The IP Factor » Madrid Protocol

Israel Branding & Trademark Seminar with Association of Israel Boards of Trade a Great Success

Dr Michael Factor — Tue, 07 Sep 2010 11:44:20 +0000

Trademark and Branding Seminar a Sell-out

On Sunday 5th September 2010, JMB, Factor & Co. and Ellen Shankman Law Offices cosponsored a trademark seminar with the Association of Israel Boards of Trade. The large conference venue was totally packed, and additional chairs had to be brought in.

Chairperson, Ex-MK, Adv. Uriel Lyn

Chairperson of the Association, Ex Knesset Member Adv. Uriel Lyn welcomed everyone to the event and emphasized the importance of strong international trademark portfolios for business.

Dr. Dan Herman, CEO of Competitive Advantage Ltd. argued that the choice of name and logo was less important than how it is used for successful branding.

I gave a brief introduction to trademarks, and showed why company and brand names and logos should be registered or one could find oneself losing one’s painstakingly developed identity.

Moty Cory - IP Director, NICE Systems

Moty Cory, the Intellectual Property Director of NICE Systems gave a valuable insight into protecting a challenging mark. It seems that NICE was actually an acronym that was used for branding purposes before the firm realized that the mark is arguably laudatory, is the name of a French town, was used by others and lacks distinctiveness. Nevertheless, Moty demonstrated that even with a less-than-ideal company name, with cooperation between the trademark attorney, (in this case, Adv. Ellen Shankman) an in-house IP manager who was on the ball, and the marketing people, good results were, nevertheless, obtained.

Adv. Ellen Shankman

Adv. Ellen Shankman herself then spoke about new Top Level Domains coming in, and the possibility to register domain names in Hebrew and Chinese. She also spoke about the increasing importance of trademarks and branding on the Internet, and informed us that real world products were being launched in virtual worlds.

Adv. Aharon Factor

Adv. Aharon Factor who manages the trademark department of our firm wound up the proceedings by explaining the advantages and disadvantages of the Madrid Protocol and presented statistics regarding typical user profiles, providing insights of when the Madrid system was appropriate and when its use was not recommended. As usual, Jeremy Ben David, managing partner of JMB, Factor & Co. chaired the event. We toasted the incoming Jewish New Year on boutique wine provided by one of our clients, who also provided a good example of why early registration of trademarks can prevent unnecessary legal headaches when a third party decides to adopt a similar name.

Being Prepared: Branding and Trademarks in the New Era

Dr Michael Factor — Tue, 31 Aug 2010 20:08:57 +0000

New opportunities for marketing leverage following Internet marketing distribution and the Madrid Protocol

In conjunction with the Federation of Israeli Chambers of Commerce and Ellen B. Shankman & Associates, JMB, Factor & Co. is delighted to invite Israeli manufacturers and exporters to a seminar to be held 3:00-6:00 p.m. on Sunday September 5, 2010.

Israel Federation of Chambers of Commerce House, 84 Hashmonaim St., Tel Aviv. Welcome by Adv. Uriel Lynn, President of the FICC

“Marketing and Branding in the New Era” Dr. Dan Herman, CEO Competitive Advantage LTD.
Mr Moty Cory, Intellectual Property Director, Nice Systems LTD.
“Why Create a Trademark Portfolio?” Dr Michael Factor, Partner, JMB, Factor & Co.
“Branding and Brand Protection Online” Adv. Ellen Shankman, Principle, Ellen B. Shankman &Associates
“Registering Trademarks has Never Been Easier or More Economical – Using the Madrid Protocol” Adv. Aharon Factor, Head of Trademarks, JMB, Factor & Co.

Reception including a toast to the Jewish New Year. No cover charge.

Please register: seminars@israel-patents.co.il

Francis Gurry Speaks at IP Function in Tel Aviv

Dr Michael Factor — Mon, 31 May 2010 19:21:42 +0000

Dr Francis Gurry, the head of WIPO, came to Israel to receive the accession papers for Israel to join the Madrid Protocol. He addressed the profession in a joint event held at the Dan Hotel, Tel Aviv, and co-hosted by the AIPPI, the AIPA and LES, that was attended by some 60-70 practitioners.

The attendance was a little disappointing but it will be noted that there is a large overlap between the organizations and a lot of practitioners, like myself, are still jet-lagged from INTA – and some are still in the States.

Dr Gurry was supposed to speak about patent agent privilege and the importance of having international standards. He dealt with this quite quickly and explained why Israel would need both developed and developing world countries to support the move for it to have a chance of being adopted. He went on to relate to international harmonization, and, in light of the growing number of patents filed in the Far East, to call for International Search Reports to be produced by an international team of examiners.

Regrettably, harmonization of patent practice across the globe still seems to be held up by some 150 or so rogue states that continue to illogically resist to conforming their practice to the generally accepted international norms like first-to-invent, grace periods and the like.

Words of welcome were delivered by Tal Band represented the AIPPI, Michal Hackmey represented the AIPA and Hananel Kvatinsky represented the LES.

Tal Band spoke about Israel joining the OECD and the country’s prominence in creating patents. He suggested that criticism of Israel IP practice (i.e. the US Special 301 report) was more politically motivated than factual and that the correct balance between private interest (patents) and the public interest (generic, non-patented technologies) was jurisdiction specific, and that the Israel balance was reasonable.

