Global & Local Trademark Registration – 10 Things You Should Know Before Registering Your Trademark

Global (or international) trademark registration is currently available for Israeli trademarks. It is important that business owners would know the importance of trademark registration and protection. In this article we will explain what you should know before applying for trademark registration. We will also elaborate on ways to obtain legal protection for trademarks in Israel and internationally.

Decker & Ofir is an Israel-based boutique law firm, specializing in intellectual property (IP) and trademark law. The firm provides comprehensive legal services to Israeli and international clients, including handling their trademark registration in Israel and worldwide, portfolio management and legal protection for trademarks and IP assets.

Your Reputation is Very Important

A reputation is the “face” of every business. Obviously, a business with a bad reputation will find it hard to survive in the long-term. Yet, a business which enjoys a positive reputation can survive for decades and even centuries. Many studies have found that people are getting attached to brands, referring positive and negative emotions toward them. It shows us how important it is to preserve a positive reputation of every business and its brands.

The best way to protect brands and the reputation of businesses in Israel is through trademark registration. Big and successful businesses are usually aware of the importance of registering and protecting their trademarks in Israel. However, there are many businesses that simply don’t know enough about it, even if they have their trademarks registered elsewhere. Below we will present 10 important facts about trademarks that every business owner should know.

1 – What is a Trademark?

Not everyone knows what exactly is a trademark. Foreign businesses wishing to operate in Israel, are not always familiar with the Israeli law in this regard. It should be emphasized that trademarks are not only brand names, logos or slogans. The Israeli law’s definition is much broader: “letters, numerals, words, devices or other signs or the combinations thereof, whether two-dimensional or three-dimensionals.” 

This broad definition can include, among other things, unique packages or even colors. For instance, a combination of colors of a toothpaste or a unique shape of chocolate bars. Sometimes, even sounds can gain trademark protection in Israel.

2 – Trademark Protection is Never Being Granted Automatically

Global & local trademarkLet’s imagine that I own a factory of sweets in Israel, under which I have a successful brand of cookies. A competitor of mine decides to copy this brand, and she markets a product with a similar name. If my brand wasn’t registered as a trademark, it will be very hard to predict if in the case of filing a lawsuit I would win. Thus, the best way to protect a brand is by registering a trademark.

The Israeli Commercial Torts Law does provide some protection to the reputation of brands that are not registered as trademarks, according to the tort of “passing off.” However, it is a limited protection, which requires meeting different criteria. Passing off lawsuits are quite difficult to prove in legal terms. Thus, it is not substitutional to trademark registration, which will grant an ultimate legal protection to your brands.

 3 – Trademarks Can Live Forever

Unlike humans, and more similarly to a corporation (such as companies), a trademark can theoretically enjoy an unlimited lifespan. In today’s world there are quite some brands that enjoy trademark protection for over 100 years. Examples are American brands like Ford and Coca Cola, the Czech Pilsner beer and the German stationery brand Stabilo.

Despite the theoretical ability to live forever, there are two factors that will determine the ability of a given trademark to survive in Israel. The first factor is the technical extension of a trademark. Like in most of the world, the renewal of Israeli trademark registration should take place every 10 years. The renewal is made via the Israeli patent and trademark office. The second factor is more complex, and requires preserving the uniqueness of the trademark. 

Many brands lost their uniqueness throughout the years, and accordingly lost their trademark protection. A common example is “Aspirin”, the well-known medication, originally developed by Bayer. In most parts of the world, Bayer has lost its trademark protection over the brand “Aspirin”, as the brand became generic. 

4 – Trademark Protection is Local, Not International (But Things are Not that Simple)

Global & local trademark registrationGenerally, in order to obtain trademark protection, the mark should be registered within a certain country or territory. It means that a trademark registration in Israel will not grant trademark protection in the US, and vice versa. Nevertheless, throughout the years there have been some changes in the world. Globalization processes and the wide use of international brands enabled the option of getting some sort of global trademark protection, even if the trademark is not registered locally.

There is an option to recognize a mark as a well-known trademark. For instance, Burger King closed its Israeli branches in 2010 and then returned to Israel after a few years. During the period when the chain did not operate, no one could even think of opening a fast food chain in Israel under the name Burger King. After all, such a brand with trademark rights in almost every country, and tens of thousands of branches worldwide, is clearly a well-known (global) trademark.

