Manufacturers and marketers may file for a trademark relating to goods that they manufacture or trade in. The trademark refers to and preserves the reputation of a specific product or class of goods. A trademark registration is territorial and should thus be registered in every country where the product is being manufactured or marketed.
Increasingly, high-tech, biotechnology and pharmaceutical companies are realizing the importance of registering trademarks and the marketing advantages such registration can confer; this worldwide trend is also apparent in Israeli registrations.

Legislation Overview
Israel is a member of:
* The Paris Convention for the Protection of Industrial Property
* The Madrid Arrangement for the Prevention of False Indications of Origin
* The Nice Arrangement for the International Classification of Goods and Services
* The Lisbon Arrangement for the Protection of Appellations of Origin

 

Trademark registration in Israel is governed by the Trademarks Ordinance (New Version) – 1972 which
a. defines the various kinds of marks which may be registered,
b. lays down administrative procedures for registration,
c. determines which materials may be registered as a trademark, and
d. sets out the rights of the owner of a registered trademark. The Ministry of Justice maintains a database of trademarks and oversees the application procedure.

In addition, the Commercial Wrongs Law - 1999 defines misleading use in relation to goods and services, false description, unfair intervention, and the stealing of trade secrets as a civil offence (tort) and provides remedies for a successful suit.
Israeli law and Israeli courts provide quite extensive protections to the holder of a registered trademark; indeed legal decisions in the field are notable for placing the integrity of the trademark above the interests of local bodies.

Filing Requirements
A trademark may be a logo design, a word, or a combination of both. Three dimensional trademarks are registerable. In addition, service marks, certification marks and collective marks may be registered. In order to be eligible for registration, the mark must be inherently distinctive, in that it is capable of distinguishing the goods or services of its owner from those of other bodies. In addition, a mark may be registerable even if not inherently distinctive, if its owner can prove that it has acquired distinctiveness due to extensive use which causes the public to identify it with its owner. Marks may be registered in any language.

 

The minimum requirements for obtaining a filing date are:
1. A specimen for each class of goods or services, unless the mark is a word mark in ordinary type-face
2. An application form stating applicant’s name and address (may be an individual or corporation)Payment of official filing fee (approximately US $200)
3. Separate applications must be filed for each class. The classification of goods and services in Israel is identical with the International Classification system.

In accordance with the Paris Convention, if a trademark application is filed in Israel within six months of filing a first application in a member state or a member of the World Trade Organization for the same trademark, priority may be claimed from the foreign application. Priority must be claimed within two months of the Israeli filing and a certified copy of the priority document must be submitted to the Israeli Patent Office within twelve months.

 

Certain items are unregisterable as marks, including:
1. Names consisting of numbers, letters or words commonly used in trade to describe goods, or which refer directly to their characteristics, unless they have acquired distinctiveness.
2. Names which refer to a geographic area or surname, unless represented in a special manner or unless they have acquired distinctiveness.
3. A mark referring to some connection with the President of Israel and to his patronage.
4. Flags and emblems of the State or its institutions.
5. Public armorial bearings, official signs or seals of any state.
6. A mark in which any of the following words appear: PATENT, PATENTED, BY ROYAL LETTERS PATENT, REGISTERED, REGISTERED DESIGN, COPYRIGHT, or similar.
7. A mark which is or may be injurious to public order or morality.
8. A mark likely to deceive the public, or encourage unfair trade competition; or a mark that contains a false indication of origin.
9. A mark identical with or similar to emblems of exclusive religious significance.
10. A mark on which the representation of a person appears without permission.
11. A mark resembling the name or business of another person, or containing such a name if the mark is likely to deceive the public or to cause unfair competition.

Examination
Examination normally commences within a year of filing. Applications are examined against prior trademarks and for registerability under the Ordinance. After examination, applications are published in the Trademarks Journal and a three month opposition period commences, culminating in registration of the mark.

Duration
A trademark is initially registered for a period of ten years and may be renewed, upon payment of fees, for additional ten year terms, indefinitely. Starting from two years after initial registration, a registered trademark may be cancelled on the grounds of non-use over a period of some years.

 

If you have any questions about this client advisory, you may contact your representative at Dr. Eyal Bressler & Co., Tel: +972-3-5765555 or contact smadar@bressler.co.il .

Disclaimer
The above represents a general outline of the trademark registration process and does not constitute legal advice. Although we believe that the information presented in our site is correct at the time of updating, we are not responsible for any consequences whatsoever arising from use of the information by others.