We are often asked how much does it cost to register a trademark. The answer depends on many factors. Among them are the place of registration (Israel and/or abroad), types of commodities for which the trademark is registered, etc. After reading this article, you will understand better what trademark registration requires, as well as what rights it grants.
The Israeli law firm of Decker & Ofir specializes in Intellectual Property (IP) and trademark law. Our attorneys are well experienced with handling trademark applications and trademarks legal proceedings. We represent Israeli and international clients before the Israeli Trademark Office and the Israeli courts.
Why is Trademark Registration So Important for Your Business’ Success in 2021?
Try thinking for a moment about your 5 favorite brands. What is common for them? We can assume, without knowing your choice, that they are all registered as trademarks. In fact, it is hard to think of a successful brand which does not register as trademarks for its logo, brands and slogans. Trademark registration is crucial for every business intending to develop its brand.
The importance of trademark registration goes further beyond marketing and developing your brand. If you would like to expand in the future (e.g., by franchising) the rights in the brand must be specified. It is also true in cases of changing the ownership of the brand.
It is important to register a trademark already in the initial stages of your business, and even before the business starts operating. That way you will be able to expand the scope of your brand forward in the future. Our firm specializes in trademark registration in Israel and abroad. Below we will present the main rights that trademark registration grants. We will also explain how much does it cost to register a trademark.
2 Main Legal Rights Trademark Registration Grants
Trademark registration turns your business’ brands into IP assets. It thus grants various legal rights and legal protections within a certain country or territory. For instance, the right for an exclusive right in the registered trademark and the right to give licenses for others to use it. In Israel, the ability to act against trademark infringements generally depends on the question whether the trademark has been registered in Israel. And the same applies in other countries and territories.
How Do Trademark Registration Proceedings Work?
In order to become an owner of an Israeli trademark, one must apply for trademark registration and get a final approval of the application, by way of the trademark being added to the Israeli registry. The application is submitted to the Israeli Patents, Designs and Trademark Office. It should be noted that the process of registration became more efficient throughout the years, and can be carried out online nowadays.
However, it is highly recommended to avoid registering your trademark on your own if you are not familiar with the law, and to get the assistance of a lawyer specializing in trademark law. Unfamiliarity with the law and rulings of the Trademark Registrar and Israeli courts may lead to undesired outcomes and even to the loss of legal protection which could have been given to your mark in Israel. A lawyer specializing in trademark law will know how to assist you with protecting your mark properly and avoiding those undesired consequences.
Preliminary Actions Before Registering Your Trademark
There are several actions that should be taken before applying for trademark registration. The question how much does it cost to register a trademark also depends on these initial actions. First and foremost, it is important to ensure that the mark meets the criteria of the Israeli law and does not cause any confusion with other registered or well-known trademarks. In general, the Israeli Trademark Ordinance does not enable registering a trademark which is already registered for the same class of goods or services, or may cause a confusion with other registered trademarks.
Confusion might occur in both the name and the visual appearance of the brand (e.g. colors, illustrations, design, etc.). Apart from the problems that may be caused with registering a deceptive mark, using such a mark might lead to legal action against the owner of the deceptive mark.
In this regard, there is an important recent decision of the Israeli Supreme Court. It was given in a dispute between the Italian pasta brand “Barilla” and Israeli supermarket chain “Rami Levy.” The latter started marketing its own pasta brand. The packaging of the brand had similar colors and general appearance to Barilla’s pasta packages. The court decided that Rami Levy’s packages may lead to confusion. The court therefore ordered to remove them from the shelves.
How to Ensure the Trademark is Not Taken?
Marketing a brand with a confusing name, design or even color, may lead to complicated legal proceedings and loss of money and resources that were already invested. Thus, it is important to conduct a search in order to ensure that your chosen brand is not deceptive.
Trademark search can be made for that purpose in the Israeli registry and registries of other countries and organizations. The search needs to be as comprehensive as possible. It should not be limited only to identical marks, but also to marks with significant similarity. A lawyer specializing in trademark law can help ensure that your chosen brand is not taken and can be applied for registration.
