Règlement de 1940 relatif aux marques de commerce (version consolidée 1998), Israël

Fees

 

Fees

3.—(a) The fees to be paid in accordance with the Ordinance shall be those fees set out in the First Schedule to these Regulations.

(b) The fees under these Regulations shall be paid at the Postal Bank in the manner set down by the Registrar; a copy of the receipt from the Postal Bank, together with a notice of the destination of the fee and the matter to which it relates shall be provided to the Registrar.

Linkage to Index [Amendment 5757 (No. 2)]

3A.—(a) The sums in the First Schedule will be altered on 1 January and 1 July in every year (hereinafter: the “date of alteration”) in accordance with the rate at which the new index has risen in comparison with the base index; for the purposes of this clause—

“index”—the consumer price index published by the Central Bureau of Statistics;

“the new index”—the index published in the month preceding the month before the date of alteration;

“the base index”—the index published in the month preceding the month before the previous date of alteration.

(b) The sum altered in accordance with the provisions of sub-clause (a) shall be rounded—

(i)  if greater than 10 NIS, to the nearest 1 NIS, sums of 0.5 NIS shall be rounded up;

(ii) if less than 10 NIS, to the nearest 10 Agorot.

(c) The Registrar of Patents, Designs and Trade Marks shall publish the First Schedule, as may be amended following the provisions of this clause, in Reshumot.

Forms

Forms

4. The forms referred to in these Regulations shall be those set out in the Second Schedule to these Regulations, and such forms shall serve in all cases in which they apply, and may be amended by the Registrar so as to be adapted to other cases.

 

Classification of Goods and Re-Classification of Goods Already Registered

Classification of Goods

5.—(1) (a) For the purposes of the registration of trade marks effected prior to the date on which these Regulations came into effect, goods are classified in the manner set out in the Third Schedule to these Regulations, unless some specification has been converted and made compatible with the Fourth Schedule to these Regulations in accordance with paragraph (2) of this clause.

(b) For the purposes of the registration of trade marks effected after the date on which these Regulations came into effect and for the purposes of all such