Israel: New 2022 WTR Ranking for Yossi Sivan Law Firm

We are glad to share with you that this year again, Yossi Sivan was ranked by the WTR 1000 with this amazing review:

”… A contentious ace who regularly racks up the wins before both courts and customs authorities, he runs his practice out of the eponymous Yossi Sivan & Co. … he won an unusual temporary seizure order on the real estate properties owned by the defendant’s shareholders.”

Yossi Sivan Law Firm was ranked in the following categories:

A. (Individual) Enforcement and litigation
B. (Individual) Prosecution and strategy

A big thank you to all of our clients and colleagues across the world. Contact Us.

 

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

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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Is There a Likelihood of Confusion Between EZ and EZ PUT?

We are happy to inform you of a great win of our firm in a trademark opposition case.
One of the questions reviewd in this case is whether merchandise of a rapper constitute trademark use beyond his music services?

EZ, An Israeli rapper singer has opposed our client’s trademark application EZ PUT, a company that sells mobile phone accessories (class 9). The rapper claimed that the mark EZ PUT is confusingly similar to his mark, registered in class 41, that his mark is well known and should gain a wider protection based on his sales of merchandise of shirts and hats.

EZ PUT claimed that there is no likelihood of confusion, that both marks have a different design, style and meaning, that his mark is not well known and that there is no material connection between music services and mobile accessories.

EZ PUT has also claimed that the sale of the fasion merchandise cannot considered as valid trademark use in other classes beyond the music services.

The TM Registrar rejected the opposition entirely while fully accepting EZ PUT claims including the use of merchandise claim:

“A man who purchase a shirt with the name METALLICA doesn’t do so beacause the sign of the band shows the quality or origin of the shirt, but to convey the symbols of the band on his chest as a cultural massage and to show his musical preferences”

EZ PUT was represented by Yossi Sivan – Law Firm

5 Tips on How to Overcome Trademark Refusals in Israel

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.

      

 

  

 

   

Who Filed the Most Israeli Trademark Applications in 2018?

The Israeli Patent and Trademark Authority has recently published a report for the year 2018 which exhibits the statistics and activities of the Israeli Patent and Trademark Authority for the year 2018.

The following are the main statistics taken from the 2018 report:

2018 has shown a steady level in both national and international trademark filings in Israel according to the 2018 Patent and Trademark Office published by the Israeli Patent and Trademark Authority (see 2017 Patent and Trademark Office Report)

A total of 10,686 trademark applications were filed in 2018: 5,799 international applications and 4887 national applications.

Apple Inc. has filed the most trademark applications in Israel: 61 international applications and 27 national applications. This is the second year that Apple Inc. is taking the place of the number one trademark applicant in Israel. Israel’s mobile industry is thriving especially in the categories of mobile apps and mobile technology.

Novartis holds the second place with a total of 55 applications: 50 national applications and only 5 international applications.

Sanrio Company holds the third place with 54 national applications and 0 international applications.

Jonson & Jonson holds the fourth place with a total of 45 applications: 44 national applications and only 1 international application.

75.6% of the applicants in 2018 were foreign companies and 24.4% were local.

24.4% of the applicants are from Israel, 20.9% are from the US, 7.2% are from Germany and 7.2% are from China.

Yossi Sivan, Trademark Attorney

Yossi Sivan, Trademark Attorney

Owner & General Partner at Yossi Sivan & Co. Law Offices

 

The 2017 Israeli Patent and Trademark Authority Report

The Israeli Patent and Trademark Authority has recently published a report for the year 2017 which exhibits the statistics and activities of the Israeli Patent and Trademark Authority for the year 2017. The following are the main statistics taken from the 2017 report.

TRADEMARKS

During the 2017 year, the examination period for trademark applications in Israel has been shortened to a period of 12 months (in relation to the previous year where the examination period was 16 months).

In the year 2017 there was an increase of 14% of trademark applications filed in Israel. 55% of the applications were international applications based on the Madrid Protocol, and 45 % of the applications were national applications.

The number of international applications based on the Madrid Protocol has risen by 19% and the number of national applications has risen by 9%.

The applicant with the greatest number of applications was Apple Inc. with 81 applications. The second is Johnson and Johnson with 71 applications, followed by Phillip Morris with 57 applications and Huawei Technologies with 51 applications. The highest number of applications (21.6%) were filed by U.S. applicants. Applicants from Israel made up 24.2% of applications and China 6.6% of applications.

DESIGNS

The New Design Law, which replaced the Patent and Design Ordinance of 1924 was confirmed by the Israeli Parliament and became valid as of August 7, 2018. The leading foreign applicants for design in Israel were Facebook (54), Scania (29), and Dyson Technologies (26).

PATENTS

In 2017, there were 6,813 patent applications filed in Israel. The foreign applicants with the most patent applications were Facebook (94 applications), Phillip Morris (82 applications), and Raytheon Company (62 applications). In 2017, 89.9% of the applicants of patent applications were foreign citizens/companies and 10.1% of the applicants were local applicants.

