S T A T E O F I S R A E L
TRADE MARKS ORDINANCE
(NEW VERSION), 5732 - 1972
Authorised Translation from the Hebrew
Prepared at the Ministry of Justice
TRADE MARKS ORDINANCE (NEW VERSION), 5732 - 1972
CHAPTER ONE: INTERPRETATION
Definitions 1. In this Ordinance -
“Mark” means letters, numerals, words, devices or other signs,
or combinations thereof, whether two-dimensional or three-
dimensional;
“Trade-mark” means a mark used, or intended to be used, by
a person in relation to goods he manufactures or deals in;
“Well-known trade mark” - a mark that is well known in Israel as a mark owned by a person that is a citizen of a member state, a permanent resident of such state or who has an active industrial or commercial business in such state, even if the mark is not a trade mark registered in Israel or if there are no users of the mark in Israel; for the purposes of determining whether a trade mark is a well-known trademark in Israel, the extent to which the mark is known in public circles relating to it and the extent to which it is known as a result of marketing, shall be taken into account, inter alia;
“Registered trade mark” means a trade mark registered in the
Register of Trade Marks under the provisions of this Ordinance;
“Service mark” means a mark used, or intended to be used, by a
person in relation to service rendered by him;
“Certification mark” means 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, their components, mode of manufacture, quality and any other characteristics, or to certify the nature, quality or type of a services in which he is interested;
“Collective mark” means 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;
“Infringement” means the use by a person not entitled
thereto -
(1) of a registered trade mark, or of a mark resembling such a trade
mark, in relation to goods in respect of which the trade mark is
registered, or to goods of the same description;
(2) of registered trade mark in advertising goods of the class in respect of which the mark is registered of goods of the same description;
(3) of a well known trade mark even if it is not a registered trade mark, or of a mark so similar to it as to be misleading in respect of goods for which the mark is well known or in respect of goods of the same description;
(4) of a well known trade mark which is registered, or a mark similar thereto, in respect of goods not of the same description, provided that such use could indicate a connection between such goods and the proprietor of the registered trade mark and the proprietor of the registered trade mark might be harmed as a result of such use.
“Union state” means a state which a member of the Union for
the Protection of Industrial Property under the Paris Convention
for the Protection of Industrial Property1) and includes territories
to which the Convention has been extended under section 16 bis
of the Convention;
“World Trade Organization” - the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994;
“Member state” - a state that is party to the Paris Treaty or a member of the World Trade Organization;
“Geographical Indication” means an indication that identifies in Israel goods as originating in a given geographical area of a member state, or a region or part thereof, where a given quality, characteristic or reputation connected with the goods is essentially attributable to its geographical origin.
Applicability 2. Save as otherwise provided, the provisions of this Ordinance
of provisions to which apply to trade marks shall apply mutatis mutandis to
service marks. Service marks, and every reference in this Ordinance to a trade
mark to goods shall be deemed to include a service mark or a
service.
Provision as to 3. Subject to the provisions of sections 14 and 15, a
certification mark certification mark and a collective mark shall be treated
and collective like a trade mark and a service mark, and every reference
mark. in this Ordinance to a trade mark or service mark shall
be deemed to include a certification mark and a collective
mark.
CHAPTER TWO: REGISTRATION OF TRADE MARKS
Register and 4. There shall be kept under this Ordinance a register
contents thereof for the registration of trade marks (herein after referred
to as “the Register”). Registration shall be according to
the following particulars:
(1) the name, address and occupation of the proprietor of the mark;
(2) notifications of assignments, transmissions and authorisations;
(3) disclaimers;
(4) conditions and limitations;
(5) any such other particular relating to registered trade marks as may be prescribed.
The Registrar 5. The Minister of Justice shall appoint a Registrar of
Trade marks (hereinafter referred to as “the Registrar:
under whose control the Register shall be kept.
Register to be 6. (a) The Register shall at all convenient times be open to
open to public. inspection by the public in accordance with regulations.
(b) A certified copy of any entry shall be given to any person
requiring the same payment of the prescribed fee.
CHAPTER THREE: ELIGIBILITY FOR REGISTRATION
Exclusive right 7. A person desirous of having the exclusive right to use some
to trade mark mark as a trade mark may apply for the registration of such
mark under the provisions of this Ordinance.
Marks eligible 8. (a) No mark is eligible for registration as a trade mark unless it for registration is adapted to distinguish the goods of the proprietor of the mark from
those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).
(b) In determining whether a trade mark 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 is registered or intended to be registered.
Limitations to 9. A trade mark may be limited in whole of in part to one
certain colours. or more specific colours, and in such case the fact that it is
so limited shall be taken into consideration by the Registrar
or Court having to decide on the distinctive character of
such trade mark. If and so far as a trade mark is registered
without limitations of colour, it shall be deemed to be
registered for all colours.
