Refusals for Israeli trademark applications: regular and under Madrid Protocol
Provisional Refusals are issued by the Israeli Patent Office, Trademarks Department, according to Madrid Protocol Rule 17(1). These refusals are otherwise known as office actions in Israeli trademark applications (“Notice/Letter of Deficiencies”).
Absolute and relative grounds
Refusal in Israel may be on absolute or relative grounds, or both. Absolute grounds refer to the incapability of marks to be distinctively (e.g., one letter or digit) or graphically presented. Furthermore, deceptive marks or marks that are against the public order will also be automatically refused. In comparison, relative grounds for refusal are always in connection with earlier trademarks and their related rights. In spite of the fact that most national offices scrutinize trademarks for similar or identical previous ones, the result of the search may not taken into account at granting.
One of the reasons for refusal in Israel may indeed be on relative grounds. For example, an identical trademark assigned to someone else is pending. This applies especially for similar goods, see this article.
Sample Office Actions in Israeli Trademark Applications
For example, in a recent Refusal, to a Turkish client of ours, the Trademarks Department notified us: ” A notification regarding the acceptance of the above mentioned application will be delivered to the owner of marks of [ ].”
In such a case the Applicant may also be requested in the office action or Refusal to specify for which goods the Israeli trademark is intended.
This restriction of the class is especially relevant to certain goods, such as pharmaceuticals. In fact, in such classes the restriction may be required even if there is no identical/very similar Israeli trademark in another class.
Office actions in Israeli trademarks applications, finding identical Israeli trademarks in other classes, warrant the following. Add to our response evidence of any actual use of the mark in Israel, and if there was such use then for how long. This would help show that the mark has co-existed with the other similar marks and ease allowance.
