Katzarov’´s Manual on Industrial Property
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  • Appellations of Origin and Geographical Indications

Appellations of Origin and Geographical Indications

Membership in International Conventions

– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act 1967, since September 25, 1966.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– WTO's TRIPS Agreement, since April 21, 1995.

Filing, Examination

Definitions: "Geographical Indication" means an indication that identifies in Israel goods as originating in a given geographical area of a member state, or a region or part thereof, where a given quality, characteristic or reputation connected with the goods is essentially attributable to its geographical origin. "Appellation of Origin" means the geographical name of a country, region or locality contained in the name of a product which is intended to convey that it originates there and that its quality and properties are mainly due to that geographical area, including its nature and people.

Applicant: any person interested in protection under this Law for an appellation of origin, the country of origin being Israel, may apply to the Registrar to register in the Register such appellation, the product which it is intended to denote and the person entitled.

Protection for foreigners and nationals not living in the country: when the Registrar has been notified by the International Bureau that a foreign appellation of origin which has been registered in the International Register, he shall examine such appellation as if he had before him an application for the registration of an Israeli appellation of origin. The term of validity of the registration of an appellation of origin effected upon a notification received accordingly shall be the same as the term of validity of its registration in the country of origin.

Exceptions to protection/Excluded from registration: (1) use of a geographical indication with respect to a product not originating from the indicated geographical area is unlawful, if the geographical indication might mislead with regard to the real geographical area from which the product originates, and shall be regarded as an infringement of an appellation of origin; (2) use of a geographical indication which identifies wine or an alcoholic drink, which does not originate from the indicated geographical area is unlawful and shall be regarded as an infringement of an appellation of origin, even if it is combined with terms such as "kind", "type", "class", "imitation" or similar terms; likelihood of confusion is not required in this case. However, the lawful use of a geographical indication shall not prevent a person from using his name or the name of predecessors in the business in good faith and in a nonmisleading manner. The following uses of a geographical indication are lawful: (1) use, in respect of a product, of a geographical indication which is identical to a linguistic term commonly known in Israel as the name of the product; (2) use, in respect of a product, of a geographical indication which is not protected or cease to be protected in the indicated geographical area, or that the use thereof in the indicated geographical area has been discontinued; (3) use, in respect of a grape product, of a geographical indication which is identical with the commonly known term for a kind of these grapes, if it has been commonly known as such before April 5, 1994; (4) use, in respect of wine, of geographical indications that are identical in their writing or pronunciation, but differ in their meanings.

Classification: for geographical indications, this jurisdiction uses the Nice Classification System.

Relevant only for appellations of origin: it is not required to indicate the class when applying for registration of an appellation of origin. The Trademark Office (which is also in charge of appellation of origin registration) classifies according to the Nice Classification System, for practical reasons. There are no requirements for describing the goods in a geographical indication application.

Relevant only for appellations of origin: the product should be indicated, but there is no further specification in this regard.

Filing requirements: an application for registration of an appellation of origin will indicate: the product, the special details from which it may be determined that the designation of the product is an appellation of origin and not merely an indication of source or type, who the right owner is and further details which were prescribed. However, no further details were prescribed by law or regulations and the Trademark Office.

Accelerated examination: there are no provisions in the law in this regard, however, the regulations indicate that as soon as possible after receiving the application for registration of an appellation of origin the Registrar shall order to examine the application.

Examination: the Registrar or a person appointed by him in that behalf shall examine every application with a view to ascertaining whether it complies with the provisions and whether the designation which he is asked to register is an appellation of origin. An application to register a geographical indication that certifies geographic origin may not be refused on grounds of geographic descriptiveness. An application to register a geographical indication may be refused because the applicant lacks authority to control a geographic term. An application to register a geographical indication may be refused because the mark fails to perform a geographical function, i.e. to have geographical significance. An application to register a geographical indication may be refused because it has become a generic name (in the sense that it lost its original meaning and has become a common name for such goods) or has ceased to be protected in the country of origin or has fallen into disuse in that country.

Relevant only for appellations of origin: the Registrar will examine whether the details required were indicated in the application and whether the designation for which registration is sought is indeed an appellation of origin.

Publication: after acceptance.

