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Trade Marks Ordinance (New Version), 5732-1972 (as amended up to September 1, 2010)

Trade Marks Ordinance [New Version] 5732-1972 Full and Up to Date Version

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TRADE MARKS ORDINANCE [NEW VERSION], 5732-1972

TABLE OF CONTENTS

CHAPTER ONE: INTERPRETATION

Section 1 Definitions Section 2 Applicability of provisions to service marks Section 3 Provisions as to certification mark and collective mark

CHAPTER TWO: REGISTER OF TRADE MARKS

Section 4 The Register and its contents Section 5 The Registrar Section 5A Assignment of judicial functions and vesting of powers Section 6 Register to be open to the public

CHAPTER THREE: ELIGIBILITY FOR REGISTRATION

Section 7 Exclusive right to trademark Section 8 Marks eligible for registration Section 9 Limitation to certain colors Section 10 The scope of registration Section 11 Marks ineligible for registration Section 12 Mark identical with name of other person Section 13 Name or description of goods Section 14 Registration of certification mark Section 15 Registration of collective mark Section 16 Registration of marks registered abroad

CHAPTER FOUR: REGISTRATION PROCEEDINGS

Section 17 Application Section 17A Division of the application Section 17B Consolidation of applications Section 18 Powers of the Registrar Section 19 Appeal Section 20 Errors and corrections Section 21 Requirement of disclaimer Section 22 Cancellation of applications Section 23 Advertisement Section 24 Objection Section 25 Appeal

Section 26 Registration Section 27 Date of registration Section 28 Certificate of registration Section 29 Rival claims to identical marks Section 30 Concurrent use

CHAPTER FIVE: DURATION AND RENEWAL OF REGISTRATION

Section 31 Period of validity of registration Section 32 Renewal of registration Section 33 Notice of expiration Section 34 Un-renewed trademark Section 35 Restrictions on renewal

CHAPTER SIX: CHANGES AND CANCELLATIONS

Section 36 Change in registration at proprietor’s request Section 36A Consolidation of several registrations of same trademark Section 37 Repealed Section 38 Rectification of Register on application of person who is not the

proprietor Section 39 Removal of mark Section 40 Procedure for rectification of the Register Section 41 Cancellation of registration on grounds of non-use Section 42 Registrar to have notice of proceeding for rectification Section 43 Regulation as to adaptation of entries to new classification Section 44 Adaptation of entries Section 45 Procedure for adaptation of entries

CHAPTER SEVEN: RIGHTS OF PROPRIETOR OF TRADE MARK

Section 46 Right to exclusive use Section 46A Exclusive use of well-known trademark Section 46B Protection of trademarks at exhibitions Section 47 Saving of genuine use Section 48 Transfer of trademark Section 49 Registration of transfer Section 50 Authorization to use mark Section 51 Application for registration of authorization Section 52 Variation and cancellation of registration of authorization Section 52A Continuation of use of trademark Section 53 Right of appeal

CHAPTER EIGHT: REGISTRATION OF FOREIGN TRADE MARKS

Section 54 Protection by virtue of mutual agreement Section 55 Priority rule Section 56 Filing of application

Section 56A Definitions Section 56B The Registrar as the office of origin Section 56C Filing of an international application or for subsequent designation Section 56D Registrar’s notification to international bureau Section 56D1 Correction of error in international application or for subsequent

designation Section 56E Applicability of provisions of Ordinance to Israel-designated

applications Section 56F Notice of refusal or filing of objection Section 56G Registration of international trademark Section 56H Notice of final decision as to objections Section 56I International trademark in lieu if national trademark Section 56J Applicability of provisions of the Ordinance to international trademarks Section 56K Notice of removal or cancellation of international trademark Section 56L Consequences of removal or cancellation in the international register Section 56M Conversion of international trademark to national trademark

CHAPTER NINE: INFRINGEMENT

Section 57 Action for infringement Section 58 Usages to be evidence Section 59 Relief Section 59A Additional relief

CHAPTER TEN: PENALTIES

Section 60 Penalties Section 61 Injunction Section 62 Order for forfeiture or destruction Section 63 False representation of mark

CHAPTER ELEVEN: TRIAL, EVIDENCE AND PROCEDURE

Section 63A Appeal against other decision of Registrar Section 63B The relevant District Court Section 63C Appeal against judgment or other decision of the District Court Section 64 Registration to be evidence of validity Section 65 Registrar’s Certificate Section 66 Hearing of Applicant Section 67 Evidence before the Registrar Section 68 Powers of the Registrar with regard to witnesses Section 69 Costs Section 69A Giving notice to the Director if Customs

CHAPTER TWELVE: FEES AND REGULATIONS

Section 70 Fees Section 71 Implementation and Regulations Section 71A Variation of the Schedule Section 72 Regulations by Registrar

TRADE MARKS ORDINANCE [NEW VERSION], 5732-1972*

Chapter One: Interpretation

Definitions 1. In this Ordinance - “Mark” – means letters, numerals, words, devices or other signs or combinations thereof, whether two-dimensional or three-dimensional; “Trademark” – means a mark used, or intended to be used, by a person in relation to goods he manufactures or deals in;

(Amendment No.5) 5763-2003

“International trademark” – means a trademark registered in the International Register, in accordance with the provisions of the Madrid Protocol and Regulations;

(Amendment No. 5) 5763-2003

“International trademark Registered in Israel” – means a national trademark that is also a registered trademark, registered in accordance with notice that the Registrar has received pursuant to Section 56E;

(Amendment No. 5) 5763-2003

“National trademark” – means a registered trademark registered in accordance with an application under Section 17;

(Amendment No. 1) 5750-1999

“Well known trademark” – means a mark that is well known in Israel as a mark whose proprietor is a citizen of a Member State, a permanent resident thereof or who has an active industrial business enterprise, and even if the mark is not a trademark registered in Israel, or is not used in Israel; in relation to determination of a trademark as a well known trademark in Israel, there shall be taken into account inter alia the extent to which it is recognized as a result of the marketing endeavors;

(Amendment No. 5) 5763-2003

“Registered trademark” – means a trademark registered in the Register of Trademarks, under the provisions of this Ordinance and is a National Trademark or an International Trademark registered in Israel; “Service mark” – means a mark used, or intended to be used, by a person in relation to a service rendered by him; “Certification mark” – means a mark intended to be used by a person, other than a person carrying on a business, to certify the origin, components, mode of manufacture, quality or any other characteristics

* Published in Laws of the State of Israel [New Version] No.26 dated 1.6.72 Page 511 Amended Principal Legislation 5760 No.1721 dated 30.12.1999 Page 48 – Amendment No.1 Principal Legislation 5761 No.1756 dated 23.11.2000 Page 9 – Amendment No.2 Principal Legislation 5761 No.1849 dated 13.6.2002 Page 424 (Bills 5760 No.2877 Page 397) – Amendment No.3 in Section 3 of the Intellectual Property Amendment Law (Legislative Amendments) 5762-2002; see Section 5 regarding coming into effect and temporary provision. Principal Legislation 5763No.1867 dated 3.11.2002 Page 7 (Bills 5762 No.3163 page 854) – Amendment No.4 in Section 2 of the Operation and Broadcasting and Trade Marks Rights (Criminal Liability) (Legislative Amendments) Law, 5763-2002 Principal Legislation 5763 No.1902 dated 6.8.2003 Page 556 (Government Bills 5763 No.34 Page 492) – Amendment No. 5; see Section 25 of the amendment regarding coming into effect (effective from 1.9.2010: Government Notices 5770 No.6108 dated 15.7.2010 Page 3899) Amended Principal Legislation 5767 No.2089 dated 27.3.2007 Page 151 (Government Bills 5766 No.245 Page 504) – Amendment No.5 (Amendment) in Section 7 to Amendment No. 6 Principal Legislation No.2089 dated 27..3.2007 Page 150 (Government Bills 5766 No.245 Page 504) - Amendment No.6 Principal Legislation No.2246 dated 7.7.2010 Page 762 (Government Bills 5770 No.477 Page 212) – Amendment No.7; see Section 17 regarding coming into effect.

of goods in which he is interested, or to certify the nature, quality or type of a service in which he is interested; “Collective Mark” – means a trademark or service mark belonging to a body of persons interested in the goods or service which the mark is intended to designate, and used, or intended to be used, by the members of that body in respect of such goods or service; “Infringement” – means the use by a person not entitled thereto – (1) of a Registered Trademark or of a mark resembling such a trademark, in relation to goods in respect of which the trademark is registered, or to goods of the same description; (2) of a Registered Trademark in advertising goods of a class in respect of which the mark is registered, or goods of the same description;

(Amendment No. 1) 5750-1999

(3) of a well known trademark even if it is not a registered trademark, or a mark so resembling it that it could be misleading in relation to goods in respect of which the mark is recognized or in respect of goods of the same description;

(Amendment No. 1) 5750-1999

(4) of a well known trademark that is a registered trademark, or a mark resembling it, in respect of goods that are not of the same description, and provided that such use of it could indicate a connection between the said goods and the Proprietor of the Registered Trademark, and the Proprietor of the Registered Trademark is liable to be adversely affected as a result of such use; “Union State” – means a State which is a member of the Union for the Protection of Industrial Property under the Paris Convention for the Protection of Industrial Property, and includes territories to which the Convention has been extended under Article 16 bis of the Convention;

(Amendment No. 1) 5750-1999

“World Trade Organization” – means the World Trade Organization which was established under a treaty signed in Marrakesh on April 15 1994; “Member State” – means a Union State or a state that is a member of the World Trade Organization;

(Amendment No. 1) 5750-1999

“Geographical Marking” – means a marking that identifies goods in Israel as goods originating in a certain geographical area that is a member state, area or region thereof, if it is possible to attribute a certain characteristic, nature or reputation of such goods, in particular to the fact that they originate in such geographical area;

(Amendment No. 5) 5763-2003

“The Minister” – means the Minister of Justice.

