Costs for Trademark Opposition

July 14, 2014

visco gel 1visco gel 2

Aminach LTD filed Israel trademark application No. 233949 Visco-gel for Mattresses, beds, sofa beds, armchairs and furniture for bedrooms; all included in Class 20.

The Health Center D. A. LTD. opposed the mark. On 12 January 2014, the opposition was refused and the trademark was registered.

Aminach now filed a costs request for 81,391 Shekels. This included 78,739,45 shekels  for 52.7 hours work of lead counsel, 3.6 hours work of a junior lawyer, and 1.93 hours work of a trainee.  The difference of 2652 Shekels covered courier expenses, printing costs, fax costs and recording the hearing.

The Health Center D. A. LTD. considered the costs charged as exorbitant and referred to the minimum recommended fee established by the Israel Bar for oppositions, which, in 2014 stood at 1859 Shekels, which is rather less.

The Health Center D. A. LTD. also noted that there was no contract provided that set out a fee scale or tax invoices showing that the fees were indeed paid. Finally, the respondent also noted that costs were awarded in the original decision and there was no justification to charge this twice.

THE RULING

The Commissioner reiterated that an applicant who overcomes an opposition is entitled to payment of legal costs. He did not consider that the amount of time spent was unreasonable for the amount of work done, nor did he consider that there was a difference between pro forma invoices and actual tax invoices.

The Commissioner did not find the minimum charges established by the Israel Bar were binding on attorneys, nor on the Patent Office when deciding fair costs.

Since costs of 7000 Shekels were awarded for a specific action in the original decision, the costs of 13,480 Shekels that were calculated for the same action at this stage was considered as double billing.  Furthermore, costs of 1440 Shekels for postponing the hearing were considered unnecessary since the opposer didn’t have a problem with this, so this fee was canceled.

The Commissioner ruled that the remainder of 66, 400 Shekels (nearly $20,000) should be settled within 30 days, or the sum would be index linked and would accumulate interest.

COMMENT

The term visco-gel relates to material properties and is descriptive. I don’t believe that mark should have been allowed. The costs are high, but not unreasonably so.


Sahara

July 10, 2014

sahara

Tambour and Nirlit are both Israeli paint manufacturers.

Tambour filed a trademark for Sahara as a shade of paint. They filed for accelerated examination, and three weeks later the mark issued for opposition purposes.

The opposition period is three months, and on the final day, an examiner published a decision to allow the mark.

Nirlit submitted a mark for Sahara themselves on the final day of the opposition period and then requested that Tambour’s notice of allowance be cancelled, and the marks be considered as competing marks. The Examiner cancelled the mark and both sides have been fighting as to whether the cancellation was correct, whether it should be considered as void, and whether the court of the Israel Trademark Office is the correct jurisdiction or whether Tambour should have to appeal to the District Court to have the allowance reinstated.

The wording of the ordinance refers to “a competing mark being filed before a pending mark is allowed”. The legal issues boil down to whether decisions can be cancelled and what the word before means.

Other issues raised included whether Nirlit should have informed Tambour of their filing and of the cancellation of the Notice of Allowance. Did Tambour have rights to request amendments to Nirlit’s application?

THE RULING

The Adjudicator of Patents and Trademarks, Ms Yaara Shoshani Caspi did a fine piece of analysis and more or less sorted out the mess.

According to the ruling, trademark decisions are administrative decisions that can be withdrawn. The term “earlier” should be interpreted as meaning up until midnight of the previous day.

According to the ruling, the Examiner was not incorrect to allow Tambour’s mark, but was wrong to cancel the decision to allow it once it had issued. This decision is an administrative decision that can be withdrawn.

Once the marks are not co-pending, there is no competing marks scenario. All interim rulings are ex-parte. There is no obligation to inform the other party who has absolutely no standing.

The mark is retro-actively considered as published and Nirlit had two days left to file an opposition.

No costs were awarded to either side.

