INTA Bulletin

January 15, 2015 Vol. 70 No. 2 Back to Bulletin Main Page

ISRAEL: Trademark File Wrappers Become Accessible for Public Inspection During Examination

Until recently, the file wrappers of national Israeli trademark applications were not accessible for inspection by third parties until the applications were accepted and published for possible opposition. Conversely, since Israel joined the Madrid Protocol a few years ago, provisional refusals issued by the Israeli Trademark Office with respect to international registrations designating Israel have been open for public inspection in the international ROMARIN database. This generated inconsistency in the confidentiality policy in respect of national versus international applications prosecuted in the Israeli Trademark Office.

In order to prevent this inconsistency, the Israeli Trademark Registrar recently issued new guidelines (Trademark Office Circular No. 028/2014). Under these guidelines, as of November 26, 2014, the file wrappers of all pending Israeli trademark applications (national and international) have become accessible for public inspection. Under the new guidelines, in order to obtain information from such a file wrapper, it is necessary to apply to the Trademark Office and pay minor official fees (NIS 48, i.e., approximately US$15). The Trademark Office then sends scanned copies of the documents and correspondence in the file wrapper by email (normally within one business day).

Under the new Circular, there are several exceptions to this new practice.  In particular, the following documents are not accessible for public inspection during examination:

      1.    Evidence filed in the course of interference proceedings (under section 29 of the Israeli Trademark
             Ordinance) before such evidence is served on all parties, unless the parties have agreed otherwise;
      2.    Documents relating to the recordation of Registered Users. Such documents are not accessible for
             public inspection at any time (under section 51(c) of the Israeli Trademark Ordinance); and
      3.    Documents that were specially exempted by the Registrar from publication. The Registrar may order
             accordingly pursuant to a motion from the Applicant, on grounds such as trade secrets or any other
             circumstances justifying the confidentiality of the documents.

This change in trademark prosecution policy regarding file-wrapper accessibility is also consistent with the Israeli policy regarding patent file wrappers, which are accessible online since the launch of the Israeli Patent Office online patent database several years ago.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. 

© 2015 International Trademark Association