Trademarks in Israel – Guide and FAQs
Trademarks in Israel may be registered for word mark; logos; three dimensional marks; sounds; color tones; and even possibly scents (a question which remained unanswered in case law).
Another classification of marks is by their intended use:
Service mark – used by their proprietors in trade with respect to either products or services.
Certification mark – used by their proprietors in relation to the activity of others, and serves to certify the quality or characteristics of such activity or products.
Collective mark – a trademark which is held by a body of persons and intended to be used by the members of such body of persons, with respect to either products or services.
The Israeli Trademark Office examines both absolute and relative grounds.
Absolute Grounds – A fundamental requirement is that the mark will possess distinctive character, inherent or acquired.
Israeli case law classifies marks along the "Axis of Descriptiveness" which runs through four groups of marks: arbitrary – eligible; suggestive – eligible; descriptive – eligible only with acquired distinctive character; generic – ineligible. Borderline cases of suggestive-descriptive may also require proof of acquired distinctive character.
The Trademark Ordinance further includes different types of absolute grounds conditions, among those: marks bearing national, governmental and religious meanings; marks of geographical nature which may lead to consumer confusion and others.
Israel is also party to the Lisbon Agreement regarding geographical indications, which sets another limitation for trademarks eligibility for registration.
Relative Grounds – Confusing similarity with other marks is determined under a "Three Prong Test": sight and sound; type of goods, marketing channels and consumer public; surrounding relevant circumstances – residual examination which may include any relevant factor, such as bad faith on behalf of either party, special meaning, actual use of the marks in question and in fact any other argument which may be relevant.
The Three Prong Test is accompanied by the examination of conceptual similarity. Such conceptual similarity may bar registration even if no confusing similarity is found under the Three Prong Test.
10 years.
Delay in renewal can be amended by payment of fees within 6 months. Lapsed trademarks can be renewed also between the following six months period, subject to a filing a detailed motion to the registrar.
Prior use is not a requirement for registration. However, registered trademarks which are not used for three years are susceptible to cancellation.
Any trademark which is not used for three years is susceptible to cancellation.
Revocation of registered trademarks may be in two cases:
- When the mark was ab initio ineligible for registration – such revocation application must be filed within five years of registration.
- When the mark was registered in bad faith – such revocation application may be filed at any time.
If use is made by only licensees and not by the proprietor itself, to avoid the risk of cancellation of the mark, licensees must be officially recorded in the trademark register. The benefit of such recordation is that the goodwill emanating from such use is attributed to the proprietor.
Yes. Both by the Trademark Ordinance and by the Commercial Torts Law, which applies the principles of passing off.
Types of trademarks under Israeli law
Trademarks in Israel may be registered for word marks; logos; three dimensional marks; sounds; color tones; and even possibly scents (a question which remained unanswered in case law).
Another classification of marks is by their intended use:
Service mark – used by its proprietor in trade with respect to either products or services.
Certification mark – used by its proprietor in relation to the activity of others, and serves to certify the quality or characteristics of such activity or products.
Collective mark – a trademark held by a body of persons and intended to be used by the members of such body of persons, with respect to either products or services.
Eligibility for Registration of Trademarks in Israel
The Israeli Trademark Office examines both absolute and relative grounds.
Absolute Grounds – A fundamental requirement is that the mark possess distinctive character, inherent or acquired.
Israeli case law classifies marks along the "Axis of Descriptiveness" which runs through four groups of marks: arbitrary – eligible; suggestive – eligible; descriptive – eligible only with acquired distinctive character; generic – ineligible. Borderline cases of suggestive-descriptive may also require proof of acquired distinctive character.
The Trademark Ordinance further includes different types of absolute grounds conditions, among those: marks bearing national, governmental and religious meanings; marks of geographical nature which may lead to consumer confusion and others.
Israel is also party to the Lisbon Agreement for the Protection of Appellations of Origin and their Internaional Registration, which sets another limitation for trademarks eligibility for registration.
Relative Grounds – Confusing similarity with other marks is determined under a "Three-Prong Test": sight and sound; type of goods, marketing channels and consumer public; surrounding relevant circumstances – residual examination which may include any relevant factor, such as bad faith on behalf of either party, special meaning, actual use of the marks in question and in fact any other argument which may be relevant.
