Region: Israel

IPTO refuses registration of the word mark BOOKING.COM

In an application to register Trademark 244245 in the name of BV, the Israeli Patent and Trademark Office refused registration of the word mark BOOKING.COM, holding that the mark was generic and directly described the applicant’s services, and therefore could not acquire distinctiveness.

16 June 2016

IPTO exercises discretion to rule on criteria of eligibility for certification marks in proceedings between rival applications

In a competition between rival applications for the registration of the words ‘certified internal auditor’ as a certification mark, the Israeli Patents, Designs and Trademarks Office exercised the power to hold that, <i>a priori</i>, none of the marks was eligible for registration.

03 March 2016

Supreme Court affirms refusal of registration to stylised mark due to likelihood of confusion

The Supreme Court has refused leave to appeal a district court ruling which overturned a Israel Patent and Trademark Office decision to register the stylised mark SONICGEAR notwithstanding the opposition by Sony Corporation.

12 February 2016

Purely functional change of existing product design does not meet novelty requirement

In a recent decision the Haifa District Court dismissed a claim of design infringement absent novelty and originality of a profile design and cancelled the design.

03 February 2016


Featured in Designs 2016: A Global Guide

At the time of writing, the Ministry of Justice is working on a new design law to replace the ordinance and regulations, which recently passed the first of three votes required for it to be enacted. The main purpose of the Designs Bill is to adapt the current legislation to new technological developments.

14 December 2015

IPTO refuses to register 3D mark representing shape of shopping mall building

The Israel Patent and Trademark Office (IPTO) has refused to register a 3D mark representing a work of architecture - a shopping mall building - in respect of buildings and of a variety of services. The IPTO held that the applicant had failed to prove that the 3D sign functioned as a trademark and had acquired distinctiveness through use.

11 December 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.

30 November 2015

'.com' ending does not render generic mark distinctive

The IP adjudicator has refused to register the word mark RENTALCARS.COM for a wide range of car hire, booking and travel services in Class 39, finding that the mark was generic and directly descriptive of the applicant’s services. Among other things, the IP adjudicator held that '.com' is a common ending which does not render a mark distinctive.

26 October 2015

Adjudicator sets out criteria for amending specification of registered mark

In <I>Laboratoire HRA Pharma v Actelion Pharmaceuticals</I>, the adjudicator has set out the criteria for amending the specification of a registered mark. At issue was the construction of Subsection 36(3) of the Trademark Ordinance, under which the commissioner is authorised “to strike out goods or classes of goods from among those for which the mark has been registered”. The adjudicator framed the question as whether a strict or purposeful construction was appropriate.

15 September 2015

No likelihood of association between footwear and watches bearing RADO mark

In <I>Rado Uhren AG v Rado Import and Marketing Ltd</I>, the registrar of trademarks has dismissed the opposition filed by the owner of the mark RADO for watches in Class 14 against the registration of the mark R RADO for shoes in Class 25. Among other things, the registrar held that the marks related to goods of a different description and that there was no likelihood of association.

04 September 2015

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