1 Legal framework
1.1 What is the statutory or other source of trademark rights?
- The Trade Marks Ordinance (New Version), 5732-1972;
- The Merchandise Marks Ordinance, 1929;
- The Protection of Appellation of Origin and Geographical Indications Law, 5725-1965; and
- The Commercial Wrongs Law, 5759-1999 (Section 1 - Passing Off).
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark rights arise primarily through use, but also through registration.
1.3 What is the statutory or other source of the trademark registration scheme?
- The Trade Marks Ordinance (New Version), 5732-1972;
- The Trade Marks Regulations, 1940;
- The Trade Marks Regulations (Appeal before the District Court), 5748-1987; and
- The Trade Marks Regulations (Implementation of the Madrid Protocol), 5767-2007.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
The Trade Marks Ordinance defines a ‘mark' as "letters, numerals, words, devices or other signs or combinations thereof, whether two-dimensional or three-dimensional". A ‘trademark' is defined in the ordinance as "a mark used, or intended to be used, by a person in relation to goods he manufactures or deals in". Under these flexible definitions, the Israeli law acknowledges, among other things, word marks, two-dimensional marks, three-dimensional marks including product shapes, colours and colour combinations, motion marks and sound marks.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
Any of the aforementioned marks may function as a trademark, given that it may distinguish the goods and services of the trademark owner from those of others.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
A list of marks that are not eligible for registration is set out in Section 11 of the Trade Marks Ordinance. According to this list, the following marks may not be registered:
- marks alluding to a connection with the president of the state or his household, or to presidential patronage, or marks from which any such connection or patronage may be inferred;
- flags and emblems of the state or its institutions, flags and emblems of foreign states or international organisations, and any marks resembling same;
- public armorial bearings, official signs or hallmarks used by any state indicating control or warranty and any signs resembling same, and any signs from which it may be inferred that the owner enjoys the patronage of or supplies goods or renders services to a head of state or a government, unless it is proved to the registrar that the owner of the mark is entitled to use it;
- marks in which the following words appear: ‘patent', ‘patented', ‘according to state letter', ‘registered', ‘registered design', ‘copyright', ‘counterfeiting this is forgery' or words to like effect;
- marks which are or may be injurious to public policy or morality;
- marks which are likely to deceive the public, which contain false indications of origin or which encourage unfair trade competition;
- marks containing a geographical indication in relation to goods that do not originate in the geographical area indicated, or a geographical indication that could be misleading in relation to the genuine geographical area of the origin of the goods;
- marks containing a geographical indication that is verbally correct, but contains a false representation to the effect that the goods originate in another geographical area;
- marks which are identical or similar to a symbol with a solely religious meaning;
- marks on which the representation of a person appears, unless the consent of such person has been obtained; in the case of the representation of a deceased person, the registrar shall request the consent of his or her survivors unless, in his opinion, reasonable grounds exist for not doing so;
- marks which are identical to a mark belonging to a different owner which is already on the register in respect of the same goods or description of goods, or which so nearly resemble such a mark as to be calculated to deceive;
- marks consisting of numerals, letters or words which are in common use in trade to distinguish or describe goods or classes of goods, or which bear direct reference to their character and quality, unless the mark has a distinctive character within the meaning of Section 8(b) or 9;
- marks whose ordinary significance is geographical or a surname, unless represented in a special manner or unless having a distinctive character within the meaning of Section 8(b) or 9;
- marks which identify wine or an alcoholic drink comprising a geographical indication, if the origin of the wine or alcoholic drink is not in that same geographical area;
- marks which are identical or confusingly similar to a well-known trademark, even if it is not a registered trademark, in relation to goods in respect of which the mark is well known or in respect of goods of the same description; and
- marks which are identical to or which resemble a well-known trademark that is a registered trademark, even in respect of goods that are not of the same description, if the mark for which registration is requested could indicate a connection between the goods in respect of which the mark is requested and the owner of the registered mark is liable to be adversely affected as a result of the use of the requested mark.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The Trademark Office, at the Patents Authority.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
For one class, the official application fee is ILS1,623. The fee for any additional class in a multi-class application is ILS1,219. During prosecution, an extension fee of ILS74 is payable per month.
