When is the deadline to file evidence not a deadline?

One overarching issue that continues to hover over current trademark practice in Israel is the extent to which the rules of civil procedure and evidence apply to the various proceedings before the registry. The Trademarks Ordinance (New Version) 5732-1972 sets out certain explicit rules in this regard, most notably the timeframe regarding the submission of evidence. However, by no means do these provisions constitute a complete system of procedure and evidence, with the result that there is uncertainty about what the operative procedural and evidentiary rules are exactly in a given situation.

An illustrative example is found in the November 25 2013 decision by the adjudicator in the inter partes proceeding under Section 29 of the ordinance between Odeon Turizm Isletmeciligi AS and Hof Ha’almog Eilat Ltd. Under section 29, if the examiner believes that two applications are sufficiently similar, he or she can invoke his or her authority under that section and declare that the two parties must enter into a subsidiary proceeding in which priority of right (but not necessarily registrability per se) is determined. In such a situation, each side is required to submit evidence via affidavit.  

In the instant matter, the adjudicator set a final deadline for submitting such evidence. Hof Ha’almog filed the evidentiary affidavit in a timely manner, but Odeon Turizm merely filed documents and requested that it be granted an extension to file a proper affidavit. The adjudicator declined the request, ruling that Odeon Turizm could argue, under Section 67 of the ordinance, that the evidence should be admitted even without a supporting affidavit.  

Odeon Turizm then filed an appropriate motion, claiming that the adjudicator had the authority under Section 67 to accept oral testimony in lieu of an affidavit. Odeon Turizm explained its failure to file evidence in a timely fashion in accordance with the ordinance by virtue of the fact the client was an entity from Turkey, but the entity instructing counsel for Odeon Turizm in Israel was an American law office. 

The adjudicator rejected this claim, noting that many applicants for registration of a trademark in Israel are foreign companies. However, “[a] company filing for trademark registration in Israel needs to be prepared to administer related proceedings in Israel in accordance with local law". Thus, the adjudicator ruled that to grant the motion of Odeon Turizm would give it an unfair advantage vis-à-vis Hof Ha’almog, especially since the rules governing a Section 29 proceeding provide that the parties must file their respective evidence in a parallel fashion. The adjudicator noted that Odeon Turizm could have filed the affidavit and evidence in a timely fashion and secured the affiant’s evidence at a later time.

Nevertheless, the adjudicator did not totally close the door on the ability of Odeon Turizm to submit its evidence, ruling as follows:

“Still, in light of the fact that I do not see totally blocking the way of [Odeon Turizm] to prove that its mark has priority, while rectifying the damage caused to the other party by awarding it costs, I instruct Odeon Turizm to submit an affidavit on its behalf within seven days and to pay legal fees and expenses in the amount of IS5,000 (equivalent to approximately $1,430.00). This sum has been set having regard to the fact that Odeon Turizm was given numerous extensions to submit evidence and as such acted in a manner contrary to the decisions given in this proceeding.” (emphasis in original)

The upshot of this decision appears to be that the commissioner/adjudicator may relax the rules on submission of evidence via the filing of an affidavit, as prescribed in the ordinance, provided that compensation is paid to the other party. Whether this result will apply only to a proceeding under Section 29, and if so, under what circumstances, or whether it will apply to other proceedings where the submission of evidence is required (eg, an opposition or cancellation), is unclear.

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