According to a recent Israeli Supreme Court decision, international brands can gain protection in Israel even if they are not well-known in Israel. The ruling was held after a long dispute between the veteran international furniture chain “Habitat” and an Israeli chain of furniture stores with the same name. 

The court held that preventing the international brand from entering into the Israeli market will have a negative effect on the operation of international companies in Israel. It might encourage Israeli companies to copy global trademarks and brands. Therefore, the court held that the international chain can enter the Israeli market.

5 – Trademark Protection is Based on the Class of Commodities

Global & local trademark protectionRegistering a chocolate brand as a trademark will usually be limited for a certain class of commodities. Why is it so? Israel, like most of the world, works with the global trademark classification of commodities (known as “Nice Classification”, set by numbers between 1 to 45. According to the above example, registration of chocolate brands will usually be under class 30, whereas registration of clothing products will usually be under class 25. Accordingly, the protection of the trademark will usually be limited to the particular class. 

6 – The Law Provides Various Protections to Owners of Registered Trademarks

No one can open a chain of coffee shops in Israel under the name “Aroma.” The reason is that Aroma exists as a trademark in Israel, and it will therefore be against the law. The law grants trademark owners the right to have an exclusive use of their trademark. It prevents competitors from marketing similar goods and services by the same name or in a way which might cause a confusion with a registered trademark. Another right the law grants is the right to give licenses to use the trademark. It is extremely important today, due to the wide use of franchises in Israeli chains.

7 – Not All Trademarks are Born Equal

There is a wide range of trademarks. Some brands have a name which is very close to the type of product or service behind them. Other brands have no direct connection to the product behind them. Accordingly, the protection of different trademarks will be different. The courts have created a hierarchy of trademarks, in order to distinguish between them and grant them a legal protection at different levels. 

For instance, the name “The Coffee Shop” for a coffee shop chain, will usually be considered as too generic. Thus, it would usually not gain trademark protection. Similar outcome would apply to a mark which describes the product or service behind it (like “Hotel Tel Aviv” for a chain of hotels). However, it will be able to gain trademark protection if its owner will be able to prove that the mark enjoys a unique goodwill. That is, the relevant customers recognize the mark together with the product behind it.

However, marks with less connotation to the product behind them, will usually gain a wider protection. A common example would be “Google” for a search engine. It is important to know this hierarchy and to understand the influence of choosing a brand on the level of protection that will eventually be granted to it.

8 – The Right to Oppose to Trademark Registration in 2020

Global trademark registrationThere are 2 main cases where the owner of the other trademark may oppose the registration. The first case is when a mark already exists in the Israeli trademark registry. The second case is when the mark is confusingly similar to another registered trademark or a well-known (global) trademark.  

Opposition proceedings are similar in their procedure to civil lawsuit proceedings. They include filing of pleadings and evidence, investigations of declarants and final decision of the Israeli Trademark Registrar. You can read more about an opposition proceeding in this article.

 9 – One Should Remember that Trademarks are IP Assets

Despite the differences between IP assets and tangible assets (like cars or real estate), IP assets have similar legal protection. According to the Israeli law, trademark owners can sell their trademarks, transfer them and even protect them from “thefts” (by taking legal actions against trademark infringements). In this respect, trademarks are not different from patents, works with copyright protection and other forms of IP assets. Trademark registration provides to its owner a property with great money value, and it should be treated accordingly.

10 – Trademark Registration Requires a Deep Understanding of the Law

Although the procedure of registering trademarks in Israel became much more efficient in recent years, and can be done online nowadays, it is not recommended to register trademarks in Israel without the relevant background. Unfamiliarity with the law and ruling of the Israeli courts might cause unwelcome consequences, and losing the legal protection of a mark. A lawyer with expertise in trademark law will be able to help you to protect your brand properly, and to prevent those undesired consequences.

Contact Us

For more questions on international/global trademark protection in Israel you can contact the attorneys from Decker & Ofir law firm. Our attorneys will be happy to assist you based on their long experience in protecting trademarks and IP assets in Israel and worldwide. 

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