There are several kinds of refusals usually issued by the Israeli Trademark Office. We have decided to share with you our 5 important tips on how to overcome a Trademark Refusal in Israel based on our intensive experience in Trademark prosecution. This is a must read for every trademark attorney who files Trademarks in Israel.
- Beware of What You Write in Your Response – All Trademark Files in Israel are Public
Since 2015 all trademark files in Israel, covering most of the examination process of trademark applications, are public and can be viewed easily online by others.
It is very important to understand that any claim you claim to overcome any refusal may be held against the client, either by a certain competitor or by any other third party who can easily gain access to the online files. Make sure no confidential information is subbmited in your response.
For example, if you agree to limit the protection of your application just to overcome a certain refusal your limitation can be used by any third party to block any claim of trademark infringement against him.
Your pleadings in the prosecution process might negatively affect your enforcement options. Therefore, we always recommend asking the local attorney to provide a short brief of the respond by bullet points in English.
- Do Not Respond Immediately to an Office Action – Wait and Consider All Options First
Our usual instinct as trademark attorneys is to ask the local attorney to respond an office action by the deadline. It is very important to consider all options before you do so. Such option can be for example to wait until the other side has responded.
For example, once you receive a refusal (Office Action) in which your application cannot be registered based on similarity to other application that hasn’t been accepted yet, you might want to wait until the owner of the cited application has answered, to see his respond and then to decide on the proper course of action.
In that case you can wait a few days before the deadline expires to review the other side’s response first. Reviewing the claims of owners of the cited application first can provide you with material advantage in the process.
- Ask the Local Attorney to Demonstrate the Use of the Mark using Online Information
In lack of distinctive character refusals, trademark attorneys are confronting claims against the character of the mark. It is very important to show the examiners the actual use in the market using online information.
In many cases we were able to prove that the mark is distinctive by showing the specific use in the market and how is the specific use in the market acquires a special character to the mark.
- Use Foreign Registrations
In lack of distinctive character refusals, if your client has foreign registrations from his Country of Origin for the same mark for the same list of goods, then you can use Section 16 of the Israeli Trademark Ordinance and request that the registration will be based on foreign registration. By doing so you can efficiently overcome a lack of distinctive character refusal.
- Ask the Local Attorney to Call the Examiner BEFORE responding the Office Action
Experience shows that in many cases a quick chat with the Examiner can do miracles and be even more efficient than an elaborated response.
We recommend in some of the cases to ask the local attorney to have a short chat with the Examiner, understand his views and specifically ask him what you can provide in order to change his mind BEFORE submitting a detailed response.
Indeed, investing the time and energy in talking with the Examiner can be time consuming, but It is very important to understand that if you fail to convince the Examiner, the second phase would be traveling to Jerusalem, attending the hearing and persuading the Trademark Registrar, this could be very costly for the client even before appealing the decision to the relevant District Court.
Yossi Sivan & Co. Law Office is specialized in Trademark Prosecution and litigation in Israel.
The above shall not be considered as any legal opinion whatsoever and we recommend consulting with a professional attorney.