05-02-2012 (Newsletter Issue 7/12)
Pharmaceutical Labeling Requirements
The Pharmacists Ordinance has recently been amended and requires as from August 1, 2012, that labels of both prescription pharmaceuticals and any over-the-counter (OTC) pharmaceuticals will have to include several important details, including the brand name of a preparation in four languages, Hebrew, Arabic, English and Russian.
At present, only non-prescription pharmaceuticals which are permitted for general sale (i.e., which are not sold in a pharmacy or by a pharmacist) are required by applicable administrative regulations to be labeled with the pharmaceutical's brand name in four languages - Hebrew, English, Arabic and Russian. Other pharmaceuticals - namely, any pharmaceuticals dispensed in a pharmacy or by a pharmacist (either with or without a prescription) - have so far been required to be labeled with the brand name in Hebrew and in English.
A revised Practice Guideline of the Ministry of Health, which would set forth the specific guidelines for labeling pharmaceuticals in this regard, is soon expected.
In light of the new labeling requirements, it is recommended to apply for Israel trademarks for the pharmaceutical brand-name in each of the four languages: Hebrew, Arabic, English and Russian.
Source: Reinhold Cohn Group, Israel
and IP Factor, Israel
04-17-2012 (Newsletter Issue 6/12)Patent Authority Begins Examining PCT ApplicationsOn April 4 it was announced that beginning June 1, 2012, Israeli applicants for PCT applications will be able to designate the Israel Patent Authority as an International Search and Examination Authority (ISEA).
The World Intellectual Property Organization (WIPO) decided to recognize the Israel Patent Authority as an ISEA in 2009. Since then significant preparations to implement this decision have been in progress. These include hiring additional patent examiners, training them to examine in accordance with PCT requirements, upgrading the computer and communications systems, and enacting the necessary legislation.
Official fees for performing search and examination have not been announced by the Patent Authority but they are expected to be lower than those presently paid by Israeli applicants to either the United States Patent & Trademark Office or the European Patent Office.
At first, the designation of the Israel Patent Authority as the ISEA in an international application will be available only to Israeli applicants. After an initial period it will also become available to applicants from other countries, subject to appropriate bilateral agreements.
Source: JMB Davis Ben-David, Israel
06-12-2011 (Newsletter Issue 8/11)
3D Shape Applications Accepted
The Deputy Registrar in Israel accepted three applications for 3D shapes on the grounds that they are distinctive, even with the absent evidence of acquired secondary meaning.
Source: Dr. Shlomo Cohen & Co., Israel
Ministry of Justice Patent Office, Trademarks Division, Israel
05-02-2011 (Newsletter Issue 7/11)
No Disclaimer Required
After implementation of the Madrid Protocol in September 2010, the Israeli Trademark Office (ITO) has issued a Circular of Administrative Instructions revising its practice with regard to requiring disclaimers. No requirement for a disclaimer will be made from the ITO's part concerning components of the trademark that were considered to lack inherent distinctive nature, if the mark as a whole exhibits distinctiveness. In the past the ITO required such a disclaimer.
Following this Registrar's Circular, the ITO's practice now resembles the OHIM regarding disclaimers in CTMs.
Source: Fisher Weiler Jones, Tel Aviv, Israel
02-01-2011 (Newsletter Issue 2/11)
Official Fees Amended
The Israel Trademark Office (ITO) hast changed its official trademark application fees effective from January 1st, 2011.
The official fee is ILS 1,523.00 (approx. EUR 308.00) for the first class and ILS 1,143.00 (approx. EUR 231.00) for each subsequent class.
Source: Bodner Flom, Tel Aviv; Reinhold Cohn & Partners, Tel Aviv and Shilon Zuckerstein & Co., Tel Aviv
12-01-2010 (Newsletter Issue 17/10)Changes due to Implementation of Madrid ProtocolThe Israel Trademark Office (ITO) has implemented the Madrid Protocol on September 1st, 2010.
Related changes accompanying the implementation:
- multi-class applications are now possible
- the renewal period is reduced from 14 years to 10 years
- when renewing multi-class registrations, a reduced official fee applies for each class after the first
- the examination period of an Israeli application will be limited to a maximum of 2 years
- no more changes to registered national marks or to marks under application except in very exceptional circumstances
For further information please click here
Source: BODNER FLOM, Tel Aviiv and Fisher Weiler Jones, Tel Aviv
06-02-2010 (Newsletter Issue 11/10)
Accession to the Madrid Protocol
Israel joined the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks.
The Madrid System will become effective on September 1st, 2010.
Source: Bodner, Flom & Co., Law Offices and Patent Attorneys, Israel and www.wipo.int
Legal basis is the Trademark Decree No. 5732 of 1972, last amended August 6th, 2003.
Israel is a member of the Madrid Protocol.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, combinations or shades of colours, sound marks and any combination of the mentioned signs. Regarding three-dimensional forms, with three-dimensional form of the good or its packaging, the tendency is not to allow registration, unless it can be proven that the mark has acquired distinctiveness (evidence of acquired secondary meaning is needed).
The same policy used to apply to slogans but on January 5, 2012, as a result of a district court ruling, the commissioner of patent and trademarks informed that slogans will be as registrable as any other forms of trademarks.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Trademark Office.
Multiple-class trademark application are possible.
Foreign applicants do not need a local agent. A postal address within Israel is sufficient.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is approximately 1 to 2 years.
Following the successful examination of the application, the trademark is published in the monthly official gazette. If no opposition is filed, the trademark is registered three months later.
The opposition period is 3 months from publication of the trademark application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
Protection begins with the date of registration. Trademarks are valid for 10 years, and renewal is possible for periods of 10 years.
The grace period for renewals is 6 months from the expiration date to make payment on a renewal. Monthly extensions can be requested.
If the trademark has not been used within 3 years from registration or has later not been used for at least 3 consecutive years, it may be subject to cancellation. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
The official fee is ILS 1,564.00 (approx. EUR 318.00) for the first class and ILS 1,175.00 (approx. EUR 240.00) for each subsequent class.
Trademark Licence Agreement
In Israel a licence agreement has to be in writing. Licensing of unregistered marks is not recordable with the Trademark Office. A trademark may be licensed for some or all of the goods or services in respect of which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of a licence agreement.
There are provisions in law for the recordal of a licensee. Recordal is voluntary, but a licence will not have any legal effect vis-à-vis third parties unless it is recorded. There is no time frame for a recordal and there is no prescribed form or content for the validity of a licence agreement.
The following documents are required for the recordal of a licence:
1. A written request
2. A declaration signed by both the licensor and the licensee
Both must be submitted to the Trademark Office.
The licence agreement becomes effective and enforceable against third parties upon its recordal date. The licence is not required to be published.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and may also call upon the owner to institute infringement proceedings. He can institute proceedings in his own name if the proprietor refuses or neglects to do so. The licensee does not need to cite the trademark owner as co-defendant in any such proceedings.
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We would like to thank the following law firms for their assistance in updating the information provided:
Fisher Weiler Group, Tel Aviv, Israel
Factor Patent Attorneys, Har Hotzvim, Jerusalem, Israel