Trademarks Comparative Guide

• Published date: 07 April 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: JMB Davis Ben-David Ltd.
• Author: Mr Jeremy M. Ben-David and Aaron Lewin

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).

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

• The Trademarks Ordinance (New Version) (5732-1972) (as amended from time to time, including amendments in compliance with the Agreement on Trade-Related Aspects of Intellectual Property Rights);
• The Trademark Regulations 1940 (as amended from time to time); and
• The Trademarks Regulations (Implementation of the Madrid Protocol) (5767-2007).

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

Trademark rights in Israel arise through registration in accordance with the Trademarks Ordinance.

Under certain circumstances, the owner of an unregistered mark may have a cause of action against an unauthorised user of the mark pursuant to provisions of general laws dealing with commercial practices, such as the Commercial Torts Law and the Law of Unjust Enrichment.

Well-known trademarks not registered in Israel are granted qualified protection against infringement (see question 6).

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.

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

See question 1.1

2 What constitutes a trademark?

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

According to the Trademarks Ordinance, a 'mark' is defined as "letters, numerals, words, devices or other signs or combinations thereof, whether two-dimensional or three-dimensional".

The ordinance further defines:

• a 'trademark' as "a mark used, or intended to be used, by a person in relation to goods he manufactures or deals in"; and
• a 'service mark' as "a mark used, or intended to be used, by a person in relation to a service rendered by him".

All of the provisions pertaining to trademarks apply equally to service marks. 'Certification marks' and 'collective marks' may be registered as trademarks subject to specific requirements.

A trademark may be:

• a word mark only;
• a picture mark only (eg, a logo, device or image); or
• a combination of both.

It may or may not include colour. To obtain protection for the use of a trademark in any colour or format, the trademark should be depicted in standard black letters or in black and white (for devices).

After Israel became a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights, the definition of a 'trademark' was expanded to include a broader range of marks, including sound marks.

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.

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

To qualify for registration, a mark must be distinctive - that is, it must be able "to distinguish the goods of the proprietor of the mark from those of other persons". Distinctiveness can be either inherent or acquired through use.

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

Section 11 of the Trademark Ordinance lists marks that are ineligible for registration. The main types of marks that are ineligible for registration are as follows:

• marks that infer a connection to, or patronage by, states, heads of states or their governments or institutions, or other well-known international organisations;
• marks that include terms such as 'patent', 'patented', 'by royal letters patent', 'registered', 'registered design', 'copyright' or 'to counterfeit this is forgery';
• marks that would be injurious to public policy or morality;
• marks that are likely to deceive the public, falsely indicating origin and encouraging unfair competition;
• marks that resemble religious emblems;
• marks that include the representation of a person, without the consent of that person or his or her survivors;
• marks that are identical or confusingly similar to a mark that has been registered in respect of the same goods or description of goods;
• marks that include characters or words that are in common use in trade, relating to goods or classes of goods or referring to their character and quality, unless these are distinctive within the meaning of Section 8(b) or 9 of the Trademarks Ordinance;
• marks that comprise a geographical name or surname, unless it has a distinctive character within the meaning of Section 8(b) or 9 of the Trademarks Ordinance;
• marks that misleadingly identify wine or an alcoholic drink containing a geographical signification; and
• marks that are identical or deceptively similar to a well-known mark, whether registered or not, in relation to similar or different goods, if they could suggest a connection between the applicant's goods and those of the owner of the registered mark, to the detriment of the latter.

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...