At a glance: trademark registration and use in Israel

Registration and use

Ownership of marks

Who may apply for registration?

Any person or legal entity may file an application for trademark registration. Citizenship or residency is not required. 

Scope of trademark

What may and may not be protected and registered as a trademark?

Any mark may be registered insofar as it is capable of distinguishing the goods and services of the trademark owner from those of others. A ‘mark’ is defined as ‘letters, numerals, words, images or other signs or combinations thereof, in two or three dimensions’. This broad and flexible definition includes, among others, words, logos, marks in colour(s). This includes word marks and logos, colour marks (marks consisting of one or more colours only – with no wording or design), three-dimensional trademarks (including product and packaging shapes), motion marks (a mark that makes a series of motions), holographic marks and sound marks. No scent or taste marks have been registered yet.

Marks may be registered also for services.

Certification and collective marks may also be registered.

Unregistered trademarks

Can trademark rights be established without registration?

Trademark rights may be established without registration, based on local goodwill, under the tort of passing off. The establishment of such local goodwill usually requires long and substantial use in Israel, but in exceptional cases, use abroad may suffice. 

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A foreign trademark that is famous also domestically is protected even if not used domestically. If it is not registered in Israel, it is entitled to protection against the use and registration of a confusingly similar mark in respect of goods or services for which the mark is known or goods or services of the same description. If it is registered in Israel, it is entitled to protection against the use and registration of a similar mark in respect of goods that are not of the same description, provided that such use could make the public believe that a connection exists between the goods or services concerned and the owner of the registered trademark, and that the owner could be harmed as a result of such use.

The benefits of registration

What are the benefits of registration?

The benefits of registration are:

  • a trademark registration in Israel confers a right to exclusively use the trademark in Israeli territory;
  • a trademark registration in Israel provides a legal presumption of right and ownership;
  • a trademark registration in Israel provides a right to take legal action against infringement based on the Trademark Ordinance;
  • a trademark registration in Israel provides availability of a border enforcement mechanism allowing detention of suspected infringing goods by the customs authorities;
  • a trademark registration in Israel provides a possibility to file a complaint with the police for counterfeiting; and
  • extended protection for well-known marks.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

A power of attorney on behalf of the applicant and in favour of the attorney filing the application has to be submitted to the Trademark Office to file a trademark application. The form must be signed by a competent officer of the applicant company and a scanned copy of the executed document is submitted. The original has to be available upon request by the registrar. Legalisation or notarisation of said document is not required.

In cases where conventional priority is claimed on the basis of a corresponding foreign application under the Paris Convention, the applicant must provide the following documents: an authorised copy of the corresponding foreign application along with an English translation. The applicant must file all the mentioned documents to the Trademarks Office within three months from the filing date of the application (a deadline that may be extended).

Where a device or stylised mark is involved, a specimen in JPG format should be submitted. Where a sound mark is involved, a specimen in MP3 format is required.

Electronic filing is available. For corporations as well as for trademark attorneys filing for others (lawyers or patent attorneys) it is obligatory.

Official trademark availability searches are available before filing.

An official trademark similarity search covers a single international class only. The official fee per search is 647 shekels (approximately US$180 depending on the US$/Israeli shekel exchange rate at the time).

The Trademark Office automatically extends the searches to additional relevant classes, which are, however, not always fully covered (depending on the specific goods or services in the list of goods or services provided with the search request). A search for a device mark covers only one class. The cost is the same as above.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

At the current rate of examination at the Trademark Office, applications are usually examined approximately 10 to 12 months after filing.

The official fee for filing a trademark/service mark applications is 1,623 shekels (approximately US$450 depending on the US$/ILS exchange rate at the time).

The mark comes into effect at the date of its registration (at the end of the opposition period without any opposition or after overcoming the opposition); however, the relevant date for the rights to a mark that has been filed for registration or has been used is the filing date.

Accelerated examination is available under special circumstances such as an ongoing or impending infringement, upon submission of a supporting affidavit, specifying the grounds for the request.

Accelerated examination is likely to take place within a month of its request.

The official fee for accelerated examination is approximately US$265 (depending on the US$/ILS exchange rate).

A rough estimate of the total cost for the registration of an average mark in a single class is several thousand US dollars.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The 11th edition (2019) of the International Classification system is followed.

Multiclass applications are available. The official fees for filing multiclass trademark or service mark applications are: first class 1,623 shekels; each additional class filed simultaneously for the same mark is 1,219 shekels.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The review of trademark applications involves both technical and substantial aspects. The substantial examination includes both absolute and relative grounds.

When examining technical aspects, the examiner makes sure that all technical requirements are fulfilled, including the filing of a power of attorney, payment of additional fees, etc.

The examiner then examines the wording of the description of goods or services (checking for clarity, non-ambiguity, not overly generalised, etc) and the classification. Then, if the description or goods or services appears to cover other or additional classes than those initially requested, the examiner may require changing the classification or adding classes to the application

The Trademark Office then examines the mark on relative grounds (potential conflicts with prior registrations or applications) as well as absolute grounds.

Letters of consent may help overcome an initial refusal based on a cited mark, but the examiner is not bound to cancel a citation upon submission of a letter of consent.

