the name of the two persons who were assignees pursuant to the partial assignment. The upshot was that the applicant acted on its own accord, adding two parties to the opposition without seeking permission to do so, much less without first receiving a response by the commissioner to the request for partial assignment.

The applicant sought to counter this claim by arguing that the request for partial assignment was tied “to the very umbilical cord” of the main action and, but for the opposition, there would have been no need to file the request for change of ownership of the mark. The applicant further alleged that the assignment had no impact on the opposition action. These claims were, in the eyes of the adjudicator ruling on the motion, to be in contradiction with each other and raise the question of why, in fact, the applicant had filed the motion for partial assignment. The adjudicator also rejected the claim by the opponent that the partial assignment was not made to a third party but to family members and a family-related partnership, stating that the guideline did not carve any such exception.

Based on the foregoing, the adjudicator found that the applicant had not complied, even in a partial manner, with the applicable provisions of the guideline. Moreover, the applicant had not enabled the opponent to respond to the request for partial cancellation, with the result that there was nothing before the adjudicator regarding the possible impact of the partial assignment on the pending opposition proceeding. As such, the adjudicator ordered that the two additional parties named on the counterclaim be struck, since the adjudicator had not confirmed the partial assignment; only the applicant was authorised to file a response to the statement of opposition. The adjudicator also imposed costs of IS1,500 (approximately $430).

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