Question 1

What is a trademark?

Accepted Answer

A trademark protects, inter alia, letters, names, figures, colors, sounds and combinations thereof with respect to the services or goods of its owners. Contrary to popular belief, a trademark is not just a name or a logo. A trademark is each unique element in a product that allows consumers to identify it with a specific source.
Thus, for example, a trademark may consist of words (for example, Nokia, Red Bull, Google, etc.), a unique caption shape (for example, the M letter of McDonald&#8217;s), a unique logo (for example, the famous &#8220;Swoosh&#8221; logo of Nike or the three stripes of Adidas), or even a particular figure identified with the product (e.g. a figure of a cow identified with &#8220;elite&#8221; chocolate).
Sometimes, however, the trademark is a more &#8220;complex&#8221; element of the product: a unique label design (e.g., the famous &#8220;Coca-Cola&#8221; label), a unique color associated with the product, and even a three-dimensional design of a container (e.g., the unique design of Coca-Cola glass bottles), or of the product itself (for example, the triangular shape of &#8220;Toblerone&#8221; chocolate).
Moreover, even smells and sounds can be used as trademarks (for example, a trademark for the sound played when a computer is turned on with an Intel processor installed).
As stated, each unique element in a product that allows consumers to identify it is eligible to be used as a trademark.

Question 2

Why is it important to register a trademark?

Accepted Answer

First, a registered trademark gives its owner protection and the ability to block competitors from using the reputation that the trademark owner has gained. The main advantage of registering a trademark over protection through other legislation is that there is no need to prove reputation.
In addition, a registered trademark mark links the product to its owner, and the deeper the identification with the mark, the more there is identification with other products of the same manufacturer or service provider. A trademark is a kind of indicator of the quality of the product or service and for this reason, recognizable marks are assets of great significance.
Third, for companies and ventures that need investment, the issue of intellectual property rights protection is extremely important, and is one of the crucial considerations when investors come to examine the viability of investing in a company /venture.

Question 3

Do I have to register a trademark in order to get protection?

Accepted Answer

Although you do not have to register a trademark in order to enjoy some of the protections it provides, registering a trademark has significant benefits.
By default, trademark owners enjoy some degree of protection simply by using the trademark, however registered trademark owners enjoy the following additional benefits:

Easy protection and registration in other countries.
The burden of proving prior use of the mark does not rest with the trademark&#8217;s owners.
Legal power in preventing the import and marketing of infringing goods.
Notice to the public of the use of the mark.

Question 4

What kinds of trademarks can be registered in Israel?

Accepted Answer

In Israel, as in other countries, each unique element in a product can be registered as a trademark, such as letters, names, designs, figures, colors, sounds, smells and combinations regarding the services or goods of the sign holders, as long as the same element allows consumers to identify the product/ service.

Question 5

What is the trademark registration process?

Accepted Answer

The first step in the trademark registration process is to select the mark and the types of goods/services in which the applicant will want to register the mark. As part of this process, it is advisable to conduct a preliminary search in the relevant territories in order to check whether there are trademarks and / or trademark applications for similar / identical marks.
Once the mark and the types of goods and / or services have been decided upon, an application for registration must be submitted to the Registrar of Trademarks in the relevant countries. Applying for a trademark registration involves paying a fee to the government authority in the requested country.
As part of one application, only one trademark can be protected, but under the same trademark, protection can be requested in several areas of services / goods classified in accordance with an agreed international classification system.
The application for registration of the trademark is examined by the Registrar of Trademarks (examination stage), and this stage may take several months in which the Registrar of Trademarks examines whether the requested mark actually meets the requirements of law and case law and is entitled to protection of a registered trademark.
If the examination phase passes successfully, the application moves to the publication phase during which a notice is published in the trademark diary that allows those who wish to file an objection to the registration of the mark for a limited time. If no objections are filed, the mark will be approved and registered.
Registration of the registration mark is not limited in time, but is subject to the payment of renewal fees, and in some countries there is a requirement to actually use the mark in order to continue to enjoy its protection.

Question 6

How extensive is trademark protection?

Accepted Answer

First, it is important to understand that trademark protection is territorial, therefore, the mark must be registered in each country individually. On September 1, 2010, Israel&#8217;s accession to the Madrid Protocol for the Registration of International Marks entered into force, and as of that date, one international application can be submitted (based on an application or registration of a mark in Israel), requesting registration of the mark in all member states.
A registered trademark gives its owner protection and the ability to block competitors from using the reputation that the trademark owner has gained. The main advantage of registering a trademark over protection through other legislation is that there is no need to prove reputation.
In addition, a registered mark belongs between the product and its owner and the deeper the identification with the mark, the more there is identification with other products of the same manufacturer or service provider. A trademark is a kind of indicator of the quality of the product or service and for this reason, recognizable marks are assets of great significance.
Unlike an unregistered trademark, a registered trademark gives its owner additional benefits, such as:

The burden of proving prior use of the mark in the presence of a legal dispute does not rest with the mark owners.
Notice to the public of the use of the mark.
Easy registration and protection in other countries.
Legal power to prevent the import and marketing of goods that infringe the registered trademark.

Question 7

Should a trademark license be recorded on the Israeli Trademark Register?

