When different applicants file applications for identical or confusingly similar trademarks covering the same goods or goods of the same trade description, the Israel Patent Authority may open a proceeding under Section 29 of the Trademarks Ordinance. This is commonly described as a competing applications, rival applications or trademark interference proceeding.
For the broader registration procedure, see our Trademark Registration Process in Israel guide. For broader representation in competing applications and other contentious trademark matters, see our Trademark Litigation in Israel practice page.
When Does Section 29 Apply?
Section 29 applies where different persons have filed separate applications for marks that are identical or similar to a misleading degree, for the same goods or goods of the same trade description, and the later application was filed before the earlier application was accepted.
In that situation, the Registrar may refrain from accepting the applications until the applicants’ respective rights are resolved.
Can the Applicants Reach an Agreement?
Yes. The applicants may attempt to resolve the conflict by agreement. Any agreement intended to determine which applications may proceed is subject to approval by the Registrar.
A coexistence agreement is therefore relevant but is not automatically binding on the Registrar. The Registrar must still consider whether the proposed arrangement is consistent with the public interest and the prevention of consumer confusion.
What Happens if There Is No Agreement?
If the applicants do not reach an agreement, or the Registrar does not approve the agreement, the Registrar decides, with reasons recorded, which application will continue to be processed.
The proceeding is evidentiary. Each applicant may submit affidavits, documents and other evidence supporting its claim that its application should be preferred.
Factors Considered in Competing Trademark Applications
Israeli decisions under Section 29 have traditionally considered several factors, including the filing dates of the competing applications, the good faith of the applicants in adopting and filing the marks, and the extent of use and reputation associated with the marks in Israel.
The filing date is relevant, but it is not necessarily decisive by itself. The factual circumstances surrounding adoption of the mark, actual use in the Israeli market and the parties’ relative good faith may carry substantial weight.
Evidence in a Section 29 Proceeding
Useful evidence may include records showing when the mark was adopted, sales and distribution in Israel, advertising and promotional activity, customer exposure, market share, licensing arrangements, correspondence between the parties and evidence bearing on good faith.
Because the relevant comparison can depend heavily on the facts existing around the filing dates, contemporaneous records can be particularly important.
Honest Concurrent Use
Section 30 of the Trademarks Ordinance is a separate but related provision. Where the Registrar finds honest concurrent use or other special circumstances, the Registrar may permit registration of identical or similar marks by more than one proprietor, subject to conditions or limitations considered appropriate.
Honest concurrent use should not be confused with a Section 29 determination of which competing application should continue. The two provisions address different legal questions.
Appeal from a Section 29 Decision
A decision of the Registrar under Section 29 may be appealed to the District Court. Under the current text of the Trademarks Ordinance, the appeal period is 30 days from the Registrar’s decision.
Competing Applications vs. Trademark Opposition
A Section 29 proceeding concerns competing pending applications identified before registration. An opposition, by contrast, is filed by a third party after an application has been accepted and published.
For the latter procedure, see Trademark Opposition in Israel.
Israeli Counsel for Competing Trademark Applications
Drori Stav IP represents foreign trademark attorneys, IP firms and applicants in competing-application proceedings before the Registrar. We can assess the competing filings, advise on settlement or coexistence, prepare evidence and written submissions, appear at hearings and report directly to instructing counsel.
