ISRAEL IP

Today, applicants with a positive PCT search report can accelerate not only applications filed on mational stage in Israel but also priority applications filed in Israel.

However, this can be done if no changes were entered in the Israeli application or the PCT application.

“American Apparel” was not allowed for registration as being a generic/descriptive mark.

Applicant filed a survey it made which proved that 91% of the women answering the survey did not recognize the word “apparel”. Nevertheless, the mark was rendered descriptive for clothing.

Ein Gedi is one of Israel’s most famous resorts. It is the largest, and most impressive, resort at the dead sea.

Ein Gedi is also the source of various dead sea products.

A few trademark applications for cosmetic products called “Ein Gedi” was filed to the trademark office. The products’ source is not Ein Gedi.

The Israeli vice commissioner of trademarks ruled that for such products, calling the merchendize “Ein Gedi” makes them descriptive, and is therefore, not allowed for registration.

In a recent decision, the Vice Israeli Trademark Commissioner ruled that the mark “Berliner” will not be allowed for registration, as it may confuse customers to believe that the source of the merchendize is Berlin.

Trademarks are registered in Israel subject to disclaimers all the time. Disclaimers make sure a mark is not extended to become over broad.

A standard disclaimer allows  using the mark as a whole, but not exclusively using each of the words in a mark or the words only in a designed mark.

Now, for the first time, a “flipped” disclaimer was forced to allow registration of a mark.

The mark “Kupper” was used in commerce, and then, an application was filed. Other marks, with “Kupper” as part of them were already used. The mark was allowed to registration as long as the use of the word KUPPER is with that word ALONE. Using the word KUPPER together with other words will keep beign  allowed.

Another important  decision in the same ruling - when a mark is filed as a merely defensive mark, it will not be allowed for registration although no use is required in Israel. The conclusion - never admit you are registering a defensive mark.

The Israeli Patent Authority published today (April 23, 2009) an up-to-date pendency period table that shows the pendency period per group of classes. According to which we have calculated that the pendency for each subject group is:

Computer group – 48 months Â
Electronics and Medical devices group – 35 months
Construction, Textile, Air conditioning and Pumps – 29 months
Medical Device 2 group – 37 months
Devices for cleaning, cutting, transportation, business methods, alarms and display systems group – 39 months
Measurement and Optic devices – 42 months
Chemistry, Biology and Pharmaceutical - between 62 and 35 months. 

As in any Patent Office around the world, the pendency period in Israel is a result of several parameters such as number of applications, number of examiners, budgeting, computer system etc and varies quite drastically from time to time.

You can go and fetch it here:
http://www.trademarks.justice.gov.il/TradeMarksWebSiteUI/History/PublicationList.aspx

Trademark adjudicator Ya’ara Shoshani Caspi ruled that previous actions can be brought as evidence, but only when they have evidential value in proving facts which are in dispute.

The adjudicator further ruled that such evidence are difficult to allow and that in any case, the commissioner will weigh the evidential value on one hand and the fact that the common law is against using such evidence on the other hand – and will rule accordingly.

Harman International Industries Incorporated

A very interesting piece of information - US applicants filed 45% of the Israeli patent applications on 2007. Israeli applicants filed only 26%.

It seems that while multi-national companies consider the highly advanced and sophisticated Israeli market a good destination for filing patents, Israeli companies do not do so. Israeli companies tend to be internationally oriented for their very first steps - and do not count the domestic market as very important.

Germany is next in line with 10% of all Israeli applications. Switzerland with 6% and the UK with 5%.

On February 2006, D-Card Ltd. filed a trademark application on the mark “A diamond in your pocket” in relation to a card with small gems. The product enables the customer to buy a very small diamond and wonder around, carrying a diamond in his pocket.

The trademark examiner refused to allow the mark, arguing that the mark is a slogan, and hence, is unregistrable.

Israeli Patent Commissioner circular 29 states that for a Slogan to be registered as a mark, it must have acquired a distinctive character as a result of use, and it must link the goods or services to their source. The circular does not, however, exclude slogans completely from being a registrable subject matter.

The adjudicator explained that while an original trademark is usually the strongest, a strong Slogan will be an implying one.

The adjudicator ruled that the requested mark is, indeed, a Slogan, but it is registrable as a mark, as it is not a mark which is made to be a means for promoting or a mere puff, but rather a mark that directly touches the goods and even implies the goods in the sense that a person can actually hold a diamond in his pocket, or, in the other meaning, can afford to buy a diamond.

The most important part of this decision, I believe, is that the mark was allowed although no distinctive character was acquired, as the adjudicator believed that the mark has inherent distinctive value (this directly opposes the circular !!)

A decision regarding trademark application 187420 “a diamond in your pocket” (not designed) of March 12, 2009.