Congratulations! You started a new business! You picked out a killer name, printed shiny new business cards, launched a sleek social media page, and even registered a limited liability company.
Why should you also register a trademark?
A trademark is the most effective way for consumers to distinguish one business or product from another. As your business will succeed and build a reputation, the public will begin identifying your products or services with that trademark – your brand. When your trademark has value, it will usually be imitated by others. This will lead to the competition stealing your customers who intend to buy from you and damaging your good reputation by providing inferior products or services “in your name”.
Worse yet, if a competing business registers your business name as its own trademark before you do – the results could be disastrous for your business. For instance, domain name providers and social networks usually have policies to shut down pages that infringe upon registered trademarks.
Such was the case with Daniel, who for many years maintained a successful Facebook business page that had a large audience and generated most of his clients and business revenue. A competing business registered his business name as a trademark and compelled Facebook to shut down Daniel’s page without prior notice, for supposedly infringing the registered trademark rights. If not enough, Daniel also received a letter from his competitor’s lawyers threatening to sue him if he did not cease and desist using the registered trademark.
As a result of his Facebook page’s shut-down, Daniel unexpectedly lost his main source of new clients. If that wasn’t enough, Daniel had to spend money to re-brand his businesses in order to avoid a lawsuit of copyright infringement from his competitors. This devastated his business financially and brought turmoil to his marriage.
Because Daniel didn’t register his business name as a trademark, the only way for him to fight back would be to litigate the matter in court (and risk losing) – a lengthy and costly process that would further complicate his financial situation.
In the end, Daniel opted to change his business name. He needed to open a new Facebook page to represent his new business name from scratch, and re-build its audience via time-consuming and expensive marketing activity. He also had to change all of the markings of his business name (on his business card, website, email signatures, office sign, paid advertisements, etc.).
It took Daniel almost 18 months to get his business back to where it was before his business name and Facebook business page was hijacked. At a relatively small cost, Daniel could have secured legal protection for his business name or logo, and avoided the entire ordeal.
Registering a trademark is one way to easily protect your business name or logo, prevent fakes and imitations, and prevent “theft of reputation”.
The registration of the trade mark confers on its owner the exclusive right to use the mark for the goods and / or services for which it is registered, allows its owner to build a reputation and differentiate itself from its competitors. In addition, registering the mark also serves consumers and prevents deception.
The trademark itself is considered an intellectual property asset, and could potentially be sold for profit. For instance, Apple Inc’s famous trademark (the bitten apple) was valued in 2016 at more than 150 Billion USD!
What are the steps for registering a trademark?
Before drafting your trademark registration application, our intellectual law attorneys will determine if your mark is eligible for registration. We will check the Trademark Registrar to ensure that there are no similar trademarks that could interfere with your registration approval.
Our Israeli IP lawyers will also analyze your current and planned business activities. We will identify the types of goods or services that need protection (each type is considered a “classification”, and the Israeli PTO charges a trademark registration fee for every class you request to protect).
Based on our analysis of the above, we will draft your Israeli trademark registration request based on our many years of experience in Israeli intellectual property law.
After the application is submitted, the Israeli Ministry of Justice will examine the originality of the trademark. The examination is carried out in order to ensure a difference and differentiation between one trademark and another, so that the public will not mistakenly confuse them.
The examination tpically typically between several months and a year, during which time the examiner raises questions or requests. There will be a back-and-forth interaction between the examiner and the intellectual property lawyer.
An experienced attorney, well versed in Israeli intellectual property law, will know how to draft the trademark application in such a way that would most likely avoid objections and reservations by the examiner or a third party. If necessary, a compromise can be negotiated to successfully register the trademark.
During the period in which the trademark is reviewed, the mark may be used as long as its use does not infringe any other trademark.
Is it possible to register the same mark for different goods and services?
Yes. If you wish to protect the same mark with respect to different goods or services, which belong to two separate categories in the classes of goods and services, you would pay registration fees accordingly.
How long will it be before my trademark expires? How long will I be protected?
There is no limit placed by Israeli law on the lifespan of a trade mark, and the trademark remains in effect, provided the required renewal fee is paid once every ten years.
Can a trademark be used before it is registered?
Yes, one is entitled to use their mark even without registration. Nonetheless, registration is required in order to benefit from the the rights granted by the Trademark Ordinance in Israel to the owner of a registered mark.
Will I be protected all over the world when applying for a trademark in Israel?
No, the mark must be protected separately in each country. On September 1, 2010, Israel joined the Madrid Protocol for the Registration of International Marks, and from that date, one international application (based on an application or registration of a mark in Israel) can be filed through the Israeli Ministry, requesting that it be registered in all 114 member states.