Opposition: may be filed with the Registrar within three months from publication. Any person may oppose the registration of an appellation of origin. Grounds for opposition of an appellation of origin: (1) the designation for which registration is sought is not an appellation of origin but rather only an indication of source or type; (2) the one who claims to have a right to use the appellation is not entitled to use it.

Appeal: to the District Court of Tel Aviv or of Jerusalem.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (simply signed, no legalization required);
2. Full particulars of the product which it is intended to denote, the special particulars showing that the designation of the product is an appellation of origin and not merely an indication of provenance or type, the person entitled in respect of the appellation, and such further particulars as may have been prescribed.

Electronic filing: available. Mandatory for corporations and for attorneys, as distinct from direct private applicants who may file in a hard copy or online.

Registration, Protection

Beginning of protection: date of application.

Duration of protection: ten years from the date of application.

Renewal: for subsequent periods of ten years each. In respect of a registered local appellation of origin - before extending the protection of the registration (every ten years, upon request of the right owner), the Registrar will examine whether it is still used as an appellation of origin, and shall publish the request for renewal in the Official Gazette. The validity of a foreign registered appellation of origin is as its validity in the country of origin. Grace period: there are no provisions in the law in this regard.

Assignment: a geographical indication cannot be assigned.

License: any user who complies with the specifications is automatically entitled to use a geographical indication, without the need to acquire a license or further authorization from the controlling body.

Use/Consequence of non-use: in respect of a local registered appellation of origin - at the renewal stage, the Registrar should check whether it is still used as such. Proof of use after registration is not required to be filed to maintain a geographical indication or to prevent it from becoming vulnerable to cancellation for non-use.

Rights of prior user: a registration of an appellation of origin or lawful use of a geographical indication shall not prevent a person from using his name or the name of his predecessors in the business, in good faith and in a manner which is unlikely to mislead the public; the following are lawful uses of a geographical indication: (1) use, in respect of a product, of a geographical indication identical to a linguistic term, which is common in Israel as the name of the product; (2) use, in respect of a product, of a geographical indication which is not protected or ceased to be protected in the indicated geographical area, or that use thereof in that geographical area has been discontinued. The following uses of a geographical indication are lawful: (1) use, in respect of a product, of a geographical indication which is identical to a linguistic term commonly known in Israel as the name of the product; (2) use, in respect of a product, of a geographical indication which is not protected or cease to be protected in the indicated geographical area, or that the use thereof in the indicated geographical area has been discontinued; (3) use, in respect of a grape product, of a geographical indication which is identical with the commonly known term for a kind of these grapes, if it has been commonly known as such before April 5, 1994; (4) use, in respect of wine, of geographical indications that are identical in their writing or pronunciation, but differ in their meanings.

Restoration: there are no provisions in the law in this regard, however, the discretion whether to allow belated renewal lies entirely with the Registrar.

Infringement: any person who unlawfully uses an appellation of origin shall be dealt with like a person who uses a false trade description, within the meaning of the Merchandise Marks Ordinance, and the provisions of that Ordinance shall apply.

Civil remedy: by injunction, search and seizure order, and damages.

Criminal proceedings: appellation of origin infringement may constitute a criminal offense. Thus, enforcement of the appellation of origin rights is also possible by filing a complaint with the police or by filing a private criminal complaint with the court, and possibly an application for a criminal search and seizure order.

Complaint to IP Unit of the Police: one may approach the Intellectual Property (IP) Unit of the Police/Customs; a request to detain the release of a shipment of prima facie infringing products by the customs authorities may be filed only by the owner of a registered appellation of origin.

Use of appellations of origin: in respect of a local registered appellation of origin - at the renewal stage, the Registrar should check whether it is still used as such. Proof of use after registration is not required to be filed to maintain a geographical indication or to prevent it from becoming vulnerable to cancellation for non-use. An appellation of origin registered in Israel according to the Lisbon Agreement cannot become generic. However, a local appellation of origin may be cancelled on the grounds of becoming merely a name of type or indication source.

Cancellation of registered appellation of origin: an established appellation of origin may be invoked as a basis for opposing or cancelling a later trademark application/registration. The Registrar on his own initiative, or upon request by an interested party, may cancel a registration of an appellation of origin, if it became merely a name of type or indication of source, or if the conditions allowing registration in the first place ceased to exist; only a party with legal interest has standing to file for the cancellation of an appellation of origin. There is no statutory definition for legal interest, but only an indication that any "interested person" may apply for cancellation.