š11 Kiryat Hamada Street, Jerusalem, Israel
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In the present edition of the IP Trailhead, we relate to several generations of innovation, without so much as mentioning a single specific patent. We go back to the mid-90ās; 1994 and 1995 to be precise, when the GATT-TRIPS treaty was concluded, to be followed a year later by the introduction of the Provisional Patent by the USPTO. At the time, there was no question that it was the Chinese who were lagging behind and, in contrast, the US that was light years ahead with regard to everything connected to IP laws and systems. A quarter of a century later, and the US thatās looking a little sluggish while China has long since left everyone else behind when it comes to constantly reinventing their dynamic IP systems.
Also in 1995 was when I signed up for my first email account. I also remember being excited by the fact that I might possibly be able to obtain copies of US patents on the World Wide Web. (The browser that I was using at the time was Netscape). As demonstrated by Ivan Lipshitz in his article on the subject of trademarks and domains, websites, having passed the point of mere information sources a long time ago, have become being virtual places to conduct real business; as such, they have become the arena for an almost total crossover and inter-entanglement of trademark law with domain law, in a manner that could have been foreseen only the most astute of prophets.
What has remained unchanged, for better or for worse, is the human character, and the tactics that may be tried by legal representatives so as to obtain rights for their clients, while all the time remaining poker-faced. I refer of course to Miriam Samisā account of the goings on at the Israel Trademark Office in an Opposition procedure, the likes of which would elicit a belly laugh from some spectators but reactions of dismay from others.
Circling back to innovation, by now, weāve all come across AI at some point, even if just by hearsay. Iāve been in the field for the best part of 40 years, so I may be forgiven for not being truly excited by the latest new gadgets to be developed (or at least contemplated), purporting to reduce our workload. Iām no prophet, but while AI tools may be useful to an extent, I donāt believe that they are capable of entirely replacing the skilled craftsman in both drafting claim language so as to express a subtlety that until putting finger to keyboard existed solely in the realm of thought, and which requires correspondingly nuanced language in the supporting disclosure. Time will tell, I supposeā¦..
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Patent Attorneys, particularly those who actively assist their clients by obtaining patents for their innovations, can be curiously resistant to change; especially when such change is designed to make their lives easier and lower the cost and effort bar for inventors to obtain patent rights.
For example, take the advent of Provisional applications in the US in 1995. Provisionals were and still are grossly misused, often being ādumpedā into the lap of an unsuspecting Patent Attorney one month before the application term is up, to salvage and turn into a Utility Application. And thatās if heās lucky. The unlucky ones will receive the dreaded salvage job possibly only a few days before the deadline.
While the changes in Chinese law and practice and internal policy have, in the past couple of decades, been nothing if not revolutionary(!) the short-lived introduction in China of a subsidy of 2,000 RMB for patent drafting was not their finest hour. This created a proliferation of patent applications for which the client was charged exactly that sum, currently worth about $280, and in many cases, they received value for money!
The latest tools to make life easier come not from Government, but from the tech sector. These tools, still being developed, are based on AI. Are we right to be suspicious? Is there a place for them? Have I even tried an AI tool so as to know enough to have an opinion?
These are all good questions.
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In Israel, an Opposition can be filed against the registration of an accepted trademark. This was the case with Israel Trademark Application No. 313874 ( āPIT BOSSā in class 11, for barbecues and grills) which was opposed by the company Ohev Zion Ltd. on the grounds that it was confusingly similar to their own registered trademark, TM 334923, and on other grounds, including that the requested mark was descriptive and in common use in commerce. The Opposerās mark is a stylized mark of BOSS which reads as āThe Boss Electrics and Kitchenā, in classes 7, 8, 9 and 11 for household electronics.
The Opposer argued that PIT relates to the expression ābarbeque pitā and BOSS means āin charge ofā, and so the meaning of the requested mark is āthe one in charge of the grillā, such that the requested mark consists solely of words used in commerce to designate or describe the goods, making it ineligible for registration.
The Opposer also argued that PITMASTER is a known term in English for āa person who oversees the cooking done in a barbecue pit: a professional or skilled barbecuerā; and that BOSS is synonymous with MASTER, and thus the term PIT BOSS should be viewed as common in the trade and should be left free to the public domain.
But the best was yet to come, when the Opponentās legal representative was skewered by the Registrar for his arguments of convenience. When applying for registration of the Opponentās mark BOSS, counsel claimed that it was not confusingly similar to the prior-registered PIT BOSS. However, among his arguments for upholding the opposition, counsel claimed the exact opposite(!) namely, that PIT BOSS was confusingly similar to his own mark BOSS!
Read here to see what the Registrar thought of these arguments and what eventually transpired.
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Dr. Hilla Ben-Pazi is a co-founder and CEO of Stroke Alert, an Israeli startup that has developed Avertto, a wearable monitoring system that provides an automated alert for strokes to enable early detection and treatment.
Avraham sat down with Hilla in the offices of Stroke Alert to discuss the motivation behind Stroke Alert, how Hilla built her team, developed business relationships, got funded and her tips for startup founders.
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If your business has a digital presence, its domain name is its most valuable digital asset. For most start-ups, established companies and organizations, your domain name is central to the identity of your business or enterprise, and your brand value is built around it. It is not unusual to hear of public domain name sales reported in the tens or hundreds of thousands of dollars, and often there will be domain name sales reported in the millions. The most expensive domain name ever sold was https://www.cars.com/ which was sold for a staggering US $872 million!. The top 25 most expensive domain names publicly reported as of July 2022 can be found here.
So, if this subject is of interest to you, what can you expect to learn by clicking on the āread moreā link below?
The distinction between a domain name and a trademark
The ways in which domain name abuse can seriously jeopardize your business
Domain name dispute resolution procedures - what they are and how to use them
The 3 elements of a domain name dispute resolution complaint
The post -COVID uptick in domain name dispute resolution cases
In a post -pandemic world there has been a continued shift to online activity and increased internet presence with a marked increase in the numbers of people spending more and more time online. The effect of this phenomenon is that now, more than ever before, there is a compelling need for online trademark vigilance and monitoring of improper and unlawful use of your trademarks, and infringement violations on the internet, including domain name abuse. A good strategy for domain name protection is one that is usually in line with a good trademark strategy, and entails monitoring and securing your online presence across all digital platforms and digital channels on the internet: your website, mobile apps, peer to peer networks, online trading platforms & social media. It therefore makes good sense to ensure that both are centralized and aligned together to ensure the integrity of your IP and digital assets and that they are safeguarded and protected at all times.
If any of this is at all relevant to you, your business or your clients, we invite you to click here and learn more.
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The JMB Davis Ben-David trademark services team works with leading international brands seeking to merchandize their products in the US, Israel and the rest of the world.
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For 25 years, the JMB Davis Ben-David team has successfully assisted clients in registering design patents that protect their original designs for products ranging from medical devices to diamonds.
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The JMB Davis
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You'll find our hour long webinars on Patents and using the Patent system to your advantage.
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We're here to help you with your patents, designs and trademarks.
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We started JMB Davis Ben-David with one goal in mind: to help our clients navigate the challenges of securing rights to their IP. This includes patents, designs and trademarks. Since 1995 we have been working with partners around the world so as to secure our clientsā IP rights. Weāre here for you.
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Managing Partner
JMB Davis Ben-David
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