Scope of 10. (a) A trade mark must be registered in respect of particular application of goods or classes of goods. registration. (b) Any question as to the class within which any good fall
shall be determined by the Registrar, whose decision shall be final.
Marks incapable 11. The following marks are not capable of registration: of registration (1) a mark referring to some connections with the President of
the State of his household or to presidential patronage or a mark from which any 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 publicy 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;
(6A) a mark containing a geographical indication in respect of goods not originating in the geographical area indicated, if the geographical indication may be misleading as to the real geographical area in which the goods originated;
(6B) 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 trade mark 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 description, 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 12. The Registrar may refuse an application for registration of
with name of a trade mark identical with or resembling the name of business
other person. 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 13. Where a mark contains also a name or description of any goods,
description the Registrar may refuse to register it in respect of other goods; but
of goods. 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.
Registration of 14. (a) The Registrar may register a certification mark ifr he is
certification mark. satisfied that the proprietor of the mark is competent to
certify the characteristics to be designated by the mark.
(b) A certification mark is capable of registration even if
lacks distinctiveness as required by section 8 (a).
(c) A certification mark may be transferred only with the permission of the Registrar.
Registration of 15. (a) The Registrar may register a collective mark if he is
collective mark. satisfied that it is intended for use by members of the body of
persons concerned and that such body has control over the use of the mark by its members.
(b) For every purpose of this Ordinance, the use of a collective mark by a member of this body shall be deemed to be used thereof by the body, whether or not the body itself uses or intends to use it.
(c) A collective mark may be transferred only with the permission of the Registrar.
Registration of 16. (a) Notwithstanding the provisions of sections 8 to 11,
marks registered the Registrar shall not refuse to register a trade mark
abroad. Registered as a trade mark in its country of origin unless -
(1) registration of the mark in Israel will infringe rights acquired in Israel by another person; or
(2) the mark is devoid of any distinctive character; a trade mark shall not be disqualified from registration if it is different from the trade mark registered in its country of origin in a manner that does not alter its distinctiveness, and does not adversely affect its identity in the form in which it has been registered in the said country of origin; or
(3) the mark consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, place of origin, intended purpose, time of production or value of the goods; or
(4) the mark is customary in current language or in the bona fide and established trade practices in Israel; or
(5) the mark is contrary to public order or morality; or
(6) the mark is likely to deceive the public.
(b) For the purpose of a trade mark whose registration under this section is applied for, “country of origin” means the Union state in which the applicant has an effective and serious industrial or commercial establishment or, if he has no such establishment within a state as aforementioned, the Union state in which he has his domicile or, if he has no domicile within a state as aforesaid, the Union state of which he is a national.
(c) Where the Registrar accepts for registration a mark which would not have been registered but for the provisions of subsection (a), such fact shall be indicated in the publication of the application and in the register.
CHAPTER FOUR: REGISTRATION PROCEEDINGS
Application 17. Any person claiming to be the proprietor of a trade mark
used or intended to be used by him who is desirous of registering
the same shall apply in writing to the Registrar in the prescribed
manner.
Powers of 18. Subject to the provisions of this Ordinance, the Registrar
Registrar. may refuse an application or accept it absolutely of subject to
conditions, amendments or modifications, or to such limitations
as to mode or place of use or otherwise as he may think right to impose.
Appeal. 19. Where the Registrar refuses an application, his decision
shall be subject to appeal to the Supreme Court.
Errors and 20. The Registrar of the Supreme Court may at any time,
corrections. whether before of after acceptance, correct any error in or
in connection with an application or may permit an applicant
to amend his application upon such terms as they may think fit.
Requirement 21. (a) If a trade mark contains matter common to the trade or of disclaimer otherwise of a non-distinctive character, and it appears to the Registrar
or the supreme Court that the proprietor of the mark is not entitled to the exclusive use of such matter or of part thereof, they may, in deciding whether such trade mark shall be entered or shall remain upon the Register, as a condition thereof require that the proprietor disclaim any right to the exclusive use of such matter or make such othre disclaimer as they consider necessary in order to define his rights under the registration.
(b) A disclaimer under this section shall not affect any rights of the proprietor of the trade mark except such as arise out of the registration of the mark.
Cancellation of 22. (a) Where the applicant has not complied with a demand
applications. of the Registrar within the time prescribed by him, and the Registrar
has given the applicant notice in writing on the prescribed form, and three months have passed from the date of the notice and the applicant has still not complied with the demand, the Registrar may regard the application as void.
(b) The Registrar may extent the time prescribed under this section if he has been requested to do so in the manner and within the time prescribed by regulations and the applicant has given reasonable grounds for the request.
