The IP Trailhead from JMB Davis Ben-David January 2023

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We start the year with an unusually positive view on the advent of the UPC and why having the options provided is a good thing for our clients. We follow that with sage observations on the subject of trademark genericide by our Managing Attorney of trademarks Ivan Lipshitz, and provide some good news for those hoping to file in the UAE. Dessert, as usual, is a delicious helping of podcast, served up by our Partner and veteran interviewer Avraham Hermon, in which he interviews Dr. Ilan Samish of Amai Proteins, a company making designer proteins including a sweet protein 3500 times as sweet as sugar!

A Camel by Any Other Name

by Jeremy M. Ben-David

It was during a particularly illuminating roundtable discussion about the patentability of diagnostic methods, US law, the Supreme Court and other such unhappy bedfellows, when the first proverbial light bulb switched on. Whether your metaphor is the first ray of sunshine peeking over the horizon, or floodlights clicking on all at once at a sports ground so as to turn dark night into brilliant daylight; it was just such a moment when I realized that the European Unified Patent Court (aka UPC) might actually be good for our clients.

Here’s the thing. With the advent of the UPC, the 17 countries that have so far subscribed to it will effectively become a single patent jurisdiction. And that means that for activities previously performed by dividing them among neighboring countries and with absolute impunity, similar activities may become infringing activities for future European Patents that are enforceable under the jurisdiction of the UPC. And as this works to the benefit of the patentee, namely, the clients whose interests we represent, this is a good thing!

Which leads me to a further, very serious point about our profession.

READ MORE BY CLICKING HERE

Filing is Now Easier in the UAE

In the wake of the signing of the historic Abraham Accords, the much expected rush to register patents and designs in the United Arab Emirates by Israeli companies failed to materialize. Speaking based on the experience of some of our clients, one of the main hurdles in applying for these rights in the UAE was the requirement to legalize formal documents at a UAE Consulate.

We are pleased to report that this is no longer the case, and all that is required is the notarization of formal documents. This does, of course, apply to applicants of all nationalities.

Please contact us at JMBmail@JMBDavis.com for further information.

Dr. Ilan Samish is the founder and CEO of Amai Proteins, an Israeli foodtech startup that has developed the first sugar substitute that tastes just like sugar by redesigning sweet proteins found in the jungle and producing them for mass consumption. Dr. Samish took decades of academic knowledge and used it to found this innovative and unique startup which is funded by major businesses and VC firms and has won multiple startup awards around the world.

Avraham sat down with Ilan in the offices of Amai Proteins to discuss how the business got started, how Ilan built his team, developed business relationships, found production facilities, got funded and his tips for startup founders.

LISTEN TO THE CONVERSATION HERE

“Genericide” Part 2: When Brand Dominance Can Result in Loss of Your Trademark Rights

by Ivan Lipshitz, Adv., JMB Davis Ben-David

In my first part article on “Genericide” published earlier, I discussed the legal concept of “Genericism” or “Genericide. In this second part article in this series, I will do a deep dive into the methods used to determine trademark “distinctiveness” and trademark strength, known as the “Trademark Spectrum”. I will also give some familiar examples of “Genericide” whilst also exploring the legal standard which courts use to determine if “Genericide” exists with respect to a specific trademark.

The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks because they are inherently distinctive. Examples of fanciful marks include XBOX®, XEROX®, EXXON® and KODAK®. Examples of arbitrary marks are APPLE® for computers, or ORANGE® for cellphones. Moreover, because these types of marks are creative and unusual, it is less likely that others will be using them.

However, many famous trademarks have become a victim of their own success and have died over time due to genericide. These include THERMOS, TEFLON, ASPIRIN, ZIPPER, JACUZZI, YO-YO, FRISBEE, PILATES, ESCALATOR, HOOVER AND CELLOPHANE.