Israel

Trademark strategy is an early focus of the world’s top disruptors

Analysis of this year’s disruptor list reveals that these start-ups defy the typical IP filing process.

Trademark strategy is an early focus of the world’s top disruptors
Star Wars hashtag controversy; Puma and Nike spar over FOOTWARE; EU geographical indications denounced – news digest
1 May 2020

Star Wars hashtag controversy; Puma and Nike spar over FOOTWARE; EU geographical indications denounced – news digest

In our latest round-up, we look at Amazon verifying sellers using online video, fashion brands taking a community angle, exhausting the covid-19 price gougers, a joint message from the USPTO and EPO, and much more.

Brands could be the centre of renewed focus during Israel’s scale-up phase
1 Nov 2019

Brands could be the centre of renewed focus during Israel’s scale-up phase

The start-up nation’s register is dominated by foreign applicants but, as the government throws its weight behind maturing businesses, strong branding will help domestic companies to become a feature of the economy.

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19 Jun 2020

3D mark for Rubik’s Cube shape struck off register

In Extreme Toys Ltd v Seven Towns SA, the Israeli registrar of trademarks has held that the shape of the Rubik’s Cube was functional and was thus ineligible for registration as a 3D mark. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Israel

Customs is authorised to seize suspected goods (whether as a result of a complaint submitted by the rights holder or as a result of a random examination of shipments arriving in Israel). Read more

7 Apr 2020

eBay successfully opposes registration of CARBAY for online retail of vehicles

The Israel Patent and Trademark Office has upheld eBay Inc’s opposition to the registration of CARBAY by a local car retail company, finding that there was a likelihood of confusion as to the origin of the services offered under the CARBAY mark. Read more

17 Mar 2020

Trademark procedures and strategies: Israel

According to Israeli law, there is no specific use requirement for establishing the mentioned rights. Each case is judged on its own merits. Read more

Anti-Counterfeiting

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14 May 2019

Procedures and strategies for anti-counterfeiting: Israel

According to the Customs Ordinance, Customs is entitled to detain imported goods that are suspected of infringing trademarks. It is possible, although not mandatory, for rights holders to file a complaint while recording their registered trademarks with Customs. Read more

17 Jan 2019

Four key relationships at the heart of Teva’s pharmaceutical trademark management – exclusive interview

Laurence Rickles, chief trademark counsel at Teva, provides tips for successful pharmaceuticals brand rights management, and the four relationships that success depends on. Read more

12 Sep 2018

Trademark procedures and strategies: Israel

While the Trademark Ordinance predominantly provides protection for registered trademarks, it also protects unregistered well-known trademarks. Read more

24 May 2018

Procedures and strategies for anti-counterfeiting: Israel

According to the Customs Ordinance, Customs is entitled to detain imported goods that are suspected of infringing trademarks. It is possible, although not mandatory, for rights holders to file a complaint while recording their registered trademarks with Customs. Read more

Brand management

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12 Dec 2019

Supreme Court: payments attributed to brand compliance guidance must be added to goods’ value for import duty purposes

In a case of first impression, the Israeli Supreme Court has held that royalties paid by licensees and distributors with respect to the marketing of goods bearing well-known fashion trademarks were deemed part of the goods’ value for customs purposes. Read more

8 Jan 2019

Protecting and enforcing design rights: Israel

A design will be considered new if an identical design, or a design that differs only in non-essential details, has not been made available to the public before its disclosure date. Read more

18 May 2018

Flurry of royal wedding marks, Israel added to TMview, and India unveils IP mascot: news round-up

In our latest round-up, we look at a number of trademarks that appear to be related to Prince Harry and Meghan Markle, the USPTO unveiling a new resource center, the sale of the Toys-R-Us brand, and much more. Read more

26 Jan 2017

Salvador Dali's publicity right found to be alive and kicking

The Central District Court has held that the judge-made right of publicity in respect of the name of Salvador Dali had survived the death of the artist for at least 25 years and devolved on the artist's estate, which was awarded compensation for the unauthorised use of the artist's name. Appeals to the Supreme Court are pending.

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Enforcement and Litigation

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9 Jan 2020

Blow for Chanel as district court holds that rebottling is not an act of infringement

In ScentWish Ltd v Chanel, the Tel Aviv District Court has held that the rebottling of CHANEL® perfumes does not constitute trademark infringement under the ‘genuine description’ exception provided for by Section 47 of the Trademarks Ordinance. Read more

15 Nov 2019

Protecting and enforcing design rights: Israel

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21 May 2019

ILPTO upholds registration of former Soviet trademarks for sweets

The Israel Patent and Trademark Office has considered an interesting dispute concerning several marks registered in the name of two major Russian confectionery manufacturers for sweets from the Soviet era. Read more

28 Jan 2019

ILPTO allows only partial registration of CAL AUTO due to confusing similarity with major credit company’s CAL mark

The Israel Patent and Trademark Office has partially upheld an opposition filed by a major credit company, Israel Credit Cards Ltd (abbreviated in Hebrew as ‘CAL’), against an application for the registration of CAL AUTO. Read more

Government/Policy

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21 Sep 2018

New design registration regime: what you need to know

The new Israeli Design Law recently came into effect, and the Ministry of Justice subsequently published draft new Design Regulations. This update reviews the key points concerning the filing, examination and registration process. Read more

24 Jul 2018

“Don’t panic” – new entrants to Madrid Protocol give mixed feedback on their experience since accession

​​​​​​​Law firm practitioners in jurisdictions that have adopted the Madrid Protocol in recent years have shared their experience in an exclusive survey. While some praised the system, other were scathing about its impact.

