Trade and Service Marks

– Trade Marks Ordinance (New Version), 5732-1972, as amended in 1999, 2000, 2002, 2003, 2007, 2010 and 2017.
– Merchandise Marks Ordinance 1929, as amended in 1939, 1941, 1958, 1961, 1963, 1981 and 1999.

Membership in International Conventions

– Paris Convention for the Protection of industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Stockholm Act 1967 since April 8, 1961, and Geneva Act since September 25, 2021.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Stockholm Act 1967.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act 1967, since September 25, 1966.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 14, 1978.
– WTO’s TRIPS Agreement, since April 21, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since September 1, 2010.

Filing, Examination

Applicant: any person or legal entity who uses or intends to use the mark in his/her business (in relation to goods or services he/she manufactures or deals with). The applicant has to indicate an address for service in Israel.

Types of marks: trademarks, service marks, collective marks, certification marks.

Exceptions to protection: (a) a mark referring to some connection with the President of the State or his household or to presidential patronage, or a mark from which any such connection or patronage might be inferred; (b) flags and emblems of the State or its institutions, flags and emblems of foreign States or international organizations, and any mark resembling any of these; (c) public armorial bearings, official signs, or seals used by any state to indicate control or warranty and any sign resembling any of these, and any sign from which it might be inferred that its proprietor enjoys the patronage of or supplies goods or renders services to a Head of State or a government, unless it is proved to the Registrar that the proprietor of the mark is entitled to use it; (d) a mark in which any of the following words appear: "patent", "patented", "By Royal Letters", "registered", "registered design" (referring to designs filed under the old ordinance), "design", "registered design" (referring to designs filed under the new law), "unregistered design", "copyright", "to counterfeit this is forgery", or words to like effect; (e) a mark which is or may be injurious to public order or morality; (f) a mark likely to deceive the public, a mark that contains a false indication of origin, and a mark that encourages unfair trade competition; (g) a mark identical with or similar to emblems of exclusively religious significance; (h) a mark on which the representation of a person appears, unless the consent of that person has been obtained; in the case of the representation of a deceased person, the Registrar will request the consent of his survivors, unless in his opinion, reasonable grounds exist for not doing so; (i) a mark identical with one belonging to a different proprietor already on the Register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive; (j) a mark consisting of numerals, letters or words which are in common use in trade to distinguish or describe goods or classes of goods or which bear direct reference to their character or quality, unless the mark has a distinctive character as defined in the law; (k) a mark whose ordinary signification is geographical or a surname, unless represented in a special manner or unless having a distinctive character as defined in the law; (l) a mark including a geographical indication, in connection with goods which do not originate from the indicated geographical region, if the geographical indication may cause deception regarding the real geographic source of the goods; (m) a mark including a geographical indication that is literally correct, but falsely implies as if the goods originate from another geographical area; (n) a mark identifying wines or spirits that contain a geographical indication, if such wine or spirit did not originate in that geographical area; (o) a mark identical, or misleadingly similar to a well-known trademark even if the mark is not registered, in respect of goods for which the mark is well-known or in respect of goods of the same description; (p) a mark identical to or similar to a well-known trademark being a registered trademark, even in respect of goods not of the same description, if the propounded mark might indicate a connection between the goods in respect of which the mark is applied for and the registered proprietor of the well-known trademark, and said registered proprietor might be harmed as a result of the use of the propounded mark.

Home registration: as a rule, not required, but the Trade Marks Ordinance has provisions based on the telle quelle provisions of Art. 6quinquies of the Paris Convention, which provide some preferential treatment for a foreign applicant who owns a home registration. These provisions are helpful in overcoming certain objections. Where recourse is taken to this route, a certificate of home registration must be submitted.

Classification of goods and services: international.

Multiple class applications: applicable; no limitation on the number of classes per application.

Examination: inherent registrability (absolute grounds) as well as availability (relative grounds). 

Disclaimers: available.  

Letters of consent: are accepted. The LoC can be simply signed (no formal requirements).

Opposition: may be filed within three months of publication with the Registrar.

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 applicant (address and state of incorporation), and list of goods/services;
3. If it is a three-dimensional mark, a clear drawing or photo of the object permitting the view of the mark from all sides must be provided and the application shall contain an indication that the mark is a three-dimensional one. If the mark is a sound mark, notes and a digital sound file have to be provided;
4. Priority document (when applicable); can be filed until three months after the date of filing; if not in English, must be accompanied by a certified English translation.

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

For a change of name:
1. An official certificate confirming the change of name, issued by the relevant authority in the country of incorporation, or an official publication of the change, or a notarial confirmation regarding the implementation of the change, confirming that the change was recorded by the appropriate authorities in the country of incorporation (no legalization required and a scanned copy is sufficient);
2. Power of attorney in the new name, simply signed and a scanned copy is sufficient.

For a change of address: no documents are required.

Registration, Protection

Beginning of protection: date of application (retroactively).

Delivery of document: the formal registration certificate is issued in paper format only, however, an electronic copy is available online in the publicly available online trademark database of the Israeli Trademark Office.

Duration: ten years from the date of application.

Renewal: for subsequent periods of ten years each.

Belated renewal: within six months as of the initial renewal date, upon payment of an additional fee.

Restoration: possible within six months as of the belated renewal term, under special circumstances justifying the delay; has to be supported by an affidavit; payment of an additional official fee. Reservation after non-renewal for a period of up to one year.

Infringement: civil remedy: by injunction, search and seizure order, and damages; criminal proceedings: trademark infringement may constitute a criminal offense. Thus, enforcement of the trademark 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 trademark.

Assignment: with or without goodwill of the business concerned; has to be recorded in the Register of Trade Marks.

Licensing: the registered owner may license the use of his mark but the licensee must be recorded as an authorized user; otherwise, use of the marks by the licensee will not accrue to the registered owner.

Use of trademarks: not a condition to the filing or to the registration, but a mark is vulnerable to cancellation upon request by an interested party if it has not been used for any three consecutive years after the registration, or if it is not in use and there is no bona fide intention of using it. Valid use of the mark is use made by the proprietor or recorded licensee in the form registered or in a form that is essentially the same. Use in advertising only is not considered good faith use of the mark for this purpose.

Cancellation of a registered mark: cancellation is not ex officio but rather only upon application of an interested party.

Grounds for cancellation: (a) if the mark was not eligible for registration from the beginning – same grounds as the above-mentioned grounds for refusal, or creates unfair competition with reference to the rights of the party which requested the cancellation (cancellation is limited to a period of five years from grant of the registration); (b) if the mark has been applied for registration in bad faith (cancellation may be requested at any time); (c) if the mark has not been used for a consecutive three-year period (cancellation may be requested at any time); (d) a request of the registered trademark owner (at any time).