Trademark protection is vital to secure one of
most valuable assets: its brand names and logos. We have the experience
to help our clients succeed.
Trade Mark in Israel
Israel Trademarks Ordinance (New Version) 1972 defines a trademark
as a mark used to distinguish the goods or services of one person from
those of another person, serving as a source identifier. A mark can
include letters, numbers, words, devices, labels, shapes, colors, sound,
scent or a combination thereof. A mark may be two-dimensional or three
dimensional and be registered in any language.
There are no requirements of proving use at the time of application, registration
or renewal of the mark, however, non-use during three consecutive years,
from the date of registration, may be a ground for the removal of a trademark
registration filed by an interested party. The complete range of goods
or services is divided into 45 classes, according to the International
Nice Classification and separate applications need to be filed for
Israel is a member of the Paris
Convention Treaty, the provisions of which enable a trademark
application originating in one of the over 160 member countries to be
filed in any other member country within 6 months of filing the original
application and still retain the original filing date (priority date).
Israel has lately approved an amendment to the Trademarks Ordinance implementing
the Knesset's (Parliament’s) decision to join the Madrid
Protocol. The amendment will become valid once all necessary local
legislation has been finalized. Israel’s joining the Madrid Protocol
means that the owner of a national Israeli trademark may designate protection
for his/her trademark to all countries of interest (members of the Madrid
Protocol) within one trademark application filed centrally at the International
Bureau of the World Intellectual Property Organization (WIPO) in Geneva.
Filing through the Madrid Protocol reduces costs and simplifies procedures
(one application, one renewal date etc.). However, this venue is not
necessarily appropriate for all trademarks and each case needs to be
considered on its own merits. Application according to the Madrid Protocol
is dependant on the home registration in order that it become registered
and remain valid for three years. If the home trademark is weak, the
risk of “central attack” – meaning the chance that
the mark will not be registered in the home country in the first place
or might be vulnerable for cancellation – puts the validity of
the entire registration (all designated countries) in danger.
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Trademark Application Requirements
To file an application in Israel the following details
- Applicant's details (name, street address, state
- Applicant's type of business (e.g. merchant/manufacturer)
- The mark (design or block); for marks that are not
plain block letters, please send us 5 specimens electronically or by
- Goods or services in respect of which the application
- Class according to the Nice Classification
- Priority information (where applicable) - date,
country and number of application
- Address of representative in Israel
The following documents can be submitted after
filing the application:
- Priority Document (where applicable); the original
document (or certified copy) and its English certified translation,
if necessary, can be filed at a later date (until three months after
the filing date without incurring late filing fees); and
- Original Power of attorney (downloadable
here), signed by an authorized officer of applicant (can be filed
until three months after the filing date without incurring late filing
fees); a single Power of Attorney will suffice for all applications
of applicant whether or not filed at the same time.
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Trademark Application Procedure
The registration process will usually take somewhere
between 12-24 months from filing an application. After a trademark application
is filed, a filing receipt containing the filing details is issued by
the Israel Trademark Office (ITO). Usually, after 6-9 months the application
will be examined. In special cases, where the Applicant can claim actual
or imminent infringement of the mark in Israel, a petition for accelerated
examination may be filed with the ITO requesting accelerated examination.
The costs for such proceedings are not substantial and the ITO usually
responds immediately to such requests.
During examination, an Examiner in the Trademarks Office conducts a
search to determine whether there are any prior applications or registrations
for conflicting (identical or confusingly similar) trademarks for the
same or similar products or services. The Examiner will also consider
whether the trademark is capable of distinguishing the applicant's goods
and/or services (see Name
Selection) and whether the application complies with the other requirements
If the Examiner raises no objection to the registration of the mark,
then the next step will be notice of acceptance.
If the Examiner does not accept the mark, he/she will issue an Office Action.
It may be possible to overcome an Examiner's objection by filing evidence of
reputation through commercial use or by filing arguments that the application
meets the requirements for acceptance. The applicant has 3 months to respond.
Extensions of time are available, usually up to one year without special justification.
Additional extensions may be obtained under special circumstances. There is a
right of appeal to the Supreme Court of Israel against a decision of the Registrar
After publication fees are paid, the acceptance of the mark is advertised and
another person or company may, within three months, object to the proposed registration,
for example because they are already using a similar trademark. If there is no
opposition, or if opposition is unsuccessful, the application proceeds to registration.
A trademark registration that was issued before August 6, 2003, is valid
for a period of seven years from date of application, whereas a registration
issued after August 6, 2003 is valid for 10 years. All have the privilege
of renewal for periods of 14 years, which may be renewed indefinitely
provided renewal fees are timely paid.
IMPORTANT TO KNOW: There are no provisions requiring proof
of use of the mark either during the process of registration or
at the time of renewal. However, if the mark has not been used for three
consecutive years from the date of registration, the registration may
be subject to cancellation initiated by a third party on the
ground of non-use.
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Strong and recognizable names for business, products,
and services are valuable assets for any company. A strong name, to which
the company has exclusive rights, helps consumers identify and recognize
the products in the marketplace and builds customer trust and goodwill.
Every company would like to choose a name for
its business and products which immediately tells the customers what
the business is all about, and what the product does for them. But
in order to qualify for legal trademark protection, the name needs
to be what the trademark law considers "distinctive". The
strongest names are those which have nothing to do with the underlying
business or product. All agree that the best names are those that can
be easily remembered, evoke an association with the business, and are
not similar to a name used by others.