3.3 Does the trademark office use the Nice Classification scheme?
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
‘Class-wide' applications are not allowed in Israel. Thus, an applicant must specify the goods and services for which the mark will be used.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
3.7 What types of examinations does the trademark office perform other than relative examination?
Other than relative examination, the Trademark Office performs a formal examination (checking that all technical requirements bound to the examination process – such as payment of fees, filing of power of attorney and so on – are fulfilled), an examination of the classification and of the description of goods/services, and examination on absolute grounds for approval.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Please see question 2.3.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
No explicit provisions of law afford a third party standing to object to registration of a mark before the application is accepted and published; but in practice, examiners may consider information provided by third parties.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
No. According to the Trade Marks Ordinance, intention to use the mark suffices.
3.12 How much time does it typically take from filing an application to the first office action?
Ten to 14 months.
3.13 How much time does it typically take from filing an application to publication?
Fourteen to 23 months.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
A final refusal of registration by an examiner may be contested by filing a request to be heard before the registrar.
4.2 What is the procedure for appealing a trademark office refusal?
An applicant may first file written arguments against the refusal. Subsequently, if the examiner maintains the refusal, the applicant may request a hearing before the registrar.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
A final refusal by the registrar may be appealed to the district court.
5.1 Can a third party oppose a trademark application?
Yes, within three months of publication of the application in the Trademark Journal, which takes place after acceptance of the application.
5.2 Who has standing to oppose a trademark application?
5.3 What is the timeframe for opposing a trademark application?
Within three months of publication of the application.
5.4 Which body hears oppositions?
The registrar, deputy registrar or an IP adjudicator.
5.5 What is the process by which an opposition proceeds?
- Within three months of publication of the application, any third party may file a notice of opposition (in which the details of the grounds of opposition are provided).
- The applicant may then file its counterstatement within two months.
- After a counterstatement has been filed, the opponent may file its evidence (accompanied by an affidavit) within two months.
- After the opponent's evidence has been filed, the applicant has two months to file its evidence (accompanied by an affidavit).
- After the applicant's evidence has been filed, the opponent may file its evidence in reply within two months (accompanied by an affidavit).
- After the evidence stage, a date for a hearing before the registrar is set.
- If the two parties notify the registrar that they will not be present at the hearing, the registrar will decide based on the material filed by the parties. If one of the parties is not present at the hearing, the registrar will hear the counterparty. The registrar may issue a decision against the party that was not present if it appears that this party abandoned its position.
- The registrar may allow cross-examination of the affiants.
- After cross-examinations, the parties file summations within a period decided by the registrar. Based on the summations and material filed by the parties, the registrar issues a decision on the opposition.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
The registrar's decision in an opposition may be appealed before a district court within 30 days of the date of issue of the decision.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
The owner of an unregistered mark may base a legal action on the tort of passing off under the Commercial Wrongs Law, 5759-1999. Furthermore, unregistered well-known trademarks are protected from infringement according to the Trademark Ordinance (New Version), 5732-1972. Common law rights in a trademark constitute grounds to oppose or cancel a trademark registration.
6.2 What legal rights are conferred by a trademark registration?
A trademark registration in Israel confers:
- the right to use the trademark exclusively in the Israeli territory;
- the right to take legal action against infringement of the trademark; and
- the right to request Israeli Customs to prevent illegal importation of infringing goods or to file a complaint with the police for counterfeiting.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
The remedies available against trademark infringement are as follows:
- damages caused to the trademark owner, including lost profits or the profits unjustly made by the defendant; and
- any other remedy that the court may deem fit, including an order for the destruction of infringing good and an order for the transfer of infringing goods to the trademark owner.
Anton Piller type orders are also applicable in interlocutory proceedings.
