Any entity who claims to be a trademark owner in Israel or that he intends to use it in Israel, may file an application for registration of the trademark in Israel.
The trademark registration process is set forth in the trademarks Ordinance (New Version) of 1972, and in the Trademark Regulations of 1940.
Other normative sources:
- Paris Convention for the Protection of Industrial Property
- Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods
- Nice Agreement Concerning the International Classification of Goods and Services
- Lisbon Recognition Convention
Israel is a member in all of these conventions.
How to File a Trademark Application?
A trademark application must be made in the appropriate form filed to the Patent Office or through the online system of the Patent Office that allows the filing of a trademark without forms.
As part of one application, only one trademark can be protected, but the protection can be requested in relation to several classifications of goods or services, in accordance with the classifications of goods or services listed in the Fourth amendment to the Trademark Regulations. The classifications of goods and services requested must be specified in the form, in the space provided, and the details of the goods or services must be listed next to each class of goods or services.
The fees for filing a trademark application are calculated according to the number of classifications of goods or services for which the registration is requested (as specified in the First amendment to the Trademark Regulations). A certain fee for the first class and a reduced fee for the other classes included in the same application.
Expedited Examination of a Trademark
According to regulation 22 of the Trademarks Regulations, 1983, In special cases it is possible to request an Expedited Examination of the trademark application. In order to get an Expedited Examination of the application, a reasoned application must be submitted with an affidavit detailing the special circumstances that justify an Expedited examination. The relevant evidence must be attached to the affidavit, in addition to the fees set by law.
One of the main reasons justifying an Expedited examination is the concern that someone is making or may be making any use of the trademark.
Examination of the Trademark Application
The examination of the trademark application is technical and substantive.
The technical examination focuses on the question of whether the list of goods and services of the trademark and the classification of the trademark have been properly defined.
The substantive examination focuses on the question of whether the requested trademark has a distinctive character and whether it can be registered in accordance with the provisions od the Trademark Ordinance.
If deficiencies arise in the examination, the examiner sends an Office Action to the applicant and the applicant is required to respond to the Office Action within 3 months (extensions can be requested under appropriate conditions).
Publication for Opposition
If, on examination of an application for registration, it appears that the applicant is entitled to have his trademark registered, the trademark will be published in the Official Gazette for opposition. Any party who believes it may be damaged by registration of the trademark has three months from the publication date to file an opposition to registration.
Opposition for Registration of a Trademark
The notice of opposition should contain the grounds of opposition. The opposition procedure is regulated in the Trademark Ordinance and essentially similar to the procedure of an ordinary lawsuit in court (a procedure that includes evidence, hearing witnesses, summaries and a reasoned decision similar to a judgment).
Registration of International Trademarks According to the Madrid Protocol
According to the Paris Convention, a person who has filed a trademark application in a member state has the right to request a priority date for the application he files in Israel in respect of the same trademark and the same goods or services. An application claiming such a priority date must be filed within six months from the date of the first application in any member state.
Israel is a party to the Madrid Agreement Concerning the International Registration of Marks. Anyone who has filed a trademark application in Israel, or who owns a registered trademark in Israel, can rely on it and by filling a single international application, apply for registration of the trademark in all other member states.