As reported in a previous post, Teff & Associates participated in the Round Table (as advertised to the public) at the Israel Patent, Design and Trademark Office, on the updates to examination of trademarks. However, the the table wasn’t round at all (photo not of the actual table)!
Discussing disclaiming generic components, the first issue on the list, the participants on the behalf of the public used the opportunity to raise issues of lack of transparency in the process of the examination of the trademark whether it had generic components. The Trademark Office is not consistent in adequately explaining its rejections in this matter, often merely stating that the mrk or a part of it is generically used in the commerce of the goods for which registration of the mark is requested.
This is a situation that existed until not long ago in the realm of the examination of patents, and has been totally removed from there. We can expect future examinations of trademarks issuing with reasoned arguments.
Regarding registration of trademarks for pharmaceuticals, as we stated before, acceptance can be delayed for up to 5 years from filing, for the purpose of establishing the therapeutic activity and dosages, and the registration was purported to be tied to the registration of the pharmaceutical at the Israeli Health Ministry for the purpose of marketing in Israel. The Commisioner and the head of the Trademark Department explained that at present a quarter of the pharmaceutical registrations reach the 5 year mark and still cannot specify the indications for use, as required, and thus are a headache for the Trademark Department. However, there were fierce objections to such tying, on the grounds that such process has no basis in the Law, and is an onerous burden on the Applicant. The Commissioner appeared to accept these arguments – back to the drawing board…
Addendum January 2017:
Apparently the way the Israel Patent, Design and Trademark Office works is: Issues are discussed before the Round Table only if at least one member of the public that had sent comments on the issue had arrived to the Round Table. Otherwise they are adopted as originally proposed by the Office. The commenter is expected to introduce the issue and the arguments that have been raised on it.
- Disclaiming Generic Components Enacted as proposed by the Israel Patent, Design and Trademark Office
- Listing Goods The Office has added that an amended translation or transliteration (into Hebrew) of the listing will not bear a fee if filed before publication of the TM acceptance.
- Trademarks Consisting of Characters Enacted as proposed by the Israel Patent, Design and Trademark Office
- Coloured Trademarks Enacted as proposed by the Israel Patent, Design and Trademark Office
- Trademarks for Pharmaceuticals The proposed procedure of registration following the registration (of the pharmaceutical’s indication of therapeutic activity) in the Israel Ministry of Health’s registry was withdrawn.
Indications may be added subsequent to filing in order to limit the scope of the trademark and thus allow future registration of similar marks for other indications.
As originally proposed, registration of TM’s for a pharmaceutical under the brand of the Applicant may be considered, even without indication of the intended therapeutic activity, if the Examiner is convinced that the Applicant commercializes a great variety of pharmaceuticals for which registration of TM is sought, and the brand is stamped on the product adjacent to the specific mark of the product.
- 3D Trademarks Enacted as proposed by the Israel Patent, Design and Trademark Office