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27 Jun 2017

Israel Patent Office – 2016 Annual Report

The recently published 2016 Annual Report by the Israeli Patent Office (ILPO) summarises its activities and contributions to the IP environment in Israel. An interesting part of the report is dedicated to actions which aim to improve ILPO efficiency. Such actions include, among others, the transition to online services and investment in human resources.

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19 Apr 2012

Pharmaceutical labels will soon have to include brand name in additional languages

Amendments 17 and 20 to the Pharmacists Ordinance, which will come into effect on August 1 2012, will require that pharmaceutical labelling indicate the brand name of the product not only in Hebrew and English, but also in Arabic and Russian. In light of the new labelling requirements, it is advisable to apply for trademark registration for the product name in each of the four languages in order to ensure optimal protection for the brand.

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Law Firms

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19 Sep 2016

Restoration of an expunged mark: when paying renewal fee is not enough

One of the more challenging aspects of trademark practice is seeking to restore the validity of an expunged registration.

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IP Offices

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2 Jul 2019

How AI will revolutionise trademark searches

Researchers from Ben-Gurion University of the Negev, Israel have looked at how advanced AI tools will transform the way in which trademark searches are conducted in the future – and, in an exclusive guest post, expand on what this means for trademark practitioners. Read more

Online

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18 Nov 2016

A change for '.il' domain names

The Israel Internet Association – the registry responsible for running the '.il' namespace – recently announced that the registration and management of '.il' domain names would move to a registrar model. The move took effect this month, when ISOC-IL transferred the registration and management role for all '.il' domain names to accredited registrars.

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30 Nov 2015

District Court dismisses trademark infringement claim against Google based on forum non conveniens doctrine

In <I>Dead Sea Premier v Google Inc</I>, the Tel Aviv District Court has dismissed a claim brought by Dead Sea Premier against Google Inc, Google Ireland and several Israeli defendants for trademark infringement committed via Google AdWords and Google Shopping. The court held that Israel was a <I>forum non conveniens</I> and that the action should be brought in the United States because, among other things, the relevant trademarks had expired in Israel but remained registered in the United States.

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1 Dec 2014

Supreme Court issues landmark decision on parallel imports

In <I>Swissa v Tommy Hilfiger Licensing LLC</I>, the Supreme Court has defined the scope of permissible use of registered trademarks by parallel importers. The court adopted a relatively liberal approach to parallel imports, but nonetheless imposed restrictions on the activities of the parallel importer. The court also addressed other important concepts, such as dilution and use of another’s trademark in domain names and as keywords.

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6 Sep 2013

District Court overturns lower court's decision on use of personal name as keyword

Overturning the Tel Aviv Magistrate Court's decision, the District Court has ruled that Proportzia was entitled to use the name of the plaintiff, Dr Klein, as a keyword in Google's AdWords service, provided that the search results were not misleading. As Dr Klein's name had become known as part of his business, there was no difference between using his name and using a trademark.

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Portfolio Management

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24 May 2018

No BIG DEAL? Supreme Court confirms likelihood of confusion between marks as used

Israel’s Supreme Court has confirmed that there was a likelihood of confusion between the word mark BIG DEAL and the stylised mark BIG DEAL. When comparing the marks as used side-by-side, the likelihood of confusion was apparent. Read more

12 Dec 2017

No time limit to cancel trademark registrations filed in bad faith

The Tel Aviv District Court recently rejected a trademark infringement claim which had been filed by the owner of a local furniture chain against the purported use of the mark HABITAT in Israel by Habitat International.

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24 Oct 2017

Israeli court addresses relationship between design protection and copyright

The Israeli Supreme Court recently dismissed claims by Fisher Price Inc and Mattel Inc of copyright infringement and passing off in a copy of a rocking chair.

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27 Jul 2017

Apple’s iPad Mini registrable despite prior publication

In <i>Apple Inc v The Registrar of Patents, Designs and Trademarks</i> the Jerusalem District Court has overturned a decision by the Registrar of Patents, Designs and Trademarks which had rejected Apple’s Design Application 53627 with respect to the design of a tablet device on the grounds of prior publication.

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Trademark law

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14 May 2018

Victory for Barilla: Supreme Court finds competitor's packaging confusingly similar

Israel’s Supreme Court has upheld a temporary injunction preventing Rami Levy from marketing pasta products in blue packaging, finding that it was confusingly similar to well-known pasta producer Barilla's own packaging.

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18 Sep 2017

New design protection law

A new design law has been approved by Parliament and will come into force in August 2018. The new law will provide the legal basis for protection of designs, and will eventually replace the Patents and Designs Ordinance 1924. It aims to provide small and medium-sized local enterprises and individual designers, as well as global enterprises, with effective ways to protect their designs and enforce their rights.

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29 Mar 2017

Trademark procedures and strategies: Israel

The courts have recently addressed the registration of 3D trademarks and slogans as trademarks – ruling that in certain cases, the shape of a product may be protected as a 3D trademark if it has acquired distinctiveness and is used as a trademark, and that a slogan which is filed for registration should be examined in the same manner as any other mark and should not be a priori considered inherently non-distinctive.

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18 Jan 2017

Unregistered mark with reputation can enjoy protection

In <I>The National Aluminium & Profile Co (foreign company) v Extal Ltd</I>, the Jerusalem District Court has affirmed the deputy trademark registrar’s refusal to register a mark consisting of a lengthwise slit along aluminium profiles following an opposition by the owner of a long-used similar mark.

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