Translation Notice — This is an English translation of a Hebrew law and may contain inaccuracies. In any dispute or legal matter, the original Hebrew text as published in Reshumot (ספר החוקים) is the sole authoritative and legally binding version.

Ordinance

Trademarks Ordinance [New Version]

פקודת סימני המסחר [נוסח חדש]

Trade Mark in Respect of Specific Goods.

preamble-1.

(b)The provisions of subsection (a) shall not apply if the Registrar is satisfied that the goods in question are goods in respect of which compliance with those provisions would cause unreasonable complication, and that the addition or antedating does not relate to a substantial quantity of goods and does not materially prejudice the rights of any person.

Adaptation of Registrations — Notice and Opposition

45.

(a)The Registrar shall send to the registered proprietor of the trademark concerned notice of his proposal to amend the Register by virtue of his power under Section 44, and the registered proprietor shall be entitled to appeal against it to the Supreme Court; notice of the proposed amendment, together with the changes contained therein, shall be published.

[Registrations]

518 Sefer HaChukkim 26 19 Sivan 5732 01.06.1972

(b)Any person who considers himself aggrieved by the proposed amendment may file his opposition with the Registrar on the ground that it contravenes the provisions of Section 44, and the Registrar's decision on such opposition shall be subject to Appeal to the Supreme Court.

Need to cite this law in a foreign court?

Eli Shimony Israeli Attorneys-at-Law provides certified Expert Legal Opinions on Israeli law within 24–48 hours, accepted by courts worldwide.

Chapter G: Rights of the Owner of a Trade Mark

preamble-2.

[Redundant]

Right to Exclusive Use of Registered Trademark

46.

(a)The valid registration of a person as proprietor of a trademark shall entitle him to the exclusive use of the trademark in relation to the goods for which the mark is registered and in connection therewith, subject to any conditions and limitations entered in the Register.

(b)Where several persons are registered as proprietors of identical, or nearly identical, trademarks in respect of identical goods, the rights of each of them shall be as if he were the sole registered proprietor of the mark, but registration shall not entitle any one of them as against another to the exclusive use of the trademark, except to the extent that the Registrar or the Supreme Court has determined the rights of each.

Well-Known Trade Mark

46a.

[Translation pending]

Protection of Mark at Exhibition

46b.

[Translation pending]

Saving of Bona Fide Use of Name or Descriptive Terms

47.

Registration under this Ordinance shall not prevent any person from making bona fide use of his own name or the name of his place of business, or that of his predecessor in business, or from making bona fide use of a genuine description of the character or quality of his goods.

[Trademark]

Assignment of Trademark

48.

(a)A registered trademark may be assigned by the proprietor of the mark and may pass by operation of law, either in connection with the goodwill of the business in the goods for which the mark is registered or independently thereof; however, the Registrar may refuse to register an assignment if, in his opinion, use of the mark by the assignee is likely to deceive the public, or if the assignment is, in his opinion, contrary to public policy.

(b)For the purposes of subsection (a), a trademark in respect of which an application for registration is pending shall have the same status as

Need to cite this law in a foreign court?

Eli Shimony Israeli Attorneys-at-Law provides certified Expert Legal Opinions on Israeli law within 24–48 hours, accepted by courts worldwide.

Registered Trade Mark.

Registration of Assignment

preamble-3.

Registration of Assignment

49. (a) A person who has acquired a registered trademark by assignment or by operation of law shall apply to the Registrar to register his right, and after his right has been proved to the satisfaction of the Registrar, the Registrar shall register him as proprietor of the mark and shall enter in the Register, in the prescribed manner, the fact of the assignment or any document relating to that right.

(b)Any decision of the Registrar under this Section shall be subject to Appeal to the Supreme Court.

(c)A certificate or document not registered in the Register pursuant to this Section shall not be admitted in evidence in any court, except on an Appeal under this Section, to prove title to a trademark, unless the Court otherwise directs.

[in a Mark]

Registered User — License to Use Trademark

50.

(a)The proprietor of a registered trademark may permit another person (in this Section — a registered user) to use his mark in relation to all or some of the goods for which the mark is registered.

