Strategizing Your Trademark Filings in Israel

During the course of their brands portfolio management strategy, companies planning to expand their businesses outside of their native country, and is marketing or is planning on marketing its goods or services in Israel, will eventually wish to have its trademark protected in Israel.

Brand management portfolios deliberate amongst themselves considering the budget factor, when the best time to file is.  The below article is designated to provide the reader with useful tips practice-wise when considering the filing of trademarks in Israel.

Israel currently operates under a mono-class system, namely that each trademark in each class will be considered as a separate application, and be allocated a filing date and a serial number.  After filing an application, the applicant can currently expect a backlog of 10-13 months until the application arrives to examination.  The backlog is to be considered in case applicant wishes to commence its business activity in Israel and be protected trademarks-wise.

When filing for a trademark in Israel, it would be wise to have an already registered trademark to should be owned by the same applicant of the Israeli application, for the same goods or services and for the same class number.  It is advisable that the filed mark in Israel be as similar as much a possible to the country of origin's already registered trademark.  

Under Israel Trademark Ordinance, section 16 states that the Registrar will not refuse the registration of a mark that is already registered in the applicant's country of origin.  Section 16 states as follows (translation courtesy of WIPO):

16.-(a)  Notwithstanding the provisions of sections 8 to 11, the Registrar shall not refuse to register a trade mark registered as a trade mark in its country of origin unless-

(1) Registration of the mark in Israel will infringe rights acquired in Israel by another person; or

(2) the mark lacks distinctiveness; or

(3) the mark consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, place of origin, intended purpose, time of production or value of the goods; or 

(4) the mark is customary in current language or in the bona fide and established trade practices in Israel; or

(5) the mark is contrary to public order or morality;

(6) the mark is likely to deceive the public.

(b) For the purpose of a trade mark whose registration under this section is applied for, "country of origin" means the Union State in which the applicant has an effective and serious industrial or commercial establishment or, if he has no such establishment within a State as aforementioned, the Union State in which he has his domicile or, if he has no domicile within a State as aforesaid, the Union State of which he is a national.

(c) Where the Registrar accepts for registration a mark which would not have been registered but for the provisions of subsection (a), such fact shall be indicated in the publication of the application and in the Register.

In practice, if a trademark is initially refused by the Registrar, for various reasons including the pre-existence of a conflicting trademark or lack of distinctiveness or in case the examiner believes that the marks is considered descriptive, applicant can very well argue that if such trademark was filed and registered in its country of origin, it can very well be registered in Israel and the chances of the public to be confused with pre-existing marks or that due to the long time in which the trademark was registered in its country of origin, it has very well gain distinctiveness outside of the country of origin in general and in Israel, in particular.

The above should not be considered as a legal advice and should be relied upon.  Every case should be considered on a case by case, solution.