How to Overcome A Trademark Refusal Issued by the Israeli Trademark Office

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Overcoming a trademark refusal in Israel, as in any jurisdiction, requires a strategic approach that involves understanding the reasons for the refusal, gathering relevant evidence, and potentially engaging legal assistance. Here’s a general guide on how to handle a trademark refusal issued by the Israeli Trademark Office:

1. Review the Trademark Refusal :

Carefully review the official refusal notice you received from the Israeli Patent Office (IPO). Understand the specific grounds on which your trademark application was refused. Common reasons include similarity to existing marks, lack of distinctiveness, and descriptive nature of the mark.

2. Consult an Attorney :

If you haven’t already, consider seeking legal advice from a trademark attorney with expertise in Israeli trademark law. A qualified attorney can help you understand the grounds for refusal, assess the strength of your case, and provide guidance on the best course of action.

3. Analyze the Grounds for Refusal :

Work with your attorney to analyze the grounds for refusal and determine whether they are valid. If the refusal is based on prior conflicting trademarks, assess whether the similarities are significant enough to cause confusion among consumers.

4. Evidence and Arguments :

Develop a strong case by gathering evidence that supports the distinctiveness, non-confusing nature, or other key aspects of your trademark. This might include evidence of prior use, market recognition, consumer surveys, and other relevant materials. Your attorney can help you present compelling arguments based on this evidence.

5. Negotiation and Response :

Your attorney will prepare a well-structured response to the Israeli Trademark Office’s  refusal notice. This response should address each ground of refusal with relevant arguments and evidence. Sometimes, engaging in negotiation with the IPO’s examiners can lead to a resolution without needing to go through a formal appeal process.

6. Appeal Process :

If the refusal is not resolved through negotiation, you might need to consider filing an appeal with the Trademark Registrar or the relevant court. The appeal process involves presenting your case to a higher authority, and your attorney will guide you through the necessary steps and documentation.

7. Modification or Amendment :

Depending on the reasons for refusal, you might have the option to amend your trademark application to address the issues raised. Your attorney can advise you on the feasibility of making changes to your application.

8. Monitor Deadlines :

Keep track of deadlines for responding to the IPO or other relevant authorities. Missing deadlines could jeopardize your ability to overcome the refusal.

9. Consider Local Practices :

Israeli trademark law and practices may differ from those in other jurisdictions. It’s important to understand and adhere to the specific procedures and requirements of the Israeli trademark system.

Remember that trademark law can be complex, and each case is unique. Engaging a knowledgeable attorney who specializes in trademark law can greatly increase your chances of successfully overcoming a trademark refusal in Israel.

For responding a Trademark Office Refusal contact us.

Is Selling Perfumes with Similar Scents using Famous Brand Names as Indicators Considered Trademark Infringement ?

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Does selling perfumes with similiar scent to those of famous brand names, while using the translated names of such brands as indicators, qualify as trademark infringement ?

In the fragrance industry, companies invest extensive efforts to establishing a unique commercial identity and recognizable scents.

This involves also creating exquisite perfume bottles, crafting distinct fragrances and planning meticulous promotional campaigns.

Certain renowned fragrances are distinguishable even from a distance. 

Background

A recent Israeli court ruling delved into a situation where a company producing cheap perfumes claimed their scents closely resembled those of high-end perfumes.

The Defendant used translated names (to Hebrew) of famous perfume brands for association and identification, such as Chloe, Hugo Boss, Britney Jean Spears, Lancome, ZINO DAVIDOFF and more.

Below are the defendant’s bottles and sale presentations:

The Defendant used the words COMPATIBLE SCENT (in hebrew) in proximity to the translated names of the brands. They didn’t use the logos or English names of the famous brands.

The dispute questioned the legality of this practice and whether the defendant company had infringed trademark law.

The defendant argued its actions were permissible as customers were aware they were buying their products, not those from the trademark owners, therefore there could be no confusion.

The case raised fundamental questions:

Did the defendant infring the trademark law using similar marks in Hebrew ?

Could the defendant claim the “fair use” doctrine, asserting their use of trademarks aimed to describe their products?

Did the defendant commit unlawful enrichment ?

The Judgmnent

The District Court dismissed the lawsuit. It held that directly using registered trademarks by third parties could infringe trademarks. Similarly, copying them with minor differences not creating substantial distinction could also be infringement.

