Trademarks Filing and Prosecution Israel

A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Israel IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.

In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Israel IP Office. In Israel, trademark protection is granted according to the provisions of Trademark Ordinance 5732-1972.

Trademark in Israel may be designated by the following symbols:

• ® (for a registered trademark)
• ™ (for an unregistered trademark)

A trademark typically consists of a name, word, phrase, logo, symbol, design, image, or a combination of these elements. In addition to conventional trademarks, Israel also allows the registration of non-traditional trademarks, which may include marks based on colour, smell, or sound.

A registered trademark grants the owner exclusive rights to use it in relation to the registered goods or services, or to authorize another party to use it in exchange for payment. Trademark protection helps prevent unfair competition, such as counterfeiting, by prohibiting others from using similar or identical marks to market inferior or unrelated products or services.

The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.

Trademark searches in Israel

A trademark search in Israel can be conducted for both word and device marks. It is advisable to carry out a search prior to filing a trademark application to determine the availability of the mark and to identify any prior identical or similar trademarks on the register. This helps to avoid objections or oppositions during the registration process.

Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Israel.  

Filing trademark applications in Israel

A person may file multi-class or single class trademark application in Israel.

 Trademark application can be filed in the following categories:

• Ordinary Applications
• Convention application (claiming priority from a convention country)

Ordinary application in Israel

Ordinary trademark applications filed in Israel are applications without claiming any priority. Multi class trademark applications may also be filed in Israel. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.    

Priority trademark applications in Israel /Convention trademark applications Israel:

A priority trademark application may be filed in Israel. A priority trademark application should be filed in Israel within 6 months after the date on which the application was made in the convention country.

Paris convention

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Israel within six months after the date on which the application was made in the Convention Countries.

Trademark classes for goods and services

Israel follows the nice classification of classes. Intellectual property office of Israel uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.

Trademark Examination in Israel

Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds of refusal. 

Marks eligible for registration

(a) No mark is eligible for registration as a trademark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons.

(b) In determining whether a trademark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.

Marks ineligible for registration

The following marks are not eligible for registration:

1. a mark referring to some connection with the President of the State of his household or to presidential patronage or a mark from which any such connection or patronage might be involved.
2. flags and emblems of the State or its institutions, flags and emblems of foreign states or international organisations, and any mark resembling any of these;
3. 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 signs 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;
4. 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;
5. a mark which is or may be injurious to public policy or morality;
6. a mark likely to deceive the public, a mark which contains a false indication of origin, and marks which encourages unfair trade competition;
   • a mark containing a geographical indication in respect of goods not originating in the geographical area indicated, if [inclusion of] the geographical indication [in said mark] may be misleading as to the real geographical area in which the goods originated;
   • a mark containing a geographical indication that is literally correct, however that contains a false representation to the effect that the goods originated in a different area;
7. a mark identical with or similar to emblems of exclusively religious significance;
8. a mark on which the representation of a person appears, unless the consent of that person has been obtained; in the case of representation of a deceased person, the Registrar shall request the consent of his survivors unless, in his opinion, reasonable grounds exist for not doing so;
9. a mark identical with one belonging to a different proprietor which is 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;
10. 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 within the meaning of section 8(b) or 9;
11. a mark whose ordinary significance is geographical or a surname, unless represented in a special manner or unless heaving a distinctive character within the meaning of section 8 (b) or 9;
12. a mark identifying wines or spirits that contains a geographical indication, if such wine or spirit did not originate in that geographical area;
13. a mark identical to, or misleadingly similar with, a well-known trademark even if the mark is not registered in respect of goods for which the mark is well known or in respect of goods of the same description;
14. a mark identical to or similar to a well-known trade mark being a registered trade mark, even in respect of goods not of the same class, if the mark sought to be registered might indicate a connection between the goods in respect of which the mark is sought and the registered proprietor of the trade mark, and the registered proprietor of the trade mark might be harmed as a result of using the mark sought.

Mark identical with name of other person

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 or resembling as aforesaid, if the mark is likely to deceive the public or to cause unfair competition.

Name or description of goods

Where a mark contains also a name or description of any goods, the Registrar may refuse to register it in respect of other goods; but he may so register it if in actual use the mark varies according to the goods for which it is used and the applicant adds a note to such effect in his application.

Trademark Opposition in Israel

Any interested person, within three months from the date of publication of the mark in the Official Bulletin, has the right to file to the Controller an opposition to the registration of the mark. Please note that the deadline can be extended up to 90 days.

Trademark registration in Israel

After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.

Trademark Renewal in Israel

You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.