The State of Israel is a western Asia country, and in 2017 the total exports in goods and services were US$102.3 billion, and the total imports were US$96.7 billion. To recognize the goods and services to the customers, exist the registration of the trademarks. The trademarks are letters, sound, colors, specific 3D shapes, video segments, devices, slogans, numbers, words, images, and symbols. When an owner registers a mark, the registry gives him the exclusive use of the mark concerning the goods or services for which It is registered. In Israel, the relevant trademark authority is the Israel Patent Office (Ministry of Justice), the trademark department in charge of trademark registration and performing adjustments on registered trademarks. The legal frame of the trademark is in the Trademarks Ordinance (New Version, 5732-1972), the commercial torts law (5759-1999), the trademark regulations (1940), and the merchandise marks ordinance (1929).
The Trademarks Ordinance (New Version,5732-1972)
According to the trademark ordinance, article 4 lays down the information that must be provided for the registration, such as the name, address and occupation of the proprietor of the mark, notification of assignments, transmissions, and authorizations, disclaimers, conditions and limitations, and in the case of international trademark registration in Israel, it will be necessary a notation of it being an international trademark. The minister of Justice must assign to a civil servant who is a qualified attorney the function of a District Judge (Intellectual property Adjudicator) to satisfy the Registrar’s judicial function (Article 5A).
To register a trademark must be a distinctive mark, but there are some restrictions the marks ineligible for registration:
- A mark referring to some connection with the President of the State.
- Flags and emblems of the State or its institutions
- Public armorial bearings, official signs, or seals used by any State to indicate control or warranty.
- Marks in which the following words appear: “patent,” “copyright,” “by royal letters patent,” etc.
- A mark that is identical to or resembles a well-known trademark that is a registered trademark.
The registration procedure was laid down in chapter 4 (Article 17-30) of the trademark’s ordinance. This is the procedure to follow:
- Examination of the application: the examiner review that all requirements are fulfilled such as filing a power attorney, the payment of fees, the description, and classifications of goods or services. The Israel Patent office examines the mark on relative grounds and absolute grounds.
- Publication of the application for opposition purposes: once the application is accepted, the Registrar must advertise the application as received and any person within three (3) months from the advertisement file’s date with the Registrar a notice of objection to the registration of the trademark. One of the grounds for objection to the registration of a trademark is claims to be the mark’s proprietor. The process for the opposition process is:
- The submission of a complete declaration.
- Filling of evidence in the form of affirmations.
- A cross-questioning hearing before the Registrar.
- Written summaries.
- Registration of the mark: when an application has been accepted and the time for notice of objection has expired without any objection, the Registrar must register the trademark. The date on which the application for registration of the trademark was filed shall be entered as the registration date. Chapter 5 (Article 31-35) provides specifications about the duration and renewal of registration. The registration of a trademark must be valid for ten (10) years from the date of applying for registration. For the renewal of registration, before the expiration date, the Registrar must send the registered proprietor a notice of the date on which the registration date will expire and the conditions for payment of fees. The Fees must be paid within the six (6) months after the expiration date; in case of no settlement, the Registrar must remove the register’s trademark. Furthermore, the Registrar must make the changes in registration at the proprietor’s request (chapter 6), for example:
- Correct any error in his name or address.
- Enter any change in his name or address.
- Strike out any goods or classes of goods from those for which the trademark is registered.
- Enter in respect of the trademark, any disclaimer, or any memorandum which does not in any way extend the rights given by the existing registration
- Cancel the entry of the trademark in the register.
In Israel, there are three types of licenses for trademarks:
- Exclusive license: this license guarantees the exclusive right of use of the mark and forbids the mark’s owner from making use of the mark.
- Sole license: there is a guarantee of an exclusive right of use of the mark, but the owner of the mark can make use of the mark.
- Non-exclusive: it is a license that provides the right of use of the mark without restraining the right to use the proprietor of the mark or others on his behalf.
In the case of registration of Foreign Trademarks, if the Government has signed an agreement with the Government of Foreign State for the mutual protection of trademarks, and the Minister of Foreign Affairs has notified such fact, any person who has applied for protection of a trademark in that State, must be entitled to registration of his trademark under the Trademark ordinance in priority to other applicants. Furthermore, a person who has filed an application for registration of a trademark in a Member State may apply for the registration of the mark in Israel under the following provisions (chapter eight):
- The request for the application of the priority rule was filed together with the application for registration of the trademark in Israel.
- The application for the registration of the trademark in Israel was filed within six months from the date of filing the first previous application.
In conclusion, on May 31st,2010, Israel enters the Protocol Relating to the Madrid Agreement concerning the International Registration of marks (1989) by the World Intellectual Property Organization (WIPO). With this Protocol, an Israeli applicant can submit a single trademark application that can apply in over 90 countries worldwide. The WIPO is an international organization established in 1967. Its main objective is to promote industrial property’s worldwide protection (inventions, trademarks, and designs) and copyrighted materials. To know more about the legalities of the trademark you can visit Fotis International law firm.