Trademarks

• The Trademarks Ordinance (New Version) (5732–1972) (as amended from time to time, including amendments in compliance with the Agreement on Trade-Related Aspects of Intellectual Property Rights);
• The Trademark Regulations 1940 (as amended from time to time); and
• The Trademarks Regulations (Implementation of the Madrid Protocol) (5767–2007).

Trademark rights in Israel arise through registration in accordance with the Trademarks Ordinance.

Under certain circumstances, the owner of an unregistered mark may have a cause of action against an unauthorised user of the mark pursuant to provisions of general laws dealing with commercial practices, such as the Commercial Torts Law and the Law of Unjust Enrichment.

Well-known trademarks not registered in Israel are granted qualified protection against infringement (see question 6).

See question 1.1

According to the Trademarks Ordinance, a ‘mark’ is defined as “letters, numerals, words, devices or other signs or combinations thereof, whether two-dimensional or three-dimensional”.

The ordinance further defines:

• a ‘trademark’ as “a mark used, or intended to be used, by a person in relation to goods he manufactures or deals in”; and
• a ‘service mark’ as “a mark used, or intended to be used, by a person in relation to a service rendered by him”.

All of the provisions pertaining to trademarks apply equally to service marks. ‘Certification marks’ and ‘collective marks’ may be registered as trademarks subject to specific requirements.

A trademark may be:

• a word mark only;
• a picture mark only (eg, a logo, device or image); or
• a combination of both.

It may or may not include colour. To obtain protection for the use of a trademark in any colour or format, the trademark should be depicted in standard black letters or in black and white (for devices).

After Israel became a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights, the definition of a ‘trademark’ was expanded to include a broader range of marks, including sound marks.

To qualify for registration, a mark must be distinctive – that is, it must be able “to distinguish the goods of the proprietor of the mark from those of other persons”. Distinctiveness can be either inherent or acquired through use.

Section 11 of the Trademark Ordinance lists marks that are ineligible for registration. The main types of marks that are ineligible for registration are as follows:

• marks that infer a connection to, or patronage by, states, heads of states or their governments or institutions, or other well-known international organisations;
• marks that include terms such as ‘patent’, ‘patented’, ‘by royal letters patent’, ‘registered’, ‘registered design’, ‘copyright’ or ‘to counterfeit this is forgery’;
• marks that would be injurious to public policy or morality;
• marks that are likely to deceive the public, falsely indicating origin and encouraging unfair competition;
• marks that resemble religious emblems;
• marks that include the representation of a person, without the consent of that person or his or her survivors;
• marks that are identical or confusingly similar to a mark that has been registered in respect of the same goods or description of goods;
• marks that include characters or words that are in common use in trade, relating to goods or classes of goods or referring to their character and quality, unless these are distinctive within the meaning of Section 8(b) or 9 of the Trademarks Ordinance;
• marks that comprise a geographical name or surname, unless it has a distinctive character within the meaning of Section 8(b) or 9 of the Trademarks Ordinance;
• marks that misleadingly identify wine or an alcoholic drink containing a geographical signification; and
• marks that are identical or deceptively similar to a well-known mark, whether registered or not, in relation to similar or different goods, if they could suggest a connection between the applicant’s goods and those of the owner of the registered mark, to the detriment of the latter.

The Israel Trademark Office (ITO) – a division of the Israel Patent Office, which itself is a unit of the Israel Ministry of Justice.

The current ITO filing fee is ILS 1,617 for the first class and ILS 1,214 for each additional class. No additional fees apply during prosecution or for publication and registration. However, there is an extension fee of ILS 74 per month.

Yes.

Class-wide applications are not allowed. The applicant must provide a specific list of goods or services for each class.

No written statement to that effect is required as part of the application process, but such an intention is assumed.

Yes.

The ITO examines each application to ensure that it meets all of the formal and substantive requirements set forth in the Trademarks Ordinance.

