FAQ - Trademarks

Yes. A trademark that is not registered may be entitled to protection under the Commercial Wrongs Law, 5759-1999. Such rights may be exercised by launching a proceeding on the ground of passing off, which prohibits traders from causing an asset they sell or a service they provide to be mistaken for another’s asset or an asset or service connected with another. To establish passing off, plaintiffs must prove goodwill in their goods and/or services and the likelihood of consumer confusion between the marks.

A holder of a well-known mark that is not registered is entitled to exclusive use of the mark for the goods it is well known for in Israel or goods of the same description.

A registered well-known trademark gives the holder the exclusive right to use the trademark also for goods of different descriptions if use of the mark by a third party is likely to indicate a connection between the goods and the holder of the well-known mark and if he is liable to be adversely affected as a result of such use.

A registered trademark gives the holder the exclusive right to use the trademark with respect to the goods or services it is registered for. By virtue of a registered trademark, the holder can stop infringing use of its trademark not only in relation to goods and services the trademark was registered for but also in relation to goods and services of the same description.

Trademark infringement includes:

• Unauthorized use of a trademark or a mark resembling such trademark in relation to goods for which a trademark is registered or goods of the same description;
• Unauthorized use of a well-known trademark even if not registered or of a confusingly similar mark with respect to goods the trademark is well known for or goods of the same description;
• Unauthorized use of a registered well-known trademark or a confusingly similar mark, even with respect to goods of a different description, provided that such use could indicate a connection between such goods and the holder of the registered well-known mark and that the holder of the well-known trademark could be harmed as a result of such use.
• Unauthorized use of a mark for advertisement purposes only is sufficient to constitute infringement.

Any person or business may petition to remove a registration from the registry, among others on the grounds that there has in fact been no bona fide use of the mark for the goods or services in respect of which the registration’s revocation was requested during the three years preceding the petition for revocation.

Cancellation proceedings may be opened within five years of the date the registration certificate was issued. A cancellation action filed on the ground of bad faith may be filed at any time.

Any person or business may petition for the cancellation or rectification (with respect to some goods or classes of goods) of a trademark registration.

The grounds include absolute grounds, such as descriptiveness, marks harmful to public policy, deceptive marks and marks encouraging unfair competition, and relative grounds, such as marks harmful to third party property rights and identical or similar to another’s business name if likely to mislead the public or cause unfair competition.

Another ground for cancellation is bad faith at the time of applying for the mark’s registration such as an attempt to free ride on another trademark’s goodwill.

A cancellation is a legal proceeding aimed at removing a registered trademark from the registry. The trademark registrar or a trademark office adjudicator oversee cancellation proceedings.

Opposition proceedings may be lodged within three months from the application date published in the Trademark Journal.