A Year of IP Litigation 2016

Standing on the threshold of 2017 we look back in satisfaction at 2016 and are pleased to circulate a short round up of some prominent decisions issued in the past year in cases handled by Gilat, Bareket & Co. relating to various fields of intellectual property and competition law, including patents, trademarks, trade-secrets, copyright and plant breeders’ rights. 

Patents:

Applicants are allowed to further divide a divisional application to other divisional applications

Genentech Inc., represented by Gilat, Bareket & Co., challenged internal ILPO guidelines according to which the filing of divisional applications divided out of divisional applications, are prohibited.  

The Registrar of Patents agreed to revisit the guidelines issued by the former Registrar in 2010 that held that the Patents Law should be interpreted as allowing applicants to file divisional applications only from the first parent application and banned secondary divisional application (filed from an earlier divisional application).

In reaching its decision, the Registrar accepted Genentech’s argument that it is his duty to periodically revisit internal administrative guidelines such as the 2010 guidelines and determine whether such guidelines remain necessary and adequate.

The Registrar reviewed the comparative law and practice information that Genentech brought forward. The Registrar acknowledged that, inter alia, in the U.S., the Court found somewhat similar guidelines of the USPTO unlawful and that the EPO (who also initially banned secondary divisional applications) changed its practice and reinstated the possibility of filing secondary divisional applications.

Having accepted Genentech arguments, the ILPTO currently allows filing a divisional from a pending divisional application, even after the parent application was accepted.

Rare decision cancelling patent application allowance in the framework of an opposition – a swift and cost-effective result

Sol-Gel is an Israeli pharmaceutical company focused on developing and commercializing topical dermatological drug products. Sol-Gel’s pipeline includes original proprietary products as well as several generic dermatological projects.

Gilat, Bareket & Co. successfully represented Sol-Gel in an opposition against a patent application in the name of a biopharmaceutical company called Dermira, Inc., relating to glycopyrolate salts (a medication used in the treatment of a variety of medical conditions including hyperhidrosis, anxiety and diarrhea). 

A swift and favorable result for Sol-Gel was obtained, whereby the allowance of Dermira’s patent application was cancelled, thus avoiding costly opposition proceedings. The grounds for cancelling the allowance related to the applicant’s misconduct during the examination of the patent application.

In its decision, the Israeli Patent Registrar determined that since the applicant failed to inform the patent office that one of the four US priority documents had been published prior to the filing date of subsequent US priority applications (which were continuation applications), and hence constituted prior art, the patent application was not properly examined, and that the patent applicant did not meet the required conditions for expedited examination according to section 17(c) of Israel’s Patents Law. The patent application was thus returned to substantive examination and Sol-Gel was awarded with costs.

Removal of error may broaden claims of a patent

The patent examiner refused to amend an error in the specification of a granted patent during examination, as it resulted in broadening of claims.

The patentee, represented by Gilat, Bareket & Co., filed an administrative appeal from said decision and convinced the Patents Registrar that the patent was granted by way of error, i.e., that the granted claims were intended to be broader were it not for the error.  

The registrar ruled that in order for a clerical error to be considered as such, it has to be presented as a clear error prima facie and as a result of a technicality.

It was ruled that the error could not be classified as a clerical error, but nonetheless the Registrar accepted the alternative request and held that the error could still be corrected as per the authority vested in the Registrar to correct faults in the Register of Patents under Article 170 of Israel’s Patents Law (which requires publication for oppositions).

Trade Secrets:

District court rejects lawsuit seeking 12 million shekels in damages for trade secret misappropriation and breach of contract relating to the Kipat Barzel (Iron Dome) air defense system

SPG Mokked Tikshoret Ltd. filed a lawsuit seeking 12 million shekels in damages against Elta Systems Ltd. (the Iron Dome radar’s chief developer) and against Finisar Israel Ltd. (a competitor of SPG and supplier of the communication system) accusing Elta of divulging its alleged trade secrets to Finisar who became Elta’s supplier in lieu of SPG. Plaintiff contended that by doing so Elta not only converted SPG’s trade secrets, but also breached its obligation to purchase systems from SPG, according to an agreement previously signed between the parties.

Gilat, Bareket & Co. represented Elta and was successful in having the claim entirely dismissed in a decision that highlighted major issues lying at the foundation of trade secret and contract law.

In rejecting the suit, the court emphasized that the burden of proving that any information comprises trade secrets rests with the plaintiff. The court further held that the party claiming a trade secret bears the onus of proving that it took reasonable measures to protect its confidentiality, and ruled that SPG did not do so. Lastly, the court noted that the parties are free to regulate the ownership of any work created by them and that the court will honor such agreement. An appeal from said decision is pending with the Supreme Court.

Trademarks:

PAMA is confusingly similar to PUMA

A Palestinian citizen filed a trademark application for the mark PAMA. The PUMA Company, represented by Gilat, Bareket & Co., filed an opposition to the registration of this mark, having ended successfully with the application being rejected.

In the opposition, the applicant attempted to secure rights to register the PAMA mark in Israel from a settlement agreement signed in the late ‘80s between a Palestinian partnership and PUMA in the West Bank, relating to a certain PAMA trademark registered there at the time.

