Registration and use

Ownership of marks

Who may apply for registration?

Any person or legal entity may file an application for trademark registration. Citizenship or residency is not required. 

Scope of trademark

What may and may not be protected and registered as a trademark?

Any mark may be registered insofar as it can distinguish the goods and services of the trademark owner from those of others. A ‘mark’ is defined as ‘letters, numerals, words, images or other signs or combinations thereof, in two or three dimensions’. This broad and flexible definition includes:

  • word marks and logos;
  • colour marks (ie, marks consisting of one or more colours only, without wording or design);
  • 3D trademarks, including product and packaging shapes;
  • motion marks (ie, a mark that makes a series of motions);
  • holographic marks; and
  • sound marks.

No scent or taste marks have been registered as yet. Service, certification and collective marks may also be registered.

Unregistered trademarks

Can trademark rights be established without registration?

Trademark rights may be established without registration, based on local goodwill, under the tort of passing off. The establishment of such local goodwill usually requires long and substantial use in Israel, but use abroad may suffice in exceptional cases.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A foreign trademark which is also famous domestically is protected even if not used domestically. If a mark is not registered in Israel, it is entitled to protection against the use and registration of a confusingly similar mark in respect of goods or services for which the mark is known or goods or services of the same description. If registered in Israel, a mark is entitled to protection against the use and registration of a similar mark in respect of goods which are not of the same description, provided that such use could make the public believe that a connection exists between the goods or services concerned and the owner of the registered trademark, and that the owner could be harmed as a result of such use.

The benefits of registration

What are the benefits of registration?

Trademark registration in Israel provides a number of benefits, including:

  • a right to exclusively use the trademark in Israeli territory;
  • a legal presumption of right and ownership;
  • a right to take legal action against infringement based on the 1972 Trademark Ordinance (New Version);
  • availability of a border enforcement mechanism, allowing detention of suspected infringing goods by Customs;
  • a possibility to file a complaint with the police for counterfeiting; and
  • extended protection for well-known marks.
Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

A power of attorney on behalf of the applicant and in favour of the attorney filing the application must be submitted at the Israel Patent Office in order to file a trademark application. The form must be signed by a competent officer of the applicant company and a scanned copy of the executed document must be submitted. The original must be available on request by the registrar. Legalisation or notarisation of said document is not required.

Where conventional priority is claimed based on a corresponding foreign application under the Paris Convention, the applicant must provide an authorised copy of the corresponding foreign application and an English translation. All of the documents must be submitted to the Israel Patent Office within three months from the filing date of the application (a deadline which may be extended).

Device or stylised mark registrations require a specimen in JPG format, while sound mark registrations require a specimen in MP3 format.

Electronic filing is available. It is mandatory for corporations and trademark attorneys filing for others (ie, lawyers or patent attorneys).

Official trademark availability searches are available before filing.

An official trademark similarity search covers only a single international class. The official fee per search is NIS647 (approximately $180, depending on the exchange rate).

The Israel Patent Office automatically extends searches to additional relevant classes; however, they are not always fully covered, depending on the listed goods or services provided with the search request. A search for a device mark covers only one class. The cost is the same as above.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

According to existing examination rates at the Israel Patent Office, applications are usually examined 10 to 12 months after filing.

The official fee for filing trademark or service mark applications is NIS1,623 (approximately $450, depending on the exchange rate).

Marks come into effect on the date of their registration (ie, at the end of the opposition period, including overcoming any opposition); however, the filing date is considered the relevant date for the rights to a mark which has been filed for registration or used.

An accelerated examination is available under special circumstances (eg, an ongoing or impending infringement) on submission of a supporting affidavit specifying the grounds for the request.

Accelerated examination is likely to take place within one month from such a request.

The official fee for accelerated examinations is approximately $265 (depending on the exchange rate).

A rough estimate of the total cost for the registration of an average mark in a single class is several thousand dollars.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The 11th edition (2019) of the International Classification system is followed.

Multi-class applications are available. The official fees for filing multi-class trademark or service mark applications are as follows:

  • NIS1,623 (approximately $450) for first class; and
  • NIS1,219 (approximately $340, depending on the exchange rate) for each additional class filed simultaneously for the same mark.
Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The review of trademark applications involves both technical and substantial aspects. A substantial examination includes both absolute and relative grounds.

When examining technical aspects, the examiner makes sure that all technical requirements are fulfilled, including filing a power of attorney and paying additional fees.

The examiner then examines the wording of the description of goods or services (eg, for clarity, non-ambiguity and generalisations) and the classification. If the description of goods or services appears to cover other classes than those initially requested, the examiner may require a change of classification or adding classes to the application.

The Israel Patent Office then examines the mark on relative grounds (eg, potential conflicts with prior registrations and applications) and absolute grounds.

Letters of consent may help overcome an initial refusal based on a cited mark, but the examiner is not bound to cancel a citation on submission of a letter of consent.

