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.

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.

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 

The Importance of a Word Mark Registration in Israel  

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Filing a trademark application for a word mark can be a powerful tool for businesses and organizations looking to protect their brand and intellectual property.

This article describes the Importance of a Word Mark Registration in Israel.   

A word mark is a type of trademark that consists of words, phrases, or slogans, rather than a design or symbol.

In contrast, a design mark is a type of trademark that consists of a design, symbol, or logo.

There are several reasons why businesses and organizations may choose to file a trademark application for a word mark rather than a design mark.

One major reason is that a word mark can be a more effective and efficient way to protect a brand.

A word mark allows businesses and organizations to protect their brand name and any associated slogans or phrases, which can be a key part of their brand identity.

This can help to prevent competitors from using similar brand names or slogans that could confuse consumers or dilute the strength of the original brand.

A perfect example can be learned from the recent case of the Israeli Trademark Office.

An applicant (shoe store) has filed a trademark application for the following designed mark in class 25:

 

The Trademark Examiner has refused the trademark application based on a similarity to a trademark registration for the word mark BUTTERFLY in class 25 owned by Tamasu Butterfly Europa GmbH:

 

BUTTERFLY

The applicant argued against the Examiner’s decision and requested a hearing before the Trademark Registrar.

The Trademark Registrar has reviewed the matter and rendered the following decision:

The test for the existence of a confusingly similarity is called the “triple test” and it includes the following tests:

  1. The visual and sound test
  2. The type of goods and marketing channels test
  3. The specific circumstances test

Regarding the visual and sound test, it has been determined more than once that the marks must be examined as a whole, but with emphasis on the dominant features of the marks.

According to the Registrar, the dominant element in both marks is the word BUTTERFLY, and the addition of the words SUPREME QUALITY will not prevent confusion since the words are transparent to the end consumer.

Furthermore, the word mark BUTTERFLY was determined to be strong enough in the fashion industry to protect against different types of designs and that the design features of the requested mark, such as the green color and BUTTERFLY drawing, may not prevent confusion.

Finally, the Trademark Registrar has decided to reject the requested application based on likelihood of confusion to the BUTTERFLY registration.

This is an excellent example of why word mark registration is crucial for brand owners, as it guarantees better brand protection.

A note: It may be counterproductive for an applicant who already uses a trademark to request a hearing before the Trademark Registrar to clear the way for registration, since a judicial decision showing a likelihood of confusion may be used to support a claim of infringement by the owner of the cited mark.

The risk of a potential infringement claim can sometimes be higher than the risk of not having a registration.

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Disclaimer: Nothing in the above shall be considered as legal opinion whatsoever. 

Can Basketball Stripes Pattern Be Registered as 3D Trademarks ?

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Israel, October 26, 2022.

Is it possible to register stripes pattern on basketball as 3D trademarks ? A recent decision of the Israeli Trademark Commissioner addressed this question.

KABUSHIKI KAISHA MOLTEN has filed a trademark application for stripes pattern on basketball in class 28 for basketballs and toys:

The trademark office refused the application for lack of distinctive character. 

According to the applicant, the requested pattern has acquired distinctive character through extensive market use, and is therefore eligible for registration.

The Applicant requested a hearing. 

The Trademark Commisioner, Dr. Ravia Israeli, was requested to decide whether stripes pattern on basketball eligible for registration as a 3D trademark.

The trademark commissioner ruled that the requested mark is a position mark, part of a product’s shape and design, therefore it bears a higher burden of proof.

The Trademark Commissioner has decided to follow the EU regulations regarding  position marks: 

“The factors to be taken into account when examining shape marks are also relevant for position marks. In particular, the examiner must consider whether the relevant consumer will be able to identify a sign that is different from the normal appearance of the products themselves. A further relevant consideration in dealing with position marks is whether the positioning of the mark upon the goods is likely to be understood as having a trade mark context.”

In other words, the consumer’s perception must be examined in relation to the design of the products in the relevant field, and whether the consumer will recognize the source of the goods when he notices the design that constitutes the requested mark.

The Applicant’s Stripe Pattern Lacks an Inherent Distinguishing Character

The trademark Commissioner has decided that the design of the applicant’s basketball is not unusual, unique or surprising in relation to designs in the field.

The design of the requested mark based on the pattern of the applicant’s stripes or the location of this design on the basketball does not constitute an independent element capable of directing the reasonable consumer in the field to the applicant. Therefore, it was decided that the mark lacks an inherent distinguishing character.

 Has the applicant’s stripe pattern acquired a distinctive character ?

As a general rule, when coming to decide on the question of the acquisition of a distinctive character, one must examine the period of use of the mark, the degree of publicity it received and the effort invested by the owner of the mark in establishing a relationship between the product and the manufacturer.

Volume of sales is not enough to necessarily create the required connection between the mark and the origin of the goods.

The applicant has submitted sufficient evidence to prove a substantial market share, but applicant has failed to demonstrate that the totality of the evidence shows that the pattern of stripes on the applicant’s balls has acquired a distinctive character and is identified with the applicant as the source of the goods.

