In Israel Trademarks, should the list of goods in English prevail?

When filing trademark applications in Israel, it is necessary to specify the class of goods and lists of articles covered in Hebrew and English.

For trademarks filed by applicants from abroad, the list fo goods provided by the applicant is typically in English, and the Israel representative has to find suitable translations.

For example, I remember helping to translate a trademark for a list of goods that included, anoraks, parkas and duffel coats. All these are hooded coats. Anoraks are generally fabricated from waterproof synthetic material and have quilted linings and are zippered. Parkas are generally dark blue with orange linings and stiffer hood, and tend to have both zippers and buttons or press studs. Duffle coats are typically made from wool, have toggles instead of conventional round buttons and are best described as the type of hooded coat that Paddington Bear wore.

One of my Turkish clients makes paper goods and among the list of disposable articles for one of their marks, was the word napkin. Now in the UK, a paper napkin is also referred to as a serviette, and is placed on the dining table and used to wipe one’s fingers and mouth. I understand that in the US, a napkin would not be put on the dining table. Not knowing what the company manufactured or might manufacture in future, I suggested that we included in the list of goods: disposable paper diapers, sanitary napkins and serviettes, and the client concurred. In that instance, there were no similar marks in the class, so wide protection was possible.

Where the trademark is for engineering components or technical goods, the problem is compounded since many lawyers who handle trademark matters have little technical competence.

To overcome this sort of confusion, the practice of adding a notice has developed, that in case of discrepancy between the English and Hebrew list of goods, the English list of goods prevails.

In Circular 2011/07, the Israel Commissioner of Patents and Trademarks, Adv. Asa Kling, has put an end to this practice. Such notices will no longer be allowed.

It makes perfect sense that in Israel, the Hebrew list of goods prevails. Israel judges are expected to know Hebrew, and may have less than adequate English. On the other hand, why should trademark owners lose their rights due to mistakes by attorneys that may be difficult to avoid, since some nouns that represent articles in English simply don’t have accurate translations?

In practice, since Israel ascended to the Madrid Protocol last year, most applications originating abroad are filed under the protocol and the list of goods is filed in English only. This avoids the need to translate the list of goods into Hebrew altogether.

On a positive note, the issuance of this circular may indicate that the trademark department is now running normally after the tragic loss of Ms Nurit Maoz, who was brutally murdered.

We note that in the Wrangler case, the court decided that there was trademark protection for a W on the back pocket of jeans, where Wrangler had registered the mark for shirts and overalls only, and not for trousers/pants/jeans . Go figure.

Time will tell if as a result of this circular, there will be more or less ambiguity regarding the list of goods protected by a mark.

Categories: Intellectual Property, IPO, Israel, Israel Trademark, trademarks

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