Advertisement. 23. When an application has been accepted, whether absolutely
or subject to conditions or limitations, the Registrar shall, as soon as possible after such acceptance and at the expenses of the applicant, advertise the application, as accepted, in the prescribed manner, specifying every condition and limitation subject to which it has been accepted.
Opposition. 24. (a) Any person may within three months, or within such other
time as may be prescribed, from the date of the advertisement, file with the Registrar a notice of opposition to the registration of the mark.
(a1) the following are causes for opposition to the registration of a mark:
1) there is a reason for which the registrar may, under the provisions of this Ordinance, refuse the application for registration;
2) the opponent, and the applicant, is the owner of the mark;
(b) The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.
(c) The Registrar shall send a copy of the notice to the applicant.
(d) The applicant shall send to the Registrar, in the prescribed manner and within the prescribed time, a counter statement to the opposition, setting forth the grounds on which he relies for his application.
(e) If the applicant does not send a counterstatement as aforesaid, he shall be deemed to have abandoned his application.
(f) If the applicant sends a counterstatement, the Registrar shall furnish a copy thereof to the person who has given notice of opposition and shall, after hearing the parties if so required, and subject to what conditions, registration is to be permitted.
Appeal. 25. (a) A decision of the Registrar under section 24(f) shall be
subject to appeal to the Supreme Court.
(b) An appeal under this seciton shall be made within thirty days from the date of the decision of the Registrar.
(c) In the appeal the Court shall, if required to do so, hear the parties and the Registrar and shall give a judgement determining whether, and subject to what conditions registration is to be permitted.
(d) During the hearing of the appeal any party may, either in the manner prescribed or by the special leave of the Court, bring forward further material for the consideration of the Court.
(e) The opponent or the Registrar may take no further grounds of opposition other than those stated by the opponent in the notice of opposition save the leave of the court which hears the appeal. Where any grounds are taken by leave as aforesaid, the applicant on giving notice as prescribed may withdraw his application without payment of costs of the opponent.
(f) The Court may, after hearing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting its identity. A mark so modified shall be advertised in the prescribed manner before being registered.
Registration. 26. When an application has been accepted and the time for notice
of opposition has expired without there having been opposition or,
there having been opposition, it has been decided in the favour
of the applicant. The Registrar shall on payment of the prescribed
fees, unless the application has been accepted in error or unless the
Court otherwise directs, register the trade mark.
Date of 27. The date on which the application for registration of a trade
registration. mark was filled shall be entered as the date of registration thereof.
Certificate of 28. On the registration of a trade mark, the Registrar shall issue
registration. to the applicant a certificate of registration in the prescribed form.
Rival claims to 29. Where separate claims are made by different persons to be
identical marks. registered as proprietors respectively of identical of similar trade
mark in respect of the same goods or description trade marks
in the respect of the same goods or description of goods, the Registrar
may refrain from registering any such persons until their rights
have been determined by agreement between them approved by
the Registrar. In the absence of such agreement, the Registrar
shall refer the dispute to the Supreme Court.
Current use. 30. (a) Where it appears to the Registrar that there is honest
concurrent use, or where are other special circumstances which in
his oppinion justify the registration of identical or similar trade marks
for the same goods or description of goods by more than one proprietor,
the Registrar may permit such registration subject to such conditions
and limitations, if any as he may think fit.
(b) A decision of the Registrar under subsection (a) shall be
subject to the Supreme Court. The appeal shall be filled within thirty
days from the date of the decision of the Registrar. In the appeal, the
Court shall have all the powers conferred upon the Registrar under
subsection (a).
CHAPTER FIVE: DURATION AND RENEWAL OF REGISTRATION
Period of 31. The registration of a trade mark shall be valid for ten years
validity of from the date of filling of the application and may be extended
registration. thereafter in accordance with the provisions of sections 32 to 35.
Renewal of 32. The Registrar shall, on application made by the registered
registration. proprietor of a trade mark in the prescribed manner and within
the prescribed period, renew the registration of such trade mark
for a period of fourteen years from the date of expiration of the
original registration or the last renewal of registration such date
hereinafter referred to as “expiration date”.
Notice of 33. (a) At the prescribed time before the expiration date, the
expiration. Registrar shall send notice in the prescribed manner to
the registered proprietor of the date at which the registration will expire
and the conditions as to payment of fees and other matters upon which
registration will be renewed.
(b) If the fees is not paid within six months after the expiration date, the Registrar shall remove the trade mark from the Register; however -
(1) if the fee is paid within the said six months, it shall be increased by a prescribed amount;
(2) if the Registrar is satisfied that it is just to do so, he may restore the registration, on such conditions as he may think fit, upon payment of the unpaid fee and the prescribed additional fee.
Unrenewed 34. Where a trade mark has been removed from the register
trade mark. for non-payment of the fee for renewal, such trade mark shall
nevertheless, for the purpose of any application for registration
during one year after such removal, be deemed to be registered
trade mark.
