Trademarks

The topic of trademarks is a developing and dynamic field, and today in Israel, many requests are submitted to register trademarks in diversified fields. The increasing competition in Israel and abroad between the businesses in the many different fields turnsthe branding of a product or a service together with their protection to conditions that are essential for the business owner’s success. It is very important to handle the trademark correctly- starting from choosing the right mark, continuing with its registration, and ending with the observation over the way the trademark is used.

The purpose of the Trademark

Trademark laws are designated to protect the commercial names or logos. Trademark laws are also designated to protect the reputation that person got while using the commercial name or logo, and to protect the public from being mislead due to the unauthorized use of the trademark.According to the Trade Marks Ordinance (New Version – 1972), a trademark is defined as letters, numbers, words, images or other signs, or the combination of these in two dimensions or in three.

A trademark is defined as a mark used, or intended to be used, by a person in regards to the goods he produces or trades in. A registered trademark grants its owners the exclusiveright to use the registered mark for the products or services of the kind on which the markwas registered. The main purpose of this right is to prevent other people from using the mark in regards to the products or services that are the subject of the mark. The owner of the trademark is entitled amongst other things, to transfer his rights in the mark and to grant licenses for using the trademark.

“A Well Known” Trademark

There are exceptional cases where a “well known” trademark will prevent others from using the trademark even for goods that are of different classification. A well known trademark is a mark that acquired vast reputation that expands the narrow field of the original product or service. In examining the well-known trademark we need to take into account amongst other things, the degree by which the trademark is known by the public, and the degree the well known trademark is known due to the marketing efforts. “Coca-Cola” and “Disney” are examples of well known trademarks.

Examining the Application to Register a Trademark

The applications to register the trademarks are examined by the Trademarks Department at the Patents, Designs and Trademarks Office. The Trademarks Department examines if
the applied mark meets the criteria set in the law to register a trademark. For example, thetrademark needs to have a distinctive character- meaning that the mark allows us to distinguish between the goods of the owner of the mark and the goods of others.

There are four categories of names that are used in commerce. These categories have been determined according to the degree of protection they are granted. The reason for using these categories is to avoid a monopoly in the names of certain goods, something that might contradict the public interest:

  • Generic names: names that are not entitled to protection
  • Descriptive names: a name that describes the traits and components of the assets or the services. A descriptive name is not entitled to protection unless it has a distinctive character that distinguishes it from the others who work in this field.
  • Implying names: names that imply about the goods without explicitly describing them. These names are entitled to protection.
  • Arbitrary names or imaginative names: these names are entitled to a broad protection.

When the distinctive character of the mark is stronger, the scope of protection the courts shall grant this trademark shall be wider.

The duration of the protection of the trademark is ten years. It is possible to renew this protection of the trademark for additional durations of ten years, subject to renewal fees. It is important to mention, that since we are dealing with a territorial right, the protection is limited to the country where the trademark is registered. In 2010, Israel joined the “Madrid Protocol”, which allows for the submission of applications from Israel to registertrademarks within foreign countries.

In order to receive consultation in the matter of trademarks, contact our law firm orcall: 077-2107000.

The Infringement of a Trademark

A person who without authorization of the trademark owner uses a mark that is identical to the trademark or a mark that looks deceptively like the trademark shall be deemed an infringer of the trademark. The general test in order to determine whether the trademark was infringed is to examine if there is a suspicion that the public shall be misled regarding the goods. This examination shall be done via the misleading similarity tests that have been formulated in the case law, and which have been names the “triple test”. This triple test includes three subsidiary tests: “the test of sound and sight”, “the test of the type of merchandise and clientele”, and “the rest of the circumstances”. This examination shall take into consideration people with ordinary logic who act diligently ina reasonable manner.

The Advantages of the Trademark

The registration of a trademark embodies in it many advantages, and it is an efficient instrument that contributes to the creation of an asset that has a high financial and commercial value. The trademark allows its owners to use it exclusively, and it is a deterrent that minimizes the risk that the competitors shall beat the business owner and register a similar (or identical) trademark. The trademark also allows the owner of the mark to distinguish himself from his competitors and strengthen his brand.

The scope and importance of the trademark may expand even beyond the world of trademarks. For example, a registered trademark may assist its owner in preventing his competitors from registering a company, which activity is tangent to the activity of the trademark, with a name that is identical or similar to the trademark. The registered trademark may also assist its owner against those competitors who have registered a domain name that is composed form the owner’s trademark (the phenomenon called Cybersquatting). In addition, a registered trademark serves as a main instrument used by the customs authorities when they try to prevent imported goods that infringe the rights ofregistered trademarks.

We shall be delighted to assist you in legal consultation in the subject of trademarks including: choosing the trademark, applying to register the trademark, drafting licensing agreements to use the trademark and protecting the trademark.