Filing a Trademark in 2021: What Do You Need in Order to File Your Trademark the Right Way?

Filing a trademark application is a basic step in order to obtain trademark registration and to protect your trademark within a certain territory. Over the years, trademark registration systems around the world became more user-friendly, more synchronized with each other and more accessible. The cost of filing a trademark application became a lot more affordable nowadays as well. Yet, there are still some crucial things to understand about the process before starting it. In this article, an Israeli trademark attorney from our firm will explain what you should know.

Decker & Ofir is a boutique intellectual property (IP) law firm, specialized in trademark law. The firm provides comprehensive legal services to Israeli and international clients. Our services include legal representation throughout the process of trademark registration in Israel and worldwide, as well as litigation in trademark and IP cases (such as copyright cases, designs, etc.).

Trademark Registration – How to Make It Right?

Filing a trademarkFiling trademark applications and registering a Business’ brands are some of the most crucial things for the success of your business. It is the best way to protect your own brands’ reputation, and to prevent others from enjoying it. Yet, many legal questions are raised regarding the legal procedures and costs of filing a trademark application. There is a great deal of uncertainty around it. In turn, it challenges firms’ decision making in this regard.

A main cause of confusion regarding trademark law is that trademark rights are traditionally territorial ones. It means that a trademark which was registered only in Spain will not be protected in Japan, merely because of its registration in Spain. However, over the years new legal instruments were introduced, in order to grant wider trademark protection. Such an instrument is the doctrine of well-known trademarks, which is employed for protecting international brands even in cases where they are not registered within a certain territory. 

This confusing situation causes a lot of uncertainty regarding the necessity to register trademarks in different countries. Firms cannot always be sure whether their trademarks are well-known in a certain territory, when they are not registered there. It makes it hard for international firms to decide how to protect their rights properly.

Why Trademark Law is So Complicated?

As if the aforementioned uncertainty is not enough, there is more to it. Each country has different trademark laws and regulations. While in some countries it is possible to register a trademark based on international registration, it is not the case in every country. 

Similarly, not everywhere it is possible to register multiple trademarks or multiple classes of goods and services in one application. It thus requires obtaining information on the different trademark laws of each country. For this important task, it is highly beneficial to be assisted by trademark experts in different territories, who have the relevant knowledge and experience.

Our firm is based in Israel. Accordingly, we are often asked by international clients about the legal situation in the Israeli territory. We get questions on the above issues frequently, as well as on the cost of filing trademark applications. Below we will address these and other questions, elaborating on the specific legal situation in Israel and the different costs that are included in the process.

How Do Trademark Registration Proceedings in Israel Work?

The Israeli trademark department is a part of the Israeli Patents, Designs and Trademark Authority. In order to obtain trademark registration, one must file a trademark application, which will be handled and examined by the trademark department. After the examination process and a final approval, the trademark is added to the Israeli trademark registry. Over the years, the registration process became much more user-friendly. Nowadays, it can even be carried out online. 

However, in cases of lack of familiarity with the local law, it is highly recommended to get the assistance of a well-experienced trademark attorney for the registration process. There are various activities involved in the process that require expertise. For instance, it is very important to conduct a search for similar or identical registered trademarks. The search should be as wide as possible, not limited to the particular territory.

Moreover, without knowing the specific requirements and regulations involved in the process, one might lose the protection which could have been granted to the trademark. To avoid such an undesired result, legal assistance from a local trademark law can be of crucial help.

Is it Possible to Register Multiple Trademarks in Israel?

We are often asked by our clients whether it is possible to register numerous trademarks within one application. The basic answer to this question is that the legal situation in Israel allows for registration of one trademark per each application. Thus, submission of multiple applications is required in order to register multiple trademarks. 

Similarly, we are often asked whether multiple-class applications. That is, if one trademark can be registered for multiple goods and services. Unlike an application for multiple trademarks, multi-class applications are available in Israel. In addition, it is possible to register a trademark for more than one specific type of goods and services. We will now elaborate on this.

How to Register the Same Trademarks for Various Goods & Services in Israel?

Israel has a classification system for goods and services, operated according to the Nice Agreement. This classification system includes 34 categories for goods and 11 categories for services. 

For instance, registration of chocolate products will usually be under class 30. Registration of clothing products will usually be under class 25. When filing a trademark application, one must choose the class (or classes) of goods for which the trademark is requested to be registered.

Israeli trademark regulations dictate that trademarks must be registered for particular goods and services. One trademark can be used for multiple goods and services, but only related to goods and services that the applicant intends to use. 

A trademark cannot be registered for all possible goods and services in a market, if the applicant is not marketing in all of them. Thus, it is important to specify the desired classes for which the trademark is intended. 

Furthermore, it is important to specify the exact products or services under which the trademark will be marketed. For instance, a trademark application for a clothing brand (under class 25) should include a specification of the exact products that will use the mark. They can be shirts, pants, jackets, socks, footwear, etc.

How to Register an International Trademark in Israel?

Filing a trademarkIn Israel, it is now possible to register local and global (international) trademarks. Israel joined the Madrid Protocol, which allows for expansion of international trademark registration in Israel. It also allows for Israeli trademark owners to claim trademark registration elsewhere, based on their Israeli trademarks. 

International trademark applications under the Madrid Protocol are submitted under a special form, called MM2 form (which can be found here). The MM2 form includes different information the applicant must fill. Among the requested details are the office of origin, information about the applicant, the applicant’s entitlement to file, the appointment of a representative, the relevant trademark, the colors claimed, translations of the trademark (if relevant), etc.

After filling the relevant details and signing the form, it can be submitted to the Israeli trademark department. Together with the submission, there are additional relevant fees to pay, on which we will elaborate below. The Israel Patent, Trademark and Design Authority will then examine the application. After approval, it will be sent to the international bureau for the international trademark registration.

What is the Cost of Filing a Trademark Application?

A large sum of the costs involved in the process of trademark registration is related to the registration fees. The Israeli Trademark Regulations include a list of most of the registration fees. The fees are being modified every once in a while. The full and updated list of the fees can be found in the Israeli trademark department’s website.

In 2021, trademark application fees became slightly lower, compared to previous years. The current registration fee for the first class of goods or services is 1617 ILS (approx. 475 USD). For each additional class there is an extra fee of 1214 ILS (approx. 355 USD). Additional fees might be required, depending on specific events during the examination process.

There are other costs involved in trademark registration, including attorney’s fees. These costs should be taken into account as well, and they would vary from one case to another. On top of that, the examination of the trademark may include additional fees. It is therefore hard to conclude in advance how much exactly should trademark registration cost. However, an experienced attorney in the field can help estimating the cost, based on the particular needs of the applicant and the specific circumstances.

Contact Us

Above we shared some crucial information regarding the process of trademark registration in Israel. We explained the cost of filing a trademark application, as well as on the different registration possibilities. If you have more questions on trademark registration in Israel, you can contact us and we will be happy to help. Our attorneys from Decker & Ofir law firm have long experience in handling trademark applications in Israel and around the world. 

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