Nevertheless, Israeli law allows referencing products with registered trademarks for similar goods, as long as no consumer confusion arises.

The Court determined that the defendant’s actions did not infringe upon the plaintiffs’ trademark rights, since there is no confusion, and considering that the references to the brand names were presented in good faith by the defandnats.  

The Court also ruled that the use of the translated names of the famous brands is not considered to be “trademark use”, under trademark law, therefore there is no trademark infringement.

Names of Perfume Brands as Indicators – Reasonable and True Use

The judge decided that the use of the translated names of such brands is anyway a true and reasonable use of the mark, which supports the fair use claim.

The Court required the defendant to prove fragrance similarities and decided that the defendants has succeeded proving such a similarity.

However, the Court imposed practical adjustments for the Defendant’s products sold in Israel. The English term “Compatible” on labels had to be replaced with its Hebrew equivalent, with a larger font size for visibility.

In conclusion, the Court ruled defendant’s practices is not considered to be trademark infringement or any violation of other laws (such as publicity right or unjust enrichment). 

This instance highlights the intricate balance between potential trademark infringement and the legitimate utilization of brand names as indicators. Interestingly, within the past two years, the market has once again ventured to explore the boundaries of trademark protection within the perfume brand domain.

A Trend in Perfume Cases – Prioritizing the Interests of Free Competition over the Rights of  Trademark Owners

In a prior occurrence, a distinct case emerged where the defendants marketed original perfume liquids, delicately poured into compact bottles, while utilizing the “Channel” brand name as an indicator. This particular case progressed through the legal system, culminating in an appeal to the Supreme Court subsequent to the District Court’s initial ruling. The District Court’s verdict maintained that the sale of original perfume liquids employing brand names as indicators did not amount to trademark infringement. The Supreme Court then engaged in the case and remanded it to the District Court. The task at hand was to assess, guided by the expert opinions submitted by the involved parties, whether the act of rebottling substantially altered the perfumes. This determination stands as yet another illustration of how Israeli courts exhibit a propensity for prioritizing the interests of open competition over the rights held by trademark owners.

We estimate that an appeal will be soon filed against this judgment.  

C.F. (Tel-Aviv District Court) 61865-03-17 Chloe S.A.S and others v. Oil le Amor Ltd. (July 30, 2023).

Disclaimer: nothing in the above shall be considered as any legal advice whatsover.

Items sold by Rami Levy with BHPC trademark

Record-Breaking Trademark Infringement Award In Israel – Good News for Brand Owners

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In a groundbreaking legal ruling that has captured attention, the Tel Aviv District Court has recently delivered a record – breaking trademark infringement award with far-reaching implications.  

Rami Levi, one of the biggest supermarket chains in Israel, has been ordered to compensate Lifestyle Equities, the owner of the iconic BEVERLY HILLS POLO CLUB, in one of the highest awards in Israel for trademark infringement.

This landmark decision sets an extraordinary precedent in Israel’s legal arena, representing a remarkable triumph in the realm of trademark infringement.

The court ruling concluded a long-standing dispute between the parties, which lasted nearly a decade.

Here’s the story in a nutshell:

General Background

The plaintiffs, Lifestyle Equities C.V. and Lifestyle Licensing B.V., own the rights to the well-known BEVERLY HILLS POLO CLUB (BHPC) brand, featuring the iconic horse, rider, and polo stick, marketed in many countries worldwide, primarily in the fashion, footwear, bags, and more.

The plaintiffs granted a license to an Israeli company for the design, production, and distribution of BHPC products in Israel, specifically in the category of underwear.

The license included various restrictions, including a prohibition on distributing the products in food stores and marketing products not approved by the plaintiffs.

In 2014, the plaintiffs discovered that underwear products bearing their trademark, which were not approved as required, were imported to Israel by Yafiz and sold in Rami Levy stores.

Items sold by Rami Levy with BHPC trademark

The plaintiffs also learned that the license holder transferred her operations to another company without informing the plaintiffs or obtaining their approval. Under these circumstances, it was alleged that the products sold in Rami Levy stores were infringing.

In 2014, the plaintiffs sent warning letters to Rami Levy and Yafiz, demanding they cease the distribution of the infringing products.