A copy of the report can be downloaded from here: https://en.calameo.com/read/00566845929ff1d51897c

 

 

Recommended by the World Trademark Review as an Israeli Trademark Expert

We are pleased to inform you that our firm has been recommended by the World Trademark Review as an Israeli Trademark Expert:

Other recommended experts category:

“…. Yossi Sivan & Co’s storied entertainment star Yossi Sivan has represented giants such as Sony, Electronic Arts and Microsoft; he is as formidable at enforcing trademarks as he is at filing them…”

 

Legal 500 Recommendation as a Leading Intellectual Property Firm for 2017

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…” 

The Diamond of the Crown – No likelihood of Confusion between IGL and CGL

Israel’s diamond industry is estimated at around 4 billion dollars a year. Israel considered as one of the strongest players in the international diamond market. Naturally, there is fierce competition in the industry, a competition that sometimes reaches the court’s doorstep.

Recently the Israeli District Central Court has ruled a very important decision in trademark matters concerning the diamond industry.

IGL, a gemological laboratory that provides assessment, analysis and grading services of diamonds jewelry and gemstones under mark IGL, has sued another gemological laboratory for the use of the mark CGL.

IGL has claimed that the mark CGL is an infringement of the IGL registered trademark.

In addition to a monetary compensation of NIS200,000 and a permeant injunction,  IGL has also filed a motion for a temporary injunction to prevent the use of the mark CGL until the final decision by Court.

IGL’s claims

IGL has claimed that the use the mark CGL and the designed logo constitutes trademark infringement, passing off and unlawful exploitation of its reputation.

IGL also claimed that the use of the similar logos and colors (black and gold) causes confusion in the market.

Below are the design marks of IGL and CGL:

CGL’s claims

CGL, represented by Yossi Sivan & Co. Law Offices has claimed that the motion is groundless, and that its sole purpose was to temper the successful activities of CGL.

CGL has claimed and demonstrated that the use of the words I, G and L are a common practice in the gemological diamond industry and that the acronyms IGL are not identified exclusively with IGL.

CGL has also claimed that the use of a round designed seal next to three acronyms letters are a common practice in the gemological industry, therefore cannot be identified by the consumers as related specifically to IGL.

CGL further argued that there is no likelihood of confusion between the marks based on the triple test: The visual test, the phonetic test and type of goods and consumers test.

CGL further argued that they provide professional diamond and gemstone evaluation services primarily to diamond dealers and merchants and that this is a sophisticated audience that is well acquainted with the companies involved in the field and can distinguish very well between the services provided by the IGL and the services of CGL ie, professional evaluations of diamonds, which are also accompanied by different visual appearance.

CGL has also claimed that diamonds are considered to be the most expensive products and require careful examination, which eliminates any likelihood of confusion in the market.

In addition, CGL argued that it’s manager has a considerable reputation of almost 40 years in the diamond market therefore, there is no reasonable possibility that a diamond merchant will arrive to CGL’s laboratory and will erroneously believe that it is related to IGL, who are unknown in the field.

The Court’s Decision

Following the submission of pleadings, conducting cross-examination of the party’s witnesses and oral summaries, the Central District Court of Lod has decided as follows:

The Court has found that, despite the alleged similarity of the round shape that symbolize a seal, there are substantial differences in the decorations of the logo, which add additional differences in the letters and wording of the marks.

The Court stipulated that these differences exclude a reasonable possibility of visual likelihood of confusion between the marks.

Applying the type of goods and consumers test, the District Court has accepted the CGL’s position that gem and diamond assessment services are services based on professional criteria, which include careful examination of a laboratory, preparation of a report, evaluation and finally the issuance of an appropriate certificate.

The Court was impressed that providing such services will usually be accompanied by the purchase of precious stones in a considerable amount of money and that it’s not a “shelf product,” but rather a unique product, that is directed to a sophisticated customer, which reduces the likelihood of confusion.

The District Court was also impressed that the CGL’s owners are veteran and well-known in the diamond industry, and that these circumstances do not support the claims of IGL that CGL “rides” on the reputation of IGL, considering the relatively short period in which IGL operates in the diamond market.

The District Court also relies on many trademarks submitted by CGL’s attorneys, whose mark consists of a circular seal structure, three capital letters in English and an accompanying inscription to the side or below the combination of the letters and the logo.

Naturally, as befits gemstone products, the combination of colors with the same symbols and letters is done in gold, black and blue, colors that symbolize prestige.

The District Court also accepted CGL’s position that the initials in the IGL sign represent the words “international gemological and laboratory” and that these are generic names which, for the most part, enjoy less protection than arbitrary names.

Under these circumstances, the District Court held that the IGL’s registered mark has a weak inherent distinctive character, and that IGL did not present any significant evidence indicating that the registered mark had required a distinctive character, meaning that the consumers are linking it to the services provided by IGL.

In conclusion, the District Court held that the triple test did not support the claim of a likelihood of confusion.

The Court also rejected the passing off claim and ruled that there is no likelihood of confusion between the services and that CGL did not prove their reputation.

Applying the balance of convenience test, the District Court has ruled that it was not convinced that the use of the CGL mark would cause irreversible damage or serious damage to IGL.

In conclusion, the District Court rejected the motion for a temporary injunction and ordered IGL to pay legal costs of NIS 9,500 to CGL.

Disclaimer: Nothing in the foregoing shall constitute any legal advice or any opinion whatsoever. This is an informative article only and it is well recommended to consult with a specialized attorney.

CGL was represented by Yossi Sivan & Co. Law Offices


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