Madrid – One Year On.

The Israel Chapter of the AIPPI held a meeting to discuss the effects of Israel joining Madrid Protocol, one year on.

The event, held at the American Zionists House in the middle of Tel Aviv, attracted some 40 participants, mostly patent attorneys and lawyers.

The new Commissioner of Patents, Assa Kling, spoke briefly about his first six weeks in office. He informed us that there is a certain inertia in the civil service that contrasted with private practice. He explained that he was meeting all 170 or so Israel Patent and Trademark Office staff members individually at least for a few minutes. He thanked the various senior staff members for their help in easing him into the position, and thanked his predecessor, Dr Meir Noam for his support, pointing out that despite Dr Noam’s term of office formally finishing before Commissioner Kling’s term started, Dr Noam had voluntarily spent large amounts of time helping him get up to speed and easing him into the job.

Commissioner Kling looked somewhat uncomfortable as he spoke. It could have been nerves, but I suspect he was simply suffering from over-dress, as he wore a charcoal suit and tie, whilst the rest of us, were rather more informally dressed, with even the chairperson of  the Israel Branch of the AIPPI and thus host of the event, Adv. Tal Band, was wearing an open-necked short-sleeve shirt.

Commissioner Kling was followed by Head of Trademark Dept. Ms Nurit Maoz who provided some valuable statistics regarding incoming trademark filings. It seems that there are more marks being filed in more classes as a result of Israel’s accession to the Madrid Protocol, with an increase of 22% from 7845 to 10,029  over the period 1 September 2010 to 30 June 2011, as compared to the same period a year earlier. This represents lots of protection for applicants and filing fees for the government. However, with multi-class filings now allowed, there has been a drop in the number of separate applications filed from 7845 to 6054 – i.e. 23%.

Furthermore, over this period, some 30% of applications being filed are filed directly under Madrid, and this has risen to about 50% in recent months, so the past few months have seen a steep drop in filings via local patent attorneys.

Not all is gloom and doom for the practitioners though. A number of applications have been rejected on substantive grounds and responding to office actions requires local representation. There is a lag between filing and examination, with the first Madrid filings having been made 9 months ago, and the first office actions issuing six months later. It seems therefore, as predicted, that though there is less bread and butter trademark filing work, this is partially offset by a slight increase in prosecution, and eventually there is likely to be more trademark litigation and enforcement in Israel, as there are more marks in more classes leading to increased potential for conflict.

A practitioner from a firm having both local and US presence and who thus had more experience of trademark filing and prosecution around the world under Madrid gave us the benefit of her insight. I shan’t publish her name and photo though as she illustrated her talk with stock cartoons downloaded over the Internet that apparently hadn’t been paid for. It seems that though experienced in trademarks, her knowledge of copyright issues is somewhat lacking. Her talk was entertaining though, not only due to the cartoons.

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