COMMENT

I think this ruling is the best of a bad job.  I don’t think we need to interpret earlier as the previous day. the notice of allowance for Tambour’s had issued before Nirlit’s was entered into the system. One hand does not need to now what the other is doing. All Examiners need to check what has been done.

Since there  was no pending mark for Nirlit at the time that Tambour’s mark was allowed, the notice of allowance was correct. It can happen that one department is more efficient than an other.

Retroactive publication for opposition purposes is problematic since in addition to Nirlit, it is not inconceivable that a third party may have a problem with the name.

Western Sahara is a disputed territory and most of the players involved do not recognize Israel. I am not sure that that will necessarily stop them from complaining about the place name being used to denote a shade of paint.


Deadline for Opposition Passes, but Trademark Opposition Accepted as a Cancellation

July 10, 2014

It is well established that opposers have three months to file trademark oppositions. Once this deadline has passed, the correct procedure is to file a cancellation request. There are not many differences between the two proceedings, but the onus changes to an assumption of validity.

Marco Pietroni filed a Madrid Protocol trademark application that specified Israel as one of the countries covered. The mark, 251203 is for the word “Stoneglass” and was filed in classes 19 and 21 for Glass element for building, glass slabs for use in building, plate glass for building, sheet glass for use in building, glass panels, glass tiles (not for roofing), glass for building, and in class 21 for sheet glass (except glass used in building), sheet glazing materials (other than for use in building), glass panels (semi-finished article).

The mark was allowed on 7 November 2014, and a notice was sent to the WIPO that unless an opposition was filed by 28 February 2014, the mark would issue.

An opposition was filed on 2 March 2014 under Section 56 of the trademark ordinance, and a copy, in Hebrew was sent to the International Registry that day.

Since no response was received, the mark was considered cancelled.

I examined the register.

The record is as follows:

Changes
יומן שינויים
תאריך הפרסום
תאור (לועזית)
תאור (עברית)
מהות הארוע (לועזית)
מהות הארוע (עברית)
תאריך הארוע
Publication date
Description (English)
Description (Hebrew)
Nature of event (English)
Nature of event (Hebrew)
Date of event
28/11/2013
Accepted
קובל
07/11/2013
Commencement of opposition procedure
פתיחת הליך מסוג התנגדות
02/03/2014
Cancellation of opposition procedure
סגירת הליך מסוג התנגדות
24/06/2014
Cancellation – abandoned
נמחק – הוזנח
24/06/2014

Under regulation 37 of the trademark regulations, since more than two months had passed and the trademark owner had not responded to the opposition, the mark was considered abandoned.

In other words,  an opposition procedure was initiated despite three months having passed, and on applicant failing to respond, the cancellation procedure was canceled and the mark was registered as abandoned.

COMMENT

In my opinion, this is a miscarriage of justice. For whatever reason, the opposition was filed too late. It should have been ignored. Since it was too late, there is no reason why the applicant (who does not have local representation) should have responded.

Regulation 37 follows regulation 35. The requirement to respond to an opposition presupposes that the opposition was timely filed.

In the Suprene case, the Deputy Commissioner Ms Jacqueline Bracha ruled that she does not have authority to extend the three month drop deadline for filing oppositions and that if the deadline is missed, a cancellation proceeding is in order.

One wonders why the Adjudicator Ms Shoshani Caspi considers that she does have this authority?

We cannot even tell if the International register informed the applicant of the late filed opposition. Generally late submitted documents are not considered.


Click Switch Refresh – what are considered reasonable costs?

July 7, 2014

Up_in_Smoke

British American Tobacco (Brands) LTD. or BAT, filed Israel trademark application no. 232537 for the slogan “Click, Switch, Refresh”. The trademark was opposed by Phillip Morris Products, and on allowance, costs of 98,966 Shekels were awarded against Phillip Morris who challenged the costs as exorbitant.

