Petition for revocation of a trademark based on non-use
What is a non-use claim?
The Israeli Trademark Ordinance allows any third party to file a petition for revocation of a trademark due to non-use of the mark for three consecutive years.
What is necessary to counter a non-use claim?
In general, to counter a non-use claim and prove use of the mark, the owner of a trademark or his licensee are required to offer for sale in Israel goods or services that carry the trademark registration. Use of the trademark registration should maintain its distinctive character and include the goods and services for which it is registered. Advertisements with a trademark registration do not suffice to prove use of a trademark.
The exception to this rule is special circumstances in commerce for non-us of a trademark registration. For example, if the owner of a trademark registration had a genuine intention to use it but was unable to due to objective difficulties, such as customs regulations. Another example is when a trademark is not in use but is still well known. In this case its revocation may allow the registration of similar trademarks and cause consumer confusion.
Who carries the burden of proof?
The registration of the mark creates a legal assumption that it is in use. Therefore, the burden of proof is on the party who files a petition for revocation based on non-use. If the party who files the petition can show initial proof of non-use, then the burden of proof may shift to the owner of the trademark.
What are the rules and time frame of the petition for revocation of a trademark based on non-use?
Arguments: A supplicant third party requesting to revoke a registered mark shall file a petition stating the arguments for the revocation. The owner of the trademark registration has two months to file his response to the arguments.
Evidence: Then, the parties will be required to support their arguments with evidence in the form of declarations, affidavits, materials and expert opinions. The supplicant has to file his evidence within two months after the owner of the trademark filed his response to the petition. Two months later, the owner of the trademark is allowed file a counter set of evidence.
Hearing: after the parties file their evidence, the Israeli Trademark Office will schedule a date for an oral hearing before the Registrar. At the hearing, the Registrar will cross-examine the parties based on their evidence.
Summations: Subsequently, the parties will be required to submit their summations. Then, the Registrar will issue a decision. The parties may appeal on the decision to the district court no later than 30 days after it is issued.
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