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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.

5 Tips on How to Overcome Trademark Refusals in Israel

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There are several types of refusals typicaly 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 extensive 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 a 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 first instinct as trademark attorneys is to ask a local attorney to respond to an  office action before 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 until a few days before the deadline expires to review the other side’s response first. Reviewing the claims of the representatives for 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 cases of 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 the specific use in the market acquires a special character to the mark. 

Use Foreign Registrations   

In cases of lack of distinctive character refusals, if your client has foreign registrations from his Country of Origin for the same mark and for the same list of goods, then you can use Section 16 of the Israeli Trademark Ordinance and request that the new application will be based on the 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 can 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, to understand his views and specifically ask him what you can provide in order to change his mind BEFORE submitting a detailed response.

While investing the time and energy in talking with the Examiner can be time consuming, 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.

 

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The above shall not be considered as any legal opinion whatsoever and we recommend consulting with a professional attorney.