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 SamisMs. Dodiva GrantMr. Eviatar Aron and Ms. Daphne Lazar

 

9. Licensing of Trademarks in Israel

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark license to be valid?

Yes. When filing an application to record a trademark license, the licensor must provide information about the commercial relationship between the licensor and licensee, including the degree of control by the licensor of the use of the trademark. In addition, the registrar may request conditions and limitations as he considers fit.

9.2 Must trademark licenses be recorded with the trademark office or other governing body?

Yes. A trademark license will not be valid against third parties unless it has been properly recorded on the Trademarks Register. 

If a trademark license is not recorded, this may have serious implications, including leaving the trademark registration vulnerable to cancellation on the grounds of non-use – for example, where the mark is not used by the registrant and is used only by the non-registered licensee.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the license, such as maintaining quality control?

Perhaps. If, as a result of the licensor’s failure to maintain quality control, the licensee uses the trademark in a way that does not accord with the registration, the registration may become vulnerable to cancellation on the grounds of non-use. This will be considered on a case-by-case basis.

Find the other parts in this series here:

From the Legal to the Practical: The Israel Trademark System Part 1

From the Legal to the Practical: The Israel Trademark System Part 2

From the Legal to the Practical: The Israel Trademark System Part 3

From the Legal to the Practical: The Israel Trademark System Part 4

From the Legal to the Practical: The Israel Trademark System Part 5

From the Legal to the Practical: The Israel Trademark System Part 6

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