Outlines for the treatment of trade marks applications
The principle role of the trademarks department is to register trademarks in Israel.
The registration of trade and service marks is governed by the Trade Marks Ordinance (new version) 1972, and the Trademarks Rules, 1940, as amended up in 1967.
Israel is a member of :
1. Paris Convention for the Protection of Industrial Property.
2. The Madrid Arrangement for the prevention of false indications of origin.
3. The Arrangement of Nice for the international classification of goods and service.
4. The Arrangement of Lisbon for the Protection of Appellations of Origin
DEFINITION
A trademark is a mark used or intended to be used by a person in relation to goods he manufactures or deals with. A service mark is a mark used or intended to be used by a person in relation to a service rendered by him.
CERTIFICATION MARK
A mark intended to be used by a person, other than a person carrying on a business, to certify the origin of goods in which he is interested, the components, mode of manufacture, quality and any other characteristics, or the type of services in which he is interested.
COLLECTIVE MARKS
A trade mark or service mark belonging to a body of persons interested in the goods or service which the mark is intended to designate and used or intended to be used by the members of that body in respect of such goods or services.
WHAT CAN BE REGISTERED
Letters, numbers, words, devices, or other signs, or combination thereof, whether two-dimensional or three dimensional, which are adapted to distinguish the goods or services of the proprietor from those of other persons. Marks may be registered in any language.
WHO MAY APPLY
Any person (or legal entity) desiring to have exclusive right to the use of a mark as a trademark, may apply for registration.
EXAMINATION
Application for registration are examined by the examiners of the department and are registered only if:
A. The mark is distinctive.
B. The mark is not descriptive.
GROUNDS FOR REFUSAL OF TRADEMARK APPLICATIONS
An application for a trademark may be refused for two broad categories of reasons:
1. Relative grounds for refusal concerning the relationship between the mark applied for and earlier trademark or earlier rights. A mark is registered only if it does not conflict with other marks.
2. Absolute grounds for refusal. Absolute in the sense that they are not dependent on any earlier trademark or earlier right. That means that a mark is registered only if the mark is distinctive and only if the mark is not descriptive.
NOT REGISTRABLE ON ABSOLUTE GROUNDS:
A. A mark referring to some connection with the President of Israel and to his patronage.
B. Flags and emblems of the State or its institutions.
C. Public armorial bearings, official signs or seals by any state.
D. A mark in which any of the following words appear: PATENT, PATENTED, BY ROYAL LETTERS PATENT, REGISTERED, REGISTERED DESIGN, COPYRIGHT, or words with the like effect.
E. A mark which is or may be injurious to public order or morality (for example curses, names of drugs).
F. A mark likely to deceive the public, a mark that contains a false indication of origin, and a mark that encourages unfair trade competition.
G. A mark identical with or similar to emblems of exclusive religious significance.
H. A mark on which the representation of a person appears without his permission.
I. 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 as defined in the law.
J. A mark whose ordinary signification is geographical or a surname, unless represented in a special manner or unless having a distinctive character as
defined in the law.
K. The Registrar may refuse an application for registration of trademark identical with or resembling the name or business name of another person, or containing a name identical with or resembling as above, if the mark is likely to deceive the public or to cause unfair competition.
RELATIVE GROUNDS FOR REFUSAL
L.A mark identical with one belonging to a different proprietor 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.
M. Lately - January 1, 2000 in accordance with the TRIPS agreement the definition of a well-known trademark was entered to the Trade Marks Ordinance, and these trademarks are not registerable by others in respect of goods for which the mark is well known even if the mark is not registered in Israel. If the mark is registered in Israel it is not registerable by others even for goods not of the same description.
REGISTRATION OF MARKS REGISTERED ABROAD
Applications for registrations of marks already registered in member state will not be refused for registration unless the registration will infringe rights in Israel of another person, or the mark is devoid of any distinctive character.