The refreshments were excellent, with a milky buffet including vegetables, rolls, crackers and cheeses. We note that a couple of cheeses were mouldy, but that may have been the point. The coffee was good, the wine disappointing, but there was wine – which is one up on the usual standard of these affairs. There were also a range of fresh fruits and some really excellent chocolate brownies.

Israel to Join Madrid Protocol

Dr Michael Factor — Fri, 09 Apr 2010 08:52:18 +0000

In a much-waited for development, the Israel Patent and Trademark Office has announced that Israel is to implement the Madrid Protocol.

On 31 May 2010, Frances Gurry, Director of WIPO will pay an official visit to Israel and formally announce Israel’s ascendency to the Protocol. Implemented will take place some 3 months later on 1 September 2010.

The protocol will enable Israeli firms to file trademarks in Israel, and barring oppositions, get a decision as to registerability within 12 months. Using local representation, Israeli firms will be able to extend protection to some or all of the 67 other member a vastly reduced cost, making export to the global market place more attractive.

It will likewise become easier for foreign entities to register marks in Israel.

The Knesset amended the Trademark Ordinance to facilitate joining the Madrid Protocol back in 2007. However, implementation was held up due to problems with computerization of the Trademark Examination Department and associated difficulties in meeting the tough deadlines.

These problems were gradually ironed out due to tremendous work by the dedicated and capable trademark examiners lead by Nurit Maoz.

Dr. Meir Noam – the Commissioner of Patents, Ms. Nurit Maoz, Head of the Trademark Department, Ms Lee Maor – Head of the Israel Desk at WIPO, and the other people who finally brought this to fruition are all to be congratulated for this achievement, and we hope and trust that there are no more hiccups in implementation.

Madrid Trademark Filings Down 16% on 2009

Dr Michael Factor — Sun, 21 Mar 2010 12:00:29 +0000

According to the World Intellectual Property Organisation (WIPO), new trademark application filings dropped by 16% with some 35,195 applications for trademarks received in 2009, compared to 42,075 in 2008.

In Japan, trademark filings were up a modest 2.7 percent, despite patent filings there being significantly down. In Singapore, trademark filings are up 20% and in South Korea, they are up by a third. It seems that the Far East was less badly hit than Europe or the US by the recent recession.

Israel has not yet implemented the Madrid Protocol. I suspect it will do so in June. We’ll see.

Israel Trademark Office Prefers Snail Mail

Dr Michael Factor — Sun, 31 May 2009 08:23:17 +0000

In a step tht can only be termed retrograde, the Israel Trademark Office has requested that Israeli IP firms refrain from sending emails or faxes, and that we use snail-mail instead. The Israel Trademark Office allows filing applications on line, and has made massive steps in computerization, with a launch of an improved search engine of their database last year that allows searching by graphical elements and colors. They were moving towards a paperless office, and one would think that corrspondence in electronic format, as emails (electronic text) or fax (pdf) would be preferable that them having to scan documents themselves. Ah well. I was hoping that following the Israel Patent Office relocation to their new address in Malcha, Jerusalem, long awaited implementation of Madrid Protocol was imminent. It is not all doom and gloom however.

New Israel Trademark Portal to be Launched on 29 December 2008

Dr Michael Factor — Mon, 15 Dec 2008 10:57:37 +0000

In a notice sent to Israeli practitioners earlier today, the Commissioner of Patents at the Israel Patent Office, Dr. Meir Noam, has announced that the new trademark portal will become operational from 29 December 2008. To allow this to happen, it will be impossible to file applications from 19th December 2008 to 29 December 2008. We note that this gives little time for applicants to file prior to imminent fee adjustments on 1 January 2009. That said, as the launch is months overdue, we applaud the news and hope that the the interface will work properly.

We assume that this development heralds a forthcoming announcement regarding implementation of the Madrid Protocol.

New Israel Trademark Interface to be Launched

Dr Michael Factor — Tue, 09 Dec 2008 20:48:06 +0000

In a welcome move, and after several months notice, the new Israel Trademarks Interface is finally to be launched this month. The new interface will allow computerized searches of graphic elements and also paperless trademark prosecution. We believe that the new portal will finally enable the long awaited implementation of the Madrid Protocol.

Indian Patent Office Decides Not to Implement Madrid Protocol

Dr Michael Factor — Thu, 27 Mar 2008 16:53:05 +0000

After considering the logistics of examining trademarks within 12 months, and deciding as to eligibility for registration, the Indian Patent Office has decided that it does not have the resources to implement the Madrid Protocol.

Their attitude contrasts favorably with that taken by Israel, where the decision to join the Madrid Protocol was taken, the trademark law was amended and should have come into effect from 1 January 2008 but instead, was suspended until further notice – probably until next January, as the practical requirements for fulfilling obligations under Madrid are not practicable with the current infrastructure.

Israel Patent Office Fee Rise

Dr Michael Factor — Fri, 07 Dec 2007 02:52:47 +0000

The Israel Patent Office has announced a new set of price fees. This generally happens twice a year with predictable fee increases of a couple of percent in line with the cost-of-living index.

Additionally however, multiple class trademark applications will be allowed from the first of January in line with Israel’s ascention to the Madrid Protocol. The cost of filing in one class is going up from 1300 NIS to 1368 NIS – a 5% increase, but in additional classes, the fee will be 1028 NIS - a 26% decrease.

The IPO has also announced a tender for new examiners.