(b)A Permit shall have no effect unless it has been registered in accordance with the provisions of this Section, and the Registrar may register it subject to such conditions and restrictions as he sees fit.

(c)So long as a registered user uses the mark in relation to the goods in the course of his business in accordance with the Permit and subject to the conditions or restrictions contained therein, the use of the mark by the registered user shall be deemed to be exclusive use by the proprietor of the mark.

519 Sefer HaChukkim 26 19 Sivan 5732 01.06.1972

(d)The Registrar may register a Permit if it has been proved to his satisfaction that the use of the trademark in relation to the goods for which registration is sought does not contravene public policy and is not likely to deceive.

51. (a) An application for registration of a Permit, in the prescribed form, shall be filed by the proprietor of the mark and by the person seeking to be registered as registered user, and shall specify, among other things —

(1)the relationship between the proprietor of the mark and the person seeking to be registered as registered user, including the degree of control of the proprietor of the mark over the use thereof by the registered user;

(2)the goods in respect of which the Permit is sought;

(3)the conditions or restrictions that shall apply to the use of the mark under the Permit, if registered;

(4)the period of the Permit, if registration for a fixed term is requested.

(b)The Registrar may require any document, evidence, or particulars that he considers useful for the examination of the application.

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

Variation and Cancellation of Registered Permit

52.

(a)The Registrar may vary the registration of a Permit, with respect to the goods to which the Permit applies and the conditions or restrictions to which the Permit is subject, if the proprietor of the mark has so requested in the prescribed form.

(b)The Registrar may cancel the registration of a Permit if the registered user has so requested in the prescribed form.

(c)The Registrar may cancel the registration of a Permit if so requested and if it has been proved to his satisfaction that the continuation of the Permit, or the use of the trademark by the registered user, is likely to prejudice public policy or to deceive.

(d)Before the Registrar cancels the registration of a Permit or varies its conditions pursuant to this Section, he shall give every interested party an opportunity to be heard.

(e)If the registration of a mark is cancelled or removed, any Permit granted in respect thereof shall also be cancelled.

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

[Permit and Cancellation thereof]

Continued Use of Mark

52a.

[Translation pending]

Right of Appeal Against Registrar's Decisions on Permits

53.

Decisions of the Registrar made pursuant to Sections 50 to 52 shall be subject to Appeal to the Supreme Court.

Right of Appeal

Chapter VIII: Registration of Foreign Marks

54.

(a)Where the Government has concluded an agreement with the government of a foreign state for the mutual protection of trademarks, and the Minister of Foreign Affairs has given notice thereof, then for as long as the agreement remains in force, any person who has applied for protection of a trademark in that state, or his lawful attorney or the person to whom the mark has been assigned, shall have priority of registration of his trademark under this Ordinance over other applicants, provided that he has 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 owner of a trademark to recover damages in respect of infringements that occurred before the date on which his trademark was actually registered in Israel.

(c)The registration of a trademark shall not be invalidated solely by reason of the fact that the trademark was used in Israel during the period of six months referred to in subsection (a).

[Mutual Agreement]

Protection under the Paris Convention

Protection under the Paris Convention — Convention Application

55.

(a)A person who has filed in a Convention country an application for registration of a trademark, as well as a person who has lawfully succeeded to his rights, may apply for registration of the mark in Israel in accordance with the provisions of this Section, and their application shall have priority over any application for registration filed after the date of filing of the application abroad.

(b)An application for registration pursuant to subsection (a) must be filed within six months from the date of filing of the first application for registration of the mark.

(c)Nothing in this Section shall confer a right to damages for an infringement committed before the date of filing of the application for registration of the mark in Israel.

56. An application for registration of a trademark pursuant to Sections 54 or 55 shall be filed in the same manner as an ordinary application under this Ordinance.

Need to cite this law in a foreign court?

Eli Shimony Israeli Attorneys-at-Law provides certified Expert Legal Opinions on Israeli law within 24–48 hours, accepted by courts worldwide.

Chapter H¹: International Applications

Definitions

56a.