The applicant considered the costs as actually incurred, real lawyer’s fees, as evidenced by invoices from David Colb., and also argued that since the opposer had acted in poor faith and was an international player, there were grounds to award costs as an example and warning.

Phillip Morris considered that the costs were out of all proportion to the amount of work done, the nature of the case and when the opposition was withdrawn. Furthermore, the opposer argued that some of the costs were not sufficiently detailed and should therefore be refused.

 

RULING

The Commissioner is authorized to claim costs under Section 69 of the Tradaemrk Ordinance. As per Supreme Court Ruling 891/05 Bagatz Tnuva, the winning party is entitled to actual costs provided these are reasonable, taking into account the nature of the case, the amount of work, the stage reached, equitable behaviour of the parties and the like.

In this case, there is no difference between pro forma invoices and tax receipts where the pro forma invoices are expected to be settled. The attorney is entitled to set his fees. The opposer failed to point out specific reasons why costs were considered exorbitant, merely complaining about the overall charges.

On the other hand, an extension fee taken was allowed at the official patent office rate of the patent office, and not at $150 as charged. What appeared to be two charges for the same train journey between Rechovot and the patent office was allowed only once. The witness’ expenses of $400 for flight, $71.53 for food and drink and 2655 Shekels for two nights at the Tel Aviv Hilton were not allowed as no evidence was given, beyond general travel agent fees.

 

COMMENTS

Reading between the lines, it appears that the attorneys-of-record, who are known for their hospitality, put up their client and witness at the Colb Farm in Rehovot, and charged the witness’ train ticket and a typical two night hotel package in Tel Aviv to the losing side.

Adv. Kling correctly refused the hotel fee as not a reasonable incidental expense. It seems that the correct procedure is that Colb should either accommodate their witness in a bona fide hotel and keep the receipts, or, could perhaps apply for recognition of their hostelry services as a Ben & Breakfast or boutique hotel, and issue invoices. If my understanding is correct, the Commissioner is correct not to allow them to claim Tel Aviv hotel expenses when putting up witnesses themselves.


Nu?

June 29, 2014

Vifor Pharam

Galenica AG applied for Israel trademark No. 233011. Vifor Pharma Inc. opposed the request. After both sides stated their cases, they requested extensions to allow negotiations towards a mutually accepted solution.

Eventually, after nine requests for extensions, the Commissioner ordered that further requests be substantiated. Both sides continued to request further extensions based on the ongoing nogotiations. The Commissioner refused to grant additional extensions, and on being requested to reconsider, affirmed this decision.

COMMENT

The mark in question is “vifor pharma” as shown above. One can understand why a company called Vifor Pharma might have a problem with a different company having thier name as a registered trademark. However, an opposed trademark is not registered but is in suspense. I fail to see why the Israel Patent and Trademark Office should have a problem with accepting extension fees indefinately, other than how it affects the statistics in the annual report. If this is the issue, why not simply add a graph to show that delays are with the parties and not the patent office?


Israel IP 2013, a Quantitive Overview

June 17, 2014

 Israel Patent Report 2013

The Israel Patent Office has published its summary of 2013. Their focus is on their efficiency. I have culled and am reporting the information that I believe is of more value to IP practitioners. My interpretative comments are in italics.

To enjoy the graphs and the graphics - a hot air balloon lifting a paper car, and no-doubt signifying hot air, recycling, creativity, and fen-shui, or something, readers can access the original here. I think that this literary digest is more user-friendly. Each to his own.

PATENTS 

The number of patent applications in 2013 was 6184 which is down 9% from 6793 in 2012, and is the lowest number since 2003. Approximately 600 of these applications are Divisional Applications and 6 are patents-of-addition.

The Israel Patent Office notes that since 2012 there has been a 40% discount for local applicants having a turnover of less than 10 million Shekels, but fails to note that there was a massive jump in filing fees of about 40% back then. My take – the Shekel is very strong so Israel is a more expensive destination than some others.

