After World War 11, the United Nations Special Commission on Palestine (UNSCOP) recommended that Palestine be divided into an Arab state and a Jewish state. The Commission called for Jerusalem to be administered internationally. The UN General Assembly adopted this plan on Nov. 29, 1947.
Who May Apply?
Any person desiring to have exclusive right to the use of a mark as a trademark in manufacture or in trade may apply for registration.
What Can Be Registered?
Letters, numerals, words, devices, or other signs, or combination thereof, regardless of whether two dimensional or three dimensional, which are adapted to distinguish the goods or services of the proprietor from those of other persons, may be registered. Marks may be registered in any language.
A trademark may be limited in whole or in part to one or more specified colors. Marks registered without limitations as to color are deemed registered for all colors.' To be eligible for registration, a mark must distinguish the goods of its owner from those of other persons.' In determining whether a trademark is distinctive, the Registrar or the Court may take into account the extent to which actual use, if any has occurred, has made the trademark distinctive for the
goods for which its registration is applied for or for which it was registered.
What Cannot Be Registered?
The following marks are not capable of registration as trademarks:
(a) a mark referring to some connection with the President of the , state or his household or to presidential patronage, or a mark from which any such connection or patronage might be inferred (Trademark Ordinance [New Version], 5732-1972 3 ll(1) (hereinafter: "the Ordinance));
(b) flags and emblems of the state or its institutions, flags and emblems of foreign states or international organizations, and any mark resembling any of these;'
(c) public armorial bearings, official signs, or seals used by any state to indicate control or warranty and any sign resembling any of these, and any sign from which it might be inferred that its proprietor enjoys the patronage of or supplies goods or renders services to a head of state or a government, unless it is
proved to the Registrar that the proprietor of the mark is entitled to use it;
(d) a mark in which any of the following words appear: "Patent," "Patented," "By Royal Letters Patent," "Registered," "Registered Design," "Copyright," "To counterfeit this is forgery," or words to like effect;
(e) a mark which is or may be injurious to public order or morality;
(0 a mark likely to deceive the public, a mark that contains a false indication of origin, and a mark that encourages unfair competition;
(g) a mark including a geographical indication used in connection with goods which do not originate from the indicated geographical region, if the geographical indication may cause deception regarding the real geographic source of the goods;
(h) a mark including a geographical indication that is literally correct but falsely implies that the goods originate from another geographical area;
(i) a mark identical with or similar to emblems of exclusively religious significance;
6) a mark on which the representation of a person appears, unless the consent of that person has been obtained; in the case of the representation of a deceased person, the Registrar will request the consent of his survivors unless, in his opinion, reasonable grounds exist for not doing so;
(k) a mark identical with one belonging to a different proprietor already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;
(1) a mark consisting of numerals, letters, or words which are in common use in trade to distinguish or describe goods or classes of goods or which bear direct reference to their character or quality, unless the mark has a distinctive character as defined in the law;
(m) a mark whose ordinary significance is geographical or a surname, unless represented in a special manner or having a distinctive character as defined in the law;
(n) a mark identifying wines or spirits that contains a geographical indication, if such wine or spirit did not originate in that geographical area;
(0) a mark identical or misleadingly similar to a well-known trademark, even if the well-known mark is not registered, in respect of goods for which the mark is well-known, or in respect of goods of the same description;
(p) a mark identical to oi similar to a well-known registered trademark, even in respect of goods not of the same description, if the proposed mark might indicate a connection between the goods in respect of which the mark is applied for, and the proprietor of the registered well-known mark might be harmed as a result of the use of the proposed mark.
The Registrar may refuse an application for registration of a trademark identical with or resembling the name or business name of another person, or containing a name identical with or resembling the aforesaid, if the mark is likely to deceive the public or to cause unfair competition. Special protections for well-known marks
Section 1 of the Ordinance defines a "well-known trade mark" as a mark well-known in Israel and owned by a person that is a citizen of a Member State of the World Trade Organization (WTO) or Paris Convention, a permanent resident of such state, or an active industrial business in such state. The mark is considered well-known even if not registered or used in Israel. The factors that will be considered in determining whether a trademark is well-known in Israel include the
extent to which the mark is known among the relevant circles of the public and the extent to which it is known as a result of marketing efforts. Trademarks that conflict with well-known marks are barred from registration by virtue of the above-mentioned sections 11(6), 11(13), and ll(14) of the Ordinance.
The definition of "infringement" in section 1 of the Ordinance was expanded in 2000 so as to specifically include unauthorized use of well-known marks. Under this revised Ordinance, the following are considered infringement:
1. the use of a well-known trademark, even if it is not registered, or of a mark similar enough to it to be confusing in relation to goods in respect of which the mark is known or in respect of goods of the same general category;
2. the use of a well-known registered trademark or of mark similar to it in respect of goods that are not of the same description if such use would indicate a connection between the goods and the owner of the registered mark, and the owner of the registered mark is liable to be injured by the aforesaid use.
