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D TO KEEP YOU DRY” lacks any distinctive character and therefore may not be registered in Israel, despite the fact it was registered outside Israel.

The trademark application for “GUARANTEED TO KEEP YOU DRY” in classes 9, 14 & 25 was filed by the U.S. Company W. L. Gore & Associates in August 2008.  Upon examination, the application was refused registration on the grounds that the mark appears to be a promotional slogan. In response, the Applicant submitted written arguments stating that the mark is not merely a slogan used for promotional purposes, but appears on the products. The Applicant also argued that the mark was in use for several years and registered outside Israel. These arguments did not persuade the examiner who issued another letter insisting on the refusal to accept the mark, on the grounds that it is comprised of a descriptive combination of words. In response to this second refusal the Applicant filed another round of arguments stating that the mark is not descriptive for water proof clothing, and if any, should be considered suggestive with respect to these goods. The Applicant argued that the word “DRY” neither describes the requested goods, i.e., clothing, nor suggests of a relation to them, but rather describes the consumer using the product, which stays dry, and therefore should be accepted.

Indeed, the question of classification of marks as slogan has lost its main relevance in view of the Israeli Supreme Court decision re Eveready Battery company Inc., v. The Israeli Registrar (“FREE YOUR SKIN”), which held that a laudatory slogan should be examined on absolute grounds as any other “regular” mark filed for registration. However, certain unique aspects for slogan must still be considered: one is the degree of descriptiveness of the slogan and the second is how the mark is perceived by consumers and functions as a trademark.

In this case, the Vice Registrar decided that there was no need to address these issues, because the mark did not succeed to overcome the initial absolute grounds barrier. It was set that examination of distinctive character for a mark should be made from the perspective of the consumer of the product bearing the mark. “GUARANTEED TO KEEP YOU DRY” is used for waterproof clothing, textile and footwear promising consumers to keep them dry. Since the mark refers to the main quality of the mark, – the guarantee to keep the consumer dry, and since this is the reason why consumers want to purchase the product, the Vice Registrar held that the mark does not have any unique character to differentiate it from other goods under the same description and therefore must be refused registration. For the same reason, the mark was found ineligible for registration based on foreign registration in the Applicant’s country of origin.

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On October 10, 2012 Israel Supreme Court accepted the appeal in the matter of Rivka Muzafi v. Rachel Kabali and ruled that there was no copyrights infringement of Grammar textbooks written by Kabali.

The Israeli Supreme Court decided that there is no copyright in teaching methods. The Supreme Court held that there was no copying of a material and substantial part of the protective work written by Kabali.

Hendrick van Balen the Elder showing the 9 Muses of Greek Mythology

Further, the Supreme Court held that copyright does not extend to a teaching method, since a “teaching method” is an “idea”. The same applies to the use of certain words in describing certain linguistic phenomena, which can be seen as facts or data which are under the exceptions provided in the law. Likewise, the use of a table does not award copyright therein to the table author, as opposed to the manner in which the table was edited and the classification of its figures, which when meeting the demands creativity and originality, may provide copyrights to the said table author.

The Supreme Court further noted that literary works such as textbooks would receive narrow protection for the expression of facts and data. Such would be the case when the content of the book is largely dictated by the curriculum of the Ministry of Education. However, such curriculum would not diminish the right of the author of such a work from claiming copyright protection, where it is found that the book comprises and original and unique authorship.

Lastly, the Court held that in assessing the existence of a copying does based on a mechanical comparison of the number of words or lines but, is based on the Court’s impression of the works as a whole.

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The basic filing fee for a patent application will increase from NIS 1,075 {$297} to NIS 2,000 {$533}. However, individuals and corporations having a turnaround of less than NIS10 million {$2.7M} can enjoy a 40% (NIS1200 {$325}) discount.  The discount is limited for the first application on the same invention. An affidavit supporting the applicant’s status is required for receiving the discount.

The ILPO is also adding a new official fee – an issue fee of NIS 700 {$187}. For eleigble entities, the 40% percent discount will also applies for this fee.