The number of first filings in Israel is 889, which is also a record low, less than at any time in the past decade. It is possible, however, that more Israeli start-ups are first filing in the US, either as Provisionals or regular US applications since the US fees have been going down, and the dollar is weak.

The pendency period prior to examination starting has been dropping steadily and is now 28 months on average, with biotech being especially fast. This may be explained by the increase in Examiners due to the Israel Patent Office becoming an International Search Authority of the PCT, which required the IPO to employ at least 100 examiners.

Second office actions typically issue 5-6 months after a response is filed, which is similar to last year and rather better than in the past. 

On average, examination takes 2 to 27 months, with Biotech taking rather longer on average – 37 months.

The Israel Patent Office has issued 3698 patents in this period, which is more than for any other solar calendar year in the past decade except 2011. 

The number of PCT applications filed in Israel was 1199 which is up from 1113 in 2012, but still below 2011 levels.

658 out these (55%) filing in Israel, have taken advantage of the relatively low International Search Fees and elected Israel as the Search and Examination Authority. 321 selected the EPO and 220 selected the USPTO. 

The report claims that the total number of applications filed by Israelis has remained constant, but more are filed in Israel as opposed to in Geneva. I don’t thing this is true, but do accept that the service provided in Israel is at International levels, with 91% filing electronically. 

What is clear is that in both absolute numbers of originating countries and by Receiving Office, Israel ranks 17, and clearly has a smaller population than any of the countries that have more filings.

Israel is the second fastest receiving office at getting applications to WIPO, with 99.3 applications getting there in les than four weeks, only lagging behind Denmark. This is a fairly useless statistic for the Israeli inventor, but no doubt gratifying to Dr Michael Bart and his team. I have been presently surprised by the quality of Israel generated International Search Reports and have recommended them to clients. In the past the USPTO often failed to provide the International Search Report (ISR) in a timely manner, but they have got better and also better at searching, even occasionally finding relevant art in non-US patent literature. The US fees have dropped somewhat and they may be more popular.

Israel is proud of the speed of PCT examinations, with 90% being examined within 3 months, ahead of the US and EPO. Furthermore, they blame security related examinations being forwarded to the Ministry of Defence for clearance, for the remaining 10% which take 4-5 months to issue.

There is an interesting of table of where incoming patent applications originate, that shows both Paris Convention filings and PCT national phase entries. This is of value when planning overseas marketing strategy.

Lists of the more prolific local and international filers into Israel had few surprises.

Some 20% of patents are issuing by modified examination under Section 17c, relying on a foreign issued patent from one of a list of examining authorities. This number has been dropping steadily since 2010, and is below 2008 levels. 

Some 130 applications were examined out-of-turn by one or other acceleration mechanism. This is higher than in previous years and no doubt reflects the various fast lanes of the Patent Prosecuting Highway, since only 18 applications were considered ‘green’ and fast-tracked thereby 

Of the 3887 applications allowed, 32 were opposed. 27 oppositions were dropped by the opposer and 14 resulted in the applicant dropping the case. Of the four patent oppositions that went full term to decisions, 2 applications were allowed to issue and two were rejected, with the ruled on oppositions taking an average of just over 4 years to be resolved.

Five applications to cancel issued patents were filed with the patent office. 21 final rejections were appealed. 9 requests for patent term extensions were filed and 4 were granted. 41 lapsed patent requests were considered and there are 8 pending decisions for employee inventor compensation. 

In absolute terms, there are fewer applications filed in Israel than in South Africa, New Zealand or Malaysia. In terms of patents per gross national product, Israel lags behind Korea, Japan, USA and most of Europe. 

When normalized for the size of population, Israel remains surprisingly attractive. Israel remains a must-file country for pharmaceuticals, biotechnology, organic fine chemistry (whatever that means) and medical technology. It holds its own in computing. Interestingly, Israel is also noticeable as originating PCT applications for medical technology and pharma, so Israel’s innovative companies are no less significant than the Israeli generic suppliers.

