Trademark Registration in Israel: An overview The most important piece of legislation for the purpose of registration of trademarks in Israel is the Trademarks Ordinance which is the most important legislation and contains the essential provisions with respect to the material aspects of the Israeli trademark law. The Trademarks Regulations, 1940, on the other hand, lays down the procedural formalities before the Israeli Patent Office - Trademarks Department. Israel is one of the most IP-friendly countries known to provide adequate and swift protection of Intellectual Protected Rights over trademarks. Israel is also a signatory to a lot of global conventions, treaties and agreements, viz. Madrid Agreement and Madrid Protocol, TRIPS Agreement, Paris Convention, NICE Agreement, Trademark Law Treaty, WIPO Convention, Nairobi Treaty. Authority for trade mark registration in Israel The competent statutory authority for the purpose of registration of trademarks in Israel is the Trade Marks Department in the Israel Patent Office. Trademark registration in Israel is governed by the Trade Marks Ordinance (new version) 5732-1972, the Commercial Torts Law 5759-1999, the Trade Marks Regulation 1940 and the Merchandise Marks Ordinance 1929. Marks that CANNOT be trademarked in Israel [absolute grounds] Following are the marks which have been prohibited from registration: A mark that lacks distinctive character, i.e. it is incapable of distinguishing the services and goods of a proprietor from those of others; A mark that resembles any flag, emblem of the state or its institutions, flags and emblem of the foreign states or international organization; A mark having some connection with the President of the state, his/her household/presidential patronage or a mark from which any such patronage can be inferred; A mark that is injurious to morality and public order; A mark that is similar to or represents public armorial bearings, official seals or signs that are used by the state indicating control or warranty; A mark that is likely to deceive the public or contains a false indication of origin and which encourages unfair trade competition; A mark in which the following words appear: “by Royal Letters Patent”, “Patented”, “Patent”, “Registered Design”, “Design”, “to counterfeit this forgery”, “Copyright” or similar expressions. A mark that is similar or identical to the emblems of exclusive religious significance; A mark indicating geographical indication that is correct but contains false representation that the goods originated in a different place; A mark identifying spirits or wines that contains geographical indications and such spirits and wines did have a source of origin in that geographical indication; A generic mark; A mark that contains the description or name of any goods can be refused registration in respect of other goods. However, such a mark can be registered if, in actual use, the mark varies according to the goods for which it is used and the applicant adds a note to such effect in its application; A laudatory mark; A mark that is similar or identical to the name or business name of another person or entity or the mark contains a name which is identical or similar to that person or entity will be refused registration if the said mark is likely to deceive the public or cause unfair competition; A mark which is a surname or whose ordinary significance is geographical; A mark that consists of words, numerals and letters that have been used commonly in trade to describe and distinguish goods and classes of goods or which bear direct reference to their quality or character; How are the trademarks represented in Israel? Representation of trademarks in Israel is done in the following ways: Sound marks: where the application has been made to register a sound mark, this fact should be stated in the application, and the notes assembling the sound are also required to be attached along with the digital file enabling the listening of the sound in the Trade Marks Department’s 3-D marks: where the application is made for a 3D shape, then this fact has to be mentioned in the application. Additionally, a photo or drawing depicting the shape of a mark in such a manner that allows one to notice its image/ figure from all sides has to be attached to the Video marks: where the application is filed to register a video segment, it is required to submit the mark in the form of a digital file allowing viewing of the video segment along with the listening of the sound accompanying it. Additionally, the graphical visual display of the tones or the notes assembling the sound in conjunction with the sequence of the images of the video segment has to be submitted. It is not necessary to claim a colour using the internationally recognized colour code. Procedure for filing a Trademark application in Israel Following is the procedure for filing an application for the registration of a trademark in Israel: Designing of a trade mark Determining the classification of services and goods to be trademarked Conducting a prior trademark search before filing the application Filing the application for the registration of a trademark Examination of the mark by the Israel Trade Marks Department Publication of the proposed mark and opportunity for the opposition Registration of trade mark Designing a trade mark - The first step in the process of