Applicability of provisions to service marks

2. Save as otherwise provided, the provisions of this ordinance which apply to trademarks shall apply mutatis mutandis to service marks, and every reference in this Ordinance to a trademark or to goods, as well as a service by implication, shall be deemed to include a service mark or a service.

Provisions as to certification mark and collective mark

3. Subject to the provisions of Sections 14 and 15, a certification mark and a collective mark shall be treated like a trademark and a service mark, and every reference in this Ordinance to a trademark or to a service mark shall be deemed to include a certification mark and a collective mark.

Chapter Two: Register of Trademarks

4. There shall be kept for the purposes of this Ordinance a Register for the registration of trademarks (hereinafter referred to as “the Register”). Registration shall be according to the following particulars: (1) The name, address and occupation of the proprietor of the mark; (2) Notifications of assignments, transmissions and authorizations; (3) Disclaimers; (4) Conditions and limitations;

(Amendment No. 1) 5750-1999

(4A) In relation to an International Trademark registered in Israel – a notation of it being an International Trademark; (5) Any such other detail relating to registered trademarks as may be prescribed.

The Registrar (Amendment No. 5) 5763-2003

5. The Minister shall appoint a Registrar of Trademarks (hereinafter referred to as “The Registrar”), under whose control the Register shall be kept.

Assignment of judicial functions and vesting of powers (Amendment No. 2) 5761-2000

5A (a) The Minister may assign to a civil servant who is a qualified attorney the function of a District Judge (hereinafter – Intellectual Property Adjudicator) to fulfill such judicial function as the Registrar fulfills, or that the Registrar is empowered to or authorized to undertake pursuant to the provisions of this Ordinance, with the exception of the power to make regulations under Sections 42 – 45 and 72, and if such a function is assigned to the Deputy Registrar of Patents, he shall be deemed, for the purposes of fulfilling such function, to be an Intellectual Property Adjudicator.

(b) An Intellectual Property Adjudicator to whom a function has been assigned as provided in subsection (a) shall fulfill such function in accordance with the provisions of this Ordinance and there shall be vested in him, for the purpose of performance of his function, such powers as are vested in the Registrar in this Ordinance.

(c) Any action duly taken by an Intellectual Property Adjudicator to whom a function has been assigned as aforesaid in subsection (a) shall be treated – for the purposes of this Ordinance, as an action taken by the Registrar.

6. (a) The Register shall at all convenient times be open for inspection by the public in accordance with regulations.

(b) A certified copy of any entry shall be given to any person requesting the same, on payment of the prescribed fee.

Chapter Three: Eligibility for Registration

Exclusive right to trademark

7. A person desirous of having the exclusive right to use some mark as a trademark may apply for the registration of such mark under the provisions of this Ordinance.

Marks eligible for registration

8. (a) No mark is eligible for registration as a trademark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).

(b) In determining whether a trademark is distinctive, the Registrar or the Court may, in the case of a trademark in actual use, take into consideration the extent to which such use has rendered such trademark in fact distinctive for goods in respect of which it is registered or intended to be registered.

Limitation to certain colors.

9. A trademark may be limited in whole or in part to one or more specified colors, and in such a case the fact that it is so limited shall be taken into consideration by the Registrar or Court having to decide as to the distinctive character of such trademark. If and so far as a trademark is registered without limitation of color, it shall be deemed to be registered for all colors.

The scope of registration

10. (a) A trademark must be registered in respect of particular goods or classes of goods.

(b) Any question as to the class within which any goods fall shall be determined by the Registrar, whose decision shall be final.

Marks ineligible for registration

11. The following marks are not eligible for registration: (1) A mark referring to some connection with the President of the State or his household or to presidential patronage or a mark from which any such connection or patronage might be inferred; (2) Flags and emblems of the State or its institutions, flags and emblems of foreign states or international organizations, and any mark resembling any of these; (3) Public armorial bearings, official signs or seals used by any State to indicate control or warranty, and any sign resembling any of these and any sign from which it might be inferred that its proprietor enjoys the patronage of or supplies goods or renders services to a head of State or a Government, unless it is proved to the Registrar that the proprietor of the mark is entitled to use it; (4) Marks in which the following words appear – “patent”, “patented”, “by royal letters patent”, “registered”, “registered design”, “copyright”, “to counterfeit this is forgery” or words to like effect; (5) Marks which are or may be injurious to public policy or morality; (6) Marks likely to deceive the public, marks which contain false indications of origin and marks which encourage unfair trade competition;

(Amendment No. 1) 5760-1999

(6A) A mark containing a geographical marking in relation to goods that do not originate in the geographical area indicated, or a geographical marking that could be misleading in relation to the genuine geographical area of the origin of the goods;

(Amendment No. 5) 5763-2003

(6B) A mark containing a geographical marking that is verbally correct but contains a false representation to the effect that the goods originate in another geographical area; (7) Marks identical with or similar to emblems of exclusively religious significance; (8) A mark on which the representation of a person appears, unless the consent of such person has been obtained; in the case of the representation of a deceased person, the Registrar shall request the consent of his survivors unless, in his opinion, reasonable grounds exist for not doing so; (9) A mark identical with one belonging to a different proprietor, which is already on the register in respect of the same goods or

description of goods, or so nearly resembling such a mark as to be calculated to deceive; (10) A mark consisting of numerals, letters or words which are in common use in trade, to distinguish or describe goods or classes of goods or which bear direct reference to their character and quality, unless the marks have a distinctive character within the meaning of Section 8(b) or 9; (11) A mark whose ordinary signification is geographical or a surname, unless represented in a special manner or unless having a distinctive character within the meaning of Section 8(b) or 9;

(Amendment No. 1) 5760-1999

(12) A mark that identifies wine or an alcoholic drink containing a geographical signification, if the origin of the wine or alcoholic drink is not in that same geographical area;

(Amendment No. 1) 5760-1999

(13) A mark that is identical to or resembles so as to deceive, a well known mark even if it is not a registered trademark, in relation to goods in respect of which the mark is well known or in respect of goods of the same description;

(Amendment No. 1) 5760-1999

(14) A mark that is identical to or resembles a well known trademark that is a registered trademark, and this even if it is in respect of goods that are not of the same description, if the mark whose registration is being requested could indicate a connection between the goods in respect of which the mark is required and the proprietor of the registered mark, and the proprietor of the mark is liable to be adversely affected as a result of the use of the requested mark.

Mark identical with name of other person

12. The Registrar may refuse an application for registration of a trademark identical or resembling the name or business name of another person, or containing a name identical or resembling as aforesaid, if the mark is likely to deceive the public or to cause unfair competition.

Name or description of goods

13. Where a mark also contains a name or description of any goods, the Registrar may refuse to register it in respect of other goods; but he may so register it if in actual use the mark varies according to the goods for which it is used, and the applicant adds a note to such effect on his application.

Registration of certification mark

14. (a) The Registrar may register a certification mark if he is satisfied that the proprietor of the mark is competent to certify the characteristics to be designated by the mark.

(b) A certification mark is capable of registration even if it lacks distinctiveness as required by Section 8(a).

Registration of collective mark

15. (a) The Registrar may register a collective mark if he is satisfied that it is intended for use by the members of the body of persons concerned and that such body has control over the use of the mark by its members.

(b) For all purposes of this Ordinance, the use of a collective mark by a member of the body shall be deemed to be the use thereof by such body, whether or not the body itself uses or intends to use it.

Registration of marks registered abroad

16. (a) Notwithstanding the provisions of Section 8-11, the Registrar shall not refuse to register a trademark that is registered as a trademark in its country of origin unless any of the following apply – (1) Registration of the mark in Israel will infringe rights acquired in Israel by another person;

(Amendment No. 1) 5760-1999

(2) The mark lacks any dimension that gives it a distinctive characteristic; a trade mark will not be disqualified for registration if it is distinct from the trademark registered in its country of origin in respect of details that do not alter its distinctive characteristic and do not adversely affect the identification of the registered mark in its country of origin. (3) The mark consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity place of origin, intended purpose, time of production or value of the goods; (4) The mark is customary in current language or bona fide and established trade practices in Israel; (5) The mark is contrary to public policy or to normality; (6) The mark is likely to deceive the public.

