FAQ - Trademarks
Yes, a trademark licensee must be recorded in the Israeli Trademark Register in order for the license to be valid and for the use of the mark by the licensee to accrue to the registered owner. This is the case even if the licensor and the licensee are affiliated companies.
The Office offers identical searches (for identical marks, covering all classes), as well as similarity searches (in each class separately). In addition, the Office offers a search by owner’s name (covering all classes).
Searches may also be conducted in the online computerized database of the Israeli Trademark Office by any person.
A trademark registration does not automatically lapse due to non-use, and no declaration of use is ever required upon official initiative. However, if a registered trademark is not used for a consecutive period of three years, or if there was no genuine intent to use it, the registration becomes vulnerable to cancellation on the grounds of non-use, upon request by an interested third party.
Formality issues, classification and wording of the goods and services, inherent registrability (absolute grounds) and prior rights (registered or not; relative grounds).
Marking is not compulsory. Trademarks may be marked, at will, with the TM symbol (TM), regardless of whether they are registered or not. Additionally, registered marks may be marked with ®. Please note, however, that marking of non-registered trademarks with ® is a criminal felony.
These include letters, numerals, words, devices or other symbols or combinations thereof, whether two-dimensional or three-dimensional, including labels, shapes of products and packaging, color shades and sounds.
An opposition is a legal proceeding which aims to prevent a trademark’s registration. The trademark registrar or a trademark office adjudicator oversees opposition proceedings.
Any person or business may oppose an application to register a trademark on absolute and relative grounds. Absolute grounds include descriptiveness, marks harmful to public policy, deceptive marks and marks encouraging unfair competition. Relative grounds include marks harmful to third party property rights and applications identical or similar to another’s business name if likely to mislead the public or cause unfair competition.
Opposition proceedings may be lodged within three months from the application date published in the Trademark Journal.
A cancellation is a legal proceeding aimed at removing a registered trademark from the registry. The trademark registrar or a trademark office adjudicator oversee cancellation proceedings.
Any person or business may petition for the cancellation or rectification (with respect to some goods or classes of goods) of a trademark registration.
The grounds include absolute grounds, such as descriptiveness, marks harmful to public policy, deceptive marks and marks encouraging unfair competition, and relative grounds, such as marks harmful to third party property rights and identical or similar to another’s business name if likely to mislead the public or cause unfair competition.
Another ground for cancellation is bad faith at the time of applying for the mark’s registration such as an attempt to free ride on another trademark’s goodwill.
Cancellation proceedings may be opened within five years of the date the registration certificate was issued. A cancellation action filed on the ground of bad faith may be filed at any time.
Any person or business may petition to remove a registration from the registry, among others on the grounds that there has in fact been no bona fide use of the mark for the goods or services in respect of which the registration’s revocation was requested during the three years preceding the petition for revocation.
A registered trademark gives the holder the exclusive right to use the trademark with respect to the goods or services it is registered for. By virtue of a registered trademark, the holder can stop infringing use of its trademark not only in relation to goods and services the trademark was registered for but also in relation to goods and services of the same description.
Trademark infringement includes:
- Unauthorized use of a trademark or a mark resembling such trademark in relation to goods for which a trademark is registered or goods of the same description;
- Unauthorized use of a well-known trademark even if not registered or of a confusingly similar mark with respect to goods the trademark is well known for or goods of the same description;
- Unauthorized use of a registered well-known trademark or a confusingly similar mark, even with respect to goods of a different description, provided that such use could indicate a connection between such goods and the holder of the registered well-known mark and that the holder of the well-known trademark could be harmed as a result of such use.
- Unauthorized use of a mark for advertisement purposes only is sufficient to constitute infringement.
A registered well-known trademark gives the holder the exclusive right to use the trademark also for goods of different descriptions if use of the mark by a third party is likely to indicate a connection between the goods and the holder of the well-known mark and if he is liable to be adversely affected as a result of such use.
Yes. A trademark that is not registered may be entitled to protection under the Commercial Wrongs Law, 5759-1999. Such rights may be exercised by launching a proceeding on the ground of passing off, which prohibits traders from causing an asset they sell or a service they provide to be mistaken for another’s asset or an asset or service connected with another. To establish passing off, plaintiffs must prove goodwill in their goods and/or services and the likelihood of consumer confusion between the marks.
A holder of a well-known mark that is not registered is entitled to exclusive use of the mark for the goods it is well known for in Israel or goods of the same description.