TRADEMARK LAW IN ISRAEL IS GOVERNED BY THE TRADEMARKS ORDINANCE (1972) AS CURRENTLY AMENDED.
A trademark is any letter, numeral, work, image or other sign or combination thereof, either two dimensional or three-dimensional. The terms “Mark” and “Trademark” are commonly used to refer to trademarks, service marks, certification marks and collective marks.
Which Marks May be Registered?
Trademark for Goods — A mark used or intended to be used for goods which are manufactured or traded. Only a mark which distinguishes the goods of the owner of the mark from those of other entities (‘Distinctive Mark’) is eligible for registration.
Trademark for Services — A mark (‘Service Mark’) used or intended to be used for a service.
Collective Trademark — A trademark, belonging to an organization which has an interest in the goods or services that the mark is intended to designate, to be used by members of that organization for those goods or services.
Certification Trademark — A mark intended to be used by an entity that does not conduct a business, in order to certify the origin, components, method of production, quality or any other characteristic of the goods in which it has an interest or to certify the nature, quality or category of the services in which it has an interest.
The Commissioner will register a trademark previously registered in the country of origin unless:
A. Registration of the mark in Israel infringes the rights acquired in Israel by another entity.
B. The mark lacks distinctiveness.
C. The mark consists only of letters or indications which may be used in commerce to
designate the category, quality, quantity origin, destination, time of production or value
of the goods or services.
D. The mark is commonly used in current language or in commercial practices established
in Israel in good faith.
E. The mark is contrary to public order or morality.
F. The mark is likely to mislead the public.
3-D images of packaging containers may be registered only if the following
three cumulative requirements are met:
1. The applied-for image is used as a trademark.
2. The applied-for image does not serve an actual esthetic or functional role.
3. The applied-for image has accumulated distinctiveness as a result of use.
In the event that the three-dimensional image is composed of additional components which serve to identify the source of the goods, such as the ‘house mark’ of the applicant, the image may be exempt from these three requirements.
The Trademark Register
- Israel Patents, Designs and Trademarks Office — To register a trademark in Israel, an application for registration must be filed with the Israel Patents, Designs and Trademarks Office (hereinafter the “Office”).
- Register — The Office maintains a Register which is open to inspection by the public through the following link: http://www.trademarks.justice.gov.il.
- Exclusive Use Rights — Valid registration of an entity as the owner of a trademark entitles the owner to the exclusive use of the trademark on the goods or for the services for which the trademark is registered, subject to any condition or limitation entered into the Register.
- Exclusive Use of a ‘Well Known’ Trademark — A ‘well known’ trademark, even if it is not a registered trademark, entitles its owner to the exclusive use of the trademark for goods and services for which it is well known in Israel or for goods or services of the same category.
A ‘well known’ trademark that is a registered entitles its owner to exclusive use for goods or services which are not of the same class, if use of the trademark by an entity other than the owner of the rights is likely to indicate a connection between the goods or services and the owner of the rights and the owner may be harmed as a result.
- Limitation on Exclusive Use Rights — Registration of a trademark will not prevent any person from making true use of his or her own name, of the name of his or her business or that of his or her predecessor’s business, or the geographic name of the place of the business or of a genuine description of the character or quality of its goods or services.
If a trademark incorporates any part that is not distinctive in character and if the Commissioner decides that the owner of the mark is not entitled to exclusive use of that part, the Commissioner may require a disclaimer of the right to exclusive use of that part. Such a disclaimer will only affect the rights of the owner of the mark that derive from the registration of the mark.
- Remedies: Enforcement: Infringement — The owner of the rights is entitled to bring a civil action against infringers. Remedies such as injunctive relief and damages are available. If the infringement is of a well known trademark which is not a registered trademark, the owner of the rights will only be entitled to injunctive action. The Court may also order the destruction of counterfeit or infringing goods.
- Validity — In any legal action on behalf of a registered trademark, the fact that an entity is registered as the owner of a trademark is prima facie evidence that the original registration of the trademark and all of its subsequent assignments are valid.
- Opposition — Any party may file a Notice of Opposition to the registration of a mark within three months after the date of publication. This three month deadline is non-extendable.
Grounds for Opposition:
A. Any reason for which the Commissioner may refuse registration under the provisions of the Trademarks Ordinance.
B. The opponent claims ownership of the mark.
The Notice of Opposition must contain the grounds for opposition. The applicant has two months to respond to the opposition. If the applicant does not respond, the applicant’s application will be regarded as abandoned. If the applicant chooses to contest the opposition, the applicant must submit evidence in the form of an affidavit. The Commissioner will consider the evidence and decide whether registration is to be permitted and whether any conditions are to be applied to the registration.
Competing Claims to Identical Marks — If different entities submit applications to be registered as owners of identical or similar trademarks for the same goods or services or goods or services of the same description, the Commissioner may refrain from registering any of those applications until their rights are determined by an agreement approved by the Commissioner. If there is no agreement, the Commissioner will decide which of the applications will proceed to examination. The decision of the Commissioner may be appealed to the District Court.
Concurrent Use — Concurrent registration may be permitted if the Commissioner finds that there is concurrent use in good faith or other special circumstances which justify registration of identical or similar trademarks for the same goods or services or goods or services of the same description in the name of several owners.
Registration — If an application is accepted and no opposition has been filed or if an opposition has been decided in the applicant’s favor, the trademark is registered.
Average Processing Times:
Examination Begins — 8 months from filing
Registration — 18 months from filing
Duration of Protection — All registrations are valid for an initial period of ten years.
Renewal of Registration — The registration may be renewed for successive periods of ten years from the date on which the application was filed.
Renewal Before Expiration — Before the expiration date, the Commissioner notifies the owner of the registration of the date on which the registration will expire. The fees must be paid within 3 months prior to expiration of the registration period.
Renewal After Expiration — Renewal may be effected within six months following expiration upon payment of the fee and a penalty. If renewal is not completed within six months after the expiration date, the Commissioner removes the trademarks from the Register. If a trademark has been removed from the Register because the renewal fee was not paid, it will be treated as if it were a registered trademark for purposes of conflicting applications for registration for one year after its expiration.
Reinstatement — The Commissioner may reinstate a registration on the basis of conditions at the discretion of the Commissioner and upon payment of a prescribed fee.
Removal of Registration for Non-Use — Any interested party may submit an application for cancellation of a registration on the grounds that there was no bona fide intention to use the trademark in connection with the goods or services for which the trademark was registered, and that no bona fide use was made of the trademark in connection with the goods or services for which it was registered during the three years prior to the filing of the application for cancellation.
Registration of the mark will not be cancelled if there is proof that no use was made due to special circumstances in commerce and not because of an intention not to use the mark or to abandon it in respect of the goods or service.
The following constitute ‘use’ of a trademark:
Use of the trademark in manufacturing or selling a product in Israel by the owner of the rights or by a registered licensee, on condition that the use is monitored by the owner of the rights.