(Amendment No. 3) 5762-2002

(b) “Country of origin”, in relation to a trademark whose registration is requested under this Section – means a Member State in which the Applicant has an effective or serious industrial or commercial establishment, and if he has no such establishment within the territory of such State – a Member State in which he is domiciled, and if he does not have a domicile within the territory of such State – the Member State of which he is a national.

(c) Where the Registrar accepts for registration a mark which would not have been registered but for the provisions of subsection (a), such fact shall be indicated in the publication of the application and in the Register.

Chapter Four: Registration Proceedings

Application (Amendment No.5) 5763-2003 (Amendment No.6) 5767-2007

17. Any person claiming to be the proprietor of a trademark being used by or intended to be used by him and who wishes to register it, shall submit an application to that effect to the Registrar in the prescribed manner

Division of the application (Amendment No.5) (Amendment) 5767- 2007

17A (a) A person who has submitted an application as stated in Section 17(a) in respect of several classes of goods, may, as long as no trade mark in the subject matter of the application has been registered under Section 26, apply to the Registrar for a division of the application into separate applications, according to classes of the goods, in the prescribed manner ( referred to in this section as - an application for division); the Registrar having decided on such a division, that date of each of the applications that have been so separated shall be the date on which the original application was submitted.

(b) Where an application for division has been submitted, after publication of receipt of the original application under Section 23, any objection submitted under Section 24 to registration of the trademark that is the subject of the original application shall be deemed to have been submitted in respect of each of the separated applications in so far as the objection relates to it.

Consolidation of applications (Amendment No. 5) (Amendment) 5767- 2007

17B (a) A person who has submitted several applications to the Registrar as provided in Section 17(a) for registration of such trademark may, for as long as there has been no publication of receipt of the applications under Section 23, request that the Registrar consolidate the separate applications into one application, in the prescribed manner (in this Section – application for consolidation).

(b) Where an application for consolidation has been submitted the Registrar may consolidate the separate applications into one application if he is satisfied that the two following conditions have been met: (1) The separate applications were submitted on the same date; (2) A person claiming to be the proprietor of the trademark the subject of the separate applications is at the time of submission of the application for consolidation, the same person.

Powers of the Registrar (Amendment No. 5) 5763-2003

18 (a) Subject to the provisions of this ordinance the Registrar may refuse an application or accept it as it is or subject to conditions, amendments or modifications, or subject to such limitations as he deems it proper to impose as to mode or place of use or otherwise.

(Amendment No. 5) 5763-2003

(b) In relation to an application for registration of a trademark in respect of a number of classes of goods, the Registrar may require its division into several applications, and the date of submission of each of the applications so separated shall be the date of submission of the application that was divided.

Appeal (Amendment No. 7) 5770-2010

19 Where the Registrar has refused an application his decision shall be subject to an appeal to the District Court, and the Registrar shall be the Respondent in such an appeal.

Errors and corrections (Amendment No. 7) 5770-2010

20 The Registrar may at any time whether before or after acceptance, correct any error in or in connection with an application or may permit an applicant to amend his application upon such terms as he shall deem appropriate.

Requirement of disclaimer (Amendment No. 7) 5770-2010

21 (a) If a trademark contains matter common to the trade or otherwise of a non-distinctive character and it appears to the Registrar that the proprietor of the mark is not entitled to the exclusive use of such matter or part thereof, he may, in deciding whether such trademark shall be entered or shall remain on the Register, as a condition thereof require that the proprietor disclaim any right to the exclusive use of such matter or make other such disclaimer as he may deem necessary in order to define his rights under the registration.

(b) A disclaimer under this Section shall not affect any rights of the proprietor of the trademark except such as arise out of the registration of the mark.

Cancellation of applications (Amendment No. 6) 5767-2007

22 (a) Where the applicant has not complied with a demand of the Registrar within the time prescribed by him and the Registrar has given the applicant notice in the prescribed manner, and three months have passed from the date of the notice and the applicant still has not complied with such demand, the Registrar may regard the application as void.

(b) The Registrar may extend the times prescribed under this Section if he has been requested to do so in the manner and within the time prescribed in regulations and the applicant has given reasonable grounds for such request.

Advertisement (Amendment No.5) 5763-2003

23 When an application has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as possible after such acceptance and in the prescribed manner, advertise the application as received, specifying every condition and limitation subject to which it has been accepted.

Objection (Amendment No. 5) 5763-2003

24 (a) Any person may within three months, from the date of the advertisement file with the Registrar a notice of objection to registration of the trademark.

(Amendment No. 1) 5760-1999

(a1) The following are the grounds for objection to registration of a trademark: (1) There is due cause and by virtue thereof the Registrar is empowered under the provisions of this ordinance to refuse the application for registration; (2) The objector claims to be the proprietor of the mark.

(Amendment No. 6) 5767-2007

(b) The aforesaid notice shall be given in the prescribed manner and shall set out therein details of the grounds of the objection.

(d) The applicant shall send to the Registrar, in the prescribed manner and within the prescribed time, a counterstatement to the objection, setting forth the grounds on which he relies for his application.

(e) If the applicant does not send a counterstatement as aforesaid he shall be deemed to have abandoned his application.

(f) If the applicant sends a counterstatement, the Registrar shall furnish a copy thereof to the person who has notice of objection and shall, after hearing the parties, if so required, consider the evidence and shall decide whether to allow the registration and if so on what conditions.

Appeal (Amendment No. 7)5770-2010

25 (a) A decision of the Registrar under Section 24(f) shall be subject to appeal to the District Court.

(b) An appeal under this Section shall be submitted within 30 days from the date of the Registrar’s decision.

(Amendment No. 5) 5763-2003

(c) In the appeal the Court shall if so required, hear the Registrar and shall pronounce judgment determining whether to permit the registration and if so upon what conditions.

(d) During the hearing of the appeal either party may, either in the manner prescribed or by special leave of the Court, submit further material for the consideration of the Court.

(e) The objector or the Registrar may submit no further grounds of objection other than those stated by the objector in the notice of objection save with leave of the Court that hears the appeal; where any grounds have been submitted with leave as aforesaid, the applicant may, upon giving notice as prescribed, withdraw his application without payment of the costs of the objector.

(f) The Court may, after hearing the Registrar, permit the trademark proposed to be registered to be modified in any manner not substantially affecting its identity; a mark so modified shall be advertised in the prescribed manner before being registered.

Registration (Amendment No.5) 5763-2003

26 When an application has been accepted and the time for notice of objection has expired without there having been an objection or there having been an objection, it has been decided in favor of the applicant, the registrar shall register the trademark unless the application has been accepted in error or unless the Court otherwise directs.

Date of registration 27 The date on which the application for registration of the trademark

was filed shall be entered as the date of registration thereof.

Certificate of registration

28 On the registration of a trademark, the Registrar shall issue a certificate of registration to the applicant, in the prescribed form.

Rival claims to identical marks (Amendment No. 5) 5763-2003

29 (a) Where separate applications are made by different persons to be registered as proprietors of identical trademarks or those that are similar so as to deceive, in respect of the same goods or description of goods, and the special application was submitted as the previous application was accepted, the Registrar may refrain from accepting any of the applications until their rights are determined by agreement between them approved by the Registrar, and in the absence of such agreement or approval the Registrar shall decide, for reasons that shall be recorded as to which application shall continue to be processed in accordance with this ordinance.

(Amendment No. 5) 5763-2003

(b) An appeal shall lie against the Registrar’s decision under subsection (a), to a District Court within 30 days from the date of the Registrar’s decision.

(Amendment No. 7) 5770-2010

(c) The appellant shall deliver to the Registrar notice of filing of an appeal under subsection (b) within 30 days of the date of its filing.

(Amendment No. 7) 5770-2010

(d) In an appeal under subsection (b) the Court shall if so required, hear the Registrar.

Concurrent use 30 (a) Where it appears to the Registrar that there is current use in good faith, or where there are other special circumstances which in his opinion justify the registration of identical or similar trademarks in respect of the same goods or description of goods by more than one proprietor, the Registrar may permit such registration subject to such conditions and limitations, if any, as he may think fit.

(Amendment No.7) 5770-2010

(b) A decision of the Registrar under subsection (a) shall be subject to an appeal to the Supreme Court; an appeal as aforesaid shall be filed within 30 days of the date of the Registrar’s decision; in the appeal, the Court shall have all the powers conferred upon the Registrar in subsection (a).

(Amendment No. 7) 5770-2010

(c) The appellant shall give notice to the Registrar of the filing of an appeal under subsection (b) within 30 days from the date of its filing.

(Amendment No. 7) 5770-2010

(d) In an appeal under subsection (b) the Court, if so required, shall hear the Registrar.

Chapter Five: Duration and renewal of registration

Period of validity of registration (Amendment No. 5) 5763-2003

31 The registration of a trademark shall be valid for 10 years from the date of filing of the application for registration, and may thereafter be extended in accordance with the provisions of Sections 32 to 35.

