Trademark Office considers right to replace affiant in opposition proceedings

Opposition practice before the Israel Patent, Trademark and Design Office still contains a significant degree of procedural and evidentiary issues that are akin to those found in fully-fledged civil litigation proceedings. Against this backdrop, one question that has arisen is the extent to which an affiant, who has submitted an affidavit in support of evidence on behalf of one of the parties, may be substituted. Under Israel practice, the opposing party has the right to cross-examine an affiant.
Since one or both parties to an opposition are usually located outside of Israel, there may be circumstances in which the affiant may consider that his/her presence at the hearing in Israel is difficult. Even when the affiant is located in Israel, a claim that substitution of the affiant is appropriate may arise. Two recent decisions of the Patent, Trademark and Design Office have highlighted this issue.
In the first matter, Gemology Headquarters International v Gemological Institute of America Inc (Opposition Nos 200701 and 200702, August 30 2011), the affiant for Gemology Headquarters International claimed that “family issues and business matters” prevented him from coming to Israel for consecutive days to attend the oral hearing. Accordingly, Gemology Headquarters International requested that it be permitted to substitute the affiant with another employee of the company. Gemological Institute of America Inc opposed the request, arguing that the affidavit was based on the personal knowledge and opinions of the affiant and therefore, the latter could not be substituted.
The commissioner rejected the request. He noted that the affiant did not point to any reason why he could not appear at some other proximate date, nor did the request specify the family and business circumstances involved. Moreover, since the original affidavit was clearly based on the personal knowledge and opinions of the affiant, it was not possible to determine whether the new affiant would be similarly situated.
In the second matter, Mediline Ltd v Reckitt & Colman Ltd (Opposition Nos 203593 and 203594, October 27 2011), the affiant, who had worked as vice president of marketing and sales at Mediline Ltd, left his position subsequent to the filing of the affidavit. Mediline requested to substitute the affidavit with an identical affidavit filed by its chief executive officer. Reckitt & Colman Ltd countered by arguing that the fact that the affiant was no longer employed by the company was not a sufficient ground to allow that he be substituted.
The commissioner ruled in favour of Mediline. He reasoned that cessation of employment was a sufficient ground to allow substitution of the affiant. The circumstances under which the affiant had left the company might prejudice his testimony, should he be cross-examined. Accordingly, substitution was appropriate in such circumstances.
It is noteworthy that the commissioner has not set a hard and fast rule with regard to the substitution of an affiant, but considers each request in light of its particular circumstances. Implicit in these two decisions, however, is the principle that substitution may be permitted even if the substitute affiant cannot be said to base his/her testimony on exactly the same personal knowledge.
Neil Wilkof and Aviv Pollak, The Bressler Group, Ramat-Gan

Get unlimited access to all WTR content