However, the infringing products continued to be sold in Rami Levy stores despite the plaintiffs’ warnings, and this continued even after the license agreement was terminated and a lawsuit was filed against the company, claiming that it had stepped into the shoes of the license holder.

When Rami Levy and Yafiz refused to cease the distribution of the infringing products, the plaintiffs filed a lawsuit in 2017 against Rami Levy, Yafiz, and other importers.

The lawsuits led to a prolonged and complex legal battle, during which numerous pieces of evidence were presented regarding the trademark infringement, including findings by private investigators and expert opinions.

In 2022, the parties agreed to submit the dispute to the District Court (Judge Guntevenik) for a decision based on oral summaries by the parties, without cross-examinations.

The Judgment

On April 27, 2023, the court issued its judgment in the case.

The Tel Aviv District Court ruled that Rami Levy Shikma Marketing 2006 Ltd. and Yafiz Fashion Ltd. must compensate Lifestyle Equities C.V. and Lifestyle Licensing B.V., the owners of the BEVERLY HILLS POLO CLUB brand, in the amount of over 3,000,000  ₪ (2,413,836 ₪  plus interest and expenses) for trademark infringement.

This is one of the highest amounts awarded in Israel in recent years in the field of trademark infringement.

This landmark case sets a new benchmark in Israel’s legal landscape, representing one of the most substantial trademark infringement awards in recent years.

According to attorney Yossi Sivan representing Lifestyle Equities, there are several important and interesting elements in the court’s ruling:

One of the Highest Awards in Israel for Trademark Infringement

Firstly, the trademark infringement award is one of the highest awarded in Israel in recent years for trademark infringement. It includes compensation of all gross profit made by the Defendants amounting to approximately 2.4 million ₪, plus additional amounts for the filing date of the lawsuit and reimbursement of expenses, totaling over 3,000,000 millions NIS.

Attorney Yossi Sivan: “One of the Highest Trademark Infringement Awards in Israel”

Third-Party May be Liable for Trademark Infringement

Secondly, the court ruling indicates that a commercial party that received warnings about products it distributes cannot evade responsibility for potential intellectual property infringements and cannot place all the responsibility on the product supplier.

Failing to conduct a thorough investigation of the allegations while continuing to sell the infringing products might exposes the distributor to liability for trademark infringement.

The Judgment marks the first trademark case law in Israel where a third party (a commercial client such as supermarket chain of stores, who purchased the products from a supplier) is held responsible for trademark infringement and grants the brand owner a substantial compensation, one of the largest ever given in Israel.

Distribution Limitation of a License Agreement May Be Enforceable Against Third Parties

The third, ruling acknowledges that Rami Levy’s chain stores are “food stores” according to the license agreement. This establishes that the distribution of products bearing the trademark in food stores is prohibited.

The court accepted the plaintiffs’ position in this context, stating that distributors and marketers who did not directly contract with the rights-holding company are subject to the terms of the license agreement following the notices. 

Compensation Based on Unlawful Enrichment – Good News for Brand Owners 

The court’s compensation mechanism in this case is truly groundbreaking. Unlike typical instances of trademark infringement, where compensation is often estimated due to the challenge of proving financial damages, the court took a different approach.

Through meticulous analysis, the court accurately calculated the defendants’ actual gross profit, taking into account operational expenses. The plaintiffs provided comprehensive data, including import records, invoices, and receipts, enabling a precise calculation of compensation.

Rather than relying on the traditional compensatory damages mechanism established by the Trademark Law, the court applied an alternative remedy based on the unlawful enrichment law. This approach ensures that the compensation is directly tied to the actual gross profit derived from the infringement.

“… It should be noted here that “the rights holder can demand an injunction and compensation, but as an alternative to compensation, they can claim the unjust enrichment on the basis of unlawful enrichment act”.

Licensing Royalties Should Not Be The Basis of Compensation

The court firmly dismissed the defendants’ argument that only reasonable royalties should be awarded for using the plaintiffs’ trademark. Instead, it deemed the disgorgement of profits as the appropriate remedy, considering the nature of the case and the relationship between the parties.

The court recognized the plaintiffs’ efforts to trace the actual profits made, reinforcing the principle that compensation for trademark infringement should reflect the third party’s actual gross profit from the unauthorized sale of products.