PARALLEL APPLICATIONS FOR THE SAME OR SIMILAR MARK
If more than one identical or similar application are filed by deferent applicants for goods/services of the same description, applicants may try to reach an agreement which will settle the registration of the parallel applications, or the matter will be heard by the registrar who will decide according to the evidences before him.
In case of honest concurrent user or other special circumstances which in the opinion of the Registrar make it proper so to do, the Registrar may permit the registration of trademarks which are identical or nearly resemble each other, for the same goods or description of goods by more than one proprietor, subject to any conditions and limitations the Registrar may impose.
CLASSIFICATION
Trademarks and services marks are registered in respect of specific goods or services. Classification of goods or services is identical with the International Classification of goods and services. Separate application is required for goods and services in each class.
DISCLAIMERS
If a trademark contains matter common to the trade or of otherwise of a non distinctive character, and the Registrar is of the opinion that the proprietor of the mark is not entitled to the exclusive use of such matter, He may conditioned the registration of the trademark requiring a disclaimer of exclusive right to the use of that common matter.
PRIORITY
In accordance with the Paris Convention, a person who has filed an application for the registration of a trade mark in a member state or a member of the World Trade Organization, may apply for the registration of the mark in Israel within six months from the filing of the first application, and his application shall have priority over any application for registration filed after the date of filing of the first application.
DOCUMENTS REQUIRED
1. Application form - an application for registration of a trade or service mark must be made on the prescribed form in which representation of the mark has to be inserted. A separate application is required to be made for goods or services in each class in which a mark is to be registered.
2. Power of attorney simply signed, since applicants residing abroad have to furnish an address for service in Israel, it is advisable for them to file their application through a local patent attorney or lawyer. A list of registered patent attorneys exists.
3. Priority documents (where applicable) which, if not in English, must be accompanied by a certified English translation.
IMMEDIATE EXAMINATION
Applications are examined in chronological sequence, however, an applicant may request that the search of his application be advanced provided he submits with the request an affidavit or declaration stating the grounds for the request for precedence.
PROCEDURAL TIME LIMITS
If an applicant fails to comply with the requirements of the Registrar within three months, the Registrar will give the applicant notice in writing, and after three months have passed from the date of the notice, if the applicant has still not complied with the requirements, the Registrar may regard the application as void. Further extensions are granted if requested before the end of the second term.
ADVERTISEMENT
After acceptance, the application will be advertised in the Trademarks journal, which is published monthly and published on the web site.
OPPOSITION
Any person may, within three months from the date of advertisement of an application, give notice in writing to the Registrar of opposition to the registration of a trademark.
REGISTRATION
If there is no opposition, the mark is entered in the Register for an initial period of seven years, and a certificate of registration is issued to the registered proprietor.
EFFECT OF REGISTRATION
The registration of a person as proprietor of a trademark will, if valid, give that person the exclusive right to the use of the trademark upon or in connection with the goods or services in respect of which it is registered.
DURATION AND RENEWAL
Trademarks or service marks are registered for a period of 10 years from date of application, with the privilege of renewal for period of 14 years.
USE
Non use of a mark for 3 consecutive years may give rise to the cancellation of the registration upon a request by an interested person.
ASSIGNMENT
A trademark application or registration may be assigned with or without the goodwill of the business concerned in the goods for which it has been registered.
LICENSE, REGISTERED USER
The proprietor of a registered trademark may authorize another person to use the mark in relation to all or any of the goods for which it is registered. Use by the registered user is considered to be use by the proprietor.
OTHER SERVICS GIVEN BY THE TRADEMARK DEPARTMENT
1. Before filling an application for registration of a trademark, a request may be made to the Registrar to cause a search to be made in any class in order to ascertain whether any marks are on record, which may resemble the proposed mark.
2. Produce of Priority documents and documents for legal procedures.
3. Maintaining an Internet site consisting of searchable database and enabling authorized applicants to file applications.