Trademarks

     

GENERAL

Israeli trademark law is governed by the Trademark Ordinance (New Version) 1972 ("the Trademarks Ordinance"). The Trademarks Ordinance applies only to the territory of the State of Israel (including East Jerusalem and the Golan Heights). It does not apply to the territories of the Palestinian Authority (the West Bank and Gaza) [1].

Trademarks are registered in the Israeli Trademarks Register. The Register is maintained by the Israeli Patents Authority, which is a government agency in charge of the registration of patents, trademarks, designs and appellations of origin. The Patents Authority is headed by the Registrar of Patents, Trademarks and Designs. The Patents Authority's offices are located in Jerusalem.

     

REGISTRABILITY

Registrable marks:

Marks indicating a source which are distinctive, including letters, numbers, graphics (in 2 or 3 dimensions), trade dress, product shape, sounds and smells.

Unregistrable marks:

  • Generic or misleading marks.
     
  • Marks which are not distinctive (e.g. descriptive marks) are registrable subject to proof of acquired secondary meaning.
     
  • Three-dimensional marks that are the shape of the products themselves can only be registered upon proof of acquired secondary meaning. Three-dimensional marks that are packagings or containers may also be registered based on inherent distinctiveness.
     
  • Slogans are generally considered as descriptive or laudatory, and can only be registered upon proof of acquired secondary meaning. 

     

TRADEMARK APPLICATION

To obtain registration of a trademark, the applicant must submit an application with the prescribed fee.

Applications are filed separately for each class (single-class), according to the Nice Classification.

The application must conform to the conditions for registrability of trademarks set forth in the Trademark Ordinance, and must be based on the applicant's use of, or intent to use, the trademark in Israel.

No proof of actual use is required in order to file an application and obtain a registration.

It is possible to claim priority under the Paris Convention.

     
MADRID PROTOCOL

Israel has recently joined the Madrid Protocol. When implemented [2]:

  • It will be possible to file international trademark applications with the Israeli Trademark Office.
     
  • It will be possible to designate Israel as a designated country in international trademark applications filed with the trademark offices of other member states.
     
  • It will be possible to file multi-class applications in Israel.

     

EXAMINATION

A trademark application enters examination within approximately 12 months from the filing date.

One may petition for rush examination, subject to the filing of an affidavit stating the grounds for the petition for rush examination and the payment of the prescribed fee. The Trademark Office has discretion whether to grant rush examination.

In the examination the Trademark Office raises objections (Office actions) and receives arguments in response. The Trademark Office refers to both absolute and relative eligibility for registration.

     

INTERFERENCES

When two applicants apply for the registration of identical or similar trademarks, the Trademark Office initiates an interference proceeding.

In an interference proceeding, the parties attempt to reach a co-existence agreement. If they cannot, each will try to convince the Trademark Office that its application has superior rights to registration.

An interference proceeding is a litigious proceeding, that includes the submission of evidence, cross-examinations and written summations.

The factors considered by the Trademark Office's decision in interference proceedings are:

  • Date of first use, scope of use and the notoriety of the mark;
     
  • The bona fide intentions of each party;
     
  • Date of application.

     

ACCEPTANCE AND PUBLICATION

Once the examination process is completed, the Trademark Office accepts the application and publishes it in the Trademarks Gazette. The Trademarks Gazette is issued on a monthly basis.

     

OPPOSITION

A notice of opposition against a trademark application must be filed within three months of the publication in the Trademarks Gazette. The opposition deadline is non-extendable.

Anyone may oppose registration of a trademark. Registration or use of a mark are not prerequisites.

The burden of proof in an opposition proceeding is on the applicant, that must prove that its mark is eligible for registration.

Grounds for opposition:

  • Absence of use or intent to use the mark in Israel;
     
  • Likelihood of consumer confusion between the applicant's and the opposer's goods;
     
  • Misappropriation of goodwill of another in a well known mark;
     
  • Misappropriation of another's registered mark relating to identical or related goods;
     
  • Likelihood of unfair competition;
     
  • The mark is not distinctive;
     
  • The mark includes a misleading geographical indication;
     
  • Registration of the mark is contrary to public policy.
     

The stages of an opposition proceeding:

  • Filing of a notice of opposition and response to the opposition;
     
  • Filing of evidence in support of the parties' contentions in the opposition (including affidavits, printed material, consumer testimonies, market surveys, expert opinions etc.);
     
  • Oral hearing, including cross-examination of affiants and expert witnesses;
     
  • Written summations;
     
  • Decision by the Trademarks Registrar.
     

Appeals on the decisions of the Trademarks Registrar are filed with the Supreme Court.

     

REGISTRATION AND TERMS

A trademark application will mature to registration in one of the following cases:

  • No oppositions have been filed against the application during the three-month opposition period
     
  • Oppositions proceedings initiated against the application have been concluded either by a decision by the Trademarks Registrar denying the opposition or following settlement
     

Use is not a prerequisite for the registration of a trademark. However, after the trademark has been registered, it must be used in commerce by its registered owner. Failure by the owner to use a registered trademark may result in its cancellation on the grounds of non-use.

A trademark registration is valid for an initial period of ten years from the application date, and renewable for subsequent periods of 10 years each [3].

     

LICENSES

It is recommended to record licenses granted to third parties to use a registered trademark.

  • A license can be limited in period.
     
  • A license can be exclusive or non-exclusive.
     

It is possible to submit a short-form license agreement containing only the basic details of the license (common where the parties wish to keep the actual license agreement in confidence)

Use by an unrecorded licensee does not constitute use of the mark by the registered owner, and may result in the cancellation of the registration on the ground of non-use.