Restrictions on 35. The provisions of section 34 shall not apply where the
renewal. Registrar is satisfied either -
(1) that there has been no bona fide trade use of the trade mark during the two years preceding the removal; or
(2) that no description or confusion would be likely to arise from the use of the trade mark, which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.
CHAPTER SIX: CHANGES AND CONCELLATIONS
Change in 36. (a) The Registrar may, on request made in the prescribed
registration manner by the registered proprietor -
at proprietor’s (1) correct any error in his name or address;
request (2) enter any change in his name or address;
(3) strike out any goods or classes of goods from those for which the trade mark is registered;
(4) enter in respect of the trade mark any disclaimer or any memorandum which does not in any way extended the rights given by the existing registration.
(5) cancel the entry of the trade mark in the Register.
(b) Any decision of the Registrar under subsection (a) shall
be subject to appeal to at the Supreme Court.
Alteration of mark 37. (a) The registered proprietor of any trade mark may apply in
at proprietor’s the prescribed manner to the Registrar for leave to add to or alter such
request trade mark in any manner not substantially affecting its identity.
(b) The Registrar may refuse leave or may grant it subject to
such conditions and limitation as he may think fit. Any such refusal or
conditional or limited permission shall be appealable to the Supreme Court.
(c) If leave is granted, the trade mark as altered shall be
advertised in the prescribed manner.
Rectification 38. (a) Subject to the provisions of this Ordinance, any person
of Register. aggrieved by the non-insertion or omission from the
Register without sufficient cause, or by any entry wrongly
remaining on the Register, or by any error or defect in any
entry in the Register, may make application in the prescribed
manner to the Supreme Court or may, at his option, make
such application in the first instance to the Registrar.
(b) The Registrar may, at any stage of the proceedings refer
the application to the Supreme Court, or he may, after
hearing the parties, determine the question between them
subject to appeal to the Supreme Court.
(c) The Supreme Court may, in the proceeding under this
section, decide any question that it may be necessary or
expedient to decide in connection with the rectification of
the Register.
(d) In the case of fraud in the registration, assignment or
transmission of a registered mark, the Registrar may him-
self apply to the Court under the provisions of this section.
Removal of mark 39. (a) An application under section 38 for the removal of a trade
from Register. mark from the Register on the ground that it is not eligible for
registration under sections 7 to 11 of the Ordinance, on the ground that
the mark creates an unfair competition in respect of the applicant’s right in Israel, must be made within five years of the issue of the certificate of registration under section 28.
(a1) Notwithstanding the provisions of sub-section (a), an application for removal of a trade mark on the grounds that the application for registration of the mark was filed in bad faith may be filed at any time;
(b) Notwithstanding the provisions of subsection (a) -
(1) a trade mark of a non-resident registered in the country of origin shall not be removed from the Register save on grounds which under section 16 preclude registration;
(2) a trade mark of a non-resident which is not eligible for registration under the provisions of sections 8 to 11 and which has been registered under the provision of section 16 may be removed from the Register at any time on any of the grounds precluding its registration under the provisions of sections 8 to 11 when it is no longer registered in the country of origin; nothing in this provision shall prevent the proprietor of the mark from providing that at the time of application for removal the mark would have been eligible for registration upon application by a resident of Israel.
Procedure for 40. Where the Court orders the rectification of the Register, it
rectification shall direct that notice of the rectification shall be served upon the
of Register. Registrar by the successful party, and the Registrar shall, upon receipt
of the notice, rectify the Register in accordance with the order.
Cancellation of 41. (a) Without prejudice to the generality of the provision of
registration on sections 38 to 40, application for the cancellation of the Registration
grounds of of a trade mark may be made by any person interested on the ground
non-use. that there was a bona fide intention to use the trade mark in connection
with the goods for which it is registered and that there has been in fact
no bona fide use of the trade mark in connection with those gods, or
that there had not been any such use during the three years preceding
the application for cancellation.
(b) The provisions of subsection (a) shall not apply where it is proved that the non-use is due to special circumstances in the trade and not to any intention not to use, or to abandon, the mark in respect of the said goods.
(c) For the purpose of this section, there shall be deemed not to have been bona fide use of the trade mark in the event of any of the following:
(1) use of the trade mark in Israel in advertising only whether in the local press or in foreign newspapers reaching Israel unless there are special circumstances which in the opinion of the Court or the Register justify the non-use of the mark on goods in manufacture or sold in Israel.
(2) cancellation of an authorisation to use the mark given to a manufacturer in Israel under section 50 unless the authorisation is cancelled following an infringement of conditions or because the person who gave the authorisation intends himself to manufacture the goods for which the mark is to be used or to grant the authorisation to another manufacturer in Israel.
