Slogans

The Registrar has ruled that slogans are by their nature non-distinctive and un-registerable unless they have acquired a secondary meaning indicative of the nature and origin of the goods or services.

Colors

Under Section 9 of the Ordinance, a trademark may be limited in whole or part to one or more specific colors. According to a circular of the Registrar dated August 1999, in order to limit a mark to a specific color it is necessary to specify the color on the application form. The IPTO has also accepted several marks consisting of a single color. For example, Orange Personal Communications Services Limited, the telecommunications company, received a registration for the color orange in panemone shade. Yoplait® and Kapro Industries Ltd. have registered a distinctive shade of red for milk products and for spirit levels respectively.

Classification of goods & services

Israel uses the Nice Version of the International Classification. Currently separate registrations are required for each class. However, Israel acceded to the Madrid Protocol in 2008 and has amended the Ordinance to allow multiclass registrations. However, due to technical problems, the Madrid system of registration has not yet been implemented. Nevertheless, the Trademark Office has made significant progress in efficiency in the past year. This includes a new database allowing searching of graphic elements and paperless filing and prosecution. Implementation of the Madrid Protocol may be imminent.

Priority from a foreign application filed up to six months earlier may be claimed at the time of filing. If it is within three months of filing, the applicant submits a certified copy of the priority document and an English translation, if necessary. Criteria for determining rights in conflicting applications include good faith and extent of prior use, so the first to file is generally of only minor importance.

Examination

Israel is an examining country. A trademark application is examined within approximately 12 months from the filing date. It is possible to petition for accelerated examination of an application in the event of a likely infringement of the trademark or in other special circumstances. Once the ITO has considered and accepted the merits of such a petition, the preliminary examination will be completed within a month instead of the average period of 12 months.

In Israel, examination is conducted on absolute and relative grounds.

Absolute Grounds

For a trademark application to pass the examination process successfully, it is necessary to demonstrate that the trademark is distinctive, being neither generic, merely descriptive nor laudatory of the goods intended to be covered by the trademark.

The applicant may be required to disclaim the exclusive use of non-distinctive elements of a mark. Where a trademark application covers a wide list of goods, the examiner may request the applicant limit the list of goods to the actual goods within the applicant's scope of business.

Relative Grounds

As a general rule, Israel follows accepted guidelines and principles when deciding whether there is confusing similarity between rival trademarks. Generally, the Registrar acts as a neutral adjudicator. However, where contentious actions are initiated by a rival and then dropped, the Registrar may take an inquisitorial role to ensure that the public's rights are respected.

In deciding whether or not marks are confusingly similar, the appearance of the mark is examined, and where a word mark, the sound of the two marks is compared to assess similarity. Generally, the overall impression that the mark as a whole makes on customers is considered. It is accepted that the likelihood of confusion is affected by the class of customers, the classification of the goods and the distribution channels. Other relevant circumstances are considered, together with common sense considerations such as the etymology of the marks.

Interferences

Where different parties file identical or similar trademark applications for similar goods and services, the ITO may initiate proceedings when the conflicting applicants have three months to negotiate a coexistence agreement .based on evidence submitted by the parties. If a hearing is necessary the Registrar decides which application, if any, will prevail. The decision may be appealed to the Supreme Court.

Primary Use

There is no requirement to show actual use to register a mark, but lack of use over an uninterrupted period of three years following registration, can be used as grounds for revocation.

Secondary use

Extensive use and/or advertising in Israel may be used to show that an inherently non-distinctive mark has acquired secondary meaning. A parallel foreign registration in any Paris Convention country where the applicant has a serious and active commercial enterprise (Telle Quelle) may also be used as a basis for registration.

Oppositions

After acceptance by the ITO, applications are published in the Trademark Gazette for possible oppositions which may be filed within three months from the date of publication. If no oppositions are filed, or after a favorable ruling regarding an opposition, registration ensues and a certificate is issued.

Renewals

An Israeli trademark remains in force for an initial period of 10 years from the filing date. Renewals are currently for additional periods of 14 years. On implementation of the Madrid Protocol, renewal of trademark registrations are for periods of 10 years.

Registered trademarks may be licensed to third parties for any or all of the goods covered by the registered trademark. Such licenses must be registered with the ITO which has discretion to impose further conditions and limitations. Failure to register a license of a trademark can result in unregistered usage of the mark being considered as a lack of use by the mark owner or dilution due to usage by other parties. In this respect Israeli law differs from European Law. See EC Regulation 40/94, where authorized usage does not require registration.

Unregistered Marks

Although Israel Law has common law origins, there are no unregistered trademark rights per se. Nevertheless, in the A.Sh.I.R. Case, the Israel Supreme Court essentially recognized unregistered IP rights under the Law of Unjust Enrichment. In a recent decision regarding the trademark Apollo for electrical goods, the Adjudicator of Patents and Trademarks effectively accepted the existence of non-registered rights.

Customs

It is important to appoint an attorney of record in Israel for registered trademarks and not merely to rely on renewal services or to prosecute centrally under the Madrid Protocol if it is implemented, since the Customs Authorities will contact the agent of record in cases of importation of goods suspected as infringing registered trademarks. In such cases the attorney of record must act quickly and decisively or the goods will be released onto the market in a matter of days.

No closure

Once a mark has been registered for five years, there is an assumption of validity regarding flaws in the registration process. Israeli trademark issues are never considered closed since commercial activities by both the mark owner and competitors can lead to circumstances justifying a new hearing.