Trademark Applications for Slogans will be Examined Exactly as Any Other Mark

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The Israeli Trademark Registrar has issued a new regulation regarding the eligibility of slogans as registrable trademarks. According to the Trademark Registrar, registration applications for slogans will be examined exactly as any other mark and will not be considered as lack of distinctive character.

Israeli Trademark office circular no. 29 states that for a Slogan to be registered as a mark, it must acquired a distinctive character based on actual use in the market, and it must link the goods or services to their source. Nevertheless, the circular does not exclude slogans completely from being a registrable subject matter.

On December 8 2011, the District Court of Tel Aviv has ruled in the case of Eveready Battery Company Inc V. Registrar of Patents (21488-05-11), that the examination of a slogan should be the same as any other mark, without the prior assumption that a slogan lack of distinctive character by its nature .

This decision was given in an appeal of decision of the Trademark Registrar in which he denied the trademark application FREE YOUR SKINon the basis of lack of distinctiveness.

Accordingly, the Trademark Registrar has ordered that the circular no. 29 is cancelled.

Tigris V. Puma – Battle of the Cats

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The Israeli Deputy Trademark Registrar has ruled that the trademark application consisting of a Tigris figure considered as infringing Puma’s trademark in class 25 and therefore cannot be eligible for registration.

City Wash LTD is an Israeli company who manufactures different kinds of clothing. City Wash has filed a trademark application for a combination word-image mark consisting of a silhouette of a Tiger and the word “Tigris” which is tiger in Hebrew language.

PUMA, AG, is a well known German clothing company who manufactures sports clothing under the PUMA logo.

Puma has filed an opposition claiming that the Tiger mark was confusingly similar to their puma logo, and that it was non-distinctive and constitutes a dilution of Puma’s trademark rights.
Puma claimed that the mark was non-distinctive, confusingly similar to Puma’s marks and a dilution of the Puma’s mark.

The Deputy Registrar has accepted the opposition and rejected the application on the grounds of likely of confusion between the marks.

Point for thinking: It is interesting to know that there are other sports brads who uses the silhouette of a wild cat in a similar movement, that coexist with the PUMA trademark, such as Slazenger and Jaguar. It seems that no one have a monopoly over the silhouette of a wild cat in regard to sport clothing. In addition, we hardly think that there is any likely of confusion between the marks.

The Madrid Protocol System is officially operational in Israel

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The Madrid Protocol System for filing International Trademark Applications is officially operational in Israel

The Madrid Protocol System offers trademark owners the possibility to have their trademarks protected in several countries by simply filing one application directly with the Israeli Patent and Trademark Office, designating the requested countries.

An international trademark application filed to WIPO is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant.

If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by WIPO.

The Madrid system also simplifies the management of the trademark protfolios, since it is possible to record subsequent changes or to renew the registrations through a single procedure and by the same local attorney.

Israel is the 85th member of the WIPO-administered international trademark system which is governed by two treaties, namely, the Madrid Agreement Concerning the International Registration of Marks (1891) and the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).

Use of translated word mark of a registered trademark, could be considered as trademark use

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The Trademark Registrar: Use of translated word mark of a registered trademark, could be considered as trademark use according to law, to avoid trademark cancellation

Micys Company S.P.A filed a motion for cancellation of the registered trademark “DIVA” on the basis of lack of use according to paragraph 41 of the Trademark Ordinance.

The Trademark Registrar rejected the motion and ruled that use of translated word mark of a registered trademark, could also be considered as trademark use according to law, to avoid trademark cancellation.

The Trademark Registrar also ruled that even a use of the translated version of the mark as part of the company’s business name could consider to be use of the trademark in connection with the goods in which he manufacture or trades according to Paragraph 1 of the Trademark Ordinance.

Micys Company S.p.A v. Ronit Lahav & Co. Motion for Cancellation of Trademark No. 13296, 14630 (24/3/2010).