In an earlier post, I singled out the Israel Trademarks Office (ITO) for praise, on how they have maintained their consistently high levels of service, throughout the Covid-19 crisis. ITO, which is the authority which administers Israel's trademark register, has been a notable exception to the growing phenomenon of disruptions in government services around the world.
But ITO didn’t satisfy themselves with "merely" maintaining the status quo (or, in fact, even showing increased efficiency) – they took advantage of the unprecedented global restrictions on movement and international travel, to take some steps towards introducing some long-awaited and much-needed changes to regulations surrounding hearings at ITO's judicial tribunal, which hears trademark oppositions, cancelations, trademark registration appeals, and similar proceedings.
In Israel, these types of proceedings take the form of a "mini-trial". Unlike many jurisdictions, where brief written submissions are filed and a ruling is then handed down, the system in Israel requires the submission of written pleadings, evidence, counter-evidence, a 1-day trial for cross-examination of witnesses, and then a summation of arguments. Only then will the tribunal, in due course, issue its ruling.
This format results in costs which are often significantly higher than in jurisdictions which rule on the basis of brief, written pleadings. This, in turn, deters some local trademark owners, and even some companies from outside Israel, from exercising their rights to oppose and cancel confusingly similar marks. So, a significant proportion of such proceedings involve larger, international companies.
Ultimately, these parties must then send whichever of their senior managers delivered the affidavit enclosing their evidence, to the 1-day trial before the tribunal. This has often been inconvenient, to say the least, and has sometimes resulted in a reticence to undertake the proceedings in the first place, or in abandonment of otherwise justified action.
In February 2021, new regulations were proposed, in an effort to streamline these matters. Under the new proposals, the ITO tribunal would have the right to suggest that some hearings, at which testimony does not need to be heard, could be via video-conference. They would also be able to order that a hearing, at which testimony does need to be heard, could likewise be via video-conference, if the witness agrees to this, and would find it hard to attend the hearing in person, and if the testimony is essential, and if there is no legal bar to this, in the country from which the witness would deliver the testimony. The parties would be able to object to such proposals, but the tribunal would have the final say.
These new regulations have not yet been enacted, but there is nevertheless evidence that the ITO tribunal, even now, is showing increased willingness to allow testimony and cross-examination via video-conference, whereas in the past this was rarely allowed.
Aryeh Reif, Adv,
Reif & Reif, Law Offices