” In light of the circumstances, it seems that returning the profits is indeed the suitable remedy… Therefore, it does not seem appropriate to award compensation in the form of reasonable royalty fees, a place where the profits can be traced.”

Furthermore, the court ruled that Rami Levy and Yafiz are jointly and severally liable for compensation, despite being separate entities. Their close collaboration and intertwined business activities justified this decision.

It’s worth noting that Rami Levy and Yafiz initially attempted to prevent the publication of the court ruling. However, the district court sided with the plaintiffs, acknowledging that there was no valid reason to withhold the ruling from public knowledge.

This trademark infringement award was granted under the provisions of Section 79A of the Israeli Court’s Law, wherein both parties consented to the Court exercising its discretion and making a judgment based on the available evidence and pleadings, without conducting cross-examinations.

The plaintiffs in this landmark case were represented by our law firm: Attorney Yossi Sivan of Yossi Sivan Law Firm 

Case Number TA 13671-02-17 Lifestyle Equities CV and others v. Rami Levi and Others (Tel Aviv District Court).

We would like to express our gratitude to Attorney Avi Ordo of Shorowitz & Co., who successfully cooperated with our firm and jointly represented in this case.

An appeal to the Supreme Court has been filed.

Please be aware that the information provided in this article is intended for general informational purposes only and should not be considered legal advice. For specific legal matters, it is recommended to consult with a licensed attorney.

Trademark Opposition in Israel

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What is a Trademark Opposition ?

In Israel, a trademark opposition is a legal proceeding initiated by a third party who challenges the registration of a trademark.

The opposition can be filed with the Israeli Trademark Office within three months of the publication of the trademark application in the Official Gazette.

The opposition can be based on several grounds, including:

  • Likelihood of confusion with an existing trademark
  • Lack of distinctiveness or descriptiveness
  • Deceptiveness or misleading nature of the trademark
  • Conflict with public order or morality

The trademark owner has the opportunity to respond to the opposition, and the parties can provide evidence and arguments to support their positions.

The decision is made by a trademark Registrar after considering all the evidence and arguments presented by both parties.

How to File a Trademark Opposition in Israel ?

The opposition must be filed within three months from the date of publication of the trademark application in the official Trademark Gazette. The opposition can be filed electronically through the Israel Patent Office’s online filing system or by submitting a paper form.

After the applicant receives the opposition, they may choose to file a counter-statement within two months, in which they respond to the grounds of opposition.

Evidence and Hearings: After the counter-statement is filed, the parties may submit evidence and attend a hearing.

Decision: The Israel Patent Office will then issue a decision, which can be appealed to the Israeli courts.

If the opposition is successful, the trademark application will be rejected, and the trademark owner will not be able to register their trademark. If the opposition is unsuccessful, the trademark registration will proceed, and the trademark owner will have exclusive rights to use the trademark in Israel.

It is recommended to consult with a trademark attorney who is familiar with the legal requirements and procedures for opposing a trademark in Israel.

Trademarks in Israel – A General Overview

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Trademarks are a crucial part of any business, protecting the company’s identity and reputation in the market. In Israel, trademark protection is governed by the Trademark Ordinance, which was enacted in 1940 and has been updated over the years. In this article, we will provide an overview of trademarks in Israel, including the registration process, benefits, and limitations.

 

What is a Trademark?

 

A trademark is a unique symbol, word, or phrase used to identify a company’s goods or services. In Israel, trademarks are registered with the Israel Patent Office (IPO) and are protected for ten years, renewable indefinitely. Trademarks can include logos, slogans, brand names, and any other distinctive marks that help consumers recognize a company’s products.

 

Trademark Registration in Israel

 

To register a trademark in Israel, an application must be submitted to the IPO. The application must include a clear and concise description of the mark, as well as the goods or services it will be used to identify. The IPO will examine the application to ensure that the mark is not already in use by another company and that it meets the requirements for registration.

 

Once the mark is approved, it will be published in the IPO’s official gazette for opposition purposes. Any party who believes that the mark should not be registered can file an opposition within 3 months of the publication date. If there are no oppositions, or if the oppositions are unsuccessful, the mark will be registered.