DESIGNS

The number of design applications was 1353 which is the lowest for a decade. 492 of these come from Israel. Of the 861 foreign cases, the US is the most prolific filer, followed by Brazil (104 applications, mostly Stern Jewelry), Europe, Korea, Japan and China.

TRDEMARKS

There were 9580 trademark applications into Israel in 2013. This number is less than 2006 to 2008 but higher than the other years of the last decade. Part of the drop is due to the introduction of multi-class applications, since there is an overall growth in the number of classes being filed in. Multi-class filings and the fact that of the 9580 applications, some 4930 were Madrid Protocol applications, implies less work and income for Israel trademark attorneys in basic filing. There are, however, some 176,978 issued trademarks in force, that need renewing. (Costa Rica has 183,226, and I suspect a better mark to attorney ratio).

As of the end of 2013, there were 20 competing mark cases, 98 trademark oppositions, 14 single party appeals and 40 cancellation or registry correction cases. Overall, the Israel Patent Authority has managed to resolve more of these than have been initiated.

Based on WIPO statistics, Israel ranks 46 in terms of trademark originators, behind Algeria, Kazakhstan, Bosnia and Herzegovina and Azerbaijan. Hoewever, Israel is only 19th in terms of popularity as a destination under Madrid.


Are Lovol and Volvo Confusingly Similar?

June 16, 2014

     lovol

Hebei Aulion Heavy Industries LTD filed trademark applications for LOVOL, including stylized word marks 210591 and 210633 and a logo 210639 and 210640. The marks cover harvesters, agricultural machinery, road rollers, diggers, chargers, concrete mixers, bailers, threshers, rice separators, motors that are not for vehicles, agricultural transporters, motorbikes, cranes, horizontal trains, bicycles, electrical vehicles, vehicle engines, lorries with elevators, concrete mixers, tractors and lorries, all in class 12, and were filed in April 2008.

volvo

In July 2009, Volvo Trademark holdings AB filed an opposition to the marks.

Statements of case, responses, summations, evidence and hearings were held, and in May 2013, after receiving permission to do so, applicant submitted rulings in other jurisdictions that had allowed the mark to register.

VOLVO’s CLAIMS

 Volvo Trademark Holdings AB has a large number of marks including the word mark 14521 for VOLVO, and 14522 for their logo. These marks were filed back in 1955 and cover vehicles with engines in classes 7 and 12. Volvo Holdings was established in 1927 and provides industrial and domestic vehicles, and via a local distributor, has provided hundreds of thousands of vehicles in Israel. Volvo Holdings advertises widely in Israel and abroad, in both conventional and digital media.

The name VOLVO is prominently displayed in the advertisements. VOLVO invests heavily in R&D and safety and, in their words, “the name Volvo has become synonymous with uncompromising quality, prestige, safety and concern for the environment.” Being a well known mark, Volvo claimed that it was entitled to block the similar LOVOL mark under Section 11(14) of the Trademark Ordinance, as being confusingly similar.

VOLVO also claimed that the goods and distribution channels were identical and were thus not registerable under section 8(a), and that the marks were confusingly similar and thus non-registerable under Section 11(9). Finally, claiming inequitable behavior, VOLVO opposed the mark under section 11(6).

HEBEI AULION HEAVY INDUSTRIES LTD COUNTER-CLAIMS

Hebei Aulion Heavy Industries LTD is a Chinese company with sales of hundreds of millions of dollars, 10,000 workers and tens more engaged in R&D. The marks have been successfully registered in the US, Thailand, EU, China, Australia and Canada. Hebei claims that he marks look different and sound different. Since VOLVO only sells via their own dedicated distribution channel, there is no likelihood of confusion. Finally, the products are expensive and so it is unlikely that anyone would mistakenly purchase the wrong vehicle. As to the charge of inequitable behavior, Hebei claimed to have developed their own machines and that the name was chosen for its Chinese meaning.

