After the Israel Patent Office accepts an application to register a trademark, its acceptance is published in the Israeli Trademarks Journal. Publication allows a third party to oppose the registration before the Registrar of Trademarks. The mark has passed initial examination but has not yet completed registration. For international brand owners, this is a critical stage for preventing registration of conflicting marks in Israel.
Trademark opposition in Israel is governed by Sections 24–25 of the Trademarks Ordinance [New Version], 5732-1972, and the Trademarks Regulations, 1940. The proceeding is adversarial and can involve pleadings, affidavits, documentary evidence and cross-examination. It differs from ordinary trademark examination, which takes place between the applicant and the Office before acceptance.
What Is the Deadline to Oppose a Trademark in Israel?
Under Section 24(a), an opposition must be filed within three months from publication of the acceptance in the Trademarks Journal. The period runs from the official publication, not from the filing date or the date on which a foreign proprietor receives a private notification.
International trademark owners should therefore monitor accepted marks and check the application number, representation of the mark and specification of goods and services. A late challenge may require a different post-registration procedure, which has separate grounds and time limits.
For official searches, see the Israel Patent Office’s trademark search system. Its official opposition filing service describes electronic submission and applicable filing arrangements.
Who May File a Trademark Opposition and on What Grounds?
Section 24 permits any person to oppose, but the notice must identify a legally relevant basis. Section 24(a1) permits an opposition where the Registrar could refuse registration under the Ordinance or where the opponent claims proprietorship of the mark.
Potential grounds include confusing similarity with an earlier mark, lack of distinctive character, descriptive matter, misleading signs, protection of well-known marks, other statutory bars to registration or an ownership dispute concerning the proposed mark.
An opponent relying on unregistered rights should explain the factual basis for those rights, including earlier use and goodwill where applicable. An applicant opposing a claimed earlier registration may need to address whether the asserted earlier mark is registered in Israel, which goods or services it covers and whether other statutory rights apply.
The fact that an international competitor uses a similar word or design does not by itself determine registrability in Israel. The grounds should be pleaded by reference to the actual statutory requirements and Israeli market circumstances.
How Do Israeli Authorities Assess Confusing Similarity?
Section 11(9) addresses registration of marks identical or confusingly similar to certain earlier marks for the same goods or goods of the same description. Similarity is assessed through the overall appearance and sound of the signs, the nature of the relevant goods or services, the expected customers and methods of marketing, and other relevant circumstances.
Sharing a word or set of letters does not conclusively establish confusion. The distinctiveness of the earlier mark, how the marks are encountered and the purchasing process may change the result.
In the opposition involving application No. 302659, Cylance, Inc. v. Cylus Cyber Security Ltd. (Deputy Registrar Jacqueline Bracha, 24 June 2021), an opposition to CYLUS based on the earlier CYLANCE mark was dismissed. Despite certain visual and phonetic similarities, the nature of the services, customer profile and purchasing circumstances did not support a likelihood of confusion sufficient to deny registration on the record presented.
By contrast, in Micha Danziger v. Shmuel Mor, Israeli Supreme Court, Civil Appeal 1611/07 (23 August 2012), the Court accepted an appeal involving the mark MORE STARS, assessing the potential confusion with MILLION STARS and LUCKY STARS in the flower business. The case illustrates how the nature of the goods and their marketing context can be decisive alongside the signs themselves.
For enforcement litigation, the distinction between confusing similarity and other claims is discussed in Trademark Infringement Litigation in Israel.
Oppositions Based on Well-Known Trademarks
A foreign brand may assert that its trademark is well known in Israel even if its registration position differs from that of a conventional locally registered mark. Recognition is not established merely by presenting impressive global sales figures or international media coverage. Evidence should address recognition of the specific mark among the relevant Israeli public and the goods or services for which protection is claimed.
In Gotex Swimwear Brands Ltd. v. Gotex S.A. (Registrar’s opposition decision, 23 June 2021), GOTTEX was recognized as a well-known mark in Israel. However, the opposition to GOTEX succeeded only in part, reflecting the scope of protection for the particular goods involved.
The case is important to multinational companies: proving that a brand is well known does not eliminate the need to define the relevant goods, the applicable statutory protection and the precise scope of the disputed registration.
