Competitive Trademarks Procedure Under Israel Trademark Law

Let's take a case, which is not necessarily a theoretical one. Applicant A is a cosmetics company from the USA decides to file for a trademark application in class 3. Five months later, and with no connection whatsoever, applicant B which is a cosmetics company from France decides to file for a similar mark in class 3 as well and for the same goods. What will happen, who will get the mark? Will both marks be registered? Who deserves to get the mark, the applicant that filed first? The one that gained more goodwill in Israel, or the one with the higher sales rank? The answer is a little bit of both and more.

Section 29 of the Israel Trademark Law states a rather unique procedure that we doubt exists on other known territories. Useful information (in the form of a Q& A can be found on the following link: www.i-property.co.il/trademarks.htm).

According to which, in a case as described above, and provided neither mark has been accepted for registration, the Registrar has the authority to initiate such a procedure. In this procedure, both sides are invited by the Registrar to try to negotiate amongst themselves to explore the possibility of reaching an agreement that will allow the registration of both marks. Although the Registrar is not obligated to accept any settlement agreement the parties reach (if for example he believes tat the likelihood of confusion between both marks is so high that they are high chances that the public will get confused by the marks, the agreement will most likely be disapproved by the Registrar.

If negotiations fail, the Registrar will seta date for both parties for file their claims, in a manner of affidavits and evidence proving their mark to gain more goodwill in Israel, that large sums of money have been invested in advertising the mark, and that there are high sales rank of the products bearing the mark so far.

In such procedure and according to current precedents, the Registrar will examine three main things:

1. Who filed the mark first;

2. The reason and bona fide of each side in in selecting the specific name of the mark;

3. The volume and intensity of use of the

mark each side made before filing the application and afterwards;

After both parties, files their evidence, the Registrar will set up a hearing date, on which the persons declaring on each side, will be cross examined, following by which, a summaries on the part of each side, will be filed. The Registrar will then deliver his decision to determine which application will be removed from the registry and which one will proceed to the Examination stage. An interesting fact, one should be aware of is that due to archaic law, appealing on the Registrar's decision usually goes straight to the Israeli Supreme Court.

Although the data provided on this article should be error free and accurate, it can under no circumstances be considered as a legal advice and one should contact a lawyer on a case-by case advice