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INTA Bulletin


July 1, 2010 Vol. 65 No. 12 Back to Bulletin Main Page

ISRAEL: Israel Joins Madrid Protocol


On May 31, 2010, the official decision confirming Israel’s accession to the Madrid Protocol was personally handed to WIPO Director General Francis Gurry.

The effective date on which the relevant sections in the Trade Marks Ordinance will enter into force is September 1, 2010.

Background

Israel has been preparing to join the Madrid Protocol and become part of the Madrid System for many years. In 2003, the Trade Marks Ordinance was amended in order to bring national legislation into conformity with the provisions of the Protocol.

Some of the changes had an immediate effect; others will come into force on September 1, 2010.

The main reason for taking so long was various obstacles related to the development of the computerized system, which is now ready.

Main Changes

Multiple-class applications will become available on both the national and the international level.

Renewal will be for 10 years instead of 14 years.

  • Tip: Renewal fees are payable as of three months before the due date. Renewals due between September 1, 2010, and November 30, 2010, can be handled between June 1, 2010, and August 31, 2010, in order to take advantage of the additional four years of validity for the same cost.
Partial assignments will become available (subject to the Registrar’s discretion); consequently, applications/registrations may be divided.

Grounds for central attack under local law (available against Israeli Basic Registrations)

  • Revocation: within five years from registration date (incapability under various grounds).
  • Cancellation on grounds of non-use: as of three years following the registration date and after three consecutive years of non-use preceding the application for cancellation.
  • Cancellation on the ground that the application for registration of the mark was filed in bad faith: may be filed at any time.
Consolidation of numerous single-class applications/registrations into a single multiclass application/registration will be possible, provided identical marks with identical filing dates, owned by identical owners, are concerned. This will allow trademark owners to save on renewal costs.

Division of a basic/national application into several applications may be ordered by the Registrar. The original filing date will be maintained.

The practical aspects of this provision will be developed over time. One example would be that the Registrar may order/advise applicants and applicants may request a division of a multiclass application in cases where grounds for refusal exist against only some of the goods/services. This may allow an application to proceed to allowance and publication in respect of some of the goods/services. The applicant will be entitled to submit arguments regarding the objections related to the remaining goods/services.

A national registration may be replaced by a later international registration provided both registrations are in the name of the same owner and all goods/services listed in the national registration are also listed in the international registration.

Practical Aspects

  • The Israeli database will have an English user interface, although timing is yet unknown.
  • Individual fees are payable per class (identical official fees for national and international applications).
  • Official examination of applications will be within the 18-month period, on both absolute and relative grounds.
  • Objections will be sent to WIPO in English. Responses to objections must be filed three months after the objection.
  • The opposition period will commence with publication in the Israeli Journal (Israeli designations will be republished).
Special Remark

As the customs authorities review the Israeli Patent and Trademark Office’s (ILPTO’s) database in order to report customs seizures, it is unclear whether the customs authorities will be able to contact the owners in the absence of a local address for service in the database record. Therefore, it is highly recommended that the applicant appoint a local representative upon registration, if not required to do so during examination, in order to ensure that customs will have local contact information in case a customs seizure takes place.

The ILPTO will hold seminars for local practitioners during July 2010.


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