ISRAEL Trends and Developments Contributed by: Sanford T Colb, David Colb, Barak Mashiah and Guy Oved, Sanford T Colb & Co
Sanford T Colb & Co 4 Sha’r Hagai Street Rehovot Israel
Tel: +972 89 455 122 Fax: +972 89 454 556 Email: colbpat@stc.co.il Web: Stc.co.il
Competing Trade Mark Proceedings in Israel Introduction The past decades have seen a substantial increase in the number of foreign trade mark applications in Israel. There are numerous reasons for this increase, including the overall economic growth that Israel has enjoyed in general and the growing number of countries which have commercial interests in Israel. A principal driver is the ease of filing pro - vided by the Madrid Protocol. With increasing frequency, the Israel Trademark Office is called upon to resolve the question of which of two or more similar marks has prec - edence. In most international jurisdictions, this question is comparatively easily resolved by ascertain - ing which of the applicants first filed or used its mark. However, in Israel this question is resolved in accordance with the provisions of Section 29(a) of the Israel Trademarks Ordinance which estab - lishes “Competing Trademark Proceedings”. The following is an unofficial English translation of Section 29(a) of the Israel Trademark Ordi - nance:
“(a)Where separate applications are made by dif - ferent persons to be registered as proprietors of identical trademarks or those that are so similar as to mislead, in respect of the same goods or description of goods, and the later application was submitted prior to acceptance of the previ - ous application, the commissioner may refrain from accepting any of the applications until their rights are determined by agreement approved by the commissioner, and in the absence of such agreement or approval, the commissioner shall decide, for reasons that shall be recorded, as to which application shall continue to be processed in accordance with this Ordinance.” As can be seen from the statement above, in a case of competing trade mark applications, Israel’s trade mark practice requires that the par - ties initially attempt to reach a consent agree - ment to be submitted to the commissioner for consideration and decision as to registration. If the parties do not come to an agreement, the matter is adjudicated by the commissioner at a hearing, on the basis of evidentiary affidavits submitted by both parties. In the course of the proceedings, the commis - sioner initially decides whether the competing marks are indeed identical or are so similar as to be misleading.
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