Israel trademark law is in fact a list of various statutory sources, that altogether set different aspects of the Israeli trademark system. In this article, an attorney from our firm, who specializes in trademark law, will explain about the main sources in this regard.
Decker & Ofir is a boutique Intellectual Property (IP) and trademark Israeli law firm. Our attorneys specialize in legal assistance in various trademark matters. Our attorneys represent Israeli and international clients before the Israeli Trademark Office and the Israeli courts.
Israel Trademark Law – Various Legal Sources
Trademark law varies among different countries and territories. In some countries, the legal protection granted to trademarks depends on actual use of the trademarks, as well as on registration. We are often asked by international clients and associates from abroad about the legal status in Israel in this regard. We can say that it can be considered as more liberal in that sense.
The main Israeli trademark statutory source, the Trademark Ordinance, has gone through some significant development in the previous 2 decades. The contemporary legislation recognizes well-known trademarks. Another relatively recent feature is the ability to register international trademarks in Israel, via the Madrid System.
In addition, the law provides different legal tools, by which it is possible to take legal actions against infringing use of marks that are not registered nor recognized as well-known trademarks. Below we will elaborate on the Israeli trademark law and present the main statutory and regulatory trademark sources.
What are the Main Statutory and Regulatory Sources of Trademark Law in Israel?
The Israeli Trademark Ordinance is, as mentioned, the main Israeli trademark legislation. It was originally “inherited” by the British Mandate, before the establishment of the state of Israel. The ordinance defines most of the legal procedures related to trademarks in Israel. This includes the conditions for registration, in terms of qualification, as well as the available legal remedies against trademark infringements.
Article 11 of the ordinance includes a list of marks that are not eligible for registration. For instance, marks with connotation to the Israeli president or to other IP rights (patents, designs, copyright or geographical indication) cannot be registered as trademarks, according to the ordinance.
The ordinance further details other important legal features, such as the definition and the conditions for recognizing well-known trademarks. The 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. Well-known trademarks are an exception to the obligation to register a trademark in order to obtain legal protection within a certain jurisdiction. However, registration is still the ultimate way to secure legal protection for brands.
Another relatively new amendment of the Trademark Ordinance is related to the registration of international trademarks in Israel. This feature is made possible due to the entrance of Israel to the Madrid System. It enables registration of international trademark registration in Israel. It also allows for Israeli trademark owners to claim trademark registration elsewhere, based on their Israeli trademarks. You can read more about it here.
Trademark Regulatory Sources
Complementary legal arrangements are found in the Trademark Regulations (1940). The regulations cover various criteria for trademark registration and complementary procedures. This includes the details that should be included in trademark registration applications and the procedure of examination process for the applications. The regulations further cover the legal procedure behind opposition proceedings and other proceedings before the court of the Israeli Patent Office.
Another important topic which the Trademark Regulations cover is the classification under which the trademark will be registered. 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 (or classes) 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 it is applied for.
Further Related Legislation
Apart from the Trademark Ordinance and the Trademark Regulation, there is a list of additional statutory sources, which includes complementary legal procedures. Below we will present some of the main ones.
The Commercial Torts Law
This law includes a number of torts. The most relevant tort in this context is passing off, which enables to grant legal protection for unregistered marks. However, this protection is quite limited. Passing off occurs when a competitor attempts to enjoy the goodwill of another mark’s owner. In passing off lawsuits, the plaintiff must prove that the mark has gained goodwill among the relevant consumers and that there is a likelihood of confusion with the other mark.
Passing off lawsuits in Israel for unregistered trademarks are legally complicated, and require to meet various criteria. Thus, the best way to protect a mark is to register it as a trademark. If you are unsure whether you should register your brand as a trademark in Israel and elsewhere, it is recommended to consult with a lawyer specializing in trademark law, who can help you reach the right decision for you.
The Customs Ordinance
This statutory source can be relevant for trademark owners in cases where infringers import counterfeit goods or sell it in the Israeli territory. There are 2 main government authorities that can assist trademark owners with enforcement of their rights in this context: the Israeli Police and the Israeli Customs. The Customs Ordinance authorizes the different Customs units to hold the release of infringing goods that arrive to Israel. This can be a very efficient way to prevent the import and marketing of counterfeit goods within the territory.
Criminal Procedure Law
In some cases, trademark infringement can further be enforced by the Israeli police. According to the Trademark Ordinance, trademark infringement might count as a criminal offense. The penalties include fines of up to millions of Israeli shekels (hundreds of thousands of US dollars), and even imprisonment of up to 3 years.
Trademark infringement is a unique offense in Israel, as it allows in some cases to file a private criminal action in court, against infringers. It is possible due to the Israeli Criminal Procedure Law, which applies this unique feature to some forms of trademark infringement. Such forms include importing or possessing counterfeit goods that infringe registered trademarks.
Knowledge of the Trademark Law in Israel is Not Enough
It is important to emphasize that the legal system in Israel has characteristics of the common law system. Thus, it is not enough to rely only on the written law. Case law and court decisions play a main role in the Israeli trademark law, as we demonstrated here, for instance. Thus, being familiar with the trademark law in Israel means being familiar not only with the statutory and regulatory sources, but also with the past and contemporary case law.
In this article we explained about the different statutory sources that the Israeli trademark law consists of. For more questions, the attorneys from Decker & Offir law firm are available to help 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.