Accordingly, while unregistered well-known marks enjoy protection in respect of goods and services of the same description, the protection afforded to a well-known mark that is registered is wider and extends to goods and services of other descriptions, provided that two conditions are met:
(1) a connection between the goods for which the accused mark is intended and the proprietor of the well-known trademark might be suggested; and (2) said registered proprietor might be harmed as a result of the use of the accused mark.
Dilution Although there are no specific provisions in the Israeli laws which specifically address the dilution of a well-known trademark, the doctrines of dilution and misappropriation of goodwill have been read into the trademark law by the Supreme Court. However, there is no specific registration for well-known marks.
No registration can interfere with any genuine bona fide use by a person of his own name or place of business, or that of any of his predecessors in business, or the bona fide use of any person of any genuine description of the character or quality of his goods.
A third party who used the same or a similar mark before the application for registration was filed with respect to the same goods or goods of the same description may have prior rights in the mark, but this issue is determined on a case-by-case basis.
The following documents are required for applications for registration:
- power of attorney, simply signed.
-five copies of the mark for each class (not required for a mere word mark and not required when an electronic copy of the mark is provided in jpeg format).
- priority document (where applicable), which, if not in English, must be accompanied by a certified English translation. Representation: It is compulsory for foreigners to have a local address for services by a person entitled by law to deal in such matters; namely, patent attorneys or attorneys at law.
Residency or physical presence in the country is not required for the filing of applications for registration. It is a well-established practice that no legalization is required for a power of attorney before the Registrar of Trademarks.
Evaluation & Review
Both technical and substantial examinations are carried out by the Trademark Office. Each application is examined to ascertain whether the mark is eligible for registration (examination of absolute grounds).
A search is conducted to determine whether the mark is identical with a trademark already registered or filed for the same goods or description of goods, or that so nearly resembles the prior mark as to be likely to deceive (examination of relative grounds). The examiner may also raise an objection on the basis of a well-known mark. Applications are searched in chronological sequence; however, an applicant may request that the examination of his application be advanced
provided that he submits with the request an affidavit or declaration stating the grounds for the request for precedence. At the current rate of examination at the Trademark Office, the applications are usually examined approximately six months after filing. If the applicant desires to claim priority based on a foreign application in accordance with the Paris Convention, a certified copy of the foreign application, accompanied by an English translatioil thereof, will also need to be submitted within three months of the filing date.
In practice, however, the Trademark Office is amenable to extending this term, upon the submission of a request for an extension and payment of the prescribed fees. The term may be extended until substantive examination falls due, at which time notification is received from the Trademark Office that examination will not commence until the submission of the requisite documents.
Trademark registrations may last permanently subject to the payment of renewal fees. Trademarks registered after August 6, 2003, remain in force for a first period of 10 years from the date of application.
Trademarks registered on August 6, 2003, or earlier are due for first renewal seven years after the application date. Subsequent renewals are for periods of 14 years. The duration of the subsequent periods is expected to be shortened to 10 years (instead of 14), but the law that will effect this change, although already enacted, has not yet become effective. Renewal may be applied for three months prior to expiration. Absent payment of renewal fees, a notice to this effect is advertised in the Trademark Journal. There is a grace period of six months in the course of which the trademark owner may restore the registration upon payment of increased fees. In the event that renewal is not effectuated within six months from the original renewal date, a notice is advertised in the Trademark Journal announcing the removal of the registration from the Trademarks Register.
The registration of a trademark that has been removed from the Register may be restored if an application to this effect, which explains the reasons for the failure to pay the renewal fees and declares that the use of the mark has not ceased, is filed within six months from the date of removal (no extensions are available). The Registrar, while exercising his discretion whether to accept the application for revival of the trademark, will also consider the injury that may be caused to
rights of third parties.
There are no specific provisions in the Ordinance that dictate what actions by a mark owner constitute use. However, use of a mark in Israel in advertising only is not regarded as bona fide use of the mark.
There is also no requirement for submission of a declaration of use after an application for registration is filed. The use of a trademark on a different product or service will not count as use. The use of a trademark by a licensee will be considered as use by the licensor only if the licensee is recorded in the Trademarks
a Register as an authorized user of the registered mark. The use of a slightly different variance of the mark will count as use of the mark. Nonuse
A trademark registration may be cancelled due to lack of use of the mark. In actions for cancellation based on nonuse, the applicant for cancellation must show that there was no bona fide intention to use the mark in connection with the goods for which it is registered, and that there has been, in fact, no bona fide use of the mark in connection with those goods, or that there had not been any such use during three years preceding the application for cancellation.
Instances of no bona fide use of the mark include (1) use of the mark in Israel in advertising only and (2) cancellation of an authorization to use the mark which had been given to a local manufacturer (unless the authorization is cancelled following violation of conditions of use, or because the owner of the mark intends to manufacture the goods for which the mark is to be used, or to grant an authorization to use the mark to another manufacturer in Israel).
