ISRAEL Law and Practice Contributed by: Ronit Barzik-Soffer, Luiz Blanc and Rakefet Peled, Reinhold Cohn Group
• Protocol relating to the Madrid Agreement Con - cerning the International Registration of Marks – Madrid Protocol (1989). Treaties do not have direct applicability unless and until implemented by legislation. The rights of foreign trade mark owners are governed by the same laws and agreements as the rights of local trade mark owners. Under the Copyright Act, foreign works are protected for a period not exceeding the duration of copyright protection in their country of origin, provided that the work was published in Israel or that a treaty was signed between Israel and the other country regarding copyright protection. 2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks Any mark may be registered in so far as it can distin - guish the goods and services of the trade mark owner from those of others. A “mark” is defined as “letters, numerals, words, images or other signs or combinations thereof, in two or three dimensions”. This flexible definition includes, among others, words, logos and labels, in colour or black and white, pure colour marks, 3D trade marks, motion, holographic marks and sound marks. No scent or taste marks have been registered as yet. Registration of 3D marks consisting solely of product shapes is possible only in exceptional cases, provid - ing the following three conditions are fulfilled – the requested device: • is being used to mark the goods and to identify the origin of the goods (rather than being the image of the goods); • does not serve an essential aesthetic or functional role; and • due to use has acquired distinctiveness to the extent that it is apt to convince the registrar that the case concerned is special and exceptional.
Well-known marks are entitled to extra protection. A well-known trade mark: • even if not registered, will entitle its owner to exclu - sive use of the mark for the goods or services for which it is well known in Israel, or for goods of the same description; or • once registered as a trade mark, will entitle its owner to exclusive use of the mark even for goods that are not identical or of the same description, if the use of the mark by someone other than its owner may indicate a connection between the aforementioned goods and the owner of the reg - istered mark, and the owner may be harmed as a result of said use. Service marks may be registered. Certification and collective marks may be registered. 2.2 Essential Elements of Trade Mark Protection The basic requirement for trade mark protection in Israel is distinctiveness. A mark may not be regis - tered unless it can be used to distinguish between the goods of the owner of the mark and those of others. A mark may acquire distinctiveness through extensive use, primarily in Israel. The registrar or the court that determines distinctiveness through use, should con - sider the extent to which the actual use has made the mark distinctive of the goods or services concerned. 2.3 Trade Mark Rights A valid trade mark registration entitles its owner to the exclusive use of the trade mark for the goods covered in the registration, subject to conditions and disclaim - ers indicated therein. The Trademark Ordinance provides extra protection for well-known trade marks: • A well-known mark entitles its owner to exclusive use of the trade mark in respect of the goods for which it is well known in Israel, or goods of the same description. • A well-known registered trade mark also entitles its owner to exclusive use in respect of goods
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