Comparative Guides

Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.

Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.

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4. Results: Answers
Trademarks
1.
Legal framework
1.1
What is the statutory or other source of trademark rights?
Israel

Answer ...

  • 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).

For more information about this answer please contact: Dodiva Grant-Cohen from JMB Davis Ben-David Ltd.
1.2
How do trademark rights arise (ie, through use or registration)?
Israel

Answer ... 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).

For more information about this answer please contact: Dodiva Grant-Cohen from JMB Davis Ben-David Ltd.
1.3
What is the statutory or other source of the trademark registration scheme?
Israel

Answer ... See question 1.1

For more information about this answer please contact: Dodiva Grant-Cohen from JMB Davis Ben-David Ltd.
2.
What constitutes a trademark?
2.1
What types of designations or other identifiers may serve as trademarks under the law?
Israel

Answer ... 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.

For more information about this answer please contact: Dodiva Grant-Cohen from JMB Davis Ben-David Ltd.
2.2
What are the requirements for a designation or other identifier to function as a trademark?
Israel

Answer ... 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.

For more information about this answer please contact: Dodiva Grant-Cohen from JMB Davis Ben-David Ltd.
2.3
What types of designations or other identifiers are ineligible to function as trademarks?
Israel

Answer ... 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.

For more information about this answer please contact: Dodiva Grant-Cohen from JMB Davis Ben-David Ltd.
3.
Registration procedure
3.1
Which governing body (ie, trademark office) controls the registration process?
Israel

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

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.2
What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
Israel

Answer ... 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.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.3
Does the trademark office use the Nice Classification scheme?
Israel

Answer ... Yes.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.4
Are ‘class-wide’ applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
Israel

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

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
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?
Israel

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

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.6
Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
Israel

Answer ... Yes.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.7
What types of examinations does the trademark office perform other than relative examination?
Israel

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

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
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?
Israel

Answer ... 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.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.9
Is there a separate or supplemental register on which descriptive marks may be registered?
Israel

Answer ... No.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
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)?
Israel

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

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.11
Must the applicant use the trademark commercially in order to obtain a registration?
Israel

Answer ... No.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.12
How much time does it typically take from filing an application to the first office action?
Israel

Answer ... About four to six months.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
3.13
How much time does it typically take from filing an application to publication?
Israel

Answer ... About eight to 12 months.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
4.
Appeals
4.1
If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
Israel

Answer ... 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.

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
4.2
What is the procedure for appealing a trademark office refusal?
Israel

Answer ... 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.

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
4.3
Can the reviewing body’s decision be appealed? If so, to what body and by what procedure?
Israel

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

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
5.
Oppositions
5.1
Can a third party oppose a trademark application?
Israel

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

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
5.2
Who has standing to oppose a trademark application?
Israel

Answer ... 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.

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
5.3
What is the timeframe for opposing a trademark application?
Israel

Answer ... 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.

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
5.4
Which body hears oppositions?
Israel

Answer ... 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.

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
5.5
What is the process by which an opposition proceeds?
Israel

Answer ... 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.

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
5.6
Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Israel

Answer ... 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.

For more information about this answer please contact: Eviatar Aron from JMB Davis Ben-David Ltd.
6.
Rights of registered and unregistered marks
6.1
What, if any, protection is afforded to unregistered trademarks?
Israel

Answer ... 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.

For more information about this answer please contact: Aaron Lewin from JMB Davis Ben-David Ltd.
6.2
What legal rights are conferred by a trademark registration?
Israel

Answer ... 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.

For more information about this answer please contact: Aaron Lewin from JMB Davis Ben-David Ltd.
6.3
If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
Israel

Answer ... There is no separate register for descriptive marks.

For more information about this answer please contact: Aaron Lewin from JMB Davis Ben-David Ltd.
7.
Enforcement and remedies for trademark infringement
7.1
What remedies are available against trademark infringement?
Israel

Answer ...

  • 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
7.2
What remedies are available against trademark dilution?
Israel

Answer ... 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
7.3
Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Israel

Answer ... 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
7.4
What is the procedure for pursuing claims for trademark infringement?
Israel

Answer ... 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
7.5
What typical defences are available to a defendant in trademark litigation?
Israel

Answer ... 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
7.6
What is the procedure for appealing a decision in trademark litigation?
Israel

Answer ... 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
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?
Israel

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

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
8.2
What, if anything, must be submitted to the trademark office to maintain or renew a registration?
Israel

Answer ... 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.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
8.3
What are the grounds for cancelling a trademark registration?
Israel

Answer ... 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.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
8.4
Under what circumstances may the trademark office cancel a registration on its own initiative?
Israel

Answer ... 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).

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
8.5
What is the procedure by which a third party may seek cancellation of a trademark registration?
Israel

Answer ... See question 8.3.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
8.6
What is the procedure for appealing a decision cancelling a registration?
Israel

Answer ... 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.

For more information about this answer please contact: Miriam Samis from JMB Davis Ben-David Ltd.
9.
Licensing
9.1
Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
Israel

Answer ... 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
9.2
Must trademark licences be recorded with the trademark office or other governing body?
Israel

Answer ... 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
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?
Israel

Answer ... 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.

For more information about this answer please contact: Daphne Lazar from JMB Davis Ben-David Ltd.
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)?
Israel

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

For more information about this answer please contact: Aaron Lewin from JMB Davis Ben-David Ltd.
10.2
Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Israel

Answer ... 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.

For more information about this answer please contact: Aaron Lewin from JMB Davis Ben-David Ltd.
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Topic
Trademarks