The allocation of domain names under the ".iln top-level domain is governed by the Israeli Chapter of the Internet Society ("ISOC Israel") Domain Name Allocation Rules.
The registration of the domain name under the ".il" top-level domain name may be conducted online through ISOC Israel (and through other authorized Web sites providing domain-name registration service) by carrying out the process detailed on their Web site. The holder of a domain-name registration represents and warrants that the allocation or use of the domain name does not infringe the legal rights of a third party.a In addition, the holder agrees that ISOC Israel is not responsible for the use of any domain name and in particular for any conflicts with trademarks, registered or unregistered, or with rights to names in other contexts. However, there is no obligation on the part of the Registrar to perform any examination of applications for domain names to determine if there is any conflict with registered trademarks, and such examination is not conducted.
Domain names are registered for two years, after which they have to be renewed. In the event that a domain name contains a trademark belonging to another party, the trademark owner may initiate proceedings in order to revoke the domain-name registration or transfer it to its name, as detailed below. The owner of a mark may obtain the cancellation of a domain name if the use and registration of the domain name constitutes a trademark infringement or any other civil
wrong. The trademark owner may also have the domain-name registration transferred to him. The trademark owner may initiate legal proceedings with the court or apply to an advisory committee.
In principle, in order to revoke a domain-name registration or transfer it to a trademark owner, the trademark owner should prove the relevant causes of action, such as trademark infringement, passing off, blocking access to business , trespass to property, and unjust enrichment. When applying to the advisory committee, the remedies that may be obtained are the revocation of the domain name and or the transfer thereof to the trademark owner.
It is also possible to initiate a court proceeding. A petition to the advisory committee in no way precludes access or petition to an Israeli court of law. When initiating court proceedings, in addition to the revocation and the transfer of the domain name, it is possible to apply for additional remedies, such as prohibitory and mandatory injunctions, compensation for damages, etc.
Whether a domain-name owner may obtain the cancellation of a mark that was applied for after the domain name was allocated depends on several factors, such as the use made by the domain-name holder in the mark, the use made by the trademark owner in its mark, whether the mark is considered a well-known trademark, and the natures of use in the mark by the trademark owner and by the domain-name holder (whether the use is for goods of the same description), etc.
Enforcement of the trademark rights is also possible by filing a complaint with the police or by filing a private criminal complaint with the court and possibly an application for a criminal search-and-seizure order.
Obtaining a criminal search-and-seizure order may take several days. The time frame for obtaining a sentence from the court in the criminal proceedings is approximately two years.
Approach to the Intellectual Property (IP) unit of the police It is possible to file a complaint with the IP unit of the local police department, requesting it to initiate an investigation and conduct a search-and-seizure order on the premises of the infringer. The police investigation and the execution of the search-and-seizure order may subsequently result in the initiation of criminal proceedings by the state against the infringers. Criminal and civil enforcement measures can be conducted simultaneously. Customs
The owner of an Israeli registered trademark may apply to the Customs authorities and request them to detain the release of a shipment of goods which is
infringing its trademarks.
Such a request to the Customs authorities should be in writing and should include (1) a copy of the relevant trademark registration certificate, (2) a sample of the original goods bearing the trademark, (3) all possible information regarding the infringing goods and their origin, including pictures thereof, their descriptions, the identity of the importer thereof, and, if possible, the approximate arrival date of the shipment, and the port where the shipment is due to arrive, and (4) an undertaking for indemnification to cover possible unjustified damages that may be caused to the importer as a result of the detainment of the goods, as determined by a competent court.
The Customs authorities will notify the trademark owner upon the arrival of a shipment of goods that are suspected of being infringing. The trademark owner should notify the Customs authorities within three working days whether the goods are indeed infringing and, if so, should file a bank guarantee in a sum to be determined by the Customs authorities (according to the monetary value of the shipment). Thereafter, the trademark owner should file a lawsuit (a regular action without applying for interlocutory injunction) with the court within seven working days after the date of the providing of the bank guarantee.
The Customs authorities conduct random checks of shipments arriving in Israel on their own initiative and may approach trademark owners in case a shipment which is suspected of being infringing has arrived in Israel.
Requests for assistance from the Customs authorities may not be made if the mark is not registered. In addition, the Customs authorities are authorized to conduct criminal investigations in accordance with the Customs Ordinance and the Merchandise Marks Ordinance and may detain infringing goods, importation of which constitutes criminal offense. Approach to the Commissioner of Consumer Protection
Enforcement of trademark rights may also be obtained through administrative measures in cases of consumer deception, according to the Consumer Protection Law, which empowers the Commissioner of Consumer Protection to initiate investigations and take measures to enjoin deception. This administrative route is rarely applied.