 

Benefits of Trademark Registration

 

Trademark registration provides several benefits to companies in Israel, including:

 

1.Exclusive Use – A registered trademark provides the owner with exclusive rights to use the mark for the goods or services specified in the registration.

 

2.Legal Protection – Trademark registration provides legal protection against unauthorized use or infringement of the mark.

 

3.Brand Recognition – A registered trademark helps build brand recognition and establishes a company’s reputation in the market.

 

4.Business Expansion – A registered trademark can facilitate business expansion by providing a recognizable brand to potential customers.

 

Limitations of Trademark Registration

 

Trademark registration in Israel has some limitations that companies should be aware of, including:

 

1.Limited Protection – Trademark registration only protects the mark for the goods or services specified in the registration.

 

2.Geographic Limitations – Trademark protection is limited to the geographic area where the mark is registered.

 

3.Time Limitations – Trademark protection is limited to ten years and must be renewed periodically.

 

4.Infringement Challenges – Enforcing trademark rights can be challenging and requires significant resources.

 

Conclusion

 

Trademark registration is an essential step for any business operating in Israel. It provides legal protection, brand recognition, and exclusive rights to use the mark for the goods or services specified in the registration. However, companies should be aware of the limitations of trademark registration, including geographic limitations, time limitations, and the challenges of enforcing trademark rights. By understanding these limitations, companies can effectively leverage trademark protection to build their brand and establish a strong presence in the Israeli market.

Government Trademark Offices Database – Search Trademarks Around the World

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When it comes to protecting your brand, registering your trademark with the appropriate government agency is crucial. Here is a list of government trademark offices database websites per country or group of countries, in which you can search trademarks around the world:

United States of America

  • United States Patent and Trademark Office (USPTO): The USPTO is the federal agency responsible for granting U.S. patents and registering trademarks. Their database, called the Trademark Electronic Search System (TESS), is searchable and includes information about all active and inactive trademarks filed with the USPTO. Visit USPTO

European Union

  • European Union Intellectual Property Office (EUIPO): The EUIPO is responsible for registering European Union trademarks (EUTMs) and designs, and maintains the European Union Trademark Database (EUTM-DB) which contains information about all EUTMs. Visit EUIPO

United Kingdom

  • Intellectual Property Office (IPO): The IPO is the official government body responsible for intellectual property (IP) rights in the UK, including trademarks. Their database, called the Trade Marks Journal, is updated weekly and contains information about new and recently registered trademarks. Visit IPO

Canada

  • Canadian Intellectual Property Office (CIPO): The CIPO is responsible for granting and registering intellectual property rights in Canada, including trademarks. Their database, called the Canadian Trademarks Database, is searchable and includes information about all trademarks filed with the CIPO. Visit CIPO

Australia

  • IP Australia: IP Australia is the government agency responsible for granting and registering intellectual property rights in Australia, including trademarks. Their database, called the Australian Trade Mark Search, is searchable and includes information about all active and expired trademarks filed with IP Australia. Visit IP Australia

New Zealand

  • Intellectual Property Office of New Zealand (IPONZ): The IPONZ is responsible for granting and registering intellectual property rights in New Zealand, including trademarks. Their database, called the New Zealand Intellectual Property Office (IPONZ) Trade Mark Search, is searchable and includes information about all registered and pending trademarks in New Zealand. Visit IPONZ

Japan

  • Japan Patent Office (JPO): The JPO is responsible for granting and registering intellectual property rights in Japan, including trademarks. Their database, called the Japan Platform for Patent Information (J-PlatPat), is searchable and includes information about all patents, trademarks, and designs filed in Japan. Visit JPO

China

  • China National Intellectual Property Administration (CNIPA): The CNIPA is responsible for granting and registering intellectual property rights in China, including trademarks. Their database, called the Trademark Search System, is searchable and includes information about all active and expired trademarks filed with the CNIPA. Visit CNIPA

WIPO

  • The World Intellectual Property Organization (WIPO) is a United Nations agency that promotes the protection of intellectual property throughout the world. WIPO provides a global database of trademark registrations, known as the Madrid System, which allows trademark owners to protect their trademarks in multiple countries with a single application.

Visit WIPO’s Global Brand Database

Hong Kong

  • The Intellectual Property Department of the Government of the Hong Kong Special Administrative Region provides a trademark database that includes information on trademark applications, registrations, and renewals in Hong Kong.

