Evidence Required to Be Translated to Hebrew

In a recent decision issued by the Israeli Patent Office in Opposition to Register Trademark No. 222,275 Merk KGaA v. Jonathan Shrieber, Merk was required to furnish a translation to Hebrew of its evidence to the Owner of the Application (Shriber). Shriber, the sole owner of Anderson Medical Ltd. asked for the translation and the Patent Office granted the motion. Merk moved to cancel the decision based on the fact that Anderson Medical web site was in English and therefore it was reasonable to assume Shriber was fluent in English. The Patent Office disagreed.

The Patent Office stated that Rule 43 of the Trademarks Rules, 1940 did not take into account a party’s knowledge of a foreign language as a consideration when filing evidence before the Patent Office. Rule 43 states that any document filed with the Patent Office in connection with an opposition must be filed with a certified translation. Exceptions to this Rule would be allowed only when the parties agree to file evidence in the English language (and the Patent Office doesn’t object) and when a translation would jeopardize the credibility of the affiants. In this case the Patent Office was not convinced that furnishing a translation would jeopardize the credibility of the affiants but did agree to limit the translation to those parts which Merk referred to in its affidavits (i.e. parts of the annexes to the affidavit filed). In addition, the Patent Office stated that it will consider the expense caused to Merk when determining costs at the end of the proceedings.