Israel prepares to join the Madrid Protocol

Israel is getting ready to join the Madrid Protocol by making every effort to launch a computerized system that will allow the Israel Trademarks Office to deal with international applications. Also, the government adopted last August the Law for the Amendment of The Israeli Trademark Ordinance (5) 2003 to bring the national trademark law in conformity with the provisions of the protocol.

The government intends to deposit its instrument of accession with the World Intellectual Property Organization by the summer and implement the system three months later. However, it is not certain that the computer system will be ready on time. Also, most provisions of the new law will come into force only three months after Israel actively joins the Madrid Protocol, upon a formal announcement of the Minister of Justice that will mark the official commencement date of the protocol in Israel.

One of the few changes already in force following the amendment of the Israeli trademark law is the alteration of the initial validity term from seven to 10 years. The change of the consequent validity terms for renewal from 14 to 10 years will only come into force on the commencement date of the protocol in Israel (this change was to come into force immediately under the original law proposal, but it was omitted from the final version). Therefore, in the absence of any future amendment in this regard, there will be three validity terms after the protocol commencement date:

• Marks registered before August 6 2003 shall remain due for first renewal seven years after the registration and subsequently every 14 years.
  
  
• Marks registered between August 6 2003 and the commencement date shall be due for first renewal 10 years after the registration date, and subsequently every 14 years.
  
  
• Marks registered on or after the protocol commencement date, shall be due for first renewal 10 years after the registration date, and subsequently every 10 years.

Another significant change already effective is that it is no longer possible to revive a registration that lapsed due to non-payment of renewal fees, if the application for revival was made more than a year after the registration expired.

It is worth noting that since use in Israel is not required to obtain or maintain a registration (although marks may be subject to cancellation for non-use), Israel may become an important strategic consideration for trademarks owners under the Madrid system.

Ronit Barzik-Soffer, Reinhold Cohn & Partners, Tel Aviv