Visit Hong Kong’s Trademark Search System

Singapore

  • The Intellectual Property Office of Singapore (IPOS) is the government agency responsible for the administration of intellectual property (IP) rights in Singapore. IPOS provides a trademark database that includes information on registered trademarks in Singapore.

Visit IPOS’ eSearch for Trademarks

Russia

  • The Federal Service for Intellectual Property (Rospatent) is the government agency responsible for the administration of intellectual property (IP) rights in Russia. Rospatent provides a trademark database that includes information on registered trademarks in Russia.

Visit Rospatent’s Trademarks Database

 

 

Difference Between National Registration and International Registration of Trademarks

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National registration and international registration are two ways to protect trademarks around the world, and both have advantages and disadvantages.

Advantages of National Registration:

  1. Cost: National registration is typically less expensive than international registration, as it only involves the fees associated with filing and prosecuting the trademark application in a single country.
  2. Simplified Process: National registration processes are often simpler and quicker than international registration processes. This is because they are designed to be familiar to local applicants, and the national trademark office is more likely to have a better understanding of local laws and customs.
  3. Better Protection: National registration provides better protection in the country where the trademark is registered. National registrations are subject to local laws, which may be more favorable to trademark owners, and trademark owners may have more resources available to enforce their rights.

Disadvantages of National Registration:

  1. Limited Protection: National registration only protects trademarks in the country where they are registered. This means that a trademark owner would need to file separate applications in each country where they wish to have protection.
  2. Language and Cultural Barriers: National registration can be challenging in countries where the language and culture are unfamiliar to the trademark owner. This may make it difficult to navigate the registration process or to enforce trademark rights in that country.

Advantages of International Registration:

  1. Protection in Multiple Countries: International registration provides protection in multiple countries with a single application. This is particularly useful for businesses that operate or plan to operate in multiple countries.
  2. Simplified Process: The international registration process is designed to be simpler and quicker than filing separate applications in each country. The international application is filed with the World Intellectual Property Organization (WIPO), which acts as a central registry.
  3. Cost-Effective: International registration can be cost-effective for businesses that wish to protect their trademark in multiple countries. The fees for international registration are typically lower than the fees for filing separate applications in each country.

Disadvantages of International Registration:

  1. Limited Scope of Protection: International registration only covers countries that are signatories to the Madrid Protocol. This means that there may be countries where protection cannot be obtained through an international registration.
  2. More Complex Process: The international registration process can be more complex than national registration, as it involves complying with the requirements of multiple countries and working with different national trademark offices.
  3. Dependence on Home Registration: International registration is dependent on the home registration, meaning that if the home registration is cancelled or invalidated, the international registration may also be affected.

In conclusion, both national registration and international registration have advantages and disadvantages, and the decision of which system to use depends on the needs and circumstances of the trademark owner. National registration may be more appropriate for businesses that operate in a single country, while international registration may be more appropriate for businesses that operate in multiple countries. Ultimately, it is essential to work with experienced trademark attorneys to determine the best strategy for protecting trademarks around the world.

MEET US AT THE INTA 2023 SINGAPORE

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Dear Clients and Colleagues,

We are thrilled to announce that we will be attending the INTA 2023 Annual Convention in Singapore from May 16th until May 20th.

The event is the premier gathering of trademark professionals from all around the world and is an incredible opportunity for us to connect with colleagues, clients, and partners, and to stay up to date with the latest trends and developments in our field.

We are excited to share our knowledge and experience with other industry leaders, and to learn from the best in the business. We look forward to catching up with old acquaintances, meeting new friends, and building relationships that will continue to thrive for years to come.

In addition to the convention, Singapore is a fascinating and dynamic city with a lot to offer. We suggest taking some time to explore the following attractions:

  1. Gardens by the Bay – This stunning 101-hectare garden features more than a million plants from around the world, including towering SuperTrees and a world-famous Flower Dome.
  2. Marina Bay Sands – The iconic three-tower hotel features an observation deck with breathtaking views of the city skyline, as well as a casino, a shopping mall, and a range of restaurants.
  3. Sentosa Island – This tropical island resort is home to a wide range of attractions, including Universal Studios Singapore, a water park, beaches, golf courses, and more.
  4. Chinatown – A vibrant cultural district filled with colorful shops, street vendors, temples, and traditional architecture.
  5. Merlion Park – A must-visit for first-time visitors to Singapore, this iconic statue features the head of a lion and the body of a fish, and is a symbol of the city’s history as a fishing village.

