A registered trademark may be cancelled in case a petition for cancellation has been filed. This could be done for various reasons.
Who Can File a Petition for Cancellation?
Any person who has been damaged by the registration of a trademark may file a petition for cancellation.
Time Limit for Filing a Petition for Cancellation
A petition for cancellation of a registered trademark may be filed within five years from the date of issuance of the registration certificate.
However, A petition for cancellation of a registered trademark may be filed at any time if the application for registration of the trademark was filed in bad faith.
Grounds for Cancellation
Section 39(a) of the Trademark Ordinance lists two main grounds for cancellation:
(1) The trademark is not eligible for registration under sections 7 to 11 of the Ordinance.
(2) The registration of the trademark causes unfair competition with the plaintiff’s rights in Israel.
The Burden of Proof
Once a trademark has been registered, it automatically enjoys the presumption of validity and registrability. Therefore, once a cancellation petition has been filed, the burden of proof is on the party requesting the trademarks’ cancellation.
Cancellation due to Non-Use
The trademark does not have to be in use prior to its registration. However, the trademark must be used commercially by its registered owner once it has been registered. Failure to do so may result in its cancellation on the grounds of non-use, as stated in Section 41 of the Trademark Ordinance.
As previously mentioned, if a registered trademark has not been in use by its registered owner for a period of three consecutive years from the date of registration – it may be cancelled on the grounds of non-use. In order to prove the use of a trademark, actual commercial use is required. If one shows mere advertising without any sales, it will not be sufficient. The same goes for any sporadic or token use. However, if the owner is able to show that special circumstances in trade have prevented him from using the trademark (i.e., wars, restrictions on imports/exports and so forth) – these arguments can be used as his defense for his lack of use.
The Process of Cancellation
Both the District Courts of Israel and the Trademark Registrar hold the authority to cancel the registration of a trademark due to lacks prerequisites for protection as described above .
The process of cancellation is quite similar to a “mini-trial”:
In order to file a cancellation, one must first file a “Notice of cancellation” The trademark owner will respond to this notice (“Counter-Statement”). Failure to do so will result in the trademark’s dismissal.
Each party will then need to present its supporting evidence (affidavits, consumer testimonies, surveys, expert opinions, advertisements, and so forth). Both parties and witnesses will then testify and will probably be cross-examined. Each party will present their written summations and finally, the Registrar or the Court will decide whether or not to accept the cancellation.
Appeal
If any of the parties is interested in challenging the Registrar’s decision, they may file an appeal to the District Court.
If you have any questions about Trademark Cancellation in Israel, please contact us at office@dwo.co.il.