“I did not find that the presentation of the image of the basketballs, which bear the applicant’s striped pattern, in the various publications, turns the design in question into a trademark of a distinctive nature eligible for registration.

On the products presented in the publications, the applicant’s name “Molten” appears next to its stripe pattern. Therefore, it cannot be determined that the stripe pattern without the accompanying name “Molten” next to it acquired a distinctive character …”


Therefore, the application for the stripes pattern as a three-dimensional mark ( 3D Trademark) (as a shape of a product) was denied.

At the same time, the requested mark in its two-dimensional form (the circle mark) is eligible for registration and will be recorded in the register with the addition of a disclaimer stating that this registration does not grant the applicant an exclusive right to the three-dimensional image of the ball and the pattern of stripes imprinted on it.

The meaning is that the stripes may be protected as a standalone trademark but not as a shape or design of a product.

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Disclaimer: Nothing in the above shall be considered as legal opinion whatsoever. 

 

 

The Fatal Result of a Trademark Infringement Claim

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“Rules Written in Blood” is an old Israeli saying that perfectly sums up the need to learn from others’ mistakes before choosing the right path.

As a brand owner or trademark lawyer, taking enforcement action if you see any competitors or others using confusingly similar marks is the first step to consider.

However, suing for trademark infringement can sometimes result in a fatal result for the brand. 

One example can be found here.

What is an Indirect Attack ?

In Israel, the defendant may raise several defenses to a trademark infringement claim.

Indirect attack is one of the defenses.

In an Indirect Attack, a defendant may claim that the plaintiff’s trademark registration is invalid, or shouldn’t have been registered in the first place, and therefore should be cancelled.

The plaintiff could request cancellation based on a lack of distinctive character or descriptiveness of the trademark registration (absolute grounds).

This could be a majore risk for the brand owner.

Court is Examining The Registrability of the Mark

In a recent case brought by a cosmetic company, this risk was perfectly illustrated.

An infringement claim has been filed to the Israeli Tel Aviv Magistrates Court, in which the Plaintiff has claimed that the use of the mark “Messeia” by the defendants on cosmetic products constitutes trademark infringement.

The Plaintiff owns the trademark registration for the mark “Messiah” in class 3.

Photos of the Plaintiffs products and the Defendants are presented below:

Plaintiff’s Products:

Defandnat’s Products:

It should be noted that an indirect attack could be generaly initiated in a trademark infringement procedure within the framework of the infringement claim itself, even if no separate motion for cancellation has been filed to the Israeli Trademark Office or no separate declarative motion has been filed. 

In this case, the Court has taken one step further, and although the defendant did not specifically raise the claim of indirect attack, the Tel Aviv Court first examined the registrability of the plaintiff’s trademark registration.  

Court Ruled that the Plaintiff’s Trademark Should be Cancelled

The Court has ruled that according to Paragraph 11 (7) to the Trademark Ordinance, marks identical with or similar to emblems of exclusively religious significance are not registerable.

The mark “Messiah” is protected as a symbol with a clear and exclusive religious meaning, meaningful in both Jewish and Christian religions, therefore the mark is not registrable.    

Thus, the Court ruled that the Plaintiff’s trademark registration for the mark Messeia should be cancelled.

In order to formally cancel the mark, the Court requested to send a copy of the decision to the Trademark Office.

So, the Plaintiff sued for trademark infringement, but ultimately lost his registration.

A fatal result for the brand owner.

Owners of brands should carefully consider their risks before initiating a trademark infringement claim, including losing their registration.

 

Disclaimer: The above may not be considered as any legal opinion whatsoever and users are requested to get a professional advise.

TM Opposition

Israel : What is the Level of Similarity Needed to Win a Trademark Opposition?

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In Israel, third parties can oppose the registration of a trademark within three months of publication by filing a trademark opposition against the requested mark. The mark will proceed to registration if no opposition is filed.

The opposer must prove that there is a likelihood of confusion between the requested mark and the opposer’s mark in order to win a trademark opposition.

To pass that bar, what level of similarity is required?

Based on reviewing several trademark opposition decisions rendered in Israel for the past two years, we have noticed that to win a trademark opposition in Israel, the opposer must show a substantial likelihood of confusion.

Even a strong similarity may not suffice. Compared to trademark systems in other countries, the standard of similarity is quite high. 

Furthermore, the Legal Expenses usually ruled by the Trademark Registrar are minimal and don’t cover the actual legal expenses the opposer has to pay during the opposition process.


The Legal Expenses usually ruled by the Trademark Registrar are minimal and don’t cover the actual legal expenses

Therefore, before filing an opposition to a trademark in Israel, it is recommended to assess the chances of success.

The table below shows the surprising results of several trademark opposition proceedings over the past two years.

Would the following oppositions be acceptable in your country? Let us know what you think.  Contact Us. 