(d) Application for cancellation may be made in the prescribed
manner either to the Supreme Court or, at the option of the applicant, may be made in the first instance to the Registrar.
(e) The Registrar may at any stage of the proceedings refer the application to the Supreme Court, or he may, after hearing the parties, determine the question between them subject to appeal to the Supreme Court.
(f) in this section, “use” of a trade mark shall include -
1) use of a registered trade mark by it proprietor or by an authorized person under section 50 in a manner that differs from that noted on the register in such a way as not to change the distinct character of the mark as it is registered;
2) use by an autorized person under section 50 on condition that such use is subject to the control of the proprietor of the mark.
Registrar to have 42. (a) In any legal proceeding in which the relief sought includes
notice of alteration or rectification of the Register, the Registrar shall
proceeding for have the right to appear and be heard and shall appear it so
rectification. directed by the Court.
(b) Unless otherwise directed by the Court, the Registrar in lieu of appearing and being heard may submit to the Court a statement in writing signed by him giving particulars of the proceedings before him or of the grounds of any decisions given by him in relation to the manner at issue or of the practice and procedure of the office in like cases or of other matters relevant to the issue, and within his knowledge as Registrar as he shall think fit, and a statement as aforesaid shall be deemed to be evidence in the proceeding.
Regulations as to 43. The Registrar may, with the approval of the Minister of
adaptations of Justice, make such regulations,, prescribe such forms and
entries to new generally do such things as he thinks expedient for empowering
classification. him to amend the Register, whether by making or expunging
or varying entries therein, so far as may be requisite for the
purpose of adapting the designation therein of the goods of
classes of goods in respect of which trade marks arre registered
to any substituted or amended classification thay may be prescribed.
Adaptation of 44. (a) The Registrar shall not, in exercise of any power conferred
entries. on him by section 43, make any amendment of the Register that would
have the effect of adding any goods to those in respect of which a trade
mark is registered (whether in one or in more classes) immediately
before the amendment is to be made, or of antedating the registration of
a trade in respect of any goods.
(b) The provisions of subsection (a) shall not have effect in relation to goods as to which the Registrar is satisfied that compliance with the said provisions would involve undue complexity and that the addition or the antedating would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.
Procedure for 45. (a) the Registrar shall notify any proposal for the amendment
adaptation of of the Register by virtue of his power under section 44 to the registered
entries. proprietor of the trade mark affected, and the registered proprietor may
appeal against such proposals to the Supreme Court. The proposal, with
any modifications, shall be advertised.
(b) A person who considers himself aggrieved by the proposed
amendment may oppose it before the Registrar on the ground that it
contravenes the provisions of section 44, and the decision of the
Registrar on the opposition shall be subjected to appeal to the Supreme
Court.
CHAPTER SEVEN: RIGHT OF PROPRIETOR OF TRADE MARK
Right to 46. (a) Subject to any conditions of limitations entered in the
exclusive use Register, the valid registration of a person as proprietor of a trade mark
shall give him the right to exclusive user of such trade mark upon, and
in every matter relating to, the goods in respect of which it is registered.
(b) Where several persons are registered proprietors of the
same goods, each of them shall have the same rights as if he were the
sole registered proprietor of such trade mark shall be acquired by any
one of such persons as against any other by the registration thereof
except in so far as their respective rights have been defined by the
Registrar or the Supreme Court.
Exclusive use 46A. (a) The proprietor of a well known trade mark, even if it is
of a well- known not registered trade mark, shall be entitled to the exclusive use
trade mark of the mark in respect of the goods for which the mark is well
known in Israel or in respect of goods of the same description.
(b) The proprietor of a well known trade mark that is a registered trade mark shall also be entitled to the exclusive use of that mark in respect of goods which are not of the same description if use of that mark by a person other than the proprietor would be likely to indicate a connection between the said goods and the registered proprietor of the mark, and the registered proprietor is likely to be damaged by such use.
Protection of 46B. A mark that is not a registered trade mark shall be considered,
trade marks for the purposes of goods shown at an official or officially recognized
used in international exhibition held in Israel, as a registered mark for the
exhibitions duration of the term in which the exhibition is held.
Saving of 47. Registration under this Ordinance shall not prevent any
genuine use. genuine use by a person of his own name or the name of his
business or the geographic of his place of business, name of the place
of business or the name of the place of business of any of his
predecessors in business or the use by any person of any genuine
description of quality of his goods.
Transfer of 48. (a) A registered trade mark may be assigned by the proprietor
trade mark thereof, or pass by operation of law, either with or without the goodwill
of the business concerned in the goods for which it has been registered.
However, the Registrar may refuse to register a transfer as aforesaid if,
in his opinion, the mark by the transferee is likely to deceive the public
or it, in his opinion, the transfer is contrary to public order.