We can’t wait to see you at the INTA 2023 Annual Convention and to explore all that Singapore has to offer. If you have any questions about the convention or the city, please don’t hesitate to contact us.

Best regards,

Yossi Sivan Law Firm 

What Could be the Consequences of Not Registering a Trademark in Israel?

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Is it Possible for a Worldwide Fashion Label to Successfully Oppose a Similar Mark Without Holding a Trademark Registration? What Could be the Consequences of Not Registering a Trademark in Israel?

This is the case of a trademark opposition recently filed in Israel.

Facts of the Case:

Tasci S.r.l is the owner of the Montura brand, a fashion brand sold around the world under the mark shown below. Tasci S.r.l’s brand entered the Israeli market in 2017, but they did not file for a trademark. Tasci S.r.l does not operate a specific store in Israel.

José Guillermo Treger is the owner of a Panama fashion brand under the name MONTURA, designed as a logo shown below. José Guillermo filed a trademark application in Israel for the mark MONTURA in 2019 .

Tasci S.r.l opposed José Guillermo’s trademark application relying on its claim for reputation and sales in Israel.

José Guillermo has claimed that his mark is sufficiently different visually since both marks are using different styles. José Guillermo also claimed that his brand is intended for day-to-day fashion products, most of them under the age of 25, while the opposer’s mark is being used (out of Israel) mainly on sport and hiking clothes, which is a different category, therefore there should be no confusion.

The Trademark Commissioner’s Decision

The Trademark Commissioner has found that the marks are confusingly similar both visually and phonetically since the dominant feature of both marks is the word MONTURA.

Nevertheless, the Trademark Commissioner has ruled that the opposer was not able to prove his reputation in Israel, his evidence was vague and did not relate to substational  sales in Israel but only to general global sales, although several invoices (450 pages) were filed as evidence.    

Not Enough Evidence Filed

In addition, the Trademark Commissioner has ruled that the opposer was not able to prove that his mark considered a well-known mark since not enough evidence has been filed to support it.

Eventually, the opposition was entirely rejected, and the applicant’s mark was approved.

This outcome might be catastrophic for the opposer, who seems to have a considerable amount of global use around the world, but he couldn’t enforce his rights in Israel.

It should be noted that the opposer has filed a trademark application for his mark, but since the Trademark Commissioner has already ruled that both marks are confusingly similar, the applicant could file an opposition against the opposer’s new application.

What can Tasci S.r.l claim in their defence ? That there could be no confusion? They have already claimed that both marks are confusingly similar in the opposition previously filed by them!

This is why filing for a registered trademark in Israel is a must to ensure the protection of a brand. Relying on a global reputation to win a trademark opposition is extremely risky and sometimes ends not as expected.

If you are selling goods around the world, you must consider filing a trademark application in Israel. Don’t take any chances.

Disclaimer: The information contained in this article is for general informational purposes only and should not be considered legal advice or a substitute for consulting with a licensed attorney.

7 Ways to Potentially Lose Your Trademark in Israel

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Do you have a successful brand in Israel? To protect your brand in Israel from being overtaken by your competitors, it is important to take certain precautions. By following these tips, you can save both money and resources .

  • Failing to Register a Trademark

Failing to register a trademark for your brand on the Israeli market can put your business at risk for you to lose it to your competitors. They may claim rights to the mark, which could lead to a costly and time-consuming legal battle to prove your priority rights. Many businesses have lost their trademark because they did not register it in a timely manner. This can result in legal costs reaching hundreds of thousands of NIS.

Why should you register a trademark?

Registering a trademark for your logo or business name will provide you with exclusive rights to use it for a period of 10 years, and prevent competitors from using it in a way that misleads consumers or benefits from your reputation.

Additionally, having a registered trademark means you will not have to go through the costly and complex process of proving your reputation in court. In Israel, proving reputation of a brand may be considerable costly and complicated.

