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Registration of marks

i Inherent registrability

Any legal entity may apply for the registration of a trademark; that is, any physical person or any kind of corporation, such as a company, partnership or society. Any mark that is capable of distinguishing the goods or services of the applicant from the goods or services of others may be the subject of a trademark application.

A mark is defined as letters, digits, words, images or other signs, or a combination of these, in two or three dimensions. These may include words, logos, pictures, devices and sounds.

Trademark application goes through substantial examination both for absolute and relative grounds. The applicant may argue with any objection raised by the examiner and is also entitled to request an oral hearing before the registrar.

It usually takes around 12 months to obtain a registration if there are no substantial objections raised by the examiner. This period includes the three-month opposition period. Multiple-class application is allowed in Israel (it was introduced into Israeli law when the Madrid Protocol came into force in 2010).

The official fee for filing an application in one class is 1,623 new Israeli shekels, and is 1,219 new Israeli shekels for each additional class. It is possible to apply for accelerated examination if the applicant can convince the registrar of the urgency in obtaining a registration. An official fee of 762 new Israeli shekels has to be paid and the application for acceleration should be supported by an affidavit.

There are no additional official fees. Professional fees for filing an application are usually charged as a fixed price and the prosecution of the application is usually charged on an hourly basis.

ii Prior rights

The Israeli Trademark Office will examine an application on relative grounds and will cite conflicting Israeli-registered trademarks against the application. If the examiner finds a pending but not yet accepted application for an identical or confusingly similar mark, applying for the same goods or goods of the same description, he or she will apply the provisions of Section 29 of the Trademarks Ordinance, under which the parties have to try to reach an agreement regarding the co-existence of their marks on the register; such an agreement is subject to the approval of the registrar. If no agreement is reached, the registrar will conduct rival application proceedings and decide whose application should prevail, and proceed with examination. In deciding whose rights to the mark prevail, the main criterion is the extent of actual use of the mark, while the filing dates of the rival applications are of less importance. The registrar will also check whether each of the applicants chose his or her mark in good faith.

iii Inter partes proceedings

Any person may oppose registration within three months of the date of publication of acceptance in the Trademarks Journal. The notice of opposition and the statement of case setting out the grounds for the opposition must be answered by the applicant within two months. Evidence in the form of affidavits and expert opinions may be filed by each party. The opponent is entitled to submit evidence in reply. Cross-examinations take place in an oral hearing before the registrar, and a reasoned decision will be given after the parties have submitted written summations.

Revocation of a registration may be initiated by any aggrieved third party. A revocation action based on the ineligibility of the registered mark, or on the grounds that the registration creates unfair competition in respect of the petitioner’s rights in Israel, must be filed within five years of the date of registration. A revocation action claiming that the application for registration was filed in bad faith may be filed at any time.

There is no limitation on the period in which a cancellation action based on non-use may be filed. Any interested person may initiate such an action if no use of the mark is made for three consecutive years from the date of registration. The procedure for revocations or cancellations is similar to that for oppositions.

iv Appeals

If an application is finally denied by the registrar or hearing officer, an appeal may be lodged within 30 days to the district court.

Appeals against registrar or hearing officer decisions in oppositions or revocation actions should be filed to the district court within 30 days, and are heard by one judge. In order to contest a decision of the district court in an appeal against the registrar’s decision, leave to appeal should be filed to the Supreme Court within 30 days of the decision, and the Supreme Court will only hear the appeal if leave is granted.