Brand Owners ! Record your Licenses in Israel

Many brand owners that distribute their products in Israel uses local licensees instead of operating Israeli subsidiaries companies. Using local licensees has many advantages, such as saving operation and management costs and minimizing financial investments.
According to the Israeli Law (Section 41 of the Trademark Ordinance) any trademark registration that has not been in used by its proprietor for a period of three consecutive years (from date of registration) can be cancelled on the grounds of non-use. Actual commercial use is required in order to meet the Use requirements.
It’s important to remember that using the mark in Israel only by a local licensee will not considered to be “use” by the proprietor of the mark according to the Law, unless the license is recorded.
The trademark Registrar has ruled based on the Supreme Court precedent, that since the proprietor of a registered trademark did not actually use the trademark on its own, but rather licensed the use to his licensee, without registering the licensee at the Trademark Gazette, the use by the licensee could not consider to be use by the proprietor. Therefore, the registered trademark can be canceled based on lack of use. Decision from February 20, 2011 – of Oz v. Of Tene (application for cancelation of the trademark no. 169322 “Of Tene – Mifaley Basar”).
It is imperative therefore to record the license with the Trademark Office using a Local representative in order to avoid the possibility of cancellation by third parties.