EVIDENCE

The evidence submitted included affidavits of interested parties and of independent experts and market researchers. Interestingly, VOLVO submitted an expert opinion of a Dr Ping Zhaung (Finjan?), who is a researcher in the Dept. of East Asia Studies at Tel Aviv University to explain the name LOVOL in Mandarin Chinese.

In a survey conducted on behalf of Volvo, 56% of 500 Israeli adults identified the LOVOL logo with VOLVO, and 70% identified the LOVOL word mark with VOLVO more than with any other manufacturer.

An expert in visual representation from the Bezalel School of Design who was appointed by VOLVO argued that visually, the words were confusingly similar, as were the two logos. I am unclear as to his alleged competence for so-doing, but the same expert also explained why the marks sound the same.

Ms Cui Wei (Kiwi?), director of Hebei explained how the name was chosen and that it has been used for 12 years. Apparently the name LOVOL is a transliteration of LEIWO using the Pinyin transliteration system and means “Spring Rains that Wet the Ground”, indicating to their customers that the using their equipment would change the world.

Now, for those of you still following, you are, like me, no-doubt wondering how LEIWO becomes LOVOL? Well, according to Ms Cui Wei, hieroglyphically, the first L is that of Lei and the two Os are reminiscent of wheels. The V symbolizes the vehicle chassis and the L is a handle indicating agriculture (maybe it is a scythe or sickle?). The name was also chosen to provide a logical (sic) symmetry.

Having selected this poetic, pleasingly symmetrical Chinese transliteration, it was registered in China in 2004, and subsequently it was successfully registered in other countries, including US, Thailand, EU, China, Australia, Canada, Panama, Equador, Oman, Singapore and the Philippines, where similar objections were overcome.

Dr Ping Zhaung argued that the name was actually Vo-Ren and was a sort of portmanteau word meaning VOLVO and RENAULT, implying a joint venture of the two European manufacturers. He also provided additional evidence that this was the case.

According to Dr Ping Zhaung, would be transliterated through Pinyin into LEIWO. He argued that Latin characters do not have hieroglyphical meanings to Chinese and anyway, the name was directed to foreign purchasers.  According to Dr Ping Zhaung LOVOL is not Pinyin at all, but rather Sha Zhai – Chinese copying flattery, implying a Chinese Volvo-Renault.

THE RULING

Having established that the word LOVOL is meaningless in Hebrew, Commissioner Kling ruled that the word could be registered unless it was found to be confusingly similar to Volvo, or bad faith was proven. Commissioner Assa Kling ignored the market survey and the Chinese experts, the creative derivatives and simply analyzed the likelihood of confusion using the good old five pronged triple test. As to appearance, Commissioner Kling rejected the analytical approach of the Bezalel expert and, following Gronis’ approach in the 6658/09 Multilock vs Rav Bareakh appeal, looked at the marks in their entirety.

VOLVO’s logo is round whereas LOVOL’s is square. In LOVOL, the words are emphasized far more. Thus the logos were not deemed confusingly similar. Despite the VOL being common to both marks, the words Volvo and Lovol when considered in their entirety are somewhat similar, but not confusingly so. Unlike the Tal Eden, Tal Emek cheese case, where the word Tal is dominant, in this case, no syllable is dominant and the position of the Vol is at the beginning of one mark and the end of the other.

Noting Judge Ginat’s reversal on appeal of the Killah – Killy decision and the qualitative rather than quantitative similarity of Eve and Eva in the Appeal of the cigarette decision, the Commissioner found the qualitative likelihood of confusion low. (I don’t understand the quantitative, qualitative bit at all). As to the customers and distribution channels, since heavy machinery is bought by professionals, even where someone to arrive at the wrong showroom, he would be considered unlikely to purchase the wrong vehicle.

The Commissioner acknowledged that foreign tribunals might come to different results due to local linguistic and cultural differences and referred to Seligsohn’s opus. Nevertheless, I suspect that he was comforted by the fact that other trademark offices had come to the same conclusion.