Choosing Your Classes
When thinking how much does it cost to register a trademark, one must take into account the different classifications. In Israel, like most of the world, there is a classification of goods and services, based on the Nice Agreement. The classification is divided into numbers, between 1 to 45. While applying for a trademark registration, one must specify the class(es) of goods or services under which the trademark is requested to be registered.
For instance, a brand of toys will be registered under class 28. Chocolate products will be registered under class 30. Toothpastes will be registered under class 3, and so on. It is important to decide in advance for what classes the mark is intended for, since the registration fees will vary based on the number of classes which is applied for.
What are the Registration Fees in 2020?
A main part of the answer to the question of how much does it cost to register a trademark is related to the registration fees. There are different costs for registering a trademark in Israel. In this regard, the application fees and attorney’s fees should be taken into account. On top of that, the examination of the trademark may include additional fees. One should pay attention to the number of classes under which the trademark will be registered, as explained above. Each class would require additional fees.
The Israeli Trademark Regulations include a list of most of the registration fees. The fees are being modified every once in a while. As of the year 2020, the registration fee for the first class of goods or services is 1630 ILS (approx. 480 USD). For each additional class there is an extra fee of 1224 ILS (approx. 360 USD). There might be additional fees, based on the examination process.
What Are the Examination Tracks?
There are two main examination tracks of a trademark application – a regular track and an accelerated track. The latter requires a special fee of 751 ILS (approx. 220 USD). It also requires filing a petition in which the reasons of urgency will be specified. If the petition will be approved, the examination will be moved to the top of the queue.
How Does the Examination Process Work?
The examination process of a trademark application may be complicated, and in this short article we cannot cover all that it includes. However, generally speaking, the examination is conducted in order to ensure whether the mark meets the different requirements under the Trademark Ordinance. In this respect, the examiner would verify that the mark is not already taken or may cause any confusion with another registered trademark.
If one of the above applies, a report specifying the examiner’s objections will be sent to the applicant. The applicant will need to respond to the report, and should the applicant’s arguments be accepted, the application will be approved. But this will not end the process yet. Before officially registering the trademark, there will be a period of 3 months, in which others may file an opposition to the registration.
What is a Trademark Opposition?
According to the Trademark Ordinance, any person may file an Opposition to a trademark registration. There are 2 main possible opposition claims. One is that the opponent is the owner of the trademark. The second claim is that the mark is not eligible for registration under the Israeli Trademark Ordinance.
Opposition proceedings are similar in their procedure to a civil lawsuit proceedings. They consist of a few stages and 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, which was published on our website.
Does Trademark Registration in Israel Provide Legal Protection Elsewhere?
In general, trademark registration is limited to a specific territory. Thus, if one would like to protect a trademark in other countries, she should register it in those countries as well. However, it should be noted that nowadays there is a possibility to file an international trademark application. In addition, there are some trademarks that can be recognized as well-known trademarks. In such cases the marks may be entitled for protection even if they are not registered.
Duration of Registration
The duration of validity of a trademark registration in Israel is 10 years. After this period, the owner can apply for its extension. In principle, trademarks can be extended for an unlimited number of times. However, there is a renewal fee for each extension. Furthermore, in some cases the Trademark Registrar is authorized to decide not to renew a trademark. A common case of refusal to renew a trademark is when it wasn’t used by the owner for a long period before its renewal.
Is it Possible to Gain Legal Protection If a Mark is Not Registered?
There is a possibility to grant legal protection for unregistered marks, but it is quite limited. For instance, the Israeli Commercial Torts Law enables to protect an unregistered mark in cases of “passing off”, where a competitor attempts to enjoy the goodwill of the mark’s owner.
Passing off lawsuits in Israel for unregistered trademarks are legally complicated, and requires to meet various criteria. Thus, the best way to protect a mark is to register it as a trademark. If you are still unsure whether you should register your brand as a trademark in Israel and elsewhere, a lawyer specializing in trademark law could help you reach the right decision for you.
In this article we explained how much does it cost to register a trademark, as well as the rights it grants. For any further questions, the attorneys from Decker & Ofir law firm are available for you. Our attorneys specialize in trademark law and intellectual property, and are experienced with handling trademark registration and obtaining legal protection to IP assets for Israeli and international clients.