Region: Israel

When is the deadline to file evidence not a deadline?

Following a decision of the adjudicator in <i>inter partes</i> proceeding under Section 29 of the Trademarks Ordinance (New Version) 5732-1972, it appears 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.

16 January 2014

District court upholds refusal to register configuration of highchair as 3D mark

In <i>Stokke AS v Registrar of Patents, Designs and Trademarks</i>, the Tel Aviv District Court has upheld the registrar's decision to refuse Stokke AS' application to register the image of its Tripp Trapp highchair as a 3D trademark. In doing so, the district court relied on the Supreme Court’s ruling in the <i>TOFFIFEE case</i>, which concerns the registrability of product configuration.

10 January 2014

Use of leaping cat image held to infringe Puma's mark

In <i>Puma SE v City Wash Ltd</i>, the Tel Aviv District Court has held that a retailer which used the image a leaping cat with the word 'Tigris' infringed Puma's marks, committed passing off and diluted Puma's goodwill. The court considered that an earlier decision of the registrar in opposition proceedings between the same parties operated as <i>res judicata</i>.

12 December 2013

IP adjudicator rejects 14 RUSSIAN STANDARD applications

The IP adjudicator has rejected 14 applications for the registration of RUSSIAN STANDARD marks filed by Russian Standard Intellectual Property Holding AG and a closed joint-stock company. Twelve applications were refused on the grounds that they lacked distinctive character, while the remaining two were rejected because identical marks, owned by the closed joint-stock company under its former name, were already registered.

31 October 2013

Philip Morris loses 'activate' dispute against Japan Tobacco

In proceedings under Section 29 of the Trademarks Ordinance, which concerns rival applications for the same trademark, the registrar has ruled in favour of Japan Tobacco. Japan Tobacco and Philip Morris had applied for registration of their ACTIVATE marks within a few months of each other, but the registrar found, among other things, that Japan Tobacco had proved prior use of its mark outside of Israel.

29 October 2013

3D packaging for alcoholic beverage held to be registrable

The commissioner has found that a trademark application for the 3D packaging of an alcoholic beverage, filed on behalf of The Absolut Company Aktiebolag, was registrable. Among other things, the commissioner held that the evidence supported the conclusion that the mark had acquired distinctiveness, separate and apart from any other forms of marking on the bottle.

25 October 2013

District Court overturns lower court's decision on use of personal name as keyword

Overturning the Tel Aviv Magistrate Court's decision, the District Court has ruled that Proportzia was entitled to use the name of the plaintiff, Dr Klein, as a keyword in Google's AdWords service, provided that the search results were not misleading. As Dr Klein's name had become known as part of his business, there was no difference between using his name and using a trademark.

06 September 2013

Supreme Court applies 'entire market value' rule to calculate damages

In <i>Ronit Flags of the World Ltd v Shatan</i>, the Supreme Court has overturned a decision of the Tel Aviv District Court, finding that the damages awarded to the appellant - the owner of designs for car flag holders - were to be calculated on the basis of the appellant's lost profits with respect to the entire product, provided that such loss was reasonably foreseeable. The court applied the 'entire market value’ rule, a principle adopted from US case law.

25 July 2013

Supreme Court confirms decision in respondent’s favour, despite criticising its behaviour

In <i>Shlomo A Angel Inc v Y & A Berman Inc</i>, the Supreme Court has ruled that the respondent had not infringed the plaintiff's registered trademark EYNAN by using the mark LA'INYAN for identical goods. The Supreme Court upheld the district court's decision, notwithstanding its finding that the respondent's explanation for using LA'INYAN was "unconvincing, to say the least".

15 July 2013

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

A decision of the commissioner in opposition proceedings between Stichting BDO and Banco de Oro Unibank Inc highlights the trend at the Israel Patent and Trademark Office to apply the standards of evidence and procedure taken from the courts of general jurisdiction. The decision revolved around a series of challenges to the reply affidavit that was filed on behalf of the opponent.

09 July 2013

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