Accepted Answer

Israeli law is very clear on the issue of registering a license to use a registered trademark &#8211; no registration, no license.
Section 50 of the Israeli Trademarks Ordinance provides that a registered trademark owner may authorize another person (&#8220;licensee&#8221;) to use his mark in respect of the goods in respect of which the mark is registered, in whole or in part, but shall not be valid unless registered in accordance with this section. As long as the licensee uses the mark for the purpose of the goods during his business in accordance with the authority and subject to the conditions or restrictions therein, the right to use the mark by the licensee will be regarded as a unique use by the mark holder.
Section 51 of the Ordinance sets out the conditions for such license application, including: details of the relationship between a trademark owner and the future licensee, including the level of control of the trademark owner on the licensee’s use of the trademark, the goods for which the license is requested, the period of the license, and if a registration is requested for a limited time.

Question 8

What types of searches are possible of the records of the Israeli Trademark Register?

Accepted Answer

For searching for marks in the Israeli Trademark Registry, it is possible to perform a free self-search on the Israeli Patent Authority website using the database. It is also possible to request a paid official search, which will be performed by the department&#8217;s examiners, who have at their disposal computer tools that allow a more accurate search to locate similar signs.

Question 9

Why is it important to actually use my trademark?

Accepted Answer

In some countries there is a requirement to actually use the mark in order to continue to enjoy its protection. If the trademark is not used within the period prescribed by law, this may constitute a ground for revoking the mark.

Question 10

How do I know if a certain mark is protected?

Accepted Answer

It is advisable to use the professional search engines in the relevant territories to check whether similar or identical trademark applications have been submitted, or whether a similar or identical trademark has already been registered. In addition, keep in mind that even if the trademark is not registered, it may still have gained a reputation and is therefore entitled to some protection under various laws, so it is also advisable to conduct independent search, even in a &#8220;regular&#8221; search engine such as Google.
It is very important to get professional advice from an IP attorney who specializes in this field, and who knows how to analyze the search results, in order to not to be exposed to a claim for infringement of intellectual property rights and other rights.

Question 11

What is the difference between a registered trademark and a well-known trademark?

Accepted Answer

You do not have to register a trademark to enjoy some of the protections it provides, but registering the trademark has significant benefits, such as the ability to register and protect the mark most easily in other countries, legal power to prevent the import and marketing of infringing products, and more.
As stated, a well-known trademark can be protected even if it is not registered in Israel, if the trademark owner has proved that the trademark has acquired a reputation, meaning that the consumer public identifies the trademark with the trademark owner and its products. Keep in mind that proving reputation is not a simple thing and it also requires a considerable financial outlay (such as conducting a consumer survey and more). On the other hand, in an infringement lawsuit, it is sufficient that the plaintiff bases his claim on a registered trademark, and he does not have to prove that he has acquired a reputation.
Also, the scope of protection of a well-known unregistered trademark is more limited than the scope of protection of a registered trademark. For example, the remedy given for infringing a well-known trademark that is not registered is a restraining order only.
Similarly, if the well-known trademark is registered, then an application for registration of an identical or similar trademark will be rejected by the Registrar even if it&#8217;s not related to the same type of product. If the regular mark may indicate a connection between the well-known mark and the type of product, the well-known seller may be harmed. Thus, while an unregistered well-known trademark confers protection on products sold in Israel or on products of the same class; A registered well-known trademark registered in Israel also provides protection for products that are not of the same class.

Question 12

What can I do once I learn that my trademark is being infringed?

Accepted Answer

The answer to the question depends on the status of the trademark &#8211; Is it a registered trademark? A well-known unregistered trademark? Is it in a registration process?
In order to decide on the right and most effective strategy, it is recommended to consult an attorney who specializes in the field, and who knows how to recommend steps to be taken, such as: investigating and gathering evidence, sending a warning letter, filing a lawsuit, negotiating, filing a trademark application and more.

Question 13

What does the Israeli Trademark Office check before allowing a trademark application?

Accepted Answer

The examiner will examine the application in order to verify whether the mark is eligible for registration in accordance with the legislation and working instructions of the Patent Authority.
 
If the examiner decides that the mark is not eligible for registration, an examiner report (office action) will be sent, detailing the reasons for the refusal, (such as the ineligibility of the mark for registration in accordance with the Trademarks Ordinance, similarity to another registered/unregistered trademark, misclassification, a too general classification, or an unclear classification of goods/services, or for other reasons).
 
The applicant must respond to the allegations in the letter of defects within the set deadlines, and if the response answers the requirements, the mark will be accepted for registration. If not, the written litigation will continue.
 
If this litigation reaches a dead end, a hearing may be sought before the Registrar of Trademarks.
 
From the moment the letter of refusal is issued until the application is accepted or closed, the status of the application will be &#8220;second examination&#8221;.
 
If the examiner decides that the mark is eligible for registration, an acceptance letter will be sent and the status of the application will change to &#8220;allowed&#8221;. The mark will be published in the trademark journal at the end of the month in which the mark is received. From this date, and for 3 months, an objection to the registration of the mark may be filed. If no such objection is filed within the prescribed period of time, the mark shall be registered and a registration certificate shall be sent to the applicant. If an objection is filed, legal action will be taken before the Registrar of Trademarks.

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