The IP Trailhead from JMB Davis Ben-David July 2023

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In the current edition of the IP Trailhead, while there may seem to be little in the way of a unifying theme connecting the trademark-domain name interface with the departure of a very successful Executive Director of the Israel Patent Office and a company developing technology for the prevention and alleviation of Dry Eye, I believe the opposite is true.

In his 2nd piece of a multi-part series on the interface between trademark and domain names, Ivan Lipshitz goes into details as to what constitutes having rights in a mark regarding which a complaint has been submitted for online abuse. In apparently stark contrast, Avraham Hermon pens an au revoir to a well-liked, hardworking and successful ‘mensch’ Mr. Ofir Alon, who has reached the end of his 6 year tenure as head of the Israel Patent Office. In the latest issue of our ‘Israel Technology Founders Speak’ podcast, now entering its 4th year, in a conversation with Raz Karl, Avraham Hermon sets out to discover what lies behind BlinkAid and its somewhat unusual technology.

The unifying factor of all of these subjects is the increasingly digital, virtual, online world in which we live. The first subject relates to the meeting between what until recently had been firmly in the realm of the ‘real’ world i.e. trademarks, and domain names, firmly entrenched in the virtual world, yet somehow all too real, when it comes to products, services and cashflow; all of which traverse the divide between the two worlds. The second piece relates to one of the very real people whose job is to both employ some of the virtual tools, such as AI, in assisting Examiners in doing their job and searchers in finding the materials that are most relevant to their search, while at the same time adjudicating disputes which themselves may play out across the real/virtual world divide. Finally, as screens have invaded our lives, so too have problems of our over exposure to them and the media delivered thereby; problems to which BlinkAid has found a solution.

As always, feel free to reach out to me or either of the above-named authors with comments or questions.

The Interface between Trademarks and Domain Names- Part 2:

Establishing a Mark in which the Complainant has Rights

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

In my first part article on “The Interface between Trademarks and Domain Names: The Value of Your Domain Name and How to Protect it from Abuse” I explained that to succeed in a complaint under the UDRP, the complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The first element of the Policy requires the complainant to show “Identical or Confusing Similarity” of the disputed domain name with its trademark rights. There are two parts to this inquiry: (i) the complainant must demonstrate that it has rights in a trademark at the date the complaint was filed, and (ii) the disputed domain name must be shown to be identical or confusingly similar to the trademark concerned.

Prior panel decisions have accepted that where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of the complainant having valid and prior trademark rights for purposes of standing to file a UDRP.

However, the wording of the Policy merely refers to a “trademark or service mark” in which the complainant has rights. It does not expressly limit the application of the Policy to a registered trademark or service mark. Unregistered trademark rights or common law trademark rights would therefore….

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Raz Karl is the CTO and co-founder of BlinkAid, an Israeli medical device startup that is solving the problem of dry eyes by stimulating blinking using nerve-stimulation technology.

Avraham sat down with Raz in the offices of JMB Davis Ben-David to discuss how Raz came up with the idea, developed a prototype, built his team, got funded and his tips for startup founders.

LISTEN TO THE CONVERSATION HERE

The End of an Era at the Israel Patent Office

by Avraham Hermon, Senior Partner

Last month, Mr. Ofir Alon completed his 6-year term as Executive Director of the Israel Patent Office (ILPO).

At a farewell gathering in Tel Aviv hosted by Israel Patent Attorneys Association and other professional organizations, a number of speakers, including patent attorneys and colleagues at the ILPO, discussed a few of Mr. Alon’s many initiatives during his term. His accomplishments include the introduction of an AI-powered search engine for Israel Patents which became operational about two years ago, which my colleagues and I use on a regular basis. Another important program initiated during his tenure was a pilot program for issuing office actions in the English language; this has been effective in lowering patenting costs for applicants at the ILPO.

As Executive Director of the ILPO Mr. Alon also issued decisions on many patent and trademark matters. Reading his decisions was enjoyable as they were written methodically and included detailed reasoning for his decisions.

As indicated by the 2022 Annual Report of the ILPO, there has been significant growth in patent filings and grants over the course of Mr. Alon’s term. To his credit, the average examination time (from filing until end of examination) has dropped significantly, as evident in the graph, from about 48.3 months in 2018 to about 39.5 months in 2022.

As Executive Director of the ILPO Mr. Alon also