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What is a trademark?

A trademark is any name or logo designated to identify a certain product, a business or a service.

A trademark may consist of words, letters, numbers, characters or a combination of several of them together – this also includes three-dimensional symbols.

 

Why is it important to register a trademark?

Registration of a trademark is tool with the power to enhance the reputation of the business that stands behind it – allowing the public to identify the products or services of the trademark owner and not mistake the source of the product bearing the trademark.

There are established companies whose reputations precede them and can easily prove their association with their famous trademark. However, smaller companies, new companies or less known companies may find themselves without legal means if they do not register a trademark – for such companies, a trademark constitutes a legal instrument of great value.

Trademark registration gives its owner exclusive rights – which means that if someone or a company decides to make use of an identical or similar trademark, the owner will be able to initiate legal proceedings against that person or company.

 

The trademark registration process

In order to enjoy trademark rights, the trademark has to be registered in the Register of Trademarks.  The registration process includes filing an application and paying a fee. The application is examined and if during the examination the examiner has any objections to registering the application, the examiner will send to the patent attorney an examination report, called an Office Action, detailing his or her objections. The patent attorney will prepare a response to the Office Action and respond to it within the time specified in advance by the examiner. When the examiner decides that the trademark is eligible for registration, the trademark will be published in the Trademarks Journal. If no opposition is filed three months from the date of publication, the trademark will be registered in the Register of Trademarks, and a registration certificate will be sent to the owner of the trademark.

 

Criteria for registering a trademark

According to the Trademarks Ordinance of 1972, eligibility for registering a trademark is assessed on the basis of the following two criteria:
  • Is the mark original and unique? The more unique the mark so are the chances it will be registered.
  • Is the mark different from existing trademarks for products or services in the same sector?
It is important to emphasize the reputation the mark has gained – if the mark has gained a good reputation, its prospects to be registered will increase, even in cases where it is not unique.

 

Validity of registration

A registered trademark is valid for 10 years. This period can be extended for additional periods of 14 years, subject to payment of renewal fees. This can be done indefinitely.

 

What is a trademark infringement?

Trademark infringement takes place when a trademark or a similar trademark is used without the consent of the trademark owner for products or services for which the mark is registered.

When trademark infringement takes place, the trademark owner has the right to file a claim and demand an injunction and compensation.

 

Is there a misleading similarity between two marks?

An examination of two marks in order to determine whether they are identical or if there is a misleading similarity made on the basis of three tests that have been established in Israeli law, which are called the "triple test":
  • The “look and sound” test – do the trademarks look or sound similar?
  • The “type of goods and customer” test – are the trademarks used to market similar products or services or have the same description? do the marks appeal to same type of customer? and are the products or services marketed through the same marketing channels?
  • The “other circumstances” test: this is a miscellaneous test examining an assortment of other relevant circumstances, among which is also the common sense test.

Trademarks abroad
Israel is party to the international treaty called the "Madrid Protocol," which allows filing trademark applications in member countries of the Madrid Protocol at reduced costs.  According to the Madrid Protocol, the privilege of filing an international trademark application with the Registrar of Trademarks in Israel is provided to a citizen, resident, or with anyone with business activity based in Israel.

The international application is dependent for a period of 5 years on a mark registered in Israel, and the validity of a mark registered in each member country depends on the validity of the international mark.
 
Dr. Sharona Lahav - Patent Attorney    
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+972-50-22-145-22    
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info@lahav-patents.com
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