  • Not Using Your Trademark

If you have registered a trademark, it’s important to start using it immediately by selling your products and keeping records of transactions. Failure to use the mark for 3 consecutive years can result in losing the trademark to competitors who may register it as their own. Without proper precautions, the brand you have invested money, time, and energy in may fall into the hands of your competitors.

Important:

Failure to use the mark for 3 consecutive years can result in losing the trademark to competitors who may register it as their own

  • Avoid Genericizing Your Brand

There are instances where a brand becomes so closely associated with its product that the brand name becomes generic, such as “Tipp-Ex” which was the brand name of a German erasing fluid, but over time has become the generic term for all erasing fluids. Similarly, “Jeep” was originally a brand name for an off-road vehicle manufactured by Ford, but over time it has become synonymous with off-road vehicles in general. “Cargo” is another example in fashion, where it has become a generic term for mid-size pants. Another example is “ping pong”, which was originally a brand name owned by the Parker brothers, but has now become the name of the sport itself. “Fiberglass” is another example, it is a brand name owned by the Evans Kroning company, but has now become the nickname of the product itself.

When a brand becomes generic, it may no longer be eligible for trademark protection, leaving it open for use by competitors. Additionally, consumers may lose the connection between the brand and the manufacturer and fail to differentiate between the brand and the product category, not realizing that it is a private brand rather than a generic product name.

When a brand becomes generic, consumers may turn to competitors, mistakenly believing they are getting your product when it is actually from one of your competitors. This can result in the loss of the personality and uniqueness of your brand, and it can become part of the Hebrew language.

To protect your brand, it is important to avoid using your trademark as an adjective or noun. For example, if your new service is called SUPREEM for premium car sales services, avoid phrases like “Come and purchase the new SUPREEM vehicles” Instead, it’s recommended to use phrases like “Supreme offers a discount of up to 20% on luxury vehicle purchases.”

  • Failing to Renew the Trademark in a Timely Manner

When a trademark is registered, it grants exclusivity for a period of 10 years. At the end of this period, a renewal fee must be paid to obtain a renewal certificate. Failure to do so can result in losing the trademark permanently, and reinstating it would require costly legal proceedings, if possible.

To ensure that your trademark remains protected, it’s important to pay the renewal fee and apply for trademark renewal every 10 years, also known as trademark maintenance

  • Failing to Enforce your Trademark rights against infringers

If you fail to take action against competitors using your name or a similar name to deceive consumers, you may miss the opportunity to protect your rights and may face high costs. Furthermore, courts may be less likely to grant the desired level of protection if you have delayed in enforcing your trademark rights.

It’s crucial to remember that if you come across any unauthorized use of your brand or trademark, you should take immediate action to stop it.

  • Your Competitors might Cancel your Trademark

Your competitors may attempt to hinder your business by filing for cancellation of your trademark, whether it be for reasons such as registering in bad faith, not using the trademark for 3 years, or simply to limit your business. Should your trademark be cancelled, you will lose your exclusive rights to the mark, and your rights to it altogether.

What should you do? Make sure to retain a law firm that specializes in trademark maintenance. They will ensure that you are informed in a timely manner and take necessary steps to prevent mistakes that could put your brand at risk.

Ensure that your legal counsel safeguards your trademark and keeps you informed of any developments that could impact your brand. It is advisable to request an update at least annually.

Ensure that your legal counsel safeguards your trademark and keeps you informed of any developments that could impact your brand. It is advisable to request an update at least annually.

Important:

Ensure that your legal counsel safeguards your trademark and keeps you informed of any developments that could impact your brand

 

  • Avoid Permitting Others to Use your Trademark without a Written Agreement in Place

Allowing third parties to use your brand without obtaining the necessary permission, executing a written agreement, or registering the trademark in the trademark registry could lead to commercial conflicts. If not handled properly, these conflicts could have fatal consequences for the brand owners.

If you plan to grant others permission to use your brand or trademark, such as through franchise or distribution agreements, it’s important to have a written agreement in place outlining the terms and conditions, including monetary compensation, the start and end date of authorization, payment terms, and any required reporting. This should include a “license agreement” or “franchise agreement” that clearly defines the terms of the authorization.

Disclaimer: The information contained in this article is for general informational purposes only and should not be considered legal advice or a substitute for consulting with a licensed attorney.

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