Trademark is a legal protection granted to characters and symbols used by a person or business to mark products or services they produce or provide. Many brands are Trademarks. A mark owner differentiates his products or services from others by means of his Trademark.
GKDM accompanies and advises its clientele in all that relates to the protection of Trademarks in Israel and abroad. GKDM’s professional advice in this field combines legal knowledge in a variety of related fields, including Commercial Torts, Copyrights, Unjust Enrichment, and more.
The professional legal services include:
- Trademark application in Israel;
- Trademark application abroad;
- International Trademark application;
- Handling objections to registration, ex officio/provisional refusals to register and various proceedings before the Trademark Office;
- Nullification/cancellation of registered Trademarks;
- Sale and transfer of rights in Trademarks;
- Litigating before the Trademarks Office IP Tribunal as well as Trademarks infringement cases in court; and more.
What is considered to be a Trademark?
A Trademark can be composed of words, letters, symbols, illustrations or a combination of any of these. A logo can be protected as a Trademark. Under certain circumstances, a Trademark can also be a three dimensional product, special colors, an advertising slogan and even tones, provided that they have elements which differentiate them and distinguish them from others.
How can I protect my Trademark?
For the purpose of protecting a Trademark it is generally necessary to file a Trademark Application to the Trademarks Office. At the time of submission of the application, one must decide what the goods (products) or services regarding which the mark will be registered are. The application undergoes an examination by a Trademarks Examiner. Amongst other things, the Examiner examines whether the mark possesses distinguishing characteristics, whether it is misleading or is similar to other marks which have already been registered, as well as whether the mark constitutes a term which is in general use or used in everyday language (what is referred to as a “generic mark” or a “descriptive mark”), in which case exclusivity cannot be granted to only one applicant.
In certain cases a Trademark can enjoy protection even without registration, when the Trademark is a “Well Known Trademark”. Meaning. a mark which as a result of marketing and advertising efforts is known to a large portion of the general public. Such marks are protected as Trademarks even if not formally registered.
An owner of a registered Trademark or a Well Known Trademark has the exclusive right to use the mark, and whoever uses an identical or similar mark without his permission, including for purposes of production, marketing, sale or advertising, is likely to infringe on the Trademark.
It is important to remember that the filing of an application for Trademark registration is not the “end of story”. First, one must make certain that the mark is appropriately registered for the relevant goods or services, as otherwise the mark’s owner is likely to find himself without sufficient protection. Second, the application to register a Trademark can encounter objections to its registration from competitors or other interested parties, and in the absence of proper legal handling, it is likely to be rejected and the mark will not be registered or receive protection. Third, even after the registration, the story does not end as under certain circumstances it is possible to cancel a Trademark which has already been registered.
One should also know that the cancellation of a Trademark can be the result of a legal proceeding initiated by a mark owner against an infringer. This might happen if the defendant succeeds in convincing the court that the mark was unjustly registered in the first place.
In order not to find oneself in a situation in which a Trademark Application is denied, or a Trademark is cancelled after it is already registered, there is great importance to getting professional legal advice and formulating a proper strategy in advance.
Trademark protection is a territorial protection, that is to say registering a Trademark in Israel generally will not ensure protection for the Trademark abroad. The significance of this is that it is important to formulate a strategy for the registration and protection of the Trademark abroad and in relevant cases, in addition to the Israeli registration application, to submit an international registration application as well (including by means of the Madrid Protocol).
* Picture: Trademark of SUBARU automaker.
The above is an overview and does not constitute a legal advice. Professional legal advice requires individual examination of the specific circumstances.