Opposition to trademark registration is the most common form of proceedings before the Israeli Trademark Registrar. These proceedings have much similarity to civil court proceedings, but also unique procedural characteristics and aspects. They require familiarity with the Israeli trademark law and trademark system. In this article, a trademark attorney from our firm will explain some things you should know about these proceedings.
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, including opposition proceedings, trademark lawsuits, etc.
How to Handle a Trademark Opposition in Israel
You have filed a trademark application in Israel. The application succeeded to pass the review of examiners at the trademark department of the Israel Patent Office. After this lengthy process and the acceptance of the trademark, it is finally published in the Israeli Trademarks Journal. Unexpectedly, another party files an opposition notice to the trademark registration, and this initiates opposition proceedings. What should you do now?
As long as the opposition proceedings are being held, trademark rights would not be granted. Moreover, avoiding from proving that the mark you applied for is qualified for registration would usually lead to the rejection of the mark from registration. It means that you must take opposition proceedings very seriously and understand how to defend your mark properly. Below we will explain about the proceedings and what they require from trademark applicants.
Trademark Registration in Israel: A Brief Explanation
In order to obtain trademark registration, one must file a trademark application, which will be handled and examined by the trademark department. After the examination process and a final approval, the trademark will eventually be added to the Israeli trademark registry. But before the mark is officially added to the registry, the trademarks are published in the Israeli trademark Journal. After their publication, there are 3 months in which oppositions can be filed against the registration of the trademark.
Who Can File Trademark Opposition?
Any person or entity can file an opposition against the registration of a trademark. The Trademark Ordinance (the main statutory source of trademark law in Israel) does not limit the right to oppose for interested parties alone. That is, not only competitors or those who claim ownership of the applied mark can oppose its registration.
Available Grounds for Trademark Oppositions
According to the Trademark Ordinance, there are 2 possible grounds for the opposition: (1) A third party may claim that it is the owner of the mark in the application; (2) A third party may claim that the mark in the application is not qualified for registration under the Israeli trademark ordinance.
Stages of Trademark Opposition Proceedings
Opposition proceedings are held before the Israeli Trademark Registrar, its deputy or an IP adjudicate (Posek), in the designated court of the Israel Patent Office. As such, they are similar in their procedure to civil lawsuit proceedings. They as well include filing of pleadings and evidence, examination of declarants and final decision of the court. Below we will elaborate on the different stages of the proceedings.
Response to the Notice of Opposition
In Israel, trademark opposition proceedings are different from patent opposition proceedings. In the latter, the proceedings begin with filing a short notice of opposition, and the grounds of opposition can be filed on a later stage. In trademark opposition proceedings, the grounds must be detailed in the notice of opposition.
After the notice of opposition is filed, the Israeli Trademark Regulations state that the Applicant is required to file its response to the opposition within 2 months. While a petition may be filed in order to extend that term, a response cannot be avoided should the Applicant wish to obtain registration. Failure to file a response to the notice of opposition is equivalent to abandonment of the application by the Applicant.
An alternative course of action by the Applicant could be to withdraw its application and file an alternative trademark application. This course of action could be effective in cases where the Opponent’s arguments are threatening to the application. In such cases, filing an alternative application with a mark that takes the arguments of the opposition into consideration could prevent future oppositions against the mark.
As mentioned above, the burden to prove the qualification of the applied mark for registration lies on the Applicant. It means that should the Applicant fail to present valid evidence for the trademark’s qualification for registration, the Registrar could decide to reject the mark from registration.
The Opponent will file its evidence within 2 months from the date of Applicant’s response to the notice of opposition. Should the Opponent fail to submit its evidence, it would be considered as waving of the opposition. In such a case, the proceedings would usually come to an end with a decision on the registration of the Applicant’s trademark.
Should the Opponent’s evidence be filed, the Applicant would be required to submit its evidence 2 months after the submission by the Opponent. This term is extendable. The form of which the evidence is required to be filed (for both the Opponent and the Applicant) is an affidavit. The affidavits should be supported by the relevant materials of evidence.
Upon conclusion of the evidence stage, the Registrar will hold a hearing. Appearing before the Registrar for the hearing is generally mandatory. During the hearing, the parties or experts on their behalf will be cross-examined on their affidavits or expert opinions, accordingly. In some cases, following the hearing, the Registrar may require the parties to submit written summations. Following the hearing, the Registrar will give a final decision on the opposition.
How Can an Applicant Defend Against Opposition Grounds?
As stressed above, the Applicant bears the burden of proof and therefore must defend its mark. There are various possible defenses. For instance, if the mark has already been registered as a trademark abroad, it could generally serve as a defense. In cases where the Opponent claims that the mark is similar to a registered mark, it could be useful to demonstrate how the mark is distinctive and therefore there is no fear of confusion among consumers. The list of possible defenses is open and changes from one case to another.
What Can Be Done If Opposition is Accepted?
It is worth noting that the law allows to appeal the final decision by the Registrar 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. Therefore, the decision in the opposition proceedings is not necessarily the final one, and it could be reviewed by the Israeli juidicial system.
Importance of Local Representation in Opposition Proceedings
Opposition proceedings in Israel are held before a designated court. Representation by a local and experienced trademark attorney could help with the proceedings, based on his/her 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 registration. Thus, it is recommended for applicants to get the assistance of an experienced Israeli trademark attorney in trademark opposition proceedings before the trademark office.
In this article we elaborated about opposition to trademark registration in Israel. If you have more questions or inquiries, an attorney from Decker & Offir law firm will be happy to help. Our attorneys specialize in trademark law and intellectual property, and are experienced with handling trademark registration and opposition proceedings before the Israel Trademark Office and all the Israeli tribunals.