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Israel: A Trademark Owner Sued His Licensee …But Eventually Lost His Trademark

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Managing a licensing business can be sometime challenging for a trademark owner.

In a licensing agreement, a trademark owner (the licensor) receives royalty payments in exchange for allowing another party (the licensee) to use his mark.

One of the risks of trademark licensing is losing control of the brand. Sometimes a licensor may find himself giving up control on material elements of his brand, such as packaging, costs, distribution in discount markets and more.

There could be also other risks such as fraud reports and losing the ability to police the licensee’s activities.

A recent case in Israel (Management Europe Meeting International v. Forum Publishing) shows that there might be another serious risk, which is losing a trademark registration as a consequence of a legal conflict with the licensee.

Here are some basic facts of the case:

Management Europe Meeting International (MEM) is the owner of the Israeli trademark PRODUCT OF THE YEAR. Forum Publishing (Forum) has signed a license agreement with MEMI (a sublicensee of MEM) for the use of the mark in Israel.

In accordance with the license agreement Forum is obligated to pay royalties to MEMI for the use of the mark PRODUCT OF THE YEAR, that allows certain manufacturers to label the mark on their product packaging for marketing purposes.

After several years a conflict erupted between MEM and Forum.

Eventually, MEM has sued Forum in the Israeli Court asking for a declaratory judgment that the license is no longer valid due to lack of trust and bad faith behavior of Forum’s manager. Alternatively, MEM has claimed that the license agreement is no longer valid since the license period has ended and not renewed.

It should be noted that those claims have been denied by the Israeli Court who decided that there were no grounds to cancel the license agreement and that there is no evidence for such a lack of trust.

The trademark owner has also raised an unusual claim in order to attack his licensee. MEM claimed that the license has never been recorded at the Trademark Office, therefore the license was not valid, and the result is that Forum has no license to use the mark.

Can a trademark owner cancel an existing trademark license by claiming that the License wasn’t recorded in the Trademark Office? 

Let’s understand the context. Why does a trademark owner need to record a license at the Trademark Office?


Let’s understand the context. Why does a trademark owner need to record a license at the Trademark Office?

According to the Israeli law (Section 41 of the Trademark Ordinance) any trademark registration that has not been in use by its proprietor for a period of three consecutive years (from date of registration) can be cancelled on the ground of lack of use. Actual commercial use in the market is required in order to meet the use requirements.

According to the Israeli case law, using the mark in Israel only by a local licensee (and not by a trademark owner) will not be considered to be “use” by the proprietor, unless the license was recorded at the Trademark Office.

In the case of A.L. 364/74 Samuel Davidovich v. Miromitt Metal Works 27 Ashkelon Ltd., PD 29 (1) 703 (9.1.75), The Supreme Court has ruled that a trademark license that wasn’t recorded is simply not valid, but the contractual license may be still valid and binding.

It is important to mention that this claim is generally raised by third parties to attack trademark owners in invalidation cases (in a lack of use claims) and not against licensees.

In the case of Management Europe Meeting International v. Forum Publishing, it was the first time that a brand owner itself has raised this claim against his licensee in order to support his claims that the license should be canceled.

Unfortunately, not only that the claim was rejected by the Jerusalem District Court, but the Court has acknowledged the fact that the license indeed wasn’t recorded in the Trademark Office and ruled that the trademark is not valid!

 

“Therefore, and in accordance to the Davidovitch case law, since the trademark in the country (Israel Y.S) is not registered on the name of the Defendant it’s not valid…” 

   


This is clearly a precedent decision since no party has challenged the validity of the registration and still the Judge took the liberty of declaring the registration as not valid.

This is clearly a precedent decision since no party has challenged the validity of the registration and still the Judge took the liberty of declaring the registration as not valid. 

This is for sure a fatal result for the trademark owner, who tried to cancel a license but ends up in cancelling his own registration.

I guess this is the classic case of a brand owner who “cuts off one’s nose to spite one’s face” in the fight against his licensee.

The conclusion is that a trademark owner needs to be very careful in managing disputes against his licensees.


Important: Trademark owners need to make sure to record their license.

Also, trademark owners need to make sure their license is recorded at the trademark Office.   

It will be interesting to know how the invalidity of the registration will affect the contractual relations between the parties. It might surely affect the ability of the licensor to negotiate new licensing deals. 

Disclaimer:
Nothing in the above shall be considered as any legal advice or any legal opinion whatsoever. This is just an informative article. We strongly recommend consulting with a professional attorney in such matters.

Contact Us to Know More About this Case

 

Legal 500 Recommendation as a Leading Intellectual Property Firm for 2017

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Legal 500 2017 Recommendation: 

Yossi Sivan & Co. Law Offices has been recommended by the LEGAL 500 2017 edition as an Israeli leading firm in the Intellectual Property Disputes category:

“Yossi Sivan & Co. has ‘extraordinary knowledge and expertise in trade mark and copyright litigation’. The ‘practical and personable’ Yossi Sivan has extensive experience of IP cases involving international clients…”