(b) For the purpose of subsection (a), the trade mark for the
registration of which an application is pending shall be deemed to be a registered trade mark.
Registration of 49. (a) Where a person becomes entitled to a registered trade
transfer mark by assignment or by operation of law, he shall apply to the
Registrar to register his title and the Registrar shall, on proof of
title to his satisfaction, register him as the proprietor of the trade
mark and shall make entry in the Register, in the manner prescribed, of
the transfer or of any instrument relating to the title.
(b) Any decision of the Registrar under this section shall be
subject to appeal to the Supreme Court.
(c) Except in cases of appeals under this section, a document
or instrument in respect of which no entry has been made in the
Register under this section shall not be admitted in evidence in any
court in proof of the titla to a trade mark unless the Court otherwise
directs.
Authorisation 50. (a) The proprietor of a registered trade mark may authorise
to use mark. another person (in this ordinance referred to as an “authorised person”)
to use such trade mark in relation to all or any of the goods in respect of
which it is registered.
(b) An authorisation shall not be valid unless it has been
registered under the provisions of this section, and the Registrar may register it subject to such conditions and limitations as he may think fit.
(c) So long as the authorised person uses the mark in relation
to the goods, in the course of his business, in accordance with the authorisation and subject to any conditions and limitations attached thereto, his use of the mark shall be deemed to be exclusive use thereof by the proprietor thereof.
(d) The Registrar may register an authorisation if it has been
proved to his satisfaction that the use of the trade mark in relation to the
goods in respect of which registration is applied for is not contrary to
public order and is not likely to deceive.
Application for 51. (a) An application, in the prescribed for, for the registration
registration of of an authorisation shall be submitted by the proprietor of the mark
authorisation. and by the person to be registered as the authorised person and shall
indicate, inter alia -
(1) the relationship between the proprietor of the mark and the person to be registered as the authorised person, including the extent of the control of the proprietor of the mark over the use thereof by the authorised person;
(2) the goods in respect of which the authorisation is sought;
(3) the conditions of limitations which are to apply to use of the mark by virtue of the authorisation if the same is registered;
(4) the period of validity of the authorisation if its registration is requested for a determinate period.
(b) The Registrar may demand any document, evidence or particular which appear to him to be useful in determining the application.
(c) Particulars as referred to in subsections (a) and (b), other than particulars to be registered, shall not be open to inspection by the public.
Variation and 52. (a) The Registrar may, on application by the proprietor of
cancellation of the mark in the prescribed form, vary the registration of an
registration of authorisation, in regard to any matter relating to the goods to which
authorisation. the authorisation applies and to the conditions and limitations to which
is it subject.
(b) The Registrar may cancell the registration of an authorisation on application by the authorised person in the
pescribed form.
(c) The Registrar may cancel the registration of an authorisation if he has been requested so to do and in has been proved to his satisfaction that the existence of the authorization, or the use of the trade mark by the authorised person, is contrary to public order or is likely to deceive it.
(d) Before canceling an authorization or varying the conditions thereof under this section, the Registrar shall give every interest party an opportunity to be heard.
(e) Where the registration of a mark has been cancelled or removed from the Register any authorization given in respect thereof shall be void.
(f) The provisions of this section shall not derogate from the provisions of sections 38 to 49.
Continued use 52A. Notwithstanding the provisions of this Ordinance, where an
of a trade mark application for registration of a trademark is filed, or where a trade
mark has been registered in good faith, or where rights to a trade mark have been acquired through use in good faith, neither the eligibility of the mark for registration, the validity of the registration, nor the right to use such trade mark, shall not be prejudiced for the sole reason that the trade mark is identical or similar to a geographical indication or to a well known trade mark, provided that the application for registration of the trade mark, the registration of the trade mark or the acquisition of rights through use as aforesaid were effected prior to -
1) in the case of a well known trade mark - the day on which the trade mark become a well known trade mark;
2) in the case of a geographical indication - 1 January 2000, or the date on which the geographical indication became protected in the member state in which the geographical area indicated by the geographical indication is situated.
Right of appeal. 53. Decisions by the Registrar under sections 50 to 52 shall be subject
to appeal to the Supreme Court.
CHAPTER EIGHT: REGISTRATION OF FOREIGN TRADE MARKS
Protection by 54. (a) If the Government has signed an greeement with the
virtue of actual government of a foreign state for mutual protection of Trade marks,
agreement. and the Minister of Foreign Affairs has notified such fact, then so long \
as the agreement is in force, any person who has applied for protection for a trade mark in that state, or his legal representative or assignee shall be entitled to registration of his trade mark under this Ordinance in priority to other applicants, provided he filled his application within six months from the date on which he applied for protection in the foreign state.
(b) The provisions of subsection (a) shall not entitle the proprietor of the trade mark to recover damages for infringements which occurred prior to the date on which his trade mark was actually registered in Israel.