registration of a mark is designing the mark. Such marks should be designed in accordance with the provisions of the Trademarks Ordinance. A trade mark in Israel can be framed only in the form of words, designs, letters, characters, numerals, sounds, shapes and colours. However, smells have not been permitted to be registered as a trademark in Israel. Determining the classification of services and goods to be trademarked - Like other major TRIPS signatories, Israel too follows the NICE classification for the classification of services and goods while filing an application for a mark. Accordingly, a mark is allocated. A multi-class application can also be filed. It is always advised to file in as many classes as possible, as after the filing of the application, no further additions can be made with respect to the classes. Conducting a prior trademark search before filing the application - It is not obligatory to conduct an online search before filing the application of registration. However, official trademark availability searches are available before filing the application. An official trademark similarity search only covers a single international class. The official fee for the trademark search is USD $ 180 per class. The Israeli Patents Office extends the search to additional relevant classes. These searches are not always fully covered depending on the listed services and goods with the search request. A search for a device mark is done for only one class. Filing the application for the registration of a trademark - The following formalities have to be taken into consideration while filing an application for the registration of the trademark in Israel: Power of Attorney on behalf of the applicant and in favour of the attorney has to be filed at the Israel Patent Office in order to file a trademark application. The application is supposed to be filed online at the Trademark Online System (TMONLINE) A filing date has to be obtained, and the following information has to be provided: The name, ID number or corporation number, contact details and address of the applicant A representative mark; The details of the representative (attorney or patent agent) where a representative is involved in the process of filing; A list of services and goods for which the mark is to be registered; Details of priority claim; Power of Attorney when a representative is involved in the application process; Multi-class applications The particulars of the application are sent to the application within a few days of filing and will be sent to the applicant’s agent not later than 3 days if the application is filed online. Examination of the mark by the Israel Trade Marks Department - The examination of the trademark application is done both on technical grounds and substantial grounds. The substantial grounds include examining the application on all the absolute and relative grounds of refusal. On the other hand, while examining the technical grounds, the examiner ensures that all the technical requirements have been fulfilled in the application, such as payment of additional fees, filing a power of attorney etc. Thereafter, the examiner moves towards examining the wording of the services or goods (checking them on the grounds of clarity, non-ambiguity, over-generalization etc.) and the classification of such services and goods. If the description of the services or goods appears to cover other additional classes than those initially mentioned in the application, the examiner may ask the applicant to add classes to the application or change the classification altogether. The Trade Marks Office then examines the mark on both absolute grounds and relative grounds (where potential conflicts can arise with prior applications or registrations). Initial refusal based on the cited mark can be overcome with the help of letters of consent made in favour of the applicant. However, the examiner is not bound to cancel a citation after the submission of a letter of consent. The representatives or the applicants themselves are required to respond to the rejections made by the Trade Marks Office within a period of 3 months which is again extendable. If the application is denied/ rejected by the Office, then the applicant has the provision of filing an appeal against such denial: The applicant/ representative has the option to appeal against such a decision within a period of 3 months from the date of denial (the time to file an appeal can be extended for a period of 11 months or a longer period under certain special circumstances) Thereafter the applicant can request a hearing before the Registrar The decision of the Registrar is itself subject to appeal to the district court within a period of 30 days. The applicant has the option to appeal the decision of a district court to the Supreme Court within a period of 30 days. Publication of the applied mark allowing opposition - If no objections are raised in the application by the Office or after curing all the deficiencies in the application, the Office publishes the application for a period of 3 months, allowing third parties to file oppositions against the proposed mark on both the relative and absolute grounds of refusal. The absolute grounds comprise the mark being descriptive, deceptive, harmful to the public policy or the one that encourages unfair competition. Relative grounds of refusal include