Yes. The following is an abridged review of Articles 11.1–11.8 and 11.10–11.12 of the Trademarks Ordinance on absolute grounds for refusal:

• marks that make a reference to the state’s president or inference to such;
• marks that include state flags/emblems, flags, foreign state emblems or the symbols of international organisations;
• marks that include public armorial bearings, official signs or seals used by any state to indicate control or warranty, or any indication that the owner enjoys the patronage of, or supplies goods or renders services to, a head of state or a government, unless proven;
• marks that include terms such as “patent’, ‘patented’, ‘by royal letters patent’, ‘registered’, ‘registered design’, ‘copyright’ or ‘to counterfeit this is forgery’;
• marks that would be injurious to public policy or morality;
• marks that could deceive the public, that contain false indications of origin or that encourage unfair trade competition;
• marks that are identical or similar to emblems of exclusively religious significance;
• marks that include the representation of a person, unless the consent of that person has been obtained;
• marks that include numerals, letters or words which are in common use in trade, unless they have a distinctive character;
• marks that include a geographical signification or a surname; and
• marks that identify a wine or an alcoholic drink containing a geographical signification, where the goods are not from that same geographical area.

No.

There is no official mechanism for this. However, an opposition can be filed within three months of publication of a notice of allowance.

No.

About four to six months.

About eight to 12 months.

If an application has been refused by the examiner, the applicant may request review of the refusal by the registrar. If the application is finally refused by the registrar, the applicant may appeal the decision to the Jerusalem District Court. See question 4.2 for the procedure for filing an appeal.

A final decision of the registrar refusing registration may be appealed as a matter of right to the Jerusalem District Court. The normal rules of civil procedure before the district court apply, with the registrar of trademarks appearing as respondent.

If the Jerusalem District Court finally rejects the applicant’s appeal, the applicant may petition the Supreme Court for leave to file an appeal.

A third party may file an opposition to a trademark application within three months of publication of a notice of allowance.

Any third party has standing to oppose a trademark application. An opposition may be filed on the grounds that:

• the opponent has a claim to ownership of the trademark; or
• the application should have been denied pursuant to one or more provisions of the Trademarks Ordinance.

The opposition period in Israel is three months from the date of publication in the Trademarks Journal of the allowance of the application. This three-month period cannot be extended.

The registrar of trademarks or one of several hearing officers in the Israel Trademark Office will hear the opposition and render a decision on this matter.

The opposition commences with the filing of a notice of opposition by the opponent. The applicant then has two months to file a counterstatement. The opponent then files its evidence in the form of at least one written affidavit. After the applicant has filed its evidence, also in the form of at least one written affidavit, a hearing is held, at which each party has the right to cross-examine the other’s affiant. By agreement, the parties may waive the right to cross-examination. At the conclusion of the hearing, the registrar or hearing officer will then render a decision in writing.

Like any final decision of the registrar of trademarks, the decision in an opposition may be appealed as a matter of right to the Jerusalem District Court. The normal rules of civil procedure before the district court will apply.

Only the owner of a mark that is registered may sue for infringement pursuant to the Trademarks Ordinance.

In accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights, the owner of a well-known mark, even if it is unregistered, has the right to sue for infringement where an unauthorised third party uses a mark that is identical to or confusingly similar to its unregistered well-known mark for goods which are either similar to or in the same class of goods for which the unregistered well-known mark is known. However, the only remedy available is an injunction; it is not possible to seek damages.

Under certain circumstances, the owner of an unregistered mark may have a cause of action against an unauthorised user of the mark pursuant to the provisions of general laws dealing with commercial practices, such as the Commercial Torts Law and the Law of Unjust Enrichment.

Trademark registration confers upon the trademark owner:

• the exclusive right to use the trademark in connection with the goods or services for which the trademark has been registered;
• the right to grant a third party a licence to use the registered trademark subject to the terms of the licence; and
• the right to sue for infringement an unauthorised user of a mark which is either identical or confusingly similar to its own, and to obtain an injunction and an order for damages incurred as a consequence of the infringement.

There is no separate register for descriptive marks.

• Injunction;
• Damages;
• Forfeiture of the infringing goods;
• Transfer of ownership of the infringing goods; and
• Other relief that the court may deem appropriate.

The Israel Customs Authority, on its own initiative or on the request of a trademark owner, may temporarily delay at a point of entry into the state the import of goods that are suspected of infringing a registered trademark, until such time as the matter is resolved between the parties or a final decision of the court of jurisdiction has been rendered.