Renewal of registration (Amendments No. 5) 5763-2003

32 The Registrar shall, on application made by the registered proprietor of a trademark, that has been submitted in the prescribed manner and within the prescribed time, renew the registration of such trademark in respect of all such goods or classes of goods for which it is registered or for which some of them are registered for 10 years from the date of expiration of the original registration or the last renewal (hereinafter referred to as – “The Expiration Date”).

Notice of expiration 33 (a) Before the expiration date the Registrar shall send to the registered proprietor, on the prescribed date and in the prescribed manner, notice of the date on which the registration will expire and the conditions as to payment of fees and other matters upon which registration will be renewed.

(Amendment No. 5)5763-2003

(b) If the fee is not paid within 6 months after the expiration date (hereinafter – the initial period) the Registrar shall remove the trademark from the register; however –

(Amendment No. 5) 5770-2010

(1) If the fee is paid within the initial period, it shall be increased by a prescribed amount;

(Amendment No. 5) 5770-2010

(2) The Registrar may upon the application of the proprietor of the mark, if he is satisfied that it is just to do so, restore the validity of the registration, on such conditions as he shall see fit upon payment of the unpaid fees and the prescribed additional fee in this regard, provided that the application has been submitted within 6 months from the expiration of the initial period.

Un-renewed trademark

34 Where a trademark has been removed from the register for non- payment of the fee for renewal, such trademark shall, never the less, for the purpose any application for registration for a period of one year after such removal be deemed to be a registered trademark.

Restrictions on renewal

35 The provisions of Section 34 shall not apply where the Registrar is satisfied either – (1) That there has been no bona fide trade use of the trademark during the two years preceding its removal; or (2) That no deception or confusion would be likely to arise from the use of the trademark which is the subject of the application for registration by reason of any previous use of the trademark which has been removed.

Chapter Six: Changes and cancellations

Change in registration at proprietors request

36 (a) The Registrar may, on request made in the prescribed manner by the registered proprietor of a trademark – (1) Correct any error in his name or address; (2) Enter any change in his name or address; (3) Strike out any goods or classes of goods from those for which the trademark is registered; (4) Enter in respect of the trademark, any disclaimer or any memorandum which does not in any way extend the rights given by the existing registration; (5) Cancel the entry of the trademark in the register.

(Amendment No. 7) 5770-2010

(b) Any decision of the Registrar under subsection (a) shall be subject to an appeal to the District Court, and the Registrar shall be the Respondent in such an appeal.

Consolidation of several registrations of the same trademark (Amendment No. 5) (Amendment) 5767- 2007

36A (a) The registered proprietor of several registrations of the same trademark may request that the Registrar consolidate the said registrations into one registration, in the prescribed manner (in this Section referred to as – application for consolidation of registrations).

(b) Where an application for consolidation of registrations has been submitted, the Registrar may consolidate the separate registrations into one registration if he is satisfied that the applications for each of the registrations as aforesaid were filed on the same date.

(c) Where the Registrar has decided to consolidate registrations under this Section, the consolidation shall be entered in the register and there shall be noted therein any item as provided in Section 4 that has been entered in respect of each of the registrations that have been consolidated.

(Amendment No. 5) (Amendment) 5767- 2007

37 (Repealed)

Rectification of register on application of non- proprietor (Amendment No. 7) 5770-2010

38 (a) Subject to the provisions of this ordinance, any person considering himself aggrieved by the non-insertion in or omission from the register of any entry, or by an entry made in the register without sufficient cause, or by an entry wrongly remaining on the register, or by any error or defect in any entry in the register, may make an application to the Register, in the prescribed manner, for amendment.

(Amendment No. 7) 5770-2010

(b) The decision of the Registrar in an application under subsection (a) shall be subject to an appeal to the District Court.

(Amendment No. 7) 5770-2010

(b1) The appellant shall give notice to the Registrar of the filing of

an appeal under subsection (b) within 30 days from the date of its filing.

(Amendment No. 7) 5770-2010

(b2) In an appeal under subsection (b) the Court shall, if required, hear the Registrar.

(Amendment No. 7) 5770-2010

(d) (Repealed)

Removal of mark (Amendment No. 5) 5763-2003

39 (a) An application under Section 38 for removal of a trademark from the register, in respect of all the goods or the classes of goods in respect of which, or some of which, the mark is registered, on the ground that the mark is not eligible for registration under Sections 7 to 11 of the ordinance, or on the ground that the mark creates unfair competition in respect of the applicant’s rights in Israel, must be made within 5 years of the issue of the certificate of registration under Section 28.

(Amendment No. 1) 5760-1999

(a1) Not withstanding the provisions of subsection (a), an application for removal of a trademark because the application for registration for the mark was not submitted in good faith may be submitted at any time.

(b) Not withstanding the provisions of subsection (a) – (1) A trademark of a non-resident registered in the country of origin shall not be removed from the register save on grounds that preclude such registration, pursuant to Section 16; (2) A trademark of a non-resident which is not eligible for registration under the provisions of Section 8 to 11 and which has been registered under the provisions of Section 16, may be removed from the register at any time on any of the grounds precluding its registration under the provisions of Section 8 to 11 where it is no longer registered in the country of origin; nothing in this provision shall prevent the proprietor of the mark from proving that at the time of the application for removal, the mark would have been eligible for registration upon application by a resident of Israel.

Procedure for rectification of the register

40 Where the Court orders the rectification of the register, it shall direct that notice of the rectification shall be served upon the Registrar by the successful party, and the Registrar shall, upon receipt of such notice, rectify the register in accordance with the order.

Cancellation of registration on grounds of non-use (Amendment No. 1) 5760-1999 (Amendment No.5) 5763-2003)

41 (a) Without prejudice to the generality of the provisions of Sections 38 to 40, any interested person wishing to do so may submit an application before cancellation of the registration of a trademark in respect of which the goods or classes of the goods or some of them for which the mark was registered (hereinafter – the goods in respect of which cancellation of the registration is requested), on the ground that there was no bona fide intention to use the trademark in

connection with the goods in respect of which cancellation of the registration is requested and that there has in fact been no bona fide use of the trademark in connection with those goods in respect of which the application for cancellation is requested or there has been no such use as aforesaid during the 3 years preceding the application for cancellation.

(b) The provisions of subsection (a) shall not apply where it is proved that the non-use is due to special circumstances in the trade and not to any intention not to use, or to abandon, the mark in respect of the said goods.

(c) For the purposes of this Section, there shall be deemed not to have been bona fide use of the trademark in the event of any of the following: (1) Use of the trademark in Israel in advertising only, whether in the local press or in foreign newspapers reaching Israel, unless there are special circumstances which, in the opinion of the Court or the Registrar justify the non-use of the mark on goods manufactured or sold in Israel; (2) Cancellation of an authorization to use the mark, given to a manufacturer in Israel under Section 50, unless the authorization is cancelled following an infringement of conditions, or because the person who gave the authorization intends himself to manufacture the goods for which the mark is to be used or to grant the authorization to another manufacturer in Israel.

(Amendment No. 7) 5770 - 2010

(d) The application for cancellation shall be submitted to the Registrar in the prescribed manner.

(Amendment No. 7) 5770-2010

(e) The Registrar’s decision in an application for cancellation shall be subject to an appeal to the District Court.

(Amendment No. 7) 5770-2010

(e1) The appellant shall give notice to the Registrar of the filing of an Appeal under subsection (e) within 30 days from the date of its filing.

(Amendment No. 7) 5770-2010

(e2) In an appeal under subsection (e) the Court, if required, shall hear the Registrar.

(Amendment No. 1) 5760-1999

(f) In this Section, “use” of a trademark, includes – (1) Use of a registered trademark by its proprietor or by a proprietor of a registered trademark as provided in Section 50, in a different form from that entered in the register in relation to details that do not alter the distinctive character of the mark as registered; (2) Use by a proprietor of a registered trademark as provided in Section 50, on condition that use thereof has been made subject to control by the proprietor of the mark.

Registrar to have notice of proceeding for rectification

42 (a) In any legal proceeding in which the relief sought includes alteration or rectification of the register, the Registrar shall have the right to appear and be heard, and shall appear if so directed by the Court.

(Amendment No. 6) 5767-2007

(b) Unless otherwise directed by the Court, the Registrar, in lieu of appearing and being heard, may submit to the Court a statement in writing signed by him, giving particulars of the proceedings before him or of the grounds of any decision by him in relation to the matter at issue or of the practice and procedure in the office in relation to similar cases, or of any other matter relevant to the issue and within his knowledge and as Registrar, as he shall see fit, and a statement as aforesaid shall be deemed to be evidence in such proceedings.

Regulations as to adaptation of entries to new classification (Amendment No. 5)5763-2003

43 The Registrar may, with the approval of the Ministry, make such regulations, prescribe such forms and generally do such things as he thinks expedient for empowering him to amend the register, by either making or expunging or varying entries therein, in so far as may be requisite for the purpose of adapting the designation of goods or of classes of goods in respect of which trademarks are registered for any new or amended classification that may be prescribed.

Adaptation of entries

44 (a) The Registrar shall not, in exercising any power conferred on him by Section 43, make any amendment of the register that would have the effect of adding any goods or classes of goods to those in respect of which a trademark is registered, whether in one or more classes, immediately before the amendment is to be made, or of antedating the registration of a trademark in respect of any goods.

