Clarifications to Examination Policy

Author:Mr Avi Ordo
Profession:S Horowitz & Co

The Israeli Registrar of Trade Marks recently issued several Circulars, addressing the policy of the Israel Trade Marks Office ("the ITMO") with respect to the examination of different types of trademark applications. Below is a brief summary of the contents of each such Circular:

1. Slogans—the Registrar's Circular provides that the eligibility of a slogan to be registered as trademark will depend upon the following criteria being met:

(a) that the slogan has acquired distinctive character as a consequence of use. As a general principle, a slogan is regarded as lacking any distinctive character and/or as relating directly to the nature of the relevant goods or services. Thus, in order for a slogan to be registrable, it will need to have acquired distinctive character through use; and -

(b) that the slogan, in and of itself, associates, in the eyes of the public, between the goods or services with respect to which the registration is sought and the origin of the relevant goods or services; and -

(c) in cases where the trademark for which registration is sought consists of both a trademark of distinctive character as well as a slogan, registrability of the mark will be contingent upon a disclaimer being given with respect to such slogan; save that such disclaimer will not be required if the conditions referred to in paragraphs (a) and (b) above are met.

2. 3D Marks—the Registrar's Circular provides, with respect to 3D Marks, as follows:

(a) The accepted manner in which three-dimensional designs of goods (or their packaging) may be protected, is by filing an application to register a design.

(b) As a general rule, a mark constituting a three-dimensional image of the actual goods (e.g., an image of a medical pill or a laundry lozenge) contradicts the interpretation given to the term "trademark" as defined in the Israel Trade Marks Ordinance, in that registration may be sought for, and obtained, in respect of a given mark, only if the mark is intended to be used by a person in relation to goods manufactured or dealt with by such person (i.e., protection does not extend to the actual goods bearing such mark).

(c) Thus, in order not to nullify the distinction between trade marks and designs, the registration of three-dimensional figures as trade marks will only be possible in special and exceptional circumstances and where it is proven that the following two cumulative conditions are met:

the three-dimensional figure for which registration is being sought is used...

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