Preparing and Filing the Notice of Opposition
An effective notice identifies the published application, the opponent’s earlier rights, the statutory grounds for refusal, supporting facts and the specific relief sought. It should explain why registration should be refused or limited for identified goods or services rather than state generally that the applicant “infringes the opponent’s rights.”
The notice is filed before the Registrar of Trademarks with the applicable official fee, which is assessed according to the classes of goods and services concerned. The current fee and online filing method should be confirmed using the official opposition service.
For foreign counsel, documents concerning international registrations, earlier national applications, Israeli sales, distribution arrangements and brand recognition should be gathered early, particularly where the opponent relies on rights beyond a straightforward earlier Israeli registration.
The Applicant’s Counter-Statement and the Risk of Abandonment
After an opposition is filed, the Registrar sends it to the trademark applicant. The applicant must submit a reasoned counter-statement within the applicable procedural period.
Section 24(e) provides that failure to respond as required results in the applicant being treated as having abandoned the application. An international applicant receiving an Israeli opposition should therefore treat the notice as a formal tribunal proceeding, not merely a commercial demand letter that can be left unanswered.
The counter-statement should answer the material grounds, identify the applicant’s position on use and ownership, and set out the factual issues that will be developed through the evidentiary stage.
Evidence, Affidavits and Witness Examinations
An opponent relying on earlier use or acquired distinctiveness may submit dated sales records, advertising, consumer-facing materials, distribution agreements, correspondence and evidence linking the mark to a particular commercial origin in Israel. A well-known-mark contention may call for information about market reach, duration, reputation and the relevant customer groups.
The applicant may respond with evidence concerning the history of adopting its mark, the goods and services, the actual sales channels, distinctiveness and differences between the signs and customers. Depending on the dispute, consumer surveys or expert evidence may help, but they are not mandatory in every opposition.
Following the opponent’s evidence, the applicant submits its evidence according to the procedural rules; reply evidence may be permitted in appropriate circumstances. Affiants and other witnesses may be examined at a hearing where necessary. Parties should not assume that significant unpleaded factual allegations can always be introduced for the first time in final submissions.
The strength of an opposition depends on proof of the specific asserted right and the contested likelihood of confusion, not simply the size of a foreign trademark portfolio.
Can an Opposition Be Limited to Certain Goods or Services?
Yes. The contested registration may create a problem for only part of an application. Where appropriate, the opposition can target particular classes or items, and a resolution may involve limiting the specification of goods and services rather than refusing the mark entirely.
The parties may negotiate coexistence or suitable restrictions, but agreement between businesses does not require the Registrar to register a mark that would mislead the public. Proposed terms must be assessed against actual commercial use and the public interest as well as the parties’ preferences.
Registrar Decisions, Costs and Appeals
After considering the submissions and evidence, the Registrar may allow the application, refuse registration, permit partial registration or impose appropriate limitations as authorized by the Ordinance. The Registrar may also order costs according to the circumstances.
Under Section 25, a Registrar’s decision in opposition proceedings may be appealed to the Israeli District Court within 30 days from the decision, subject to the statutory and procedural rules, including notification requirements. An appeal is not an unrestricted opportunity to create an evidentiary record that should have been assembled before the Registrar.
Opposition, Cancellation and Infringement Are Different Proceedings
Opposition under Section 24 challenges an accepted but unregistered application. Once a mark is registered, challenges are generally brought through the rectification, deletion or non-use cancellation procedures under Sections 38, 39 and 41. These have different grounds, standing requirements and time limits.
Where a competitor is already using a mark on the Israeli market, opposition alone does not resolve every infringement question. The proprietor may have a separate civil cause of action involving use, likelihood of confusion, passing off and remedies. See Trademark Cancellation and Revocation in Israel and Trademark Infringement Litigation in Israel.
Representation of Foreign Counsel in Israeli Trademark Oppositions
Drori Stav IP advises foreign trademark attorneys, international brand owners, applicants and opponents on pleadings, evidence and hearings before the Israeli Registrar. We also assist with coordinating Israeli opposition strategy with international registration and enforcement portfolios.
For the registration stage see Trademark Registration Process in Israel. For contentious representation, see Trademark Litigation in Israel. Further discussion of opposition proceedings appears in Yonatan Drori and Yotam Werzansky-Orland, Intellectual Property Law in Israel (2019), Chapter 2, Section 5.5, pp. 175–177.
