We are often asked by our international clients and colleagues about the relevant office/authority for trademark proceedings in Israel. In this article, a trademark attorney from our firm reviews the structure of Israel’s trademark office, and explains the procedures behind examination of trademark applications, opposition proceedings, trademark renewals, etc.
Decker & Ofir is a boutique law firm, specializing in trademark law and Intellectual Property (IP). Our attorneys are well experienced with legal representation in trademark proceedings. The firm represents Israeli and international clients before the Israeli Trademark Office and the Israeli courts. The firm’s services include assistance with trademark registration, representation in proceedings before the trademark office’s court, etc.
Israel’s Trademark System
In different jurisdictions there are different structures of public bodies that are in charge of trademark and IP proceedings. Sometimes there is a separation between a country’s patent office and trademark office. In Israel, the trademark office is in fact a department under the Israel Patent Office. The department handles the examination of trademark applications, trademark renewal and management of the Israeli trademark registry.
In addition, there is a designated court in the Israel Patent Office. Trademark proceedings held before the Israeli Patent Office’s court include opposition proceedings, cancellation proceedings, interference proceedings, etc. Below we will focus on the main roles of the Israeli trademark authorities, and elaborate on both the examination of trademark applications and proceedings before the court.
Examination of Trademark Applications
The trademark department’s main role is to manage the Israeli trademark registry. It means accepting (or rejecting) applications for trademark registration. Once a trademark application is submitted to the Israel Patent Office, it will be examined by the trademark department. The examiners will determine whether the application is meeting the legal conditions of the Israeli trademark law, mainly set under the Trademark Ordinance.
The examination of a trademark application may be complicated. It includes, among others, verification of meeting the criteria set in article 11 of the trademark ordinance. For instance, marks with the words “registered patent” or “copyright” are not qualified for registration. Same applies for marks suggesting a connection to the Israeli president. Apart from that, the examiner would verify that the mark is not yet taken or may cause confusion with another registered trademark.
If one of the above criteria is not met, a report specifying the examiner’s objections will be sent to the applicant. The applicant will then have to respond to the report and defend her argument for the qualification of the mark. Should the applicant’s arguments be accepted, the application will be approved. But as we will demonstrate below, this will not end the process.
What Happens After the Examination Process?
Before officially accepting the mark into the trademark registry, the mark will be published in the Israeli trademarks journal. This will start a period of 3 months, in which others may file an opposition to the registration. If no opposition will be filed, the mark will be registered. Filing of an opposition will initiate opposition proceedings before the Israeli trademarks registrar.
Trademark Opposition Proceedings Before the Court
According to the Trademark Ordinance, any person may file an Opposition to a trademark registration. The possible opposition claims are that the opponent is the owner of the trademark, or that the mark is not eligible to be registered as a trademark under the Israeli Trademark Ordinance.
Opposition proceedings are the main proceedings held before the Israeli trademarks registrar 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 registrar. You can read more about opposition proceedings in this article, which was published on our website.
It is worth noting that the court of Israel Patent Office, under which trademark opposition proceedings are held, is not an official part of the Israeli judicial system. Accordingly, the law allows to appeal most of the decision by the office’s court before the Israeli district court. In some cases it is possible to file a leave of appeal on the district court’s judgement before the Israeli Supreme Court.
Other Proceedings Before the Court
As mentioned, opposition proceedings are the most common ones that are held in the office’s court. However, there are other types of proceedings, such as interference proceedings. This type of proceedings occur when 2 or more parties file a trademark application that the Trademark Office deems as confusingly similar. The purpose of an interference proceeding is to determine which of the 2 applicants should prevail and move forward to registration of their mark. You can read more about interference proceedings here.
Another type of proceedings is revocation proceedings. Such proceedings can be relevant in cases where a trademark is already registered, and another party wishes for it to be removed from the registry. These proceedings are more challenging from the perspective of the party who files the petition for revocation, compared to opposition proceedings. The reason is that while in opposition the applicant must prove that his mark is qualified for registration, in revocation proceedings the burden of proof is on the party who files the petition.
The Israeli trademark department in the Israel Patent Office also handles renewal of trademarks. The duration of validity of a trademark registration in Israel is 10 years. After this period, the owner can apply for its renewal.
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. In such cases it is recommended to consult with an expert trademark attorney.
The Israel trademark office is in fact a department inside the Israel Patent Office. The department has various responsibilities, as a part of the management of the Israeli trademarks registry. While the department handles mostly the administrative side of trademark procedures (examination, publication of new marks, renewals, etc.), there is also a designated court which handles proceedings such as oppositions, interference proceedings and petitions for revocation.
We are often asked whether it is needed to get assistance from a local attorney for the purpose of handling trademark applications and trademark proceedings. Although it is not obligatory, being assisted by a local attorney with the relevant experience in handling trademark litigation is highly beneficial.
Trademark proceedings in Israel are held before a designated system. A local and experienced trademark attorney could help with the needed proceedings, based on familiarity with the local law and the Israeli trademark system. Without such familiarity, some undesired consequences could be reached, including the loss of a trademark. Thus, it is recommended to get the assistance of an experienced Israeli trademark attorney in trademark proceedings before the trademark office.
In this article we explained about the trademark office in Israel, as well as the proceedings under its responsibility. For any further questions, the attorneys from Decker & Offir law firm are available. 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.