Trademark protection is vital to secure one of your company’s most valuable assets: its brand names and logos. We have the experience to help our clients succeed.

Our trademark services in Israel and globally include:

  • legal assistance and consulting services in all trademark matters
  • advice on brand creation and meeting trademark registration requirements
  • conducting comprehensive trade mark searches
  • global filing strategy
  • prosecution of trademark applications
  • representation in opposition and cancellation proceedings
  • trademark watching services
  • trademark renewals
  • assistance and advice relating to licensing   
  • enforcement of trademark rights

Trade Mark in Israel

The 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 each class.

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 are necessary:

  • Applicant's details (name, street address, state of incorporation)
  • 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 mail
  • Goods or services in respect of which the application is made
  • 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 regarding registrability.

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 of Trademarks.
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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Name Selection

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").

The Israel 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 during examination.

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 our clients.

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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 domains.

IMPORTANT TO KNOW: Determinations as to whether "likelihood of confusion" is evident, should only be made by a professional trademark lawyer.

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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 his/her rights.
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 this country.

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 to registration.

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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Frequently Asked Questions

Why Register?
Registered marks have advantages over unregistered marks:

  • Registration creates a presumption that the owner of the registration is the owner of the trademark; thus creating priority over other users of the mark.  
  • The trademark owner may bring actions to court based on registered trademark infringement (much easier than basing your action on rights in an unregistered trademark)
  • The registered trademark owner may prevent the importation of infringing goods through collaboration with the Israel Customs Authorities.

Where to Register?
Trademark rights are territorial and are obtained on a country-by-country basis. The best solution would be to have your trademark registered in every country in which your company intends to operate. Cost considerations, however, make it necessary to prioritize. It is recommended to develop a global filing strategy taking into consideration factors such as the importance of the name, the expected life span of the product, the importance of the markets in which the company is doing business and additional legal strategic considerations about which we can give counsel.

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