The importance of a trademark to a company is sometimes greater than its economic value. The trademark is the company’s business card in the eyes of the consumer. The more recognition the
company’s trademark gets, along with association with the products that it sells, the greater the company’s value will be and the consumer will identify the product with the trademark.
In order for a mark to be registrable and protectable, it must have a character that distinguishes the goods of the trademark owner from the goods of others. The law states that there are marks that are not registrable, including a mark that has potential to mislead the public, or a mark that belongs to someone else or is similar to a mark that gives rise to concern of deception.
In terms of trademark registration, Israel enrolled in the Madrid Protocol in 2010, and since then a trademark registration application may be filed in many countries that are convention members based on an application filed in Israel. The meaning of this is that an Israeli applicant may, by filing an application in Israel, register his trademark in various countries around the world, instead of independent registration in each separate country.
A trademark is valid for 10 years from the day of filing the registration application, after which the applicant may, subject to payment of a fee, extend the protection for additional periods. In this period, the trademark owner receives a unique right to use the mark.
If someone has filed an application for registering a trademark that is similar to your registered trademark or similar to the point of deception, you can file an objection to registering the trademark to the registrar. The test that has been established in case law for pronouncing whether there is concern of deception is known as the “triple identity test”. This test includes three subtests, namely: the visual and phonetic similarity test (the initial impression of the
appearance of the marks in their entirety and phonetic similarity is tested), the customers type and goods type test (the similarity in products and their means of marketing is tested) and the other relevant circumstances test (the other specific circumstances of the case are examined). The logic and common sense test is in addition to these tests. It is important to state that this test is also relevant as a defense in an infringement claim.
Within five years from the day of issuing the registration certificate, a person can file an application for striking a trademark for the reason that the mark is not registrable, or for the reason that registering the mark results in unfair competition concerning the rights of the applicant in Israel. An application for striking a trademark may be filed based on an argument of good faith, with no time limit.