When filing a European Community Trade Mark (CTM) – which grants its owner an exclusive right in the 27 member states – non-EU colleagues have often chosen the WIPO (Madrid Protocol) way as there was no need for legal representation from a member state, and also, it has appeared less complicated because of the local filing. However, the Madrid/WIPO way – going through the national patent office and the WIPO – is significantly slower and more risky, in the same time costing no less than direct CTM filing.

Direct CTM filing has advantages such as…

1. A shorter procedure time: 5-6 months which is less than third of the Madrid/WIPO way’s time (18 months);
2. No special risk: CTM is independent of the national trademark, unlike the Madrid/WIPO way where in case of the national trademark has been subject to a final decision of rejection or cancellation, CTM is bound to be invalidated as well;
3. Favorable filing cost: Only 1170 USD official fee (+ some service fee, see below) whereas the Madrid/WIPO way’s filing cost can reach as high as 2120 USD (*in case of single CTM filing).

How can you file a CTM application online in the most convenient way?

By using www.trademark.eu which has become the largest trademark portal of the European Union. At this page you cannot only file applications, but there is an option to renew, assign or oppose trademarks, and designs (RCD) as well. The service fee for filing a CTM application is only 250 USD (mentioned fees are up to 3 classes, at actual EUR-USD course; further costs: disbursements, service fee at granting; for details see Business conditions).

Your application will automatically be accompanied by legal representation when forwarding it to the OHIM (EU trademark authority). Legal representation is provided by Georg Pintz & Partners, one of the leading trademark offices in the European Union and in Hungary. A high level of services for reasonable prices is guaranteed.

Should you have any questions, please, do not hesitate to contact us:

Trademark.eu – Georg Pintz & Partners

Budapest – Barcelona – Munich

Pf. 590, 1539 Budapest, Hungary

Tel.: +36 1 458 3353  Fax: +36 1 457 0065

info@trademark.eu     www.trademark.eu

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.

The following kinds of marks cannot be allowed as trademarks in Europe:

According to a new law in Romania, all of the Romanian trademark applications will now be published at the online databased of the Romanian Trademark and Patent Office.

Interested parties will be able to file oppositions within two months from publications.

Rule 19.3 – Rules for Allocation of Domain Names under the il Top Level Domain

Panel: Adv. Jonathan Agmon, Prof. Danny Dolev, Dr. Victor Bouganim

An appeal for reconsideration of allocation of the domain name “toysrus.co.il”

The Appeal was filed by Toys “R” Us, Inc. (“the Petitioner“), a corporation located in New Jersey, U.S.A. for reconsideration of the allocation of the domain name “toysrus.co.il” (“the Domain Name“) to Mr. Nir Gabriely (“the Domain Name Holder“)

Procedure:

The Appeal was filed with the Israeli Internet Society (ISOC-IL) in accordance with Rule 19.3 the ISOC-IL Rules for Allocation of Domain Names under the il Top Level Domain (“Rules”). The Appeal was filed on June 24, 1999. On July 7, 1999, in accordance with Rule 20.2 an Advisory Committee Panel (“the Panel”) was assembled. On July 11, 1999, in accordance with Rule 20.5 of the Rules a notice was sent to the Domain Name Holder and to Itzik Nosatzki, the administrative contact for the Domain Name Holder. The Domain Name Holder was requested to submit a response no later than 26.7.1999. On 16.7.1999 the Petitioner filed additional e-mail in support of its position and forwarded a power of attorney as requested by the ACP. On July 30, 1999 the ACP notified the Domain Name Holder that the period set forth in the notice dated July 11, 1999 has lapsed. On 2.8.1999 the administrative contact, Mr. Nosatzki, informed the ACP that he and Interspcae served solely as agents for the Domain Name Holder, and that to the best of his knowledge the Domain Name Holder had no knowledge of the Appeal. On 5.8.1999 the Domain Name Holder requested additional 10 days extension to submit a response. On 6.8.1999 a ten days extension was so provided. On 11.8.1999 the Domain Name Holder informed the ACP that negotiations for a settlement were underway with the Petitioner. The Domain Name Holder requested that our consideration is withheld while the negotiations are underway. Attorney for the Petitioner objected to additional postponements on the grounds that even if such negotiations did take place, they were not successful. The ACP decided not to put on hold the decision, but notified the Domain Name Holder that he may submit his response no later than August 30, 1999. The Domain Name Holder did not file a response to the Appeal, but on September 3, 1999 the Domain Name Holder notified the ACP it is willing to transfer the Domain Name to the Petitioner.

In accordance with Rule 21.3 the ACP declared the closure of the proceedings.

The following decision was issued October 22, 1999 in accordance with Rule 21.3.

Decision:

In light of the agreement by the domain name holder, Mr. Gabriely, to deliver the domain name “toysrus.co.il” to ToysRUs, Inc. or any other company in its control, we decide as follows:

1. The proceedings are hereby declared as closed.
2. ISOC will transfer the domain name “toysrus.co.il” to the name of ToysRUs, Inc. (or a company in its full control).
3. The parties shall each pay $250 to ISOC-IL as costs of these proceedings.

On Behalf of the ACP

Jonathan Agmon

During passover, the Israeli PTO will not be working. Between March 29, 2010 and April 6, 2010, no documents will be accepted.

Documents that need to be filed should be filed a day after the vacation is over.