(b) The provisions of subsection (a) shall not apply in relation to goods as to which the Registrar is satisfied that compliance with the said provisions would involve undue complexity and that the addition or the antedating would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.

Procedure for adaptation of entries (Amendment No. 7) 5770-2010

45 (a) The Registrar shall send to the registered proprietor of the trademark who is so affected, notification of his proposal to amend the register by virtue of his power under Section 44 and the registered proprietor may appeal against such proposal to the District Court, and the Registrar shall be the Respondent in such appeal; notification of the proposal to amend, with any modifications, shall b advertised.

(Amendment No. 7) 5770-2010

(b) A person who considers himself aggrieved by the proposed amendment may submit his objection to the Registrar, on the ground that it contravenes the provisions of Section 44, and the decision of the Registrar in respect of such objection shall be appealable to the District Court.

(Amendment No. 7) 5770-2010

(c) The appellant shall give notice to the Registrar of the filing of an appeal under subsection (b) within 30 days of the date of its filing.

(Amendment No. 7) 5770-2010

(d) In an appeal under subsection (b) the Court, if so required, shall hear the Registrar.

Chapter Seven: Rights of proprietor of trademark

Right to exclusive use

46 (a) Subject to any condition or limitation entered in the register, the valid registration of a person as proprietor of a trademark shall give him the right to the exclusive use of such trademark upon, and in every matter relating to, the goods in respect of which it is registered.

(Amendment No. 7) 5770-2010

(b) Where several persons are registered proprietors of identical, or substantially identical trademarks in respect of the same goods, each of them shall have the same rights as if he were the sole registered proprietor of such trademark, but no rights of exclusive use of such trademark shall be acquired by any one of such persons as against any other by the registration thereof except in so far as their respective rights have been defined by the Registrar or by the District Court.

Exclusive use of a well known trademark (Amendment No. 1) 5760-1999

46A (a) A well known trademark even if it is not a registered trademark shall entitle its proprietor to exclusive use of the mark in relation to goods in respect of which it is well known in Israel or in relation to goods of the same description.

(b) A well known trademark, that is a registered trademark, shall entitle its proprietor to exclusive use of the mark also in relation to goods that are not of the same description, if the use of the mark by a person that is not its proprietor is likely to point to a connection between the said goods and the proprietor of the registered trademark, and the proprietor of the registered trademark is liable to be adversely affected as a result of such use.

Protection of trademarks at exhibitions (Amendment No. 1) 5769-1999

46B A trademark that is not a registered trademark, shall in relation to goods being shown at an official international exhibition, or has been officially been recognized as such, taking place in Israel, be deemed to be a registered mark for the period in which the exhibition takes place.

Saving of genuine use (Amendment No. 1) 5770-1999

47 Registration under this ordinance shall not prevent any genuine use by a person in his own name or in the name of his business or in the geographical name of his place of business, or of any his predecessors in business, or the use by any person of any genuine description of the character or the quality of his goods.

Transfer of trademark (Amendment No.5) 5763-2003 (Amendment No.5) (Amendment) 5767- 2007

48. (a) A registered trademark may be assigned by the proprietor thereof, or pass by operation of law, as regards all or some of the goods or classes of goods in respect of which it is registered, with or without the goodwill of the business concerned in the goods for which it has been registered, provided that the Registrar may refuse to register a transfer as aforesaid if, in his opinion, the use of the mark by the transferee is likely to deceive the public or if, in his opinion, the transfer is contrary to public policy.

(Amendment No.5) (Amendment) 5767- 2007

(a1) Where proprietorship has been assigned as provided in subsection (a) as regards some of the goods or the classes of goods in respect of which such trademark is registered, the Registrar divide registration of the trademark into separate registrations, in the prescribed manner.

(Amendment No.5) (Amendment) 5767- 2007

(b) For the purposes of subsections (a) and (a1), a trademark for the registration of which an application is pending shall be deemed a registered trademark.

Registration of transfer

49. (a) Where a person becomes entitled to a registered trademark by assignment or by operation of law, he shall apply to the registrar to register his title and the Registrar shall, on proof of title to his satisfaction, register him as the proprietor of the trademark and shall make an entry in the Register, in the manner prescribed, of the transfer or of any instrument relating to the title.

(Amendment No.7) 5770-2010

49. (b) Any decision of the Registrar under this section shall be subject to an appeal to the District Court, and the registrar shall be the Respondent in such appeal.

(c) Except in cases of appeals under this section, a document or instrument in respect of which no entry has been made in the Register under this section shall not be admitted in evidence in any Court in proof of title to a trade mark unless the Court otherwise directs.

Authorization to use mark (Amendment No.1) 5760-1999

50. (a) The proprietor of a registered trademark may authorize another person (in this Ordinance – referred to as an “authorized person”) to use such trademark in relation to all or any of the goods in respect of which it is registered.

(b) An authorization shall not be valid unless it has been registered under the provisions of this section, and the Registrar may register it subject to such conditions and limitations as he may think fit.

(c) So long as the authorized person uses the mark in relation to the goods in the course of his business, in accordance with the authorization and subject to any conditions and limitations attached thereto, his use of the mark shall be deemed to be exclusive use by the proprietor thereof.

(d) The Registrar may register an authorization if it has been proved to his satisfaction that the use of the trademark in relation to the goods in respect of which registration is applied for is not contrary to public policy and is not likely to deceive.

Application for registration of authorization

51. (a) An application, in the prescribed form, for the registration of an authorization shall be submitted by the proprietor of the mark and by the person to be registered as the authorized person and shall indicate, inter alia – (1) the relationship between the proprietor of the mark and the person to be registered as the authorized person, including the extent of the control of the proprietor of the mark over the use thereof by the authorized person; (2) the goods in respect of which the authorization is sought; (3) the conditions or limitations which are to apply to the use of the mark by virtue of the authorization if the same is registered; (4) The period of validity of the authorization if its registration is requested for a determinate period.

(b) The Registrar may demand any document, evidence or particular which it appears to him may be useful in determining the application;

(c) Particulars as referred to in subsections (a) and (b), other than particulars to be registered, shall not be open to inspection by the public.

Variation and cancellation of registration of authorization

52. (a) The Registrar may, on application of the proprietor of the mark in the prescribed form, vary the registration of an authorization as to everything relating to the goods to which the authorization applies and to the conditions and limitations to which it is subject.

(b) The Registrar may cancel the registration of an authorization on application by the authorized person in the prescribed form.

(c) The Registrar may cancel the registration of an authorization if he has been requested to do so and it has been proved to his satisfaction that the existence of the authorization, or the use of the trademark by the authorized person, is contrary to public policy or is likely to deceive.

(d) Before cancelling an authorization, or varying the conditions thereof, under this section, the Registrar shall give every interested party and opportunity to be heard.

(e) Where the registration of a mark has been cancelled or removed from the Register, any authorization given in respect thereof shall be void.

(f) The provisions of this section shall not derogate from the provisions of Sections 38 to 40.

Continuation of use of trademark (Amendment 1) 5760-1999

52A Notwithstanding the provisions of this Ordinance, where an application has been submitted for registration of a trademark or a trademark has been registered bona fide, or rights have been acquired in a trademark by way of bona fide use thereof, its eligibility for registration will not be adversely affected, nor the validity of the registration or right to use the trademark, solely because of such trademark being identical to or resembling a geographical marking or well known trademark, provided that the application for registration of the trademark was submitted, or the registration or acquisition of such rights occurred prior to - (1) in the case of a well known trademark- the date on which the trademark became a well known trademark; (2) In the case of a geographical marking – the 23rd of Teveth 5760 (January 1, 2000) or the date on which the geographical marking was given protection in the Member State in which the geographical area is situated in which the geographical marking is indicated.

Right of appeal (Amendment No.7) 5770-2010

53. (a) Decisions by the Registrar under Sections 50 to 52 shall be subject to an appeal to the Supreme Court.

(b) In an appeal against a decision of the Registrar under Sections 50 or 51 the Registrar shall be the Respondent in the appeal.

(c) The appellant, in an appeal against a decision of the Registrar under Section 52, shall give notice to the Registrar of the filing of an appeal within 30 days of the date of its filing.

(d) In an appeal under subsection (b) the Court, if required, shall hear the Registrar.

Chapter Eight: Registration of Foreign Trademarks

Protection by virtue of mutual agreement

54. (a) If the Government has sighed an agreement with the Government of Foreign State for mutual protection of trademarks, and the Minister of Foreign Affairs has notified such fact, then, so long as the agreement is in force, any person who has applied for protection of a trademark in that State, or his legal representative or assignee, shall be entitled to registration of his trademark under this Ordinance in priority to other applicants, provided that he filed his application within six months from the date on which he applied for protection in the Foreign State.

(b) The provisions of subsection (a) shall not entitle the proprietor of the trademark to recover dame for infringements which occurred prior to the date on which his trademark was actually registered in Israel.

(c) The registration of a trademark shall not be invalidated by reason only of its use in Israel during the six-month period referred to in subsection (a).

