Trend to apply rules of civil procedure and evidence to contentious proceedings highlighted

One of the most distinctive aspects of current Israel trademark practice is the extent to which rules of civil procedure and evidence are being applied to contentious proceedings (oppositions and cancellations) and, increasingly, to ex parte matters as well. Because the Israel Trademarks Ordinance and its various rules cover these matters only partially, the commissioner and adjudicators need to fill in the statutory and administrative lacunae, sometimes on an ad hoc basis.

The most recent example is the ruling given by the commissioner on May 26 2013 on a series of procedural and evidentiary questions in connection with the opposition between Stichting BDO and Banco de Oro Unibank Inc (Opposition by Stichting BDO to Application Nos 222941, 222937, 222936 and 220381 filed by Banco de Oro Unibank Inc). The decision revolved around a series of challenges to the reply affidavit that was filed on behalf of the opponent. In response to this filing, the applicant filed a motion in which it requested that certain parts of the reply affidavit be struck. The overarching principle guiding the admissibility of the contents of a reply affidavit is Section 40 of the Rules to the Trademark Ordinance, which provides that the evidence must be limited to that which is in response to the evidence submitted by the applicant.  

Of particular note in this regard was the request to strike sections of the reply affidavit based on legal advice given to the affiant. This is a common occurrence in affidavit practice in Israel. In this regard, the commissioner stated that:

“in effect, there is no evidentiary value of such statements by a witness because …  they are the type of assertion that need not be validated because the legal situation is not within the purview of the authority of the witnesses.”

That said, the commissioner still entertained the possibility that such testimony might have some value in helping to give a more complete picture of the evidence being submitted. For that reason, he did not strike those portions that aided in understanding the broader context of the testimony. Still, the commissioner admonished the parties as follows:

“In any event, I wish to make clear that the parties would be well advised to keep to a minimum declarations based on legal advise received and which have the effect of making things more difficult rather than clarifying the situation.”

The other point of particular interest involved the claim that the affiant’s testimony on the Israeli market and likelihood of confusion should be struck because the affiant was not an expert on such matters. The commissioner accepted this argument, ruling that no foundation has been established to support the affiant’s claim of expertise. Accordingly, the testimony on these two points was struck in accordance with the applicant’s motion.

The upshot of this interim decision is that the trend at the Israel Patent and Trademark Office to apply the standards of evidence and procedure taken from the courts of general jurisdiction continues unabated. This should be carefully taken into aconsideration by all parties engaged in the submission of evidence and especially in the contents of affidavits. 

Neil Wilkof, Dr Eyal Bressler and Co, Israel