The ILPO also raised the renewal fees, as follows:

• Up to the 6th year from filing – from NIS 157 ($42) to NIS 800 ($213)
• 7th to 10th years – from 320 ($85) to NIS 1600 ($426)
• 11th to 14th years – from 1,920 ($512) to NIS 2400 ($640)
• 15th to 18th years – from NIS 4,003 ($1,067) to NIS 4000 ($1066)
• 19th to 20th years – from NIS 4,802 ($1,280) to NIS 560000 ($1,493)
• for the entire 20 years period of grant – from NIS 10,410 ($42) to NIS 12000 ($3,200)

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On August 2, 2012, the District Court in Tel-Aviv handed down a decision in the matter of Miriam Bilu V. The Municipality of Holon et al. The claim involves copyrights infringement in the drawings and 3D artistic figures exhibited in the Children’s Museum in Holon.

The Defendants contended that the drawings and artistic figures were based on a literature figures included in a script written by a third person and that this person is the owner of the copyrights in the characters. The defendants further argued that they acquired the copyrights in the characters that the Plaintiff drew in good faith and consideration from the constructor of the museum. The Defendants added that they did not know that the copyrights in the drawings were owned by Plaintiff and in any event, that the drawings were “work made for hire”.

The Court held that the Copyright Act, 1911 (which was replaced by the Copyright Act 5768 – 2007) applied to the case, since both the work and the infringement were made before the new Copyright Act entered into force.

The Court further ruled that the drawings and artistic figures in question are “artistic work”, and that the copyright protection expands to transformation of the work to different dimension than the original work.

The Court rejected the Defendants contentions and held that while the Plaintiff did not have copyright in the characters on which the Plaintiff based the drawings and artistic figures (if such copyright existed – a question the court left open), the drawings and artistic figures made by Plaintiff are sufficiently original and creative so as to afford independent copyright to the Plaintiff. Consequently the Court held that the Plaintiff’s copyright covered not only the two-dimensional drawings, but also the three-dimension figures based on these drawings.

The court further addressed the issue whether the Defendants acquired the copyrights from the Plaintiff. The court determined that the Defendants never paid for the use of the figures (neither by means of acquisition nor by obtaining a license). The court further found that the copyrights were never transferred to the constructor of the museum (although he attempted to receive such rights) and thus could not have been acquired by the Defendants.

The Court also rejected the Defendants’ assertion that they were innocent infringers because they did not know the Plaintiff. The court found that the defendants were aware of the Plaintiff’s role in the creation of the figures and that in any event, Section 8 to the Copyright Act, 1911 applies only in circumstances where the defendant thought in good faith that the work was not subject to copyrights and not to circumstances where it is clear to the Defendants the copyright existed but the defendant did not bother to find out who the copyright owner was.

The court held against the Defendants the fact that once they learned of Plaintiff’s claims, they deprived Plaintiff of her moral rights by not attributing the figures to her and did not give her credit her for the artistic work she created.

The Defendants further argued that the plaintiff was not entitled to obtain a permanent injunction due to bad faith laches and acquiescence manifested in Plaintiff’s deliberate delay in asserting her rights and filing the lawsuit. The Court concluded that injunctive relief is the primary remedy awarded to cease the infringement of intellectual property rights and that monetary compensation is not an adequate substitute. The Court added that good faith does not constitute defense against a direct infringement of copyrights.

Nevertheless, in view of Plaintiffs bad faith conduct, the court ordered that the permanent injunctive relief will enter into full force only within one year from the day of the judgment. This, in order to grant Defendants ample time to replace the exhibition in the museum, in case they do not reach to an agreement with the plaintiff.

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the Invention of Wine

This decision was given in an action filed by Dr.Nimrod Bayer against Pluarlity Ltd. The action was filed by Bayer in the district court. Bayer claimed that since he is the inventor of some the technology which was the basis of Plurality, he had rights to compensation. Bayer further claimed that this issue should be discussed before the “Justice Ministry Committee for Compensation and Royalties” (the “Committee“), which was established according to section 134 of the Israeli Patent Law – 1967. Recently, this Committee issued a decision stating that under some circumstances employees may be entitled to compensation irrespective of their employee invention agreement.

The District Court denied Bayer’s application in a brief decision stating that the contract between Bayer and Plurality specifically denies from Bayer any such rights over his inventions.

Bayer appealed.

