Trademark protection in Israel has different aspects. An appropriate protection would require proper registration, and – when necessary – taking legal actions against infringers. Protecting your trademarks in Israel would be challenging without familiarity with the local trademark law. In this article, we will review some crucial things you need to know about the Israeli system and ways of protecting your brands and reputation.
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.
How to Protect Your Trademark in Israel in 2021?
Trademark protection is territorial, and usually requires registration of one’s marks in order to protect them properly. If you wish to protect your logos, brands or slogans in Israel, registration is needed for that purpose. However, trademark registration should be taken care of properly in order to gain the precise scope of protection.
Moreover, registration is merely the first step to be taken as a part of protecting one’s trademarks. During the lifetime of the registered trademarks, further steps are needed to preserve them. Such steps include using the marks within the Israeli territory, preventing others from using them and also renewing the registration on time and in accordance with the Israeli trademark law.
The Israeli trademark system has its unique features, and it thus requires expertise in order to grant the right protection for one’s brands. Handling trademark protection without that expertise can cause various undesired consequences – from counterfeit products being sold in Israel to the loss of one’s protection in its own brands. Below we will give a brief introduction to the Israeli trademark system, and discuss possible consequences of an improper trademark protection.
The Israeli Trademark System
The Isareli trademark system is divided into several different public authorities. The processing of trademark applications and handling the Israeli trademarks registry is handled by the Israel Patent Office. The office has a trademark department. The department is in charge of reviewing and examining new applications for trademark registration.
In addition, the office has a designated court, under which opposition, revocation and interference proceedings are being held and decided upon. We provided more information about the office and its responsibilities in this article.
The Israel Patent Office is not in charge, however, of trademark enforcement. Enforcement of trademark rights can be handled by a number of Israeli authorities, as well as privately. Private enforcement may include sending of warning letters to infringers, usually by a trademark attorney. It can also involve alternative dispute resolution proceedings (ADR), such as arbitration and mediation.
The public authorities in Israel with the power to handle trademark enforcement include the Israeli courts, the Israeli customs and the Israeli police. Each authority is in charge of different actions required for the purpose of enforcement. We elaborated on the different legal actions that can be taken in order to enforce trademark rights in this article.
The Israeli Trademark Law
There is a list of statutory and regulatory sources which altogether govern the Israeli trademark law. Familiarity with those different laws and regulations is crucial in order to gain an appropriate legal protection for one’s brands. The list includes the Trademark Ordinance, which is the main trademark statutory source in Israel. The ordinance includes the definition of a trademark, and also stipulates what marks are not qualified for registration in Israel.
Apart from the ordinance, there are other important statutory and regulatory sources, such as the Trademark Regulations. The regulations set the legal procedures in the court of the Israel Patent Office. It further covers other important topics, such as the Israeli classification system (which is based on the Nice Agreement) and the registration fees in the patent office.
Another important legislative source is the Commercial Torts Law, which allows the gaining of partial legal protection for unregistered marks, under the tort of ‘passing off’. It is important to highlight that passing off lawsuits for unregistered marks are usually much more challenging, compared to trademark infringement lawsuits, where the legal rights are generally settled in advance. Therefore it is highly recommended to register trademarks in Israel in order to ensure that the trademarks would gain legal protection.
The list of trademark laws and regulations in Israel goes on. It includes legislative sources with regards to preventing counterfeit goods from being imported to Israel (the Customs Ordinance and the Customs Regulations). Another important law is the Israeli Criminal Procedure Law, which allows, in some cases, to file private criminal actions against infringers. For further reading you can find an extended article we published on our website in this regard, here.
Why Registration Alone is Not Sufficient for Trademark Protection in Israel?
As mentioned above, handling trademark registration properly is crucial in order to protect your brands. However, there are a number of steps that must be taken prior to handling trademark registration. Such steps include ensuring that the trademark is not taken nor 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. There is also a need to ensure that the mark is qualified for registration and meet 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.
In any case, it is important to note that registration alone is not enough. After a trademark is accepted to the Israeli trademarks registry, it can still be revoked in cases where it is not used, or infringing rights of well-known international marks. Similarly, cases of trademark dilution, in which third parties attempt to enjoy a trademark’s goodwill, should be addressed in order to prevent the scope of protection from being narrowed.
In addition, trademark renewal should be taken care of, in order to extend the lifetime of the trademark, which can technically last forever. The possibility of renewal depends on preservation of the trademark during its lifetime. Thus, activities such as avoidance from using the trademark in the territory, could eventually prevent the option of renewal of the trademark.
As we have shown above, trademark protection in Israel requires performing different activities. Such activities may include handling trademark registration properly; conducting a trademark search before filing an application; preservation activities during the lifetime of the trademark; taking legal actions against infringements; and renewal of the trademark in accordance with the law.
All the above activities require familiarity with the local trademark system. Otherwise, the trademarks might won’t be registered by the trademark department, revoked from the registry, infringed or refused for renewal. Thus, in any case of a doubt regarding the protection of your trademarks in Israel, it is best to consult with an Israeli trademark expert attorney, with the knowledge and experience needed for this important mission.
For any further questions and inquiries about trademark and IP protection in Israel, you may contact a trademark expert from our firm, who will be to assist you with all you need to know. The law firm of Decker & Ofir is well experienced with representing clients in various trademark and IP matters, in Israel and abroad.