by Jeremy Ben-David, Founder, Managing Partner
I’m reminded of a day some time ago, a short time after we successfully entered the 21st century without suffering from the 2 missing digits at the beginning of the year notation in databases and operating systems built way back in the late 20th century. The affectionately known “Y2K bug” had not caused any of the major catastrophes that so many were worried about as we moved into the year 2000. At that time, the Iconic Twin Towers of the World Trade Center still towered above New York – all 110 floors of them.
Our firm, still in its infancy – still relied heavily on archaic things such as paper, snail mail with postage stamps, and faxes. Email had already been going for a number of years, and the internet was just taking its first faltering steps. My go-to browser was Netscape Navigator, acquired by AOL in 1999, the same year that Amazon obtained its One-Click patent, U.S. Patent No. 5,960,411, covering technology allowing customers to make online purchases with a single click, using previously stored payment and shipping information. The main competitor to Netscape was Microsoft’s Internet Explorer. I suspect that, like me, many preferred Netscape because it wasn’t Microsoft. That prejudice has long since been forgotten (by me at least).
On that particular day, I found myself wandering into our file archive. These days all such wandering is digital; but back then, our archive was this immense room with wall-to-wall shelves and paper files. One of our trademark paralegals was entering a docket for an Israeli trademark renewal for a date way ahead in the future.
Just as most things were still done manually by writing with a pen or pencil on real paper, which had real holes punched in the margin so that it could be placed in a ring binder, so too was our docketing system; it consisted of preprinted pages, each for a certain period of time, with spaces for entering the relevant file and docket details. Next to each entry, of course, there were spaces for entering the date on which the entry had been made, and the initials of the person making the entry.
Moreover, inherent in that specific docket entry, namely, for a renewal date in 2014, (yes, 14 years(!) after the current renewal) was the state of the Trademark Law in Israel at that time. For in the year 2000, a trademark was initially registered for 7 years, after which it would be renewable for 14 years at one time. In 2010, however, all of that changed when Israel joined The Madrid Protocol (“Madrid”). In order to adapt to the requirements of Madrid, all new marks would be in force for ten years and renewable for 10 years. All pre-Madrid marks, however, transitioned to Madrid on the date of their next renewal as established by the pre-Madrid system, thereafter being renewable for 10 years, just like their younger, pot-Madrid “colleagues”.
While on the subject of Israel’s accession to and implementation of Madrid, a major change was the transitioning to multi-class applications. Prior to Madrid, only single class registrations were permitted. This could often mean that in Israel, several applications were required for the same mark, but in different classes. Obviously, that meant that renewal of a mark registered in multiple classes was that much more expensive.
Therefore, when multi-class filings were introduced, the legislator also introduced provisions that would enable registrations to be merged, such that if a specific mark had been registered on a specific date but in different classes (therefore requiring separate registrations), it was possible to merge them into a single, multiclass registration, before paying the separate renewal fees to keep each registration in force.
To anyone who starting practicing Israel Trademark Law in the past decade or so, all of the above seems strange and foreign, almost as foreign as having paper files and receiving letters with foreign stamps.
On reflection, so much has changed. The above-mentioned, famous “One Click” patent was a harbinger of two major changes. One of them was forcing the legal system to confront the question of software patents, patents involving methods of doing business, and the meeting point between these two connected areas.
The other change was the question of internet commerce. The ability to buy almost anything from anywhere without leaving your computer (or smartphone or tablet, which themselves were still several years in the future) was by no means a foregone conclusion. But fast forward to today, it is clear that Amazon, as arguably the foremost pioneer of internet commerce, changed our world forever.
And this brings me back to the theme of this meandering reminiscence. There is hardly a single trademark that isn’t used, in some way, online; many in a way that connects with domain names. And as we know, domain names and trademarks, while separate areas, are incredibly interconnected. And when we look at the registration of trademarks, it is highly unlikely that a single pen or piece of paper will be involved in the entire process from conception to search to registration to renewal.
But when all is said and done, while the tools of our trade, the hardware and software, have changed in ways that not so many years ago would have seemed like science fiction, the fundamentals of trademark law, they have remained essentially the same. The more things change, the more they stay the same.
Oh, and in case you’re wondering, the One-Click patent, U.S. Patent No. 5,960,411, expired on September 12, 2017. How time flies!