The Supreme Court accepted the appeal and criticized the district’s court decision. The Judges ruled that the fact the contract revoke the employee’s right for royalties and compensation, does not rule out the right of the employee to claim its right for royalties. Such claim should be heard by the court and where suitable discussed by the Committee.

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The Amendment’s most important change that is to be applied by the Patent Office at the end of August 2012 will include the ability of third parties to submit prior art references prior to grant, to force applicants to file patent applications electronically, in addition to the hard copy, and cancelling the Abstract publications at issuance.

Recent amendment (no. 10) to the Act, incorporated substantial changes such as the 18 months period for publication of patent applications, regulated the expedited examination of patent application in Israel, and established new formal conduct for applicants and interested parties with the Israeli Patent Office regarding newly filed applications.

Until recently, patent applications were filed with the Israeli Patent Office only in hard copy,  including the application body, drawings, request forms and additional relevant documents such as Power of Attorney or Assignment documents.

Section 11(A) to the Act, now requires that an electronically PDF copy of the application (divided to description, claims, drawings, sequences listing etc.) will be filed with the Israeli Patent Office on a CD or DVD, in addition to the hard copy.

An additional change incorporated to the Act in the recent amendment, refers to cited prior art references.

Currently, due to workload at the Israeli Patent Office, the examination of an application will usually starts after a period of around 18 to 24 months from the actual filing date in Israel. Hence, according to section 18 to the Act, few months before examination starts, the applicant is required to respond to a “Notice Before examination” issued by the Patent Office and provide the examiner with relevant cited references and updated publications.

Newly amended section 18 to the Act, provides now that not only that the applicant  is required to  report and obtain cited references and publications to the examiner, but a non-applicant third party can provide the examiner with this information as well. The non-extendable final deadline to file such relevant references (for example any prior art) documents with the Israeli Patent Office will be two months from the applicant’s filed response to the “Notice Before examination” notice, as will be updated by the Patent Office website. The ability to file publications to the examiner by third parties effectively opens the door for third party pre-grant submissions to the patent examiner. Monitoring publications of patent applications will now enable third parties to effectively participate in the examination process through such submissions.

Finally, as of the recent amendment to the Act, section 26 (b) (5) was nulled and publications of applications allowance in the Israeli Patent Journal will not include the description of the main invention allowed, but only it’s bibliographic details.

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The District Court of Tel Aviv-Yafo handed on July 24, 2012 its decision in Disney Enterprise’s lawsuit against Kedar Toys and its manager for importing counterfeit Winnie the Pooh products.

In 2001 the Plaintiff, Disney Enterprise reached an agreement with the English author, A. A. Milne, according to which Disney was assigned various rights in the Winnie the Pooh books, including trademarks, copyrights and the rights to the characters.

The Plaintiff filed the lawsuit after the Customs Authorities detained the Defendants cargo, which contained counterfeit Winnie the Pooh products.

The Plaintiff claimed that the Defendants purchased the counterfeit Winnie the Pooh products from a factory in China that used to manufacture genuine Winnie the Pooh merchandise. The Plaintiff further claimed that the imported products are of low quality and that the Defendants should have known that the products are not genuine Winnie the Pooh products.

The Defendants claimed that the products were purchased from a manufacturer who presented himself as a Disney licensed manufacturer. The Defendants claim that the products were purchased in good faith and they could not have known that they were counterfeit.

The District Court addressed the Defendants’ claim that the products were purchased in good faith and concluded that the Defendants, who engage in the field of toys for more than 40 years can distinguish between genuine products and counterfeit products. The District Court added that as far as the Defendants had any concerns regarding the products, they should have referred to the Plaintiff.

The District Court also ruled that the Defendants, as experienced importers of goods, have additional  responsibilities and are required to verify that the importation is according to law.

The District Court found the Defendants liable for trademark infringement, copyright infringement and passing off. The District Court rejected the cause of action of unjust enrichment due to the fact that the Defendants were not enriched by their actions, but merely attempted to enrich themselves.

As the Plaintiff did not provide that it incurred any damages due to the Defendants actions, the District Court granted the Plaintiff the statutory sums of NIS 100,000 for passing off and NIS 20,000 for copyright infringement, in addition to attorneys’ fees in the sum of NIS 25,000. The court stated that awarding statutory damages for passing off and copyright are not overlapping and therefore the compensation for both under the circumstances was  deemed appropriate.

