Today, September 1, 2010, will long be remembered as one of the most momentous days in Israel’s Intellectual Property history.

After depositing its instrument of accession to the Madrid Protocol for the International Registration of Marks at WIPO on June 1, 2010, Israel today commenced operation of the Protocol, making it the 85th member of the WIPO-administered International Trademark system, and the 82nd Member of the Protocol.

In addition to facilitating International protection of Trade and Service marks under the Madrid Protocol, the Israel Trademarks Office (ITO) also today moved from a single-class to a multi-class filing and registration system, enabling new applications to be filed in multiple classes, with a reduced official filing fee being applied to each class after the first.

As part of a number of related changes accompanying implementation of the new multi-class Trademark system on a national level:

(a) the ITO will allow for unification of several single-class applications, or several single-class registrations, provided that the marks therein are identical and carry the same filing date;

(b) the renewal period in Israel will be  reduced from 14 years to 10 years bringing it in line with the first term of registration of a mark which was changed from 7 years to 10 years in August 2003;

(c) a reduced official renewal fee will be applied to each class after the first when renewing a multi-class registration in Israel;

(d) the examination period of an Israeli application will be limited to a maximum of 2 years, after which time the application will be deemed to be cancelled unless the Applicant requests to present arguments against cancellation before the Registrar;

(e) the ITO will no longer allow changes to be made to registered national marks, and a similar approach will be applied to marks under application albeit that changes to pending marks may be allowed by the Registrar in very exceptional circumstances.

With the recent upgrade of its computer databases and online filing facilities, the Israel Trademarks Office has been promising a more efficient, effective and cheaper filing system – both on a national level, and now also on an international level. The extent, however, to which Israeli individuals and businesses will avail themselves of the opportunity to expand geographical coverage of their Trademarks under the Madrid Protocol remains to be seen, and it will likely take some time until the new international system becomes common play for Israeli Trademark owners.

Following years of pedantically requiring Trademark Applicants to enter Notices of Disclaimers waiving rights to exclusive use of words, letters and other symbols deemed to be non-distinctive or commonly used in a particular field of trade, the Israeli Registrar of Patents, Trademarks & Designs is having second thoughts about continuing to employ this oft-used (and sometimes draconian) condition of allowance during Trademark examination in Israel. 

In a draft Memorandum sent to IP and Legal Attorneys for input late last week, the Registrar noted that Section 21(a) of the Israel Trademarks Ordinance [New version] 1972, which empowers the Registrar and his Examiners to impose disclaimer requirements as conditions of acceptance of a mark, has been applied over the years in non-uniform fashion, thereby leading to uncertainty on two levels. Firstly, the Registrar notes that the lack of uniform application of Section 21(a) has led to uncertainty regarding the Israel Patent & Trademark Office’s (IPTO’s) own policy on disclaimers. Secondly, it has led to confusion vis-à-vis the significance attributable to the many cases for which disclaimers have not been required by the IPTO.

After noting that Trademark laws are designed to ensure that no person is afforded exclusive rights to use a non-distinctive mark or one which is in essence a common term in trade – and that Trademarks are examined in their entirety and registered in their entirety, such that even without a disclaimer being entered the owner of a Trademark registration will not be afforded exclusive rights to each and every element of the mark separately – the Registrar has proposed to generally cease conditioning the registration of marks containing non-distinctive elements upon the entry of related disclaimer notices.  The Registrar has stated that although he will still retain a discretionary right to apply Section 21 in appropriate cases – and while an Applicant would still be entitled to enter a voluntary disclaimer notice as he sees fit – the proposed new policy is intended to correlate with the “… widespread trend in European countries to no longer require disclaimer notices of this sort”.

In conclusion of his draft Memorandum, the Registrar expresses his hope that the proposed new practice of refraining from issuing disclaimer directions, will lead to a more efficient and timely examination process, and one with greater uniformity in its results.

The Registrar has invited comments on the draft Memorandum to be submitted by September 6, 2010, and it is therefore possible that the Memorandum will undergo some changes prior to being finalized as an Official Directive. If however the new practice is brought into effect in the substantially the same form as currently proposed, then it will certainly smoothen the Examination process in Israel, and contribute to shortening the pendency period which currently stands as a minimum of 12 to 15 months in the absence of accelerated examination.  We thus view this proposed reform to be a positive step in the right direction by the Registrar. What remains to be seen however, is whether the Registrar will now be encouraged to relax his long-held adversity to accepting word-mark slogans and three-dimensional Trademarks for registration in Israel.