Applicants or representatives (trademark or patent attorneys) may respond to rejections by the trademark office within three months (extendable).

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

There is no pre- or post-registration term by which an owner of a registered trademark is required to provide proof of use in Israel, and under Israeli trademark law, the registrar does not require submission of proof of a trademark’s use, on his own initiative.

However, if a mark has not been used for three consecutive years after its registration, the registration becomes vulnerable to cancellation upon request by an interested party, on the grounds of non-use. In such a case, submission of proof of use is required to defend the registration.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The symbols and ® may be used to indicate trademark use or registration. Marking is not mandatory.

Falsely indicating that a product is protected by trademark registration (by the ® symbol, or by indicating Registered Trademark, etc), is a criminal offence. Section 3 of the Product Marking Ordinance states that any person designating a false commercial description to a product, and any person that sells or offers for sale such goods, is liable to penalties (a fine and even imprisonment), unless such persons prove that they did so without intent to deceive. We are unaware of criminal cases where this provision was actually implemented, but in practice, such situations (of false indicating trademark registration) may also be used in civil suits to establish bad faith (eg, denying a party equitable relief).

Appealing a denied application

Is there an appeal process if the application is denied?

Yes, there is an appeal process if the application is denied.

  • One may appeal the examiner’s initial refusal or requirement within three months (extendable up to 11 months, or longer under special circumstances).
  • One may subsequently request a hearing before the registrar.
  • The registrar’s decision is subject to an appeal to the district court within 30 days.
  • One may file a motion to appeal a district court decision to the Supreme Court within 30 days.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Trademark applications are published for an opposition period of three months during which a third party may file an opposition on absolute and relative grounds. Absolute grounds include descriptiveness, marks harmful to public policy, deceptive marks and marks encouraging unfair competition. Relative grounds include marks harmful to third-party property rights and applications identical or similar to another’s business name.

Registered trademarks may be cancelled by third parties on the same absolute and relative grounds available in oppositions within five years of the date of the trademark registration. There is no time limit to file a cancellation action against a trademark registration on the grounds that it has been filed in bad faith.

An additional ground for removal of a trademark from the registry occurs if there has been no use of the mark during the three years preceding the petition for removal.

Opposition and cancellation proceedings are similar and include the submission of detailed statements, filing of evidence in the form of affidavits, a cross-examination hearing before the registrar and written summations.

The registration of a trademark is not a condition for filing opposition or cancellation proceedings. Brand owners may attack trademark applications and registrations on the basis of common law rights acquired through use of the trademark and also on the basis of international goodwill attached to a trademark.

The range of costs associated with a third-party opposition or cancellation proceeding will vary on the merits of each case.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration may remain valid for period unlimited in duration, subject to its renewal 10 years after filing, and thereafter every 10 years. Renewal takes place upon request and payment of the official fees:

  • single class registration – each renewal: US$805.
  • multiclass registration: 
    • first class renewed: US$805; and
    • each additional class renewed: US$680.

 

Following the renewal deadline, there is a six-month grace period in which a registration may be renewed, subject to payment of belated renewal fees. However, when a mark is not renewed by the due date or within the six-month grace period (with payment of belated renewal fees), it is removed from the register and may no longer be renewed. At that stage, it is possible to request its reinstatement by filing a suitable affidavit, but such a request has to be filed within six months. In other words, if more than a year has passed since the renewal date, it is no longer possible to renew or reinstate a lapsed registration.

Moreover, the cancelled registration is deemed valid for an additional six-month period and consequently may be cited during the examination of a new application.

Surrender

What is the procedure for surrendering a trademark registration?

 The owner of trademark registration may voluntarily surrender it, filing a request to the trademarks office.

The unilateral surrender of a registered trademark during cancellation or other contentious proceedings is not recommended since the trademark owner risks being ordered to pay costs to the applicant for cancellation. In such proceedings, it is recommended for the parties to file a joint notice to the trademarks office requesting withdrawal of the registration and termination of the proceedings without an order for costs.

Related IP rights

Can trademarks be protected under other IP rights?

 The registration of a trademark does not preclude other different intellectual property protections such as copyrights and industrial designs.  

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The protection of trademarks online and domain names are governed by the same system of trademarks and unfair competition laws.

The use of domain names or trademarks online that are identical or confusingly similar to a registered trademark or an unregistered well-known trademark constitutes infringement. In addition, the owners of unregistered trademarks, namely, brand owners that acquired common law trademark rights and goodwill through use of a trademark, are also entitled to enforce their rights against the unauthorised use of trademarks online or domain names that are identical or confusingly similar under unfair competition laws, such as passing off, and, based on the circumstances, unfair interference with access to a trader’s business, under sections 1 and 3 of the 1999 Commercial Civil Wrongs Law, respectively.

The Israel Internet Association (ISOC-IL) provides an expedited procedure resolution for disputes concerning the allocation of domain names under the .IL ccTLD filed or used in bad faith, including disputes with respect to domain names that are identical or confusingly similar to registered or unregistered trademarks.

https://www.lexology.com/library/detail.aspx?g=de7a9b7b-0aea-438d-8767-4b973f506353