Suspensions of Oppositions in Trademark Proceedings in Israel is Refused to allow the Parties to Negotiate a Settlement

In Opposition proceeding to the registration of trademarks No. 227960 and 22796, on April 1, 2012, the Israeli Patent Office, handed another decision with respect to suspension of proceedings based on negotiations between the parties. The decision handed down by  Caspi, Intellectual Property Judge, regarding a request to temporary suspense the opposition proceedings involving trademarks numbers: 227960 and 227959 on the grounds that the parties are negotiating and the rest of the procedure might be unnecessary.

Judge Caspi repeated previous rulings and stated that no suspension of an opposition proceeding would be granted just for the existence of ongoing negotiations between the parties. Judge Caspi continued to state that when a litigant is in the need for extra time to perform an action imposed by law or in accordance with the judgment of the Patent Authority, it shall submit a detailed request to extend the deadline for its implementation and pay the appropriate fee for it.

Moreover, Judge Caspi added that the obligation to transfer the opposing party a copy of the counterclaims is on the applicant, and certainly not under the responsibility of the Patent Authority. Therefore in regard to the opposing party, the duty to submit its evidence in the procedure starts only from the date on which a copy of the counterclaims  was received. Moreover, Judge Caspi ruled that the applicant must act to transfer a copy of the counterclaims to the opposing party counsel and then transfer by fax a delivery receipts to the Patent Authority indicating the execution of this duty. Accordingly, the opposing party shall submit their evidence within two months from the date of said delivery.

The latter part of the decision, with respect to providing the ILPTO with a delivery receipts, is not currently the prevailing practice, but may serve to better educate the ILPTO Judges as to the service of documents between the parties during the procedure.