From the Legal to the Practical

The Israel Trademark System

 

A Question & Answer series dealing with legal questions about the Israel Trademark System, rights and obligations, and practicalities.

Series Editor: Aaron Lewin, Israel Attorney at Law, Head of Trademarks at JMB Davis Ben-David

Contributors: Ms. Miriam Samis, Ms. Dodiva Grant, Mr. Eviatar Aron and Ms. Daphne Lazar

 

  1. Registration procedure

3.1 Which governing body (g., trademark office) controls the registration process?

The Israel Trademark Office (ITO) – a division of the Israel Patent Office, which itself is a unit of the Israel Ministry of Justice.

3.2 What fees does the Trademark Office charge for an application, during prosecution and for issuance of a registration?

The current ITO filing fee is ILS 1,617 for the first class and ILS 1,214 for each additional class. No additional fees apply during prosecution or for publication and registration. However, there is an extension fee of ILS 74 per month.

3.3 Does the Trademark Office use the Nice Classification scheme?

Yes.

3.4 Are ‘class-wide’ applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

Class-wide applications are not allowed. The applicant must provide a specific list of goods or services for each class.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

No written statement to that effect is required as part of the application process, but such an intention is assumed.

3.6 Does the Trademark Office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

 Yes.

3.7 What types of examinations does the trademark office perform other than relative examination?

The ITO examines each application to ensure that it meets all of the formal and substantive requirements set forth in the Trademarks Ordinance.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Yes. The following is an abridged review of Articles 11.1–11.8 and 11.10–11.12 of the Trademarks Ordinance on absolute grounds for refusal:

      • marks that make a reference to the state’s president or inference to such;
      • marks that include state flags/emblems, flags, foreign state emblems or the symbols of international organisations;
      • marks that include public armorial bearings, official signs or seals used by any state to indicate control or warranty, or any indication that the owner enjoys the patronage of, or supplies goods or renders services to, a head of state or a government, unless proven;
      • marks that include terms such as “patent’, ‘patented’, ‘by royal letters patent’, ‘registered’, ‘registered design’, ‘copyright’ or ‘to counterfeit this is forgery’;
      • marks that would be injurious to public policy or morality;
      • marks that could deceive the public, that contain false indications of origin or that encourage unfair trade competition;
      • marks that are identical or similar to emblems of exclusively religious significance;
      • marks that include the representation of a person, unless the consent of that person has been obtained;
      • marks that include numerals, letters or words which are in common use in trade, unless they have a distinctive character;
      • marks that include a geographical signification or a surname; and
      • marks that identify a wine or an alcoholic drink containing a geographical signification, where the goods are not from that same geographical area.

 

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

There is no official mechanism for this. However, an opposition can be filed within three months of publication of a notice of allowance.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

No.

3.12 How much time does it typically take from filing an application to the first office action?

About four to six months.

3.13 How much time does it typically take from filing an application to publication?

About eight to 12 months.

 

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