Priority rule (Amendment No.1) 5760-1999 (Amendment No.5) 5763-2003

(Amendment No.5) 5763-2003

55 (a) A person, or a person who preceded him in proprietorship, who has filed an application for registration of a trademark in a Member State (in this section – a previous application), may apply for the registration of the mark in Israel under the provisions of this section, and request that his application shall have priority over any application for registration filed after the date of filing of the previous application, provided that the two following conditions have been satisfied: (1) The request for the application of the priority rule was filed together with the application for registration of the trademark in Israel; (2) The application for the registration of the trademark in Israel as filed within six months from the date of the filing of the first previous application.

(b) Application of the priority rule can be requested in relation to part of the goods or the classes of goods included in an application for registration of a trademark in Israel, and when this has been done, the provisions of subsection (a) shall apply in respect of such part.

(b1) Where the request for application of the priority rule under the provisions of subsection (a) was based on more than one previous application and the priority rule is required on the basis of each of the applications, the provisions of subsection (a) will apply in relation to the good or classes of the goods in respect of

which registration of the trade mark was sought, according to the date of the earliest previous application in relation to those goods or to that part, as the case may be.

(c) The provisions of this section shall nor confer a right to damages for an infringement committed before the date of filing of the application for registration of the mark in Israel

Filing of application 56. An application for registration of a trademark under Section 54 or 55 shall be made in the same manner as an ordinary application under this Ordinance.

(Amendment No.5) 5763-2003

Chapter Eight – One: International Applications

(Amendment No.5) 5763-2003

Article One: Definitions

Definitions (Amendment No.5) 5763-2003

56A In this Chapter -

“Holder of international trademark” – means a person in whose name an international trademark is registered;

“International application” – means an application for registration of a trademark as an international trademark submitted to the International Bureau pursuant to Articles 2(2) and 3 of the Protocol;

“An Israel-designated international application”- means an international application in which the applicant states Israel as the designated place of registration of the trademark;

“Subsequent designation” – means an application for extension of a registered trademark as an international trademark submitted to the International Bureau under Article 3ter(2) of the Protocol, in which the applicant states an additional contracting party to the Protocol which was not stated in the international application, as the designated place for registration of the trademark;

“Israel-designated subsequent designation application – means an application for extension in which the applicant states Israel as the designated place for registration of the trademark;

“Israel-designated application” – means an Israel-designated international application or an Israel-designated subsequent designation application;

“Madrid Agreement”- means Madrid Agreement (Stockholm) within the meaning thereof in Article 1 of the Protocol;

“The International Bureau” – within the meaning thereof as defined in Articles 2 and 11 of the Protocol;

“The International Register” – as such is defined in Article 2(1) of the Protocol;

“The Protocol” – the Protocol Relating to the Madrid Agreement Concerning the International Registrations of Marks as signed in Madrid on June 27, 1989; for such purpose “marks” – means trademarks;

“Contracting Party to the Protocol” – means a State or inter-state organ that is a party to the Protocol pursuant to Article 1 therein;

“The office of origin” – means an office of a party to the Protocol, within the meaning thereof in Article 2(2) of the Protocol, to which an international application or an subsequent designation application was submitted;

“Madrid Regulations”1 – means the Common Regulations under the Madrid Agreement and the Protocol as were in force on April 1, 2002 in accordance with the amended version of the said regulations specified in the Schedule.

(Amendment No.5) 5763-2003

Article Two: International Applications Originating in Israel

The Registrar as the office of origin (Amendment No.5) 5763-2003

56B (a) The Registrar shall act as the office of origin for the purposes of the international applications and subsequent designation applications that are not Israel-designated, which are filed pursuant to the provisions of Section 56C.

(b) The Registrar is responsible for processing the applications specified in subsection (a) and for the forwarding thereof to the International Bureau, and for such purpose the provisions under this Article shall apply, and in relation to any matter not governed by this Article, the provisions of the Protocol and the Madrid Regulations shall apply.

Filing of an international application or subsequent designation (Amendment No.5) 5763-2003

56C An Israeli national, an Israel resident or any person that has in Israel, an active industrial or commercial enterprise, who has filed an application for registration of a trademark in Israel as an international trademark or who is the registered proprietor of an international trademark, may file with the Registrar in his capacity as the office of origin, on the basis of such application or of such registration, and pursuant to the provisions of this chapter- (1) A non-Israel designated international application; (2) A non-Israel designated subsequent designation application, provided that the applicant is the registered proprietor of an international trademark.

1 The Protocol and Madrid Regulations are deposited for public inspection with the Registrar of trademarks, and are published on the Registrar’s internet website

Registrar’s notification to International bureau (Amendment No.5) 5763-2003

56D Where the Registrar has forwarded an international application to the International Bureau, he shall notify the International Bureau of each of the following, in accordance with the provisions of this Chapter: (1) The final decision pronounced pursuant to Sections 18 or 22 concerning rejection, cancellation or receipt of conditions, amendments, modifications or limitations of the basic application, provided that the proceeding at the conclusion of which the said decision was made had commenced prior to the determining date; (2) A final judgment pronounced in an appeal under Section 19 and provided that the proceeding in which the decision was pronounced on the subject of the appeal had commenced prior to the determining date; (3) A final decision or final judgment that does not permit registration of the trademark in relation to all the goods or classes of goods or part of them in respect of which registration was sought, provided that such decision or judgment was pronounced as a result of the notice of objection that had been filed pursuant to the provisions of Section 24 prior to the determining date, for registration of the trademark as an international trademark in accordance with the basic application; (4) The basic registration has expired prior to the determining date and has not been renewed in accordance with the provisions of Sections 32 and 33. (5) A decision as to removal or cancellation of the basic registration or of goods or classes of goods from the said registration, in accordance with an application of the registered proprietor of the trademark filed pursuant to the provisions of Section 36 prior to the determining date; (6) A final decision or final judgment as to removal or cancellation of the basic registration or of goods or classes of goods from the said registration, in accordance with an application filed pursuant to the provisions of Sections 39 or 41 prior to the determining date; (7) Additional matters that the Minister has prescribed pursuant to the provisions of the Protocol and Madrid Regulations.

In this section – “The basic application” – means the application for registration of the trademark in Israel as an national trademark on which the international application is based; “The determining date” – means the date after which 5 years has expired from the date of the international registration of the trademark; “The basic registration” – means the national trademark on which the international application is based.

Correction or error in an international application or for subsequent designation (Amendment No.5) (Amendment) 5767- 2007

56D1 Correction of an error in a non-Israel designated international application or in a non-Israel designated subsequent designation application, shall be made in accordance with the Madrid Regulations, and the provisions of Section 20 shall not apply for such purpose.

(Amendment No.5) 5763-2003

Article Three: Israel- Designated International Applications

Applicability of provisions of the Ordinance to Israel designated applications (Amendment No.5) 5763-2003

56E Where the Registrar has received notice from the International Bureau as to the filing of an Israel-designated application, he shall decide as to the eligibility for registration of the trademark whose registration is being sought, and the provisions of this ordinance shall apply mutatis mutandis, and subject to the following variations: (1) The provisions of Section 17 shall not apply;

(Amendment No.5) (Amendment) 5767 - 2007

(1a) For the purposes of Sections 17A and 17B, division of applications or consolidation of applications shall be pursuant to the provision contained in Article 9 of the Protocol and the Madrid Regulations;

(Amendment No.5) (Amendment) 5767 - 2007

(1b) For the purposes of Section 20, correction of an error in an Israel–designated application or in respect of it shall be pursuant to the Madrid Regulations; (2) For the purposes of Section 24(c) a copy of the notice of objection as provided in Section 24(b) shall be sent to the International Bureau in accordance with the provisions of the Protocol and Madrid Regulations and within the period prescribed in the opening passage of Section 56F; (3) For the purposes of registration under Section 26, it shall be noted in the Register that the trademark is an international trademark; (4) The following provisions shall apply in lieu of the provisions of Section 27: (a) The date of entry in the Register of an international trademark registered in Israel, which was registered in accordance with an Israel-designated international application, shall be the date on which the international trademark is entered in the international register; (b) The date of entry in the Register of an international trademark registered in Israel, which was registered in accordance with an Israel–designated subsequent designation application, shall be the date on which the subsequent designation application was entered in the international register.

Notice of refusal or of filing of objection (Amendment No.5) 5763-2003

56F (a) Within 18 months of the date on which an Israel–designated application was sent to the Registrar, he shall send notice of each of the following to the International Bureau, pursuant to the provisions of this chapter: (1) A decision that the trademark is not eligible for registration or

that an application can only be accepted on conditions, with amendments , modifications or limitations, under the provisions of Section 18; (2) Filing of objections to registration of the trademark, or the existence of a possibility of submitting objections as aforesaid even after the said period of 18 months.

(b) Where the Registrar has notified the International Bureau that a possibility exists of the filing of objections under the provision of subsection (a) (2), he shall give notice to the international bureau, within one month after the expiration of the period for the filing of objections, of any objection filed during that period.