the marks that harm the third party’s property rights or the ones that are similar or identical to another business’s name. The registered trademarks can be cancelled by the third parties only on those grounds of relative and absolute refusal raised at the time of opposition within a period of 5 years from the date of trademark registration. Another ground for the removal of the trade mark from the Registry is that the mark has not been used for a period of 3 years preceding the petition for removal. The opposition and cancellations proceedings involve the submission of statements, filing of evidence in affidavits, cross-examination proceedings before the Registrar and written summations. For filing an opposition proceeding, it is not necessary that the trade mark be registered. The brand owners are allowed to file claims against the trade mark applications and trade mark registrations on the basis of common law rights accrued through the use of the trade mark and also on the basis of the international goodwill associated with the mark. Registration of the trade mark - After satisfying all the claims of opposition from 3rd parties and curing all the deficiencies raised by the department, the application for trade mark registration moves towards the stage of registration. The Trade Marks Department under the Israel Patent Office issues the certificate of registration and sends the certificate to the applicant or its representative via email. The Office does not charge any additional fee for granting the registration. The rights accrued as a result of registration commence not from the date of registration but from the date of application. They are backdated to the application date. The initial term for the registration of a trade mark in Israel is a period of 10 years commencing from the date of registration. Information to be furnished in the application for Trademark registration in Israel Following is the list of information that is supposed to be furnished at the time of filing an application for trade mark registration in Israel: The design of the mark The services/ goods claimed in the mark Priority claims, if applicable; Name and address of the applicant and the state/ country of incorporation; Specifications of the applicant’s representative (if appointed); Power f Attorney in favour of the attorney who is filing the application to the Trade Marks Office; Citizenship of the applicant and; Type of mark (device/ word/ certification/ sound/ collective mark). If the application of the trade mark application has been made in a particular colour, then the trade mark will be limited to the colour of the mark and not to any other colour. However, if the mark has been filed with black and white, then it will be registered for all colours. Therefore, it is suggested to submit the application in black and white only so that maximum protection can be claimed for the mark. Cost for the registration of Trademarks in Israel The official cost of filing a trade mark application in Israel is NIS 1,645 (approximately USD 525), and the prescribed fee for every additional class filed in the application is NIS 1,242 (approximately USD 395). This amount does not include the representative fees. Renewal of a trade mark in the Israel The registration can be renewed further for an additional term of 10 years, innumerable times. There is no requirement to show the declaration of use by the applicant at the time of filing the application for renewal. The request for renewal of the trademark can be made by filing an appropriate request during the three months period prior to the date of expiration. The applicant is also required to complete the payment of the appropriate fee. The prescribed fee for the renewal of trade mark in Israel during the 3 month period prior to the expiration of the trade mark is NIS 2,948 (approximately USD 940) for a trade mark renewal in one class, and the official fee for each additional class included in the registration is NIS 2,488 (approximately USD 790). Once the above term of 3 months has passed, the trade mark proprietor is provided with a six-month grace period in which a trade mark can be renewed by filing an appropriate request along with payment of the fee mentioned above. Furthermore, the applicant is also supposed to pay an extra fee of NIS 75 (approximately USD 24) for every month in which the registration wasn’t renewed. According to the Trade Marks Ordinance, after the 6 months grace period, if the Registrar is satisfied to renew the mark, he may, on the request of renewal made by the proprietor of the mark, restore the registration for the mark on such conditions he may deem fit. This restoration will be done after the proprietor has paid the proscribed fee for renewal, plus an extra fee of NIS 75 (approximately USD 24) for every month in which registration was not renewed, along with an additional sum of NIS 1144 (approximately USD 365) for every class in the expired registration provided the application for restoration has been filed within a period of 6 months after the termination of the grace period. It must be remembered that the restoration of the registration has to be filed along with an affidavit explaining the circumstances for failing to meet the prescribed deadline. A Power of Attorney may be made required where the proprietor wants to make a change in its representative.