The concept of trademark dilution was first introduced into Israel by the case law and was then incorporated into the Trademarks Ordinance after Israel acceded to the Agreement on Trade-Related Aspects of Intellectual Property Rights – but only in connection with well-known marks. Dilution of a well-known trademark is deemed to be infringement. However, an injunction is the only remedy available for dilution of a well-known unregistered trademark.

Under certain circumstances, the owner of an unregistered mark may have a cause of action against an unauthorised user of the mark pursuant to the provisions of general laws dealing with commercial practices, such as the Commercial Torts Law and the Law of Unjust Enrichment.

The typical course of action in pursuing claims for trademark infringement is first to send a cease and desist letter to the infringer, before filing a lawsuit. If the infringement continues, the trademark owner may bring an infringement action in court, including a request for temporary and permanent injunctions. The court action will be conducted in accordance with standard civil procedures.

A defendant in a trademark litigation will commonly raise one or more of the following defences:

• The marks are not confusingly similar and do not lead to consumer confusion;
• The registration is invalid due to descriptiveness and/or non-distinctiveness;
• The defendant used the mark in good faith prior to its registration by the plaintiff; or
• The plaintiff did not act in good faith in obtaining the registration.

The defendant may also raise equitable arguments, such as laches, estoppel, acquiescence and/or waiver, especially in interlocutory proceedings.

An infringement suit will be heard in a district court as the court of first instance. In such cases, the final judgment of the district court may be appealed as a matter of right to the Supreme Court.

The initial term of registration is 10 years from the filing date. Each renewal term is also 10 years.

There are no maintenance requirements during each 10-year term of registration. A registration is renewed by filing a request for renewal no earlier than three months prior to the expiration date and paying the renewal fee in effect at the time. If the renewal deadline is missed, the registration may still be properly renewed within a six-month grace period, together with payment of a late fee.

At any time during the life of a registered trademark, a third party may file a petition to cancel the registration on the grounds that the registrant:

• filed the application in bad faith;
• did not have a bona fide intention to use the trademark; or
• failed to use the trademark during the three-year period immediately preceding the filing date of the petition.

Up until five years after the initial date of registration, a third party may file a petition for cancellation of the registration on any of the following grounds:

• The trademark was never eligible for registration;
• The trademark has lost its distinctive character; or
• Registration of the trademark has resulted in unfair competition.

After five years have elapsed from registration, the mark’s validity can be challenged only on the following grounds:

• non-use;
• bad-faith filing of the trademark; or
• filing based on a registration in the applicant’s country of origin (Telle-Quelle registration), which has since been cancelled.

The Israel Trademark Office does not act on its own initiative in this regard. Cancellation of a registered trademark occurs solely on petition by a third party (see question 8.3).

See question 8.3.

The registrar’s decision to cancel a trademark registration may be appealed as a matter of right to the Jerusalem District Court within 30 days of the registrar’s decision.

Yes. When filing an application to record a trademark licence, the licensor must provide information about the commercial relationship between the licensor and licensee, including the degree of control by the licensor of the use of the trademark. In addition, the registrar may request conditions and limitations as he considers fit.

Yes. A trademark licence will not be valid against third parties unless it has been properly recorded on the Trademarks Register.

If a trademark licence is not recorded, this may have serious implications, including leaving the trademark registration vulnerable to cancellation on the grounds of non-use – for example, where the mark is not used by the registrant and is used only by the non-registered licensee.

Perhaps. If, as a result of the licensor’s failure to maintain quality control, the licensee uses the trademark in a way that does not accord with the registration, the registration may become vulnerable to cancellation on the grounds of non-use. This will be considered on a case-by-case basis.

Well-known marks that have not been registered in Israel are protected against infringement (including dilution), but the only remedy available is an injunction.

Yes. Section 16 of the Israel Trademarks Ordinance (Telle-Quelle) provides for the registration in Israel of a trademark based on a foreign registration, even if the trademark would not be deemed registrable pursuant to the strict standards of distinctiveness that would otherwise apply.

Israel is a signatory to the Madrid Protocol, such that Israel may be a designated country for an international trademark registration.