Trademark registration in Israel is available for international trademarks. The process is not too complex, but it still requires expertise and knowledge of the local trademark law in order to register one’s marks properly. In this article, we will describe the process of international trademark registration in Israel and additional necessary actions that need to be taken.
Decker & Ofir is an Israeli-based IP law firm. The firm specializes in trademark law and intellectual property (IP). The firm represents Israeli and international clients in IP legal proceedings. The services provided by the firm include assistance with handling trademark registration in Israel and abroad, portfolio management, legal representation in trademark and IP disputes, etc.
Not in every country or territory it is possible to register international trademarks, although it is much needed in the modern world. In Israel, it wasn’t possible to register international trademarks until the past decade. In 2010, Israel joined most of the western countries and enabled this option, which makes it easier for international businesses to protect their brands abroad.
It is important to note that the registration is not made automatically. The process of registration is not too complicated in itself, yet it has to be carried out the right way in order to be successful. In addition, several actions are required in order to preserve the trademark protection of an international brand. This includes using the brand locally, acting against infringements in order to preserve the goodwill of the brand, etc. Below we will elaborate on the process and those additional actions.
How is it Possible to Register an International Trademark in Israel?
International trademark registration became available in Israel in 2010. Around that time, Israel joined the Madrid Protocol, which enables registration of trademarks that have already been registered elsewhere in Israel. It also provides Israeli trademark owners the possibility 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 applicant must fill the form and provide some necessary information, such as details of the office of origin, information about the applicant, the applicant’s entitlement to file, the appointment of a representative (if applicable), the requested trademark and its claimed colors, translations of the trademark (if relevant), etc.
After submitting the form to the Israeli trademark department, the additional relevant fees should be paid. We elaborated about the fees and the costs of trademark registration in Israel here. The application will be examined by the Israel Patent Office. Once approved, it will be sent to the international bureau for international trademark registration.
Is it Possible to Protect an International Trademark in Israel Without Registration?
There are several protections that can be granted to marks that are not registered as trademarks in Israel. The Israeli Commercial Torts Law provides a limited protection to the reputation of brands that are not registered as trademarks, based on the tort of “passing off.”
However, lawsuits that are based on passing off claims are quite difficult to prove in legal terms, when the marks are not registered. Thus, the protection is not equivalent to the protection granted to registered trademarks, which is the ultimate legal protection to a business’ brands and goodwill.
What is the Status of Well-Known Trademarks in Israel?
Generally speaking, trademark protection is territorial. That is, a mark should be registered within a certain country or territory in order to gain trademark rights within the territory. If a trademark is registered in Israel, it will not grant protection to the same mark in the US, unless it is registered there as well. Yet, in the recent decades it became possible to protect some international trademarks in Israel, even if they are not registered locally.
There is a possibility to recognize a mark as a well-known trademark. The Israeli Trademarks Ordinance defines a well-known trademark as a mark that is well-known in the territory of Israel, even if it is not registered nor used in it. Proving that a mark is well-known in Israel could be challenging, as we explained in detail here.
Even if the Mark is not Well-Known in Israel, There is Still a Chance!
According to a recent Israeli Supreme Court decision (Habitat case), international brands could 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. This ruling opens the door for the recognition of rights for international brands in Israel in the future, even in cases where the marks are not well-known.
Why Registration Alone is Not Sufficient for Trademark Protection in Israel?
As mentioned above, handling trademark registration properly is the ultimate way to protect one’s brands in Israel. However, there are different steps that need to be taken prior to handling international trademark registration in Israel. As a first step, it is important to ensure that the trademark is not taken nor that it is confusingly similar to trademarks that are already registered. The best way to ensure this is to conduct a trademark search, on which we explained here.
It is also necessary to ensure that the mark meets the qualification requirements and the criteria set under the Israeli law. It is highly recommended to use an experienced trademark attorney in order to do both this and the trademark search. These initial steps show that registration is not sufficient in order to grant protection to the mark.
Similarly, after a trademark is accepted in Israel, it can still be revoked, for instance in cases where it is not used. In addition, trademark renewal should be conducted every 10 years, in order to extend the trademark’s lifespan. The possibility of renewal depends on preservation of the trademark during its lifetime. Thus, further actions must be taken after the registration as well in order to preserve trademark rights in Israel.
As we have shown above, international trademark registration in Israel is possible, yet it requires conducting different activities. It usually requires handling international trademark registration properly; conducting a trademark search before filing an application; preservation activities during the lifetime of the trademark; and renewal of the trademark in accordance with the law. It may also require taking legal actions against trademark infringements.
In order to perform all the above activities, familiarity with the Israeli and international trademark system is crucial. When errors due to lack of familiarity occur, the trademarks might be banned from registration, revoked from the registry (even if they have been registered), infringed or refused for renewal. Thus, in any case of doubt regarding the registration process, it is highly recommended to consult with an Israeli trademark expert attorney, with the relevant experience that is needed in order to handle the registration properly.
If you have more questions or inquiries regarding international trademark registration in Israel, you may contact a trademark expert from our firm. Our attorneys will be happy to provide you with all the necessary information and assistance. Our law firm is well experienced with representing clients in various trademark and IP matters, in Israel and abroad.