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Market Peasants

third party may be considered as the legal owner of the goods, he cannot exploit the goods commercially in ways which are reserved to the copyright owner. Any commercial use of the goods constitutes an indirect breach of copyright, and the defense of the market overt does not apply to this scenario.

The Appellants in this case were the heirs of the late linguist Abraham Ibn-Shushan, author of “The New [Hebrew] Dictionary”. Kiryat Sefer Ltd. was the publisher of the dictionary. In previous proceedings between the Appellants and the publisher the court stipulated, in partial judgment, that the publisher violated the agreements with the Appellants, and therefore the Appellants rightfully revoked their then existing agreements. It was also determined that once the agreements were revoked, the publisher had no right to make any use of the copyrighted works.

Previously to the above legal proceedings, the Respondents engaged in marketing books, and used to buy copies of the dictionary from the publisher. The Respondents purchased dictionaries during the above legal proceedings as well as after the partial judgment was given, in December 1998. The Respondents were not parties to the above legal proceedings. In May 1999 the Appellants notified the Respondents about the partial judgment and warned the Respondents not to pursue any further marketing of the dictionaries. The Respondents refused, claiming that they had all rights to market the dictionaries that they purchased under market overt from the publisher.

In 2000, the Appellants filed a lawsuit against the Respondents, which sought a permanent injunction prohibiting the Respondents from continuing to market the dictionaries, to order the return of all the remaining copies to the Appellants, the repayment for all the infringing sales and compensation. The suit was rejected. The District Court found that at the time of the sale of the dictionaries to the Respondents the publisher was not infringing the rights of the Appellants, and therefore these dictionaries cannot be considered as “infringing works”. Hence the appeal.

The Supreme Court accepted the appeal in part stating that as opposed to a direct violation of copyright, under Section 2(2) of the Copyright Act of 1911 (which applies to this case, the equivalent section in the Copyright Act of 2007 being Section 48) the indirect infringement of copyright requires that the infringer knew, at the time of the indirect infringing activity, that the work was an infringing work, usually infringed by a third party which is unrelated to the indirect infringement. The element of knowledge spreads to include “turning a blind eye”.

The first question in this case was whether the copies that were sold by the Respondents were infringing copies under section 2(2), or the Respondents are protected by their ignorance. There was no dispute that after the Appellants notified the Respondents they knew about the partial judgment and that the agreements were cancelled. The Respondents argued that until they were notified by the Appellants they enjoy a defense of ignorance. The court accepted this argument determining that the Appellants were not entitled to any remedy regarding the dictionaries that the Respondents sold before they were informed of the partial judgment.

A separate – and more important – question related to the dictionaries that the Respondents sold after receiving they were informed. In this matter, the Supreme Court reversed the ruling of the District Court, according to which the works that the Respondents purchased before the partial judgment and were sold after they became aware of it were not infringing works.

The Supreme Court determined that once the Respondents received the cancellation notice, rightfully issued, the copyrights returned to the original copyright owners, and in this case the rights in the dictionaries returned to Appellants, all dictionaries produced by the publishers after the cancellation of the agreements, including the dictionaries sold to the Respondents after receiving the cancellation notice, constitute “an infringed work”. The defense of ignorance does not apply to the Respondents.

The District Court distinguished between the obligatory rights of the Appellants and the Respondents and the property right – the copyright – of the publisher in the works. The Supreme Court denied this distinction, determining that in the case of copyright, as an intangible right, there is an identity between the obligatory right of the Appellants to retrieve the copyright once the agreements were cancelled and their “property rights” in the copyright.

The Supreme Court further examined the rights of a trader, who acquired infringing works in accordance with market overt (not knowing of the infringement, and hence the required good faith regarding the market overt), but after having learned of the infringement wanted to continue to carry out commercial activity in the property. The Supreme Court stipulated that in this narrow aspect, there is no room to grant that trader who wishes to continue to carry out commercial activity in the infringing property the defense of “market overt”. Even if the actual acquisition of the infringing work is protected by the market overt, and the trader is protected from being obliged to return the property, destroy it, or repay compensation, the commercial activity in the property is prohibited. A similar approach was adopted the Copyright Act of 2007, in Section 60(c).