(c) The registration of a trade mark shall not be invalidated by reason only of its use in Israel during the six-months period referred to in subsection (a).
Priority 55. (a) A person who has filed an application for the registration
of a trade mark in a Member State, or the legal successor of such a person, may apply for the registration of the mark in Israel under the provisions of this section, and his application shall have priority over any application for registration filed after the date of filing of the application abroad.
(b) An application for registration under subsection (a) shall be filed within six months from the date of filing of the first application for registration of the mark.
(c) The provisions of this section shall not confer a right to damages for an infringement committed before the date of filing of the application for registration of the mark in Israel.
Filing of 56. An application for registration of a trade mark under section
application. 54 or 55 shall be made in the same manner as an ordinary application
under this Ordinance.
CHAPTER NINE: INFRINGEMENT
Action for 57. (a) The proprietor of a registered trade mark or the proprietor infringement. of a well-known trade mark may bring an action for infringement; the
Court shall not entertain an action for infringement in respect of an unregistered trade mark. However, in the case of a well-known trade mark, it may entertain an action for infringement of a mark even if it is not registered.
Usages to be 58. In an action for infringement, evidence shall be admitted of the
evidence. usages of the trade in respect of the get-up of the goods for which the
trade mark is registered and of any trade marks is registered and of any
trade marks or get-up legitimately used in connection with such goods
by other persons.
Relief. 59. (a) In an action for infringement, the plaintiff shall be entitled
to relief by way of injunction, and to damages in addition to any other relief which the court dealing with the case is competent to grant and be entitled to the remedies set forth in section 59A;
(b) for the purposes of an infringement relating to a well-known trade mark that is not a registered trade mark, the plaintiff shall be entitled to relief by way of injunction only;
Additional 59A. (a) The court may order, at the end of hearing the claim, one of
remedies the following:
1) the destruction of goods produced during the performance of the infringement or which served in performing the infringement (in this section - “the goods”);
2) where the plaintiff so requests, the transfer of ownership of the goods to the plaintiff, in consideration for payment of the value of them but for the infringement;
3) on the doing of any other thing in respect of the goods.
However, the court shall not allow the defendant to possess the goods, even if the defendant has removed the infringing marks, except in extraordinary cases.
(b) A party that files an application for the destruction of goods under this section shall notify the Israel Police Force of such in the manner prescribed in the regulations, and the court shall not hear such an application without giving the Police an opportunity to make claims.
CHAPTER TEN: PENALTIES
Offences. 60. (a) A person who commits any of the following acts shall be liable to imprisonment for a term of three years or a fine seven times the fine provided for in section 61(a)(4) of the Penal Law, 5737-1977 (hereinafter referred to as “the Penal Law”).
(1) applies on a commercial scale, without the permission of the proprietor of the mark or a person acting on his behalf, a registered trade mark or an imitation of such mark, to goods in respect of which the mark is registered in the Register or to the packaging of such goods, and which is likely to mislead any other person in this manner;
(2) imports on a commercial scale, without the permission of the proprietor of the mark or any person acting on his behalf, goods or their packaging marked with a trade mark registered in the Register in respect of such goods, or an imitation of the aforesaid mark, and the said mark is likely to mislead any other person; however, the provisions of this paragraph shall not apply in respect of goods marked with the permission of a person who is the proprietor of the mark in the country in which the mark was applied;
(3) engages in the sale, hire or distribution of goods marked or imported to Israel contrary to the provisions of paragraphs (1) and (2), or sells, lets for hire or distributes such goods on a commercial scale;
(4) is in possession of goods marked or imported to Israel contrary to the provisions of paragraphs (1) and (2) for the purposes of trading in such goods.
(b) Where an offence under subsection (a) is committed by a corporate entity, such corporate entity shall be liable to double the fine provided for the offence.
(c) A person passing on false information to the Registrar in connection with an application for registration of a mark in the Register shall be liable to imprisonment for a term of one year.
(d) (1) A senior officer of a corporate entity shall be obliged to supervise and take any action necessary to prevent any of the offences set forth in this section (hereinafter referred to as “an offence”) by a corporate entity or any of its employees. Where such officer is in breach of his aforesaid obligation he shall be liable to the fine stated in section 61(a)(4) of the Penal Law.
(2) Where an offence has been committed by a corporate entity or any of its employees, there is a presumption that the senior officer was in breach of his obligation under paragraph (1), unless it is proved that he took any action necessary to perform his aforesaid obligation.
(3) In this subsection, “senior officer” means an active manager of a corporate entity, a partner - excluding a limited partner - and an officer responsible on behalf of the corporate entity for the field in question in which the offence was committed.”
Injunction. 61. After a conviction of an offence under section 60 the Court
may in lieu or in addition to the prescribed penalties issue an injunction
against a repetition of the offence.