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Availability Search in Israel
Clearance searches, hopefully conducted before a new
trademark is selected, will help prevent your company from investing
in a trademark that you will finally not be able to use since its use
infringes marks held by others. A trademark should not be selected, if
the clearance search shows it is likely to become confused with a trademark
already used by someone else ("likelihood of confusion").
Patent and Trademark Office's database is searchable by the public.
The ITO can also be requested, through local representatives, to conduct
searches. Although the search results are not binding, such searches are
the most reliable source for finding out about potential conflicts in
the Israel Trademark Office. Rarely new marks are cited against registration
Since Israel is a “use” country, i.e. rights may be acquired
as a result of actual “use”, common law resources and other
data bases should also be looked at, such as the corporate registry
and business directories in Israel. Domain searches for all .il suffixes,
and internet searches in Israel’s primary portals for the equivalent
Hebrew name, could reveal identical or confusingly similar marks.
We conduct comprehensive clearance searches for
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Clearance for Global Branding
Names that are intended to be used globally need to
be cleared by international searches. A regular internet search for
the required name may be initially conducted in order to rule out that
another company is using the name in the same or similar field. Industry
databases could reveal similar names. If those searches do not reveal
problems, then a search of the databases of various Trademark and Patent
Offices is recommended. Those searches are, however, only preliminary
indications and not all databases are searchable by the public or in
English. Broader searches are recommended especially when filing an
application with the European Trademark Office in Alicante (OHIM), where
a mark may be registered in the 25 EU member countries.
As part of the searching procedure, domain name searches should be considered
to determine whether the trademark has been registered by someone else
as a domain name. As a preliminary tool to rule out trademarks that
have already been taken, we offer international clearance searches
covering the databases of almost all EU member countries, US, Canada
and Japan at good value price. If desired, we can also arrange for
the registration of domain names, including in the .com and .co.il
IMPORTANT TO KNOW: Determinations as to whether "likelihood
of confusion" is evident, should only be made by a professional
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Proper Trademark Use
It is very important to make proper use of trademarks,
giving notice to the public that this name is a trademark belonging to
its owner. Providing public notice is as important for unregistered marks
as it is for registered marks. The appropriate form of notice depends
on whether or not the mark is registered. If the mark is registered,
the common way to give notice is to use the symbol ®. If the mark
is not registered, the appropriate form of giving notice is to use the ™ symbol
usually appearing above to the right of the mark in which rights are
asserted. Giving notice increases the ability of a mark to identify its
source, minimizes the probability that the mark will loose its distinctiveness
and assists its owner to acquire rights through use. Proper marking of
the ® and ™ symbol should appear on labels, advertising, brochures,
on the company's website and any other documentation displaying the trademark.
Proper trademark use can help the company in infringement actions. We
review our client's PR material and website and prepare guidelines for
proper use of company personnel, distributors and service providers working
with the company.
There are additional guidelines for proper trademark
use. We will be happy to counsel you upon request.
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Proper use also means that the trademark owner needs
to guard and enforce his/her trademark rights by making sure that no third
party uses this mark for the same goods or services and subsequently enforcing
It is easy, and not expensive, to have trademarks monitored: in many countries
specialized companies offer “watching services” on Patent
and Trademark Offices' databases, alerting trademark counsel to publications
of conflicting marks. There are also watching services for internet use
and the media. Proper monitoring may prevent unpleasant situations in
which the trademark owner finds himself not being able to expand his business
to another country since a "pirate" has hijacked his mark and
acquired trademark rights through use or registration without the trademark
owner's knowledge. The trademark owner might have to buy the name back
from the pirate, or will have to use another mark for his products in
We can arrange for monitoring services for your most important trademarks.
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Israel Practice Tips
Block letters or logo
To obtain broadest protection a word mark should be filed in block letters.
The mark registered in block letters protects all fonts and stylizations
of the name. If, however, there are second thoughts regarding the distinctiveness
of the mark, then you should consider filing the name in a stylized form,
which will assist in overcoming non-distinctiveness objections possibly
raised during examination.
Color or Black-and-White
Filing a trademark application in black and white will cover all colors.
A trademark will be limited to specific colors only if it is explicitly
indicated in the application form. That might be recommendable when
a mark consists mainly of colors.
Identification of goods
Broad identifications and class headings are not acceptable. In the case
of housemarks, the ITO will usually allow broad identifications to proceed
Three dimensional trademarks
The ITO will not register shapes of products or its packaging which should
be protected through design registrations, unless special and unusual
circumstances can be shown such as that the requested shape has acquired
secondary meaning as a result of use.
Slogans are not registrable as they inherently lack distinctiveness. A
slogan becomes registrable if secondary meaning through use can be shown
and if it can be proven that in the eyes of the consumer, the slogan connects
between the products or services whose registration are sought, and their
source. It is, however, possible to register a slogan not yet having gained
secondary meaning when it comes in conjunction with a distinctive mark.
Well known and Famous marks
The owner of a well-known registered trademark in Israel has the right
to prevent use of the mark by a third party also in conjunction with non-identical
goods or services. in respect of which no use of the trademark is made
or even intended, if its use would be deceptive or confusing. The owner
of a well-known unregistered mark is entitled to prevent use
of the mark from any third party in conjunction with the goods or services
for which the mark is well-known.
Assignment and license
The owner of a registered trademark or
a pending application may assign the trademark, with or without the goodwill
of the business concerned. However, a license under a trademark may only
be recorded once the trademark has been registered. If the local trademark
licensee is also the producer of the merchandize, and he is not recorded
with the ITO as registered user, then the use made by him will not accrue
to the benefit of the trademark owner, making the trademark vulnerable
to cancellation due to non-use.
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