After a trademark application in Israel is examined and accepted, it is published in the Israeli Trademark Gazette, allowing any interested person to file a notice of opposition against the registration of the trademark.
If no one opposes the registration of the trademark, the trademark will be registered and a Certificate of Registration will be granted.
Time limit for filing an opposition
A notice of opposition against the registration of a trademark may be filed within three months from the date of the trademark’s publication in the Israeli Trademark Gazette. There is no extension of the time limit for filing opposition.
Who can file an opposition?
Anyone who has a legitimate interest in the proceeding may oppose the registration of a trademark. An opposition may be filed by the applicant of an earlier filed trademark application or the owner of an earlier registered trademark, the owner of a well-known trademark or the owner of any other previously registered intellectual property rights such as trademarks, company names or domain names.
Grounds for Opposition
Section 24 of the Israeli Trademarks Ordinance lists two main grounds for opposition to register a trademark:
(1) There is due cause and by virtue thereof the Registrar is empowered under the provisions of the Ordinance to refuse the application for registration;
(2) The objector claims to be the proprietor of the mark.
There are various causes for refusal to register a trademark under the Ordinance, the primary of which include:
(a) Absence of use or intent to use the mark in Israel.
(b) Likelihood of confusion between the applicant’s trademark and another registered trademark.
(c) Misappropriation of a well-known mark.
(d) Descriptiveness of the applicant’s trademark.
(e) Unfair competition.
(f) Lack of distinctive character of the applicant’s trademark.
(g) Misleading marks, whether it be based on a geographical indication or otherwise.
(h) Likelihood that the registration of the mark will be contrary to public policy.
(i) The trademark application was not filed in good faith.
What are the stages of an Opposition proceeding?
1. Filing a Notice of Opposition – In order to file an opposition, the objector is required to file a “Notice of Opposition” stating the grounds for opposition and pay the official fee due for filing an opposition proceeding.
2. Filing a Counter-Statement – The applicant may respond to Notice of Opposition (“Counter-Statement”). Failure to do so will result in the application’s dismissal.
3. Filing of Evidence – After filing of the Counter-Statement, the objector is required to file its evidence in support of the grounds for the opposition. The evidence should be presented through an affidavit given by the relevant person in the objector and may include consumer testimonies, surveys, expert opinions, advertisements, financial reports and so forth. After receiving the objector’s evidence, the applicant is required to file its evidence in support of registration of the trademark.
4. Hearing – After both parties file their evidence, an oral hearing is scheduled, during which both parties’ witnesses are cross-examined.
5. Summation – At the end of the hearing, each party is required to present its summation, the objector being the first and the applicant follows. However, the Registrar may allow the parties to file their summations in writing at a later date.
6. Decision – After both parties have presented or submitted their summations, the Registrar issues a decision concerning the registration of the opposed trademark.
7. Appeal – In case any of the parties is interested in challenging the Registrar’s decision, they may file an appeal to the District Court within 30 days.
If you have any questions about trademark oppositions in Israel, please contact us at office@dwo.co.il.