The Three-Prong Test is accompanied by the examination of conceptual similarity. Such conceptual similarity may bar registration even if no confusing similarity is found under the Three Prong Test.
Duration of protection of registered trademarks in Israel before renewal
10 years.
Delay in renewal can be amended by payment of fees within 6 months. Lapsed trademarks can be renewed also between the following six-months period, subject to filing a detailed motion to the registrar.
?Is there a requirement of use in Israel prior to registration
Prior use is not required for registration. However, registered trademarks which are not used for consecutive three years are vulnerable to cancellation.
Cancellation or revocation of registered trademarks
Any trademark which is not used for three years is vulnerable to cancellation.
Revocation of registered trademarks may be in two cases:
When the mark was ab initio ineligible for registration – such a revocation application must be filed within five years of registration.
When the mark was registered in bad faith – such a revocation application may be filed at any time.
?Is recordation of license to use necessary in Israel
If use is made by only licensees and not by the proprietor itself, to avoid the risk of cancellation of the mark, the licenses must be officially recorded in the trademark register. The benefit of such recordation is that the goodwill emanating from such use is attributed to the proprietor.
?Are unregistered well-known marks protected in Israel
Yes. Both by the Trademark Ordinance and by the Commercial Torts Law, which applies the principles of passing off.
?Is Israel a member of the Madrid Protocol
Yes.
Types of trademarks
Trademarks in Israel may be registered for word mark; logos; three dimensional marks; sounds; color tones; and even possibly scents (a question which remained unanswered in case law).
Another classification of marks is by their intended use:
Service mark – used by their proprietors in trade with respect to either products or services.
Certification mark – used by their proprietors in relation to the activity of others, and serves to certify the quality or characteristics of such activity or products.
Collective mark – a trademark which is held by a body of persons and intended to be used by the members of such body of persons, with respect to either products or services.
Eligibility for Registration
The Israeli Trademark Office examines both absolute and relative grounds.
Absolute Grounds – A fundamental requirement is that the mark will possess distinctive character, inherent or acquired.
Israeli case law classifies marks along the "Axis of Descriptiveness" which runs through four groups of marks: arbitrary – eligible; suggestive – eligible; descriptive – eligible only with acquired distinctive character; generic – ineligible. Borderline cases of suggestive-descriptive may also require proof of acquired distinctive character.
The Trademark Ordinance further includes different types of absolute grounds conditions, among those: marks bearing national, governmental and religious meanings; marks of geographical nature which may lead to consumer confusion and others.
Israel is also party to the Lisbon Agreement regarding geographical indications, which sets another limitation for trademarks eligibility for registration.
Relative Grounds – Confusing similarity with other marks is determined under a "Three Prong Test": sight and sound; type of goods, marketing channels and consumer public; surrounding relevant circumstances – residual examination which may include any relevant factor, such as bad faith on behalf of either party, special meaning, actual use of the marks in question and in fact any other argument which may be relevant.
The Three Prong Test is accompanied by the examination of conceptual similarity. Such conceptual similarity may bar registration even if no confusing similarity is found under the Three Prong Test.
Duration of Protection in Israel
10 years.
Delay in renewal can be amended by payment of fees within 6 months. Lapsed trademarks can be renewed also between the following six months period, subject to a filing a detailed motion to the registrar.
No Use Prerequisite in Israel
Prior use is not a requirement for registration. However, registered trademarks which are not used for three years are susceptible to cancellation.
Cancellation or Revocation
Any trademark which is not used for three years is susceptible to cancellation.
Revocation of registered trademarks may be in two cases:
When the mark was ab initio ineligible for registration – such revocation application must be filed within five years of registration.
When the mark was registered in bad faith – such revocation application may be filed at any time.
Recordation of License
If use is made by only licensees and not by the proprietor itself, to avoid the risk of cancellation of the mark, licensees must be officially recorded in the trademarks register. The benefit of such recordation is that the goodwill emanating from such use is attributed to the proprietor.
Well-Known Marks in Israel
Well known marks are protected both by the Trademark Ordinance and by the Commercial Torts Law, which applies the principles of passing off.
Madrid Protocol Member
Israel is a member of the Madrid Protocol.
Information on this website is generalised and does not constitute exhaustive legal advice. Readers must seek legal counselling suitable for their personal matter.