[Translation pending]

Registrar as Office of Origin

56b.

[Translation pending]

Filing of International Application

56c.

[Translation pending]

Registrar's Notification to International Office

56d.

[Translation pending]

Correction of Error in Application

56d1.

[Translation pending]

Application of Ordinance to Applications Designating Israel

56e.

[Translation pending]

Notices of Refusal or Opposition

56f.

[Translation pending]

Registration of International Mark

56g.

[Translation pending]

Notice of Final Decision on Opposition

56h.

[Translation pending]

International Mark Replacing National Mark

56i.

[Translation pending]

Application of Ordinance to International Marks

56j.

[Translation pending]

Notice of Deletion of International Mark

56k.

[Translation pending]

Consequences of Deletion or Cancellation

56l.

[Translation pending]

Conversion of International Mark to National Mark

56m.

[Translation pending]

Need to cite this law in a foreign court?

Eli Shimony Israeli Attorneys-at-Law provides certified Expert Legal Opinions on Israeli law within 24–48 hours, accepted by courts worldwide.

Chapter I: Infringement

Action for Infringement

57.

(a)The proprietor of a registered trademark may institute an action for infringement; no court shall entertain an action for infringement in respect of an unregistered trademark.

(b)Nothing in this Section shall derogate from the provisions of Section 59 of the Torts Ordinance [New Version].

58. In a trial for infringement, evidence shall be admissible concerning trade practice with respect to the get-up of goods for which a trademark is registered, and concerning trademarks or get-up lawfully used by other persons in relation to such goods.

Damages in Infringement Proceedings

59.

In a trial for infringement, the Plaintiff shall be entitled to relief by way of injunction and to damages, in addition to any other relief that the court hearing the matter has the power to grant.

Additional Remedies

59a.

[Translation pending]

Need to cite this law in a foreign court?

Eli Shimony Israeli Attorneys-at-Law provides certified Expert Legal Opinions on Israeli law within 24–48 hours, accepted by courts worldwide.

Chapter J: Penalties

Offences

60.

A person who, with intent to defraud, does any of the following acts, or attempts to do them, or aids another in doing them, shall be liable to Imprisonment of one year or a Fine of 1,500 pounds:

(1)uses a registered trademark or an imitation thereof on goods of the class for which the mark is registered, not being the proprietor of the mark;

(2)sells, stores for the purposes of sale, or exposes for sale goods bearing a mark the use of which is an offence under paragraph (1);

(3)uses, for the purpose of advertising goods, in the press or otherwise, a trademark duly registered by another person in respect of goods of the same class;

(4)makes, engraves, prints, or sells a plate, die, block, or other representation of a mark duly registered or any other imitation thereof, so as to enable a person, other than the registered proprietor of the mark, to use the mark or an imitation thereof in respect of goods of the class for which it is registered;

(5)makes or causes to be made a false entry in the Register, or a document purporting to be a copy of an entry in the Register, or produces or submits such a document in evidence, or causes it to be produced or submitted, knowing the entry or document to be false.

2 Laws of the State of Israel, New Version 10, p. 268.

521 Sefer HaChukkim 26 19 Sivan 5732 01.06.1972

Court Order to Prevent Repetition of Offence

61.

Upon conviction of an offence referred to in Section 60, the court may, either in lieu of or in addition to the penalties prescribed, issue an Order to prevent the repetition of the offence.

Forfeiture and Destruction of Infringing Goods and Materials

62.

The court before which a person is brought to trial for an offence under Section 60 may Order the forfeiture or destruction of goods, of labelling, packaging or advertising material, and of blocks, dies, equipment and other material used to print the mark or the other materials in respect of which the offence was committed.

Misrepresentation of Registration Status of a Mark

63.

One who claims that a certain trademark is registered when that is not the case shall be liable to a Fine of 750 pounds for each offense.

"Claims," for this purpose — uses in relation to a trademark the word "registered" or words from which it is implied, expressly or by implication, that registration has been obtained for the trademark.

Misrepresentation of the Status of a Mark

Appeal on Registrar's Decisions

63a.

