Israel to become active member of Madrid Protocol

Israel

On May 20 2010 the Israeli government adopted a formal decision stating that Israel would become an active member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) (Decision 1715). The Madrid System will become operational in Israel on September 1 2010, when the amendments to the Israeli Trademarks Ordinance (New Version) (1972/5732) necessary for the implementation of the Madrid Protocol will take effect.

First, applicants using the Madrid System will be able to designate Israel in international applications, thus saving initial filing costs and, possibly, subsequent maintenance costs. However, trademark applications will still be examined for conformity with Israel's relatively strict standards, and may be rejected by the examiner or challenged in pre-grant opposition proceedings on absolute or relative grounds. To the extent that local practice will remain the same, one should bear in mind that the Israeli Trademarks Office applies a relatively restrictive policy in respect of the description of goods and services, and does not normally allow broad descriptions. Furthermore, objections may occasionally be raised due to the similarity of marks in their Hebrew transliteration.

Therefore, trademark applicants may need to engage in active prosecution. The accelerated examination of international applications will be available at the request of the applicant, as is the case for local applications. In short, applicants currently using the Madrid Protocol will be able to designate Israel as part of the international filing process, instead of filing nationally in Israel. However, applicants should take into account the Israeli context, and are advised to clear the mark by conducting a local search.

Second, the implementation of the Madrid Protocol will bring about changes to the overall trademark regime, which will be applicable to all marks, either international or domestic:

  • Multi-class filing, which is not currently available in Israel, will become possible under the amended ordinance. This will affect the cost of filing and maintaining trademark registrations, as well as the cost of recording changes.
  • An applicant may request the division of a multi-class application prior to registration, or the consolidation of several applications that are not yet advertised (or, following publication, the consolidation of applications filed simultaneously and owned by the same party at the time of the request). It will also be possible to request the consolidation of several registrations if the marks at issue were applied for simultaneously.
  • Currently, a trademark is initially registered for a period of 10 years and may be renewed, subject to the payment maintenance fees, for 14-year periods. As of September 1 2010, registrations will be renewed for 10-year periods.

Ronit Barzik-Soffer and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv

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