     

CANCELLATION

Possible grounds for a petition for the cancellation of a registered trademark are:

  1. Any claim that could constitute grounds for an opposition against an application for the registration of the mark;
      
  2. The registration creates unfair competition with the plaintiff's rights in Israel;
      
  3. The application for the registration of the mark has been filed in bad faith or that the mark has been registered as a result of fraud;
     
  4. The mark has not been used by its registered owner for three consecutive years. 

In case of (1) or (2) above, the petition for the cancellation of the mark must be filed within five years of the date of registration. Thereafter, the registration becomes incontestable except in rare circumstances (e.g. fraud).

Any person may apply for rectification of the Registry, including the cancellation of a registered trademark.

A registered trademark enjoys the presumption of validity and registrability. Thus, in a cancellation proceeding, the burden of proof is on the party requested the cancellation.

The stages of a cancellation proceeding are similar to those of an opposition proceeding.

Cancellation due to non-use:

A registered trademark that has not been in use by its registered owner for a period of three consecutive years can be cancelled on the grounds of non-use.

Non-use cancellation is possible only after three years from the date of registration have lapsed (two years in the West Bank and Gaza).

Anyone can petition for the non-use cancellation of a registered trademark. No conflicting rights are required.

In this context, actual commercial use is required. Mere advertising without sales, sporadic or token use are insufficient. Subsequent use cannot prevent non-use cancellation.

Special circumstances in trade prevented use of the mark (i.e. state of war, restrictions on importation) can be used as a defense.

     

INFRINGEMENT

Infringement of a registered trademark:

A registered trademark vests with the owner the exclusive right to use the mark, i.e. to prevent others from using it.

The registered owner of a trademark may enforce rights against anyone who, without authorization uses the mark, or a similar mark, in connection with goods or services identical or similar to those for which the trademark is registered.

Only use of the mark on similar related goods constitutes infringement, unless the trademark is very well known, in which case use of the mark on unrelated goods may constitute infringement as well.

In an action for infringement, proof of intent to infringe is not required. Use is also not required in infringement actions.

Possible defenses in an action for infringement:

  • The trademark is invalid;
     
  • No confusing similarity between the marks;
     
  • The mark is no longer distinctive;
     
  • The goods or services in question are not related.
     

Passing off:

Any misrepresentation of goods which may confuse consumers and lead them to believe that these are the goods of another constitutes passing-off.

Proof of intent to deceive is not required in actions for passing-off. Use is required in actions for passing-off.

Possible defenses in an action for passing-off:

  • No goodwill is attached to the mark;
     
  • Use of the mark is not likely to deceive, or cause confusion in the course of trade;
     
  • The defendant has acquired independent rights to the same mark;
     
  • The mark is no longer distinctive;
     
  • Acquiescence.
     

Procedure:

The Stages of a civil claim for trademark infringement or passing off are:

  • Submission of a statement of claim, statement of defense and statement of response (a statement of response is optional);
     
  • Questionnaires and discovery;
     
  • Pretrial hearing;
     
  • Submission of evidence;
     
  • Oral hearing, including cross-examination of affiants and expert witnesses;
     
  • Summations (oral or written);
     
  • Judgment;
     

The court may decide to split the proceeding into two parts: infringement and damages, and decide each part separately.

The court's judgment is subject to appeal. A first appeal is allowed by right; a second appeal is only available with leave of the court.

The parties may resort to arbitration or other forms of alternative dispute resolution.

Available remedies:

Injunction, monetary damages, impoundment and destruction of infringing goods are remedies available in a civil suit.

The remedy of cancellation of a trademark registration is not available in a civil action.

Intermediate remedies such as injunction, search and seizure and foreclosure are available and common in the enforcement proceedings (prima facie evidence and a guarantee are required).

Criminal Proceedings:

Infringement of a registered or unregistered trademark constitutes a criminal offense. However, it is quite rare that the authorities enforce against such offences.

     

WELL KNOWN MARKS

Under the Trademarks Ordinance, "well known marks" receive special protection:

Confusing similarity to an unregistered well-known mark is a ground for opposition if the intended mark applies to similar goods or services.

Confusing similarity to a registered well-known mark constitutes ground for opposition even if the intended mark applies to different goods or services.

The proprietor of an unregistered well known mark enjoys similar protection as afforded to registered marks:

  1. He has exclusive rights to use the mark for the goods or services in connection with which it is well known.
      
  2. He can file a civil claim for trademark infringement in case of unauthorized use of the mark for the goods or services in connection with which it is well known. 

     

GEOGRAPHICAL INDICATIONS

Israeli law protects geographical indications – under the Protection of Appellations of Origin and Geographical Designation Act, 1965.

A geographical indication can only be used in connection with a product that originates from the geographical area in connection with which the geographical designation is known.

Use of a geographical indication in connection with a product that does not originate from the relevant geographical area is misleading use, which constitutes a criminal offence.

 

 


 

  1. West Bank trademark law is based on the Jordanian Trademark Act of 1952. Gaza trademark law is based on Egyptian Trademark Law. The Palestinian Authority maintains two different trademark Offices in the West Bank and in Gaza. The registration of trademark rights is conducted separately in each of those territories.  
     
  2. Implementation of the Madrid Protocol in Israel is expected by the end of 2009.
     
  3. In the West Bank and Gaza, a trademark registration is valid for an initial period of 7 years from the application date, and renewable for subsequent periods of 14 years each.