[Translation pending]

Competent Court

63b.

[Translation pending]

Appeal to the Supreme Court

63c.

[Translation pending]

Chapter XI: Evidence and Procedure

64.

In any legal proceeding concerning a registered trademark, the fact that a person is registered as the owner of the trademark shall be prima facie evidence of the validity of the original registration of the trademark and of all subsequent assignments thereof.

[Validity]

Registration as Evidence

65.

A document purporting to be signed by the Registrar, in relation to a registration or in relation to any matter which the Registrar is empowered to do under this Ordinance or Regulations made thereunder, shall be prima facie evidence of the making of the registration and its contents, and of the doing or non-doing of such matter.

Certificate of the Registrar

66.

Wherever the Registrar has been granted under this Ordinance or the Regulations made thereunder a discretionary power or any other power, the Registrar shall not exercise such power against the applicant for registration or against the registered owner of the trademark except after having afforded the applicant or the registered owner an opportunity to be heard, if they so requested within the prescribed time.

Hearing of the Applicant

67.

Subject to any Regulations made under this Ordinance, evidence in proceedings before the Registrar shall be by affidavit pursuant to Section 15 of the Evidence Ordinance [New Version], 5731-1971, or by a declaration made abroad in accordance with the laws of the place where it was made — unless the Registrar directs otherwise; however, the Registrar may, if he sees fit, receive oral testimony in lieu of or in addition to written evidence as aforesaid, and may also permit the deponent to be cross-examined.

Evidence Before the Registrar

68.

The Registrar shall have the powers of a judge of a Magistrate's Court to compel the attendance of a witness before him and to hear his testimony.

[Regarding Witnesses]

Powers of the Registrar

69.

In any proceeding before the Registrar, he may award to a party costs as appear to him to be reasonable.

3 Laws of the State of Israel, New Version 18, p. 421.

522 Book of Laws 26 19 Sivan 5732 / 01.06.1972

Chapter XII: Fees and Regulations

Notice to Customs Authority

69a.

[Translation pending]

Costs

70.

In respect of applications, registrations and other matters under this Ordinance, fees shall be paid as prescribed by Regulations.

Regulations by the Minister

71.

The Minister of Justice may make Regulations prescribing rules of procedure for Appeals, oppositions, applications and references to the Supreme Court under this Ordinance.

Amendment of Schedule

71a.

[Translation pending]

72.

Subject to the provisions of this Ordinance, the Registrar may, with the approval of the Minister of Justice, make Regulations, prescribe forms and do anything that appears to him useful for the following purposes:

(1)Regulating the procedure under this Ordinance;

(2)Prescribing the fees to be paid under this Ordinance;

(3)Classifying goods for the purpose of registration of trademarks;

(4)Making or requiring copies of trademarks and other certificates;

(5)Ensuring and regulating the publication, sale and distribution of copies of trademarks and other certificates in such manner as the Registrar shall think fit;

(6)Regulating any other detail of the office work in trademark matters and any matter subject to the supervision of the Registrar under this Ordinance.

Yaakov S. Shapira

Minister of Justice.

523 Book of Laws 26 19 Sivan 5732 / 01.06.1972

Comparison Table

The Deleted

Section

The Previous

Section

The New

Section

[D.-;-:]

Omitted

21(1)

21(2)

21(3)

21(3) condition

25(1)-(4)

25(5)

25(6)

28(1)

28(2)

28(3)

38(1)

38(2)

40a

40b

40c

41a

The Name

Omitted

3 opening clause

3 closing clause

7(1)-(2)

7(3)

7(4)-(6)

11(1)

11(2)

11(3)

11(4)

11a

14(1)-(4)

14(5)-(9)

15(1) opening clause

15(1) closing clause

15(2)

19a

19b

19c

19d

524 Book of Laws 26 19 Sivan 5732 / 01.06

Need to cite this law in a foreign court?

Eli Shimony Israeli Attorneys-at-Law provides certified Expert Legal Opinions on Israeli law within 24–48 hours, accepted by courts worldwide.

← Prev 1 2→

Page 2 of 2