Trademarks:Change in International Classification of Services

Profession:Reinhold Cohn & Partners

As all practitioners in the IP field are aware, the International Classification of Goods and Services under the Nice Convention, was amended by dividing Class 42 into four classes — 42 to 45.

The Israeli Patent Office has now issued guidelines confirming that the new classification will be binding as of January 1, 2002. Until December 31, 2001, applications may be filed under either the current classification or the new one, but as of January 1, 2002, only the new classification will apply.

In cases of pending applications, the change in classification may be made at the initiative of either the applicant or the Trade Mark Office. Regarding registered trademarks, these may be reclassified, if so requested by the applicant although it is not compulsory to do so.

In the event of reclassification of an application/registered trademark, this may at times require division of an application/registration into a number of applications/registrations. In such a case, the registrations/applications will be accorded new serial numbers but will be entitled to and bear the original filing date. Filing fees will need to be paid for each new application/registration stemming from such a division.

It should be noted that in accordance with Israeli law, classification does not play an important role in determining the scope of rights under a registered trademark in case of infringement, and the main determining factors are the description of goods or services and the consequent likelihood of confusion with the alleged infringing trademark. Thus, we do not currently see a reason to apply for reclassification of existing registrations.

With regard to searches, the Patent Office indicated in its guidelines that for applications in Classes 43, 44 or 45, a search will also be made in Class 42 in order to locate prior trademarks which have not been reclassified.

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