In summary, since the marks look and sound different, Volvo vehicles are sold through authorized dealers and since people are careful when purchasing vehicles, and that the registration of the mark would not affect Israeli sales of Volvo vehicles, Commissioner Kling dismissed the case, ruling that the marks were not confusingly similar.

COMMENTS

  1. Following recent court appeals, Commissioner Kling’s ruling seems reasonable.
  2. If, in their words, “the name Volvo has become synonymous with uncompromising quality, prestige, safety and concern for the environment.” then presumably it is a laudatory and generic term that anyone can use for uncompromising quality, prestige, safety and concern for the environment – which is what many leading companies would claim!
  3. Does LOVOL imply LOVOL Spring Rains that Wet the Ground, wheels, a vehicle chassis and a sickle to the average Israeli? I’d love to prepare a questionnaire for 500 Israeli adults to answer to clarify this issue.
  4. I am not sure about VOLVO, but I accept that LOVOL is confusingly similar to Renault when transliterated into Mandarin Chinese by the Pinyin system.
  5. It is interesting to compare this with the Dewilux paint decision.

Passing off Moroccanoil

June 10, 2014

hair grease

The IPKAT reports that last week, Judge Hacon of the Intellectual Property Enterprise Court, England and Wales, gave judgment in Moroccanoil Israel Limited v Aldi Stores Limited [2014] EWHC 1686.

The company is an Israeli one. There was an Israel trademark decision that I reported a while back. See here.

The IPKAT’s comprehensive article is here.


Examiner Alex Wernik Retires

May 29, 2014

retirement

Senior Israel Trademark Examiner Alex Wernik is retiring at the end of the month. His workload will be absorbed by his colleagues.We wish him a pleasant retirement.

 


Trademarks in Israel, Gaza and the West Bank

April 30, 2014

Borders change. Infringement Continues

Israel

Israeli trademark law is governed by the Trademark Ordinance (New Version) 1972 (“the Trademarks Ordinance”). The Trademarks Ordinance applies only to the territory of the State of Israel, i.e. the territory over which Israel has extended its sovereignty. This includes Jerusalem, both East and West, and the Golan Heights. However, Israel Trademark Law does not apply in the West Bank or in Gaza. West Bank trademark law is based on the Jordanian Trademark Act of 1952. Gaza trademark law is based on Egyptian Trademark Law. The Palestinian Authority maintains separate trademark Offices in the West Bank and in Gaza. The registration of trademark rights is conducted separately in each of those jurisdictions. The three trademark laws applying between the Jordan and Mediterranean are fairly similar since the laws are based on the British Trade Marks Act 1905.

Israeli trademark protection may be obtained under the Madrid Protocol. Neither the West Bank nor Gaza are party to the Madrid Protocol. In Israel, trademark registrations are valid for 10 years, and may then be renewed for additional 10 year periods. In the West Bank and Gaza, a trademark registration is valid for an initial period of 7 years from the application date, and renewable for subsequent periods of 14 years each.

Most imports to the area come through Israeli ports which will stop goods believed to infringe trademarks registered in Israel. Israel is active in enforcing IP rights, and has an effective police and court system. IP enforcement in the Palestinian administered territories is less easy. Where there is room for profit, there is temptation to cheat and there have been cases of counterfeit DVDs, detergents and liqueur made in Israel. The situation in the Palestinian administered territories is currently worse, but is improving. The sheer volume of traffic crossing the borders creates opportunities for smuggling. So to help enforce trademarks effectively, we recommend registering marks in all three jurisdictions.

We have developed a good relationship with a Palestinian attorney who is managing partner of a Palestinian Law firm and is licensed to practice in both the West Bank and Gaza has a Masters degree from a UK university and excellent English who will be attending INTA. If you’d like to meet with us at INTA discuss registration and enforcement in Israel, Gaza and the West Bank, and to receive discounted costs by registering in the three jurisdictions, please contact us.


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