Registration of International Trademark (Amendment No.5) 5763-2003

56G Where the Registrar has not served notices on the International Bureau in accordance with Section 56F within the period specified therein, he shall register the trademark in the Register and shall note that it is an international trademark.

Notice of Final Decision as to objections (Amendment No.5) 5763-2003

56H (a) Where the Registrar has made a decision on an objection the filing of which he has notified the international bureau pursuant to the provisions of Sections 56F (a) or (b), and has not received, within 30 days from the date of pronouncement of his decision, notice under Section 25(b1) of the filing of an appeal, he shall notify the international bureau of his decision regarding the objection.

(b) Where an appeal has been filed against the Registrar’s decision regarding an objection, pursuant to Section 25, the Registrar shall notify the International Bureau of the final judgment of the Court regarding the appeal.

International Trademark – in lieu of National Trademark (Amendment No.5) 5763-2003

56I (a) Registration of an international trademark in the Register pursuant to provisions of this Article shall replace registration of the national trademark, in all respects, if all the following conditions have been satisfied: (1) On the date of the filing of the Israel-designated application, with the international bureau, the international trademark being sought was a national trademark; (2) The international trademark and the national trademark are registered both in the international register and in the register, in the name of the same person; (3) The international trademark is registered in the national register, in relation to Israel, in reference to all the goods in respect of which the national trademark is entered in the Register.

(b) The replacement of registration under the provisions of subsection (a) shall not operate so as to prejudice the rights acquired because of registration of the national trademark.

registration of an international trademark shall be noted in the Register.

Applicability of provisions of the Ordinance to international trademark (Amendment No.5) 5763-2003

56J The provisions of this ordinance with regard to a registered trademark shall apply with regard to an international trademark registered in Israel, mutatis mutandis, and with the following variations: (1) For the purposes of Section 31 and the closing passage of Section 32, extension of validity of or renewal of registration of a trademark shall be in accordance with the provisions of Articles 6(1), 7 and 8 of the Protocol and of the Madrid Regulations;

(Amendment No.5) (Amendment) 5767- 2007

(2) The provisions of Section 33 shall not apply; (3) (a) For the purposes of Sections 36, 49, 51 and 52, the applications for registration specified below shall be submitted direct to the International Bureau or through the office of origin, pursuant to the Madrid Regulations:

(Amendment No.5) (Amendment) 5767- 2007

(1) An application for a change in registration pursuant to Section 36(a) (1a) An application for registration by virtue of a transfer or operation of law pursuant to Section 49 (a); (2) An application for registration of authorization pursuant to Section 51(a); (3) An application for variation of registration of authorization pursuant to Section 52(a) or an application for cancellation of registration of authorization pursuant to Section 52(b);

(Amendment No.5) (Amendment) 5767- 2007

(4) For the purposes of Section 36A, consolidation of several registrations of the same trademark, shall be pursuant to the provisions of Article 9 of the Protocol and pursuant to the Madrid Regulations.

(b) Where the Registrar has received from the International Bureau, notice of the filing of one of the applications specified in subparagraph (a) he shall make a decision in relation to it pursuant to the provisions of this Ordinance.

Notice of removal or of cancellation of international trademark (Amendment No.5) 5763-2003

56K The Registrar shall notify the international bureau of a final decision or a final judgment regarding the removal or cancellation of registration of an international trademark registered in Israel, pursuant to the provisions of Sections 39 or 41, with regard to all the goods or part of the goods in respect of which it is registered, under the provisions of this chapter.

Consequences of removal from or cancellation in the international register (Amendment No.5) 5763-2003

56L (a) (1) Where the International Bureau has notified the Registrar of the removal from or cancellation in the international register, of registration of an international trademark registered in Israel, with regard to all the goods or the classes of goods or parts thereof in respect of which it is registered, the Registrar shall remove or cancel registration of the international trademark entered in Israel in the Register, in regard to such goods as have

been specified in the notice; the date of such removal or cancellation from or in the international register shall be the date of such removal or cancellation from the Register, as the case may be; (2) The provisions of Paragraph (1) shall also apply to a trademark entered in the Register under the provisions of Section 16, and the provisions of Section 39(b) shall not apply in this regard.

(b) Where the International Bureau has notified the Registrar of the removal of cancellation from the international register of registration of an international trademark, with regard to some or all of the goods in respect of which it is registered, and with regard to the goods specified in a notice of an Israel-designated application having been filed, the Registrar shall cease processing the application in respect of such goods.

Conversion of international trademark to national trademark (Amendment No.5) 5763-2003

56M Where the entry of an international trademark has been removed or cancelled in the international register, pursuant to notification of the office of origin under Article 6(4) of the Protocol, with regard to some or all of the goods or the classes of goods in respect of which the mark is registered, and within 3 months of the date of such removal or cancellation, and a person who is the registered proprietor of the international trademark, has filed an application for registration of an identical mark as a national trademark with regard to the goods in respect of which the registration has been removed or cancelled, the following provisions shall apply: (1) In respect of an international trademark registered in Israel, whose registration in the Register has been removed or cancelled under the provisions of Section 56L(a) –the Registrar shall enter the trademark in the Register as a national trademark in accordance with the application; (2) (a) In respect of an Israel-designated application which has been advertised under the provisions of Section 23- the application for registration of the national trademark shall proceed instead of the Israel-designated application, in all respects and any objection filed to registration of the international trademark shall be deemed an objection filed to registration of the national trademark; (b)In the event of the priority rule under the provisions of Section 55 applying to the Israel-designated application, the priority rule shall apply to registration of the national trademark; (3) The date of registration of the national trademark shall be as stated in Section 56E (4).

Chapter Nine: Infringement

Action for infringement (Amendment No.1) 5760-1999

(Amendment No.1) 5760-1999

57. (a) The proprietor of a registered trademark or of a well known trade mark may bring an action for infringement; the court shall not entertain and action for infringement in respect of an unregistered trademark;

(b) repealed

Usages to be evidence 58. In an action for infringement, evidence shall be admitted of the usages of the trade in respect of the get-up of the goods for which the trademark is registered and of any trademarks or get-up legitimately used in connection with such goods by other persons.

Relief 59 (a) In an action for infringement, the Plaintiff shall be entitled to relief by way of injunction, and to damages in addition to any other relief which the Court dealing with the case is competent to grant.

(Amendment No.1) 5760-1999

(b) With regard to an infringement in respect of a well known trademark that is not a registered trademark the Plaintiff shall be entitled to relief by way of injunction only.

Additional relief (Amendment No.1) 5760-1999

59A (a) The Court may, at the conclusion of the deliberations in an action, order one of the following: (1) Destruction of the property produced in committing the infringement or used in the perpetration thereof (in this section - the property); (2) If the Plaintiff has so requested - the transfer of ownership of the property to him, in consideration of payment of the value thereof, at the its value but for the commission of the infringement; (3) The taking of any other action with regard to the property. Provided that the Court shall not permit possession of the property by the Defendant even if the Defendant has removed the offending marks, other than in exceptional circumstances.

(Amendment No.5) 5763-2003

(b) A party who files an application for destruction of property shall give notice thereof to the Israel Police in the manner prescribed by the Minister, and the Court shall not hear such an application without an opportunity having been afforded to the Police to be heard and state its case.

Chapter Ten: Penalties

Penalties Amendment No.4) 5763-2002

60. (a) A person who commits any of the following acts, shall be liable to imprisonment for three years or to a fine of seven times the amount of the fine prescribed in Section 61(a) (4) of the

Penal Law, 5737-1977 (hereinafter – the Penal Law); (1)Marks, without authorization of the proprietor of the mark or of his representative, a registered trade mark or an imitation thereof, for trading, goods in respect of which the mark is registered in the Register or packaging of such goods, and is thus liable to deceive another person; (2) Imports for trading, without authorization of the proprietor of the mark or his representative, goods or packaging thereof that have been marked with a trademark that is registered in the Register in respect of such goods or by imitation of such a mark, and the mark is liable to deceive another person; provided that the provisions of this paragraph shall not apply in respect of goods that have been marked with authorization of whoever is the proprietor of the mark in the country in which the marking was done; (3) Deals in the sale, hiring or distribution of goods that have been marked or imported into Israel in contravention of the provisions of Paragraphs (1) or (2), or sells or hires or distributes such goods in a commercial quantity; (4) Holds goods that have been marked or have been imported into Israel in contravention of the provisions of Paragraphs (1) or (2) for the purpose of trading in them.

(b) Where an offence has been committed under subsection (a) by a body corporate, it shall be liable to double the fine prescribed for such offence.

(c) A person who gives false information to the Registrar in connection with an application for registration of a mark in the Register shall be liable to imprisonment for one year.

(d) (1) An officeholder in a body corporate must exercise control and do all that is possible to prevent the commission of any of the offences specified in this section (hereinafter – offence) by the body corporate or by any of its employees; a person who commits a breach of the aforesaid duty shall be liable to the fine prescribed in Section 61(a) (4) of the Penal Law. (2) Where an offence has been committed by a body corporate or any of its employees, it shall be a presumption that the officeholder has committed a breach of his duty under Paragraph (1), unless he proves that he did everything possible in order to discharge his said duty. (3) In this subsection, “officeholder” – means an active director in a body corporate, a partner except a limited partner, and the official with responsibility on behalf of the body corporate for the sphere in which such offense was committed.