This approach ensures that the “End User” who purchased a property under market overt would not find himself suddenly exposed to different requirements of the copyright owner in the property. However, commercial exploitation of the work in any of the ways reserved to the copyright owner in the work, will be limited to this end user. Any commercial use of the property, including marketing, knowing that the property is an infringing work, would be considered an infringement of copyright under Section 2(2) of the Copyright Act of 1911, and the infringer would be liable to compensate the copyright owner.

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The Iams Company, is a Proctor & Gamble company based in the United States and formed in 1946 . IAMS manufactures and sells pet food. Iams registered in Israel trademark serial number 91,789 in class 31 for pet food, for the shape of a palm of a dog’s paw print.

Iams Paw Design Registration

This trademark was registered in Israel in 1994. The paw print design is a part of Iam’s trademark used on its products under two lines – IAMS and EUKANUBA. Iams is also the registered owner of Israeli Trademark 98007 in class 31 for pet food, for another logo which includes the paw print design.

Hunter Group is a Thai company based in 1991 and also engages in the manufacturing and marketing of an array of products associated with pets. Specifically, Hunter filed an application to register the logo mark SLEEKY with a double paw print design. This logo mark is the primary trademark used by Hunter.

Iams filed an opposition. In the Opposition Iams argued that the SLEEKY double paw print design mark lacks distinctiveness, and that it should be refused in view of the Iams paw print design logo registered trademarks. Iams also argued her paw print design was well known and that Hunter chose its trademark with bad faith trying to enjoy Iams reputation in its marks. Iams did not argue that there was actual consumer confusion.

The opposition was denied. 

The Patent, Trademark & Designs Office Registrar, Mr. Kling, handed down the decision.  Mr. Kling began its analysis with Section 9(11) to the Trademark Ordinance, the purpose of which is to prevent registration of applications, where consumers will be misled to believe a product they purchased originates from a source other than the trademark owner. Case law provides three main tests: the sight and sound test, the type of goods and customers test and the other circumstances test. There are a number of secondary tests.

The sight and sound test, is not an easy one in this case. The marks compared are these:

The Requested Mark	Iam’s Trademarks

Iams considered the paw print design to be the dominant part of its trademarks therefore it asked the Trademark Office to give the paw print design more weight than the words part in the logos it used (which also included EUKKANUBA and the paw print design). While Iams made this argument the Registrar found that it failed to bring any evidence showing how consumers are used to seeing its marks. Moreover, without the necessary evidence, since the paw print design was only a small portion of the mark and given the rule that the trademark must be seen a whole, the Registrar did not accept Iams argument that the paw print design was the dominent part of Iams trademarks.

But, the Registrar did not stop there. Mr. Kling stated that even a comparison of the Iams paw print design itself with the Hunter double paw print design as they are specifically used included various differences. The use of a paw print for pet food was also considered by the Registrar to be suggestive at best. Given all the above, the Registrar found the use of the double paw print design by Hunter did not raise a likelihood of confusion under the circumstances.

Moving on to the two remaining tests, the Registrar found that the test of goods type and consumers was satisfied since both marks were in class 31 for pet food and both companies argued their goods were of the highest quality.

In the test relating to the other circumstances of the case, the Registrar stated that weight must be given to the fact that another third party company had a trademark over a paw print design.  The significance of this third party registration was that the registration was agreed to by Iams. This amounted to evidence to show that Iams agreed to a co-existence of paw print design trademarks. In addition, the Registrar noted that animal body parts were common in the trademark registry and compared the attempt to claim ownership in a common design in the field to an attempt to claim ownership in a dictionary word. Thus, the Registrar concluded that the trademark applied for by Hunter is not sufficiently similar to Iams trademarks such that consumers would be mislead.

In addition, the Registrar noted that Iams provided sufficient evidence to show that its products were known and have reputation due to high volume of sales all under the Iams and paw print design trademarks. Iams however, failed to show that it had reputation in the paw print design alone. Iams could not bring a single case showing that a consumer was confused in fact. As a result the other arguments made by Iams were also rejected. The Registrar found the SLEEKY logo mark distinctive and allowed its registration.

This decision was handed down on June 17, 2012.

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