7.2 What remedies are available against trademark dilution?
A court may grant any of the aforementioned remedies against dilution within the framework of protection of well-known trademarks under the Trademark Ordinance. However, the only available remedy for infringement of a non-registered well-known trademark is an injunction. Otherwise, no explicit provisions of law relate to dilution, although the Chattels Law and Unjust Enrichment Law might be applicable for protection from certain forms of trademark dilution and unfair competition. The Chattels Law provides for an injunction, whereas the Unjust Enrichment Law entitles the plaintiff to defendant's profits.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
7.4 What is the procedure for pursuing claims for trademark infringement?
It is customary, but not obligatory, to send a cease and desist letter prior to filing a lawsuit. If the infringement continues, the trademark owner may bring an infringement action in court. This action will involve:
- submission of pleadings;
- preliminary procedures;
- submission of evidence (in the form of affidavits and possibly expert opinions, especially when surveys are adduced);
- oral hearings for cross-examination of the affiants; and
- summations (written or oral).
7.5 What typical defences are available to a defendant in trademark litigation?
A defendant in a trademark litigation will commonly raise the following defences:
- lack of similarity between the marks;
- invalidity of the trademark due to descriptiveness and/or non-distinctiveness;
- common law rights acquired through the defendant's adoption and use of the mark in good faith; and
- lack of good faith in obtaining registration.
The defendant may also raise equitable arguments, such as laches, estoppel, acquiescence and/or waiver, especially in interlocutory proceedings.
7.6 What is the procedure for appealing a decision in trademark litigation?
Judgment in a trademark infringement case will usually be given in a district court as a court of first instance. In such cases, the judgment may be appealed to the Supreme Court by right.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The length of the initial term of a trademark registration is 10 years. The length of each renewal term is 10 years.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
In order to renew the registration of a trademark, a renewal application must be submitted to the Trademark Office by the trademark's expiration date or up to three months before. The renewal application shall be accompanied with a copy of a payment receipt of the renewal fee. Late renewal is available upon payment of the prescribed fees up to six months after the expiration date and revival under certain conditions is available within an additional period of six months.
8.3 What are the grounds for cancelling a trademark registration?
- Non-use (at any time following three consecutive years of non-use after the mark has been registered); and
- Ineligibility to register or to remain on the register (within five years of the registration date; thereafter, only in case of bad faith).
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
If there was an error in the process of acceptance, the Trademark Office may cancel a registration on its own initiative.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
A third party may initiate cancellation proceedings, which will be heard before the registrar. Such proceedings are similar to opposition proceedings, mutatis mutandis.
8.6 What is the procedure for appealing a decision cancelling a registration?
The registrar's decision in cancellation proceedings may be appealed before a district court within 30 days of the date of issue of the decision.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
Quality control is required, but may be minimal.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
Yes. According to Section 50(b) of the Trademark Ordinance, an authorisation to use a trademark will not be valid unless the licensee is duly recorded as an authorised user in the Trademark Register with respect to the relevant trademark registrations, and thus the licensee's use will not accrue to the registered owner. This has several serious implications, including vulnerability of the trademark registration to cancellation on the grounds of non-use (in case of three consecutive years of use of the mark by the non-registered licensee only) and dilution of the relevant trademark.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
Yes. Section 41(f)(2) of the Trademark Ordinance provides that use of a trademark by a recorded licensee shall constitute ‘use' in the context of vulnerability to cancellation on the grounds of non-use, provided that the use is subject to the supervision of the trademark owner. However, as noted above, control may be very limited.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
In cases where an unregistered foreign trademark is well known in Israel, the rights may be enforced by bringing a trademark infringement lawsuit under the Trade Marks Ordinance.
In certain circumstances, unregistered foreign trademarks which are not well known may be enforced under various unfair competition laws, including Section 1 of the Commercial Wrongs Law (passing off), the Law of Unjust Enrichment and possibly also the Chattels Law.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Yes. The Madrid Protocol has been effective in Israel since 2010. Since then, the Trademark Office permits registration of a mark through local designations of foreign international (Madrid) registrations. However, these designations are subject to the same examination and possibility of opposition/revocation/cancellation as national trademark applications/registrations.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.