Injunction 61 After a conviction of an offence under Section 60, the Court may, in lieu of or in addition to the prescribed penalties, issue an injunction for prevention of or against a repetition of the offence.

Order for forfeiture or destruction

62 The Court, before whom any person charged under Section 60 is brought, may order the forfeiture or destruction of any goods, wrapping, packing or advertising material, and of blocks, dies or other apparatus for printing the mark or other material in respect of which the offence was committed.

False representation of mark

63 A person who represents a trademark as registered which is not so registered shall be liable for every offence to a fine of 750 Pounds. A person shall be deemed, for the purposes of this section to represents that a trademark is registered if he uses the word “registered” in connection with the trademark or any word expressing or implying that registration has been obtained for the trademark.

(Amendment No.7) 5770 - 2010

Chapter Eleven: Trial, Evidence and Procedure

Appeal against other decision of the Registrar (Amendment No.7) 5770 - 2010

63A Any other decision of the Registrar under this law shall be appealable to the Court if leave to do so is granted by the Court; for such purpose “other decision” – means a decision that is not likely to conclude the deliberations in the proceeding conducted before him.

The Relevant District Court (Amendment No.7) 5770 - 2010

63B (a) The relevant District Court for the purposes of this law is the District Court in the District of Jerusalem or in the District of Tel Aviv, at the election of the person filing the proceeding; provided that the Minister may, by order, direct that jurisdiction of the District Court under this law shall also lie with such other District Courts as he shall prescribe.

(b) The provisions of this section shall not apply in relation to Chapters 9 and 10.

Appeal against judgment or other decision of a District Court (Amendment No.7) 5770 - 2010

63C A judgment and other decision as defined in Section 63A, of a District Court under this law, shall be appealable to the Supreme Court, if leave for such an appeal is granted by the President of the Supreme Court or by another Judge of the Supreme Court designated by the President for such purpose; the provisions of the concluding passage of Section 41(b) and (c) of the Courts Law shall apply mutatis mutandis, with regard to the granting of leave to appeal against such other decision.

Registration to be evidence of validity

64 In any legal proceeding relating to a registered trademark the fact that a person is registered as proprietor of such trademark shall be prima facie, evidence of the validity of the original registration of such trademark, and all subsequent assignments and transmissions thereof.

Registrar’s Certificate 65 A certificate purporting to be signed by the Registrar as to any entry or as to any thing which he is authorized to do by this

Ordinance or regulations made pursuant thereto shall be prima facie evidence of the entry having been made and of the contents thereof, and of the thing having been done or not done.

Hearing of Applicant 66 Where any discretionary or other power is given to the Registrar by this Ordinance or regulations made pursuant thereto, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trademark without, if required by him so to do within the prescribed time, giving him an opportunity to be heard.

Evidence before the Registrar

67 Subject to any regulation under this Ordinance, the evidence in proceedings before the Registrar shall be by affidavit under Section 15 of the Evidence Ordinance (New Version) 5731-1971, or by declaration made abroad under the law of the place where it is made, so long as the Registrar does not otherwise direct; but the Registrar may, if he thinks fit, take oral testimony in lieu of or in addition to written evidence, and may permit the deponent to be crossed-examined.

Powers of Registrar with regard to witnesses (Amendment No.7) 5770 - 2010

68. The Registrar shall have the powers of a Court to compel the attendance of a witness before him and as to the hearing of his testimony.

Costs 69. In every proceeding before him the Registrar may award to a party such costs as he considers reasonable.

Giving notice to the Director of Customs (Amendment No.1) 5760-1999

69A (a) A proprietor of a registered trademark whose right has been infringed or in respect of which a reasonable fear exists that it will be infringed, may give notice in writing to the Director of Customs that he is owns title to the trademark, and request that he delay the release of the goods that he claims to be offending goods, and that they be treated as goods whose importation is prohibited under the Customs Ordinance.

(b) The notice under subsection (a) shall include a copy of the certificate of registration of the trademark and also one of the following: (1) a sample of the original goods in respect of which the applicant has title to the trademark regarding which he is laying information as to the importation of offending goods; (2) a catalogue or any other document that enables the Director of Customs to make a comparison between the original goods and the offending goods;

(c) The proprietor of a registered trademark shall in his notice furnish the following particulars to the Director of Customs, in so far as he is aware of them: (1) The number of packages due to be received; (2) Sufficient marking of the means of importation or the name of the ship bringing in the offending goods;

(3) The date on which the offending goods are due to arrive in Israel.

(d) The proprietor of a registered trademark must furnish the Director of Customs with primary evidence, and a personal guarantee of an amount prescribed by the Director of Customs in order to cover any cost connected with the delay or in order to compensate for any damage that may be caused by such delay, if it should appear that such delay was not justified, and must also pay any fee prescribed in this regard under the Customs Ordinance.

(e) The provisions of this section shall not apply to offending goods that are imported for personal use as such is defined in Section 129 of the Customs Ordinance.

Chapter Twelve: Fees and Regulations

Fees 70 There shall be paid in respect of applications, registrations and other matters under this Ordinance, such fees as may be prescribed by regulations.

Implementation and Regulations (Amendment No.6) 5767-2007

71 (a) The Minister is charged with the implementation of this Ordinance, and he may make regulations for its implementation including in relation to the following matters: (1) The manner of preparation and transmission of documents under this Ordinance, and the Minister may prescribe regulations in relation to preparation and transmission of electronic documents and in relation to the use of a secure electronic signature or a certified electronic signature in relation to them; in this paragraph – “Electronic Documents” – means documents under this Ordinance that are delivered electronically and may be preserved electronically and may be extracted as an output; “Electronic delivery”, “secure electronic signature”, “certified electronic signature” – are as defined in the Electronic Signature Law, 5761-2001; “Output” – as such is defined in the Computers Law, 5755-1995; (2) Fees in respect of applications, notices, actions and services under this Ordinance; (3) Procedures for appeals, objections and applications under this Ordinance; (4) In relation to any matter pertaining to the implementation of Chapter Eight–One, provided that in any matter in respect of which there are provisions in the Protocol or in the Madrid Regulations, as such are defined in the said Chapter, the regulation shall be made under the Protocol and under the Madrid Regulations; (5) The manner of preservation of documents submitted to the Registrar under this Ordinance, including by electronic means;

(6) Scrutiny of the Register, as well as the extraction and distribution of certified copies of the entries in the Register including by means of electronic documents as such are defined in Paragraph (1).

(b) Regulations under subsection (a) (2) shall be made with the approval of the Economics Committee of the Knesset.

Variation of the Schedule (Amendment No.5) 5763-2003

71A The Minister may, by order, vary the Schedule

Regulations by Registrar (Amendment No.5) 5763-2003

72 Subject to the provisions of this Ordinance the Registrar may, with the approval of the Minister, make regulations, prescribe forms and generally do such things as he may think expedient in relation to the following: (1) Regulating the practice under this Ordinance;

Amendment No.6 5767-2007

(2) Repealed

(3) Classifying goods for the purpose of registration of trademarks; (4) Making or requiring duplicates of trademarks and other documents; (5) Securing and regulating the publishing, selling and distribution of copies of trademarks and other documents in such manner as the Registrar thinks fit; (6) Regulating every other item of the business of the office in relation to trademarks and every other matter placed by this Ordinance under the control of the Registrar.

Schedule (Section 56A)

(The Amendments to the Madrid Regulations)

Yaakov S. Shapiro The Minister of Justice

Appendix: Translations of the terms appearing in the Madrid protocol and in the Madrid Regulations

[List of terms in English translated from the Hebrew]

Comparison Table The Previous Section The New Section The Previous Section The New Section 1 The Name 19B 51 2 1 19C 52 2A 2 19D 53 2B 3 20 31 3 opening passage 4 21(1) 32 3 concluding passage 5 21(2) 33 4 Repealed 21(3) 34 5 6 21(3) Proviso 35 6 7 22 41 7(1), (2) 8 23 49 7(3) 9 24 37 7(4)- (6) 10 25(1)-(4) 38 8 11 25(5) 39 8A 12 25(6) 40 9 13 26 46 10 14 27 36 10A 15 28(1) 43 11(1) 17 28(2) 44 11(2) 18 28(3) 45 11(3) 19 29 64 11(4) 20 30 Repealed 11A 16 31 42 12 21 32 65 13 23 33 63 14(1)-(4) 24 34 57 14(5)- (9) 25 35 58 15(1) opening passage 26 36 47 15(1) concluding passage 27 37 49 15(2) 28 38(1) 60 16 22 38(2) 61 17 29 39 62 18 30 40 66 19 48 40A 69 19A 50 40B 67

The Previous Section The New Section The Previous Section The New Section 40C 68 41 54 41A 55 42 56 45 71 46 72 47 70 48 Repealed

Israel

IL043

Trade Marks Ordinance (New Version), 5732-1972 (as amended up to September 1, 2010)