The adjudicator accepted PUMA’s opposition on all grounds and in particular on the ground that the applicant was not able to prove he was a legal successor of the partnership. It was further ruled that a settlement agreement signed for the sake of proceedings before the Palestinian trademark registrar does not apply automatically in legal proceedings held before the Israeli trademark registrar, and that a Palestinian trademark registrar decision in a similar opposition in the West Bank does not restrict the independent judgment of the Israeli trademark registrar.

The adjudicator accepted PUMA’s argument, according to which PAMA is confusingly similar to PUMA’s trademarks, which are undisputedly well-known. It was also indicated that under the circumstances there exists a concern that the requested mark would dilute PUMA’s registered trademarks.

District court holds that an unregistered mark possessing goodwill need not be well known to enjoy protection

Affirming the deputy trademark registrar’s refusal to register a mark consisting of a lengthwise slit along aluminum profiles following an opposition by EXTAL Ltd., the owner of a long-used similar mark, the Jerusalem District Court held that a pre-TRIPS statutory provision that bars registration in the event of unfair competition continues to protect unregistered marks, notwithstanding the enactment of a specific protection for well-known marks following TRIPS, and that said provision is also applicable where the  reputation of the mark does not afford it the status of a well-known trademark. 

The court upheld the refusal to register a mark found to be confusingly similar to an unregistered mark that had acquired considerable reputation in the market but did not tantamount the status of a well-known trademark in the statutory sense. In so holding, the court affirmed the current practice of the Trademark Office adjudicators.

Gilat, Bareket & Co. represented Extal, the respondent in the appeal filed by the National Aluminium & Profile Co. (NAPCO) in the case before the deputy trademark registrar, who accepted the opposition filed by Extal against NAPCO’s application to register a mark similar to its substantially reputable mark used for aluminum profiles.

Domain Name Dispute:

Successful IL-DRP panel decision transfers registration of “att.co.il” to AT&T based on, inter alia, the AT&T trademark registration in Israel and worldwide use

Khalil Kharman, an Israeli citizen, registered the domain name “att.co.il” in his name. AT&T, the largest communications holding company by revenue in the U.S. and one of the largest and well known worldwide, represented by Gilat, Bareket & Co. filed a complaint with the Israeli Dispute Resolution Panel for the Israel Internet Association (“IL-DRP”), arguing that all requirements stipulated in the IL-DRP Rules to transfer the domain to the complainant were satisfied in the present case.

In its decision the panel accepted AT&T’s arguments and ordered that the domain be transferred in AT&T’s name. Based on the arguments presented to it the panel determined that AT&T has rights in the AT&T mark and that Mr. Kharman has no such rights.

The panel rejected Mr. Kharman’s argument that he registered the domain in his name in order to use it as a website to sell furniture (the word furniture in Arabic is phonetically very similar to the letters “att”), noting that no evidence was produced in this regard and that the pronunciation of a word in English must take into account the equivalent of both consonants and vowels, namely, that the word for furniture would be “Athath” or a near equivalent and not merely the letters “att”. 

Plant Breeders’ Rights:

 Infringement of Plant Breeders Rights Resulted in Uprooting a Vineyard

Sun World International is a private company incorporated in the state of Delaware in the United States, dealing with the research, development, growing and marketing of fruits, and operating a program for the cultivation of seedless table grapes.

Gilat, Bareket & Co. successfully represented Sun World International this year in a case involving the infringement of plant breeders rights in a suit filed in respect of one of the most successful grape varieties, namely, the Midnight Beauty® grape variety.

Sun World successfully obtained a temporary injunction prohibiting the infringer from continuing to market the grapes of his vineyard, which in turn led to a settlement whereby the infringer undertook to uproot his vineyard and to cease his infringing activity. The court held in its ruling that the interests of entities making financially large investments in the development of their varieties ought to be protected, holding that:

 “I think that the lack of enforcement of the protection given to the variety’s registered owners and its rights to prevent its exploitation by others in the protection period – in cases where the cause of action is allegedly proven, as it is in our case – may diminish the existing incentive for developing new varieties and inflict notably significant damage to those developers of varieties that have acquired protection.”

This landmark case has attracted the attention of the relevant players in the market, and it seems to have caused a shift of attitude amongst growers toward enforcement of IP rights in agriculture.

Copyrights:

Copyright Infringement in Street Furniture Catalogs

Shaham Arica and Sons Ltd. (“Shaham Arica”) is a reputable street furniture company whose products are found in many construction and urban renewal projects across Israel.

Gilat, Bareket & Co. successfully represented Shaham Arica by filing a lawsuit and a request for a temporary injunction against Amit Street and Garden Furniture Ltd (“Amit”) in respect of copyright infringement of Shaham Arica’s original catalog as well as unjust enrichment at its expense.

The suit was filed after Amit had begun marketing its products by a catalog whose design was similar to that of Shaham Arica’s catalog. The Central District Court ordered Amit to cease marketing and selling its products through these catalogs and to have the catalogs remaining in its possession destroyed.