Trademarks Comparative Guide

Author:Mr David Gilat
Profession:Gilat Bareket & Co., Reinhold Cohn Group
 
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1 Legal framework

1.1 What is the statutory or other source of trademark rights?

The Trade Marks Ordinance (New Version), 5732-1972; The Merchandise Marks Ordinance, 1929; The Protection of Appellation of Origin and Geographical Indications Law, 5725-1965; and The Commercial Wrongs Law, 5759-1999 (Section 1 - Passing Off).

1.2 How do trademark rights arise (ie, through use or registration)?

Trademark rights arise primarily through use, but also through registration.

1.3 What is the statutory or other source of the trademark registration scheme?

The Trade Marks Ordinance (New Version), 5732-1972; The Trade Marks Regulations, 1940; The Trade Marks Regulations (Appeal before the District Court), 5748-1987; and The Trade Marks Regulations (Implementation of the Madrid Protocol), 5767-2007.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

The Trade Marks Ordinance defines a 'mark' as "letters, numerals, words, devices or other signs or combinations thereof, whether two-dimensional or three-dimensional". A 'trademark' is defined in the ordinance as "a mark used, or intended to be used, by a person in relation to goods he manufactures or deals in". Under these flexible definitions, the Israeli law acknowledges, among other things, word marks, two-dimensional marks, three-dimensional marks including product shapes, colours and colour combinations, motion marks and sound marks.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

Any of the aforementioned marks may function as a trademark, given that it may distinguish the goods and services of the trademark owner from those of others.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

A list of marks that are not eligible for registration is set out in Section 11 of the Trade Marks Ordinance. According to this list, the following marks may not be registered:

marks alluding to a connection with the president of the state or his household, or to presidential patronage, or marks from which any such connection or patronage may be inferred; flags and emblems of the state or its institutions, flags and emblems of foreign states or international organisations, and any marks resembling same; public armorial bearings, official signs or hallmarks used by any state indicating control or warranty and any signs resembling same, and any signs from which it may be inferred that the owner 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 owner of the mark is entitled to use it; marks in which the following words appear: 'patent', 'patented', 'according to state letter', 'registered', 'registered design', 'copyright', 'counterfeiting this is forgery' or words to like effect; marks which are or may be injurious to public policy or morality; marks which are likely to deceive the public, which contain false indications of origin or which encourage unfair trade competition; marks containing a geographical indication in relation to goods that do not originate in the geographical area indicated, or a geographical indication that could be misleading in relation to the genuine geographical area of the origin of the goods; marks containing a geographical indication that is verbally correct, but contains a false representation to the effect that the goods originate in another geographical area; marks which are identical or similar to a symbol with a solely religious meaning; marks on which the representation of a person appears, unless the consent of such person has been obtained; in the case of the representation of a deceased person, the registrar shall request the consent of his or her survivors unless, in his opinion, reasonable grounds exist for not doing so; marks which are identical to a mark belonging to a different owner which is already on the register in respect of the same goods or description of goods, or which so nearly resemble such a mark as to be calculated to deceive; marks 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...

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