Order for 62. The court before which any person charged under section
forfeiture or 60 is brought may order the forfeiture of destruction of any goods
destruction. wrapping, packing or advertising material or blocks, dies and
other apparatus and material for printing the marks or other
materials in respect of which the offence was commited.
False 63. A person who represents a trade mark as registered which
representation is not so registered shall be liable to a fine of 750 pounds for
of mark. every offence. A person shall be deemed, for the purpose of
this section, to represent that a trade mark is registered if he
uses in connection with the trade mark the word “registered”
or any word expressing of implying that registration has been
obtained for the trade mark.
CHAPTER ELEVEN: EVIDENCE AND PROCEDURE
Registration 64. In all legal proceedings relating to a registered trade mark
to be evidence the fact that a person is registered as proprietor of such trade
of validity. mark shall be prima facie evidence of the validity of the
original registration of such trade mark and all subsequent
assignments and transmissions of the same.
Certificate of 65. A certificate purporting to be under the hand of the
Registrar. Registrar as to any entry or as to any thing which he is
authorised by this Ordinance or regulations made thereunder
to do shall be prima facie evidence of the entry having been
made and of the contents thereof and of the thing having been
done or not done.
Hearing of 66. Where any discretionary or other power is given to the
applicant. Registrar by this Ordinance or regulations made thereunder,
he shall not exercise that power adversely to the applicant
for registration or the registered proprietor of the trade mark
without, if required by him within the prescribed time so
to do, giving him an opportunity to be heard.
Evidence before 67. Subject to any regulation under this Ordinance, evidence
Registrar. is proceedings before the Registrar shall be by affidavit under section
15 of the Evidence Ordinance (New Version) 5732 -1971, or by
declaration made abroad under the law of the place where it is made, so
long as the Registrar does not otherwise direct; but the Registrar may, if
he thinks fit, take oral testimony in lieu of or in addition of written
evidence, and may permit the deponent or declarant to be
cross-examined.
Powers of Registrar 68. The Registrar shall have the powers of a magistrate
with regard to as to compelling a witness to attend before him and so
witnesses. hearing his testimony.
Costs. 69. In every proceeding before him, the Registrar may award
to a party such costs as he may consider reasonable.
Grant of notice 69A. (a) The proprietor of a registered trade mark whose rights
to Customs have been infringed, or where there is a reasonable suspicion that
Director. they will be infringed, may give notice in writing to the Customs
Director to the effect that he is the proprietor of the trade mark, and requesting the Director to delay releasing the goods that he claims are infringing goods and to treat them as goods the import of which is prohibited under the Customs Ordinance.
(b) A notice under sub-section (a) shall include one of the following:
(1) An example of the original goods in respect of which the applicant has rights in the trade mark and in respect of which he gives notice of the importation of infringing goods;
(2) A catalog or any other document that enables the Customs Director to compare original goods with the infringing goods.
(c) The proprietor of a registered trade mark shall provide the
Customs Director with the following information, to the extent that he has knowledge of it:
(1) The number of parcels to be received;
(2) Sufficient notation of means of importation or the name of the ship bringing the infringing goods;
(3) The date on which the infringing copies are meant to be received.
(d) The proprietor of the trade mark must provide the Customs
Director with primary evidence, and a personal guarantee, as prescribed by the Customs Director, in order to cover all expenses connected with detaining goods, or in order to compensate for any damage caused as a result of the detaining of goods, should it become apparent that the detention of the goods was unjustified, and to pay any fee prescribed for this purpose in the Customs Ordinance.
(e) The provisions of this section shall not apply to infringing goods imported for personal use as defined in section 129 of the Customs Ordinance.
CHAPTER TWELVE: FEES AND REGULATION
Fees 70. There shall be paid in respect of applications, registrations
and other matters under this Ordinance such fees as may be
prescribed by the regulations.
Regulations 71. The Minister of Justice may make regulations prescribing
by Minister. procedure in appeals, oppositions applications and references
to the Supreme Court, under this Ordinance.
Regulations 72. Subject to the provisions of this Ordinance, the Registrar
by Registrar. may, with the approval of the Minister of Justice, make
regulations prescribe forms and generally do such things
as he may think expedient -
(a) for regulating the practice under this Ordinance;
(b) for prescribing the fees payable under this Ordinance;
(c) for classifying goods for the purpose of registration
of trade marks;
(d) for making or requiring duplicates of trade marks and
other documents;
(e) for securing and regulating the publishing and selling
or distributing in such a manner as the Registrar thinks
fit, of copies of trade marks and other documents;
(f) for regulating every other item of the business of the
office in relation to trade marks and every other matter
placed by this Ordinance under the control of the Registrar.
YAAKOV S. SHAPIRO
Minister of Justice