Applicants or representatives (eg, trademark and patent attorneys) may respond to rejections by the trademark office within three months (extendable).

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

There is no pre or post-registration term by which an owner of a registered trademark must provide proof of use in Israel. Further, under Israeli trademark law, the registrar does not require submission of proof of a trademark’s use on its own initiative.

However, if a mark has not been used for three consecutive years after its registration, the registration becomes vulnerable to cancellation on request by an interested party on the grounds of non-use. In such a case, submission of proof of use is required to defend the registration.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The symbols ™ and ® may be used to indicate trademark use or registration. Marking is not mandatory.

Falsely indicating that a product is protected by trademark registration (eg, by using the ® symbol or indicating "Registered Trademark") is a criminal offence. Section 3 of the Product Marking Ordinance states that any person designating a false commercial description to a product or selling or offering such goods is liable to penalties (eg, fines and even imprisonment), unless they prove that they did so without intent to deceive. No criminal cases have implemented this provision, but in practice, such situations (ie, falsely indicating trademark registration) may be used in civil suits in order to establish bad faith (eg, denying a party equitable relief).

Appealing a denied application

Is there an appeal process if the application is denied?

Yes, the following appeal process applies if an application is denied:

  • An applicant may appeal an examiner's initial refusal within three months (extendable up to 11 months, or longer under special circumstances).
  • The applicant may request a hearing before the registrar.
  • The registrar's decision is subject to an appeal to a district court within 30 days.
  • The applicant may file a motion to appeal a district court decision to the Supreme Court within 30 days.
Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Trademark applications are published for an opposition period of three months, during which a third party may file an opposition on absolute and relative grounds. Absolute grounds include descriptiveness, marks harmful to public policy, deceptive marks and marks encouraging unfair competition. Relative grounds include marks harmful to third-party property rights and applications identical or similar to another party’s business name.

Registered trademarks may be cancelled by third parties on the same absolute and relative grounds available in oppositions within five years of the date of the trademark registration. There is no time limit to file a cancellation action against a trademark registration on the grounds that it has been filed in bad faith.

An additional ground for removal of a trademark from the registry occurs if there has been no use of the mark during the three years preceding the petition for removal.

Opposition and cancellation proceedings are similar and include:

  • the submission of detailed statements;
  • filing of evidence in the form of affidavits;
  • a cross-examination hearing before the registrar; and
  • written summations.

The registration of a trademark is not a condition for filing opposition or cancellation proceedings. Brand owners may attack trademark applications and registrations based on common law rights acquired through use of the trademark and on international goodwill attached to a trademark.

The range of costs associated with a third-party opposition or cancellation proceeding will vary on the merits of each case.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration may remain valid for an unlimited period, subject to renewal 10 years after filing and every 10 years thereafter. Renewal takes place on request and payment of the following fees:

  • $805 per renewal for single-class registrations; and
  • $805 for the first and $680 for each additional class renewed for multi-class registrations.

Following the renewal deadline there is a six-month grace period in which a registration may be renewed, subject to payment of belated renewal fees. However, when a mark is not renewed by the due date or within the six-month grace period (with payment of belated renewal fees), it is removed from the register and may no longer be renewed. At that stage, it is possible to request its reinstatement by filing a suitable affidavit, but such a request must be filed within six months. In other words, if more than a year has passed since the renewal date, it is no longer possible to renew or reinstate a lapsed registration.

Moreover, the cancelled registration is deemed valid for an additional six-month period and consequently may be cited during the examination of a new application.

Surrender

What is the procedure for surrendering a trademark registration?

The owner of trademark registration may voluntarily surrender it by filing a request with the Israel Patent Office.

The unilateral surrender of a registered trademark during cancellation or other contentious proceedings is not recommended since the trademark owner risks being ordered to pay costs to the applicant for cancellation. In such proceedings, it is recommended for the parties to file a joint notice to the Israel Patent Office requesting the withdrawal of the registration and termination of the proceedings without an order for costs.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Trademark registration does not preclude other IP protections such as copyrights and industrial designs.  

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The use of domain names or trademarks online which are identical or confusingly similar to a registered trademark or an unregistered well-known trademark constitutes infringement. In addition, the owners of unregistered trademarks (namely, brand owners that acquired common law trademark rights and goodwill through use of a trademark) are entitled to enforce their rights against the unauthorised use of trademarks online or domain names which are identical or confusingly similar under unfair competition laws (eg, passing off), as well as based on the circumstances, unfair interference with access to a trader’s business under Sections 1 and 3 of the Commercial Civil Wrongs Law 1999, respectively.

The Israel Internet Association provides an expedited procedure resolution for disputes concerning the allocation of domain names under the ‘.IL’ country code top-level domain filed or used in bad faith, including disputes with respect to domain names which are identical or confusingly similar to registered or unregistered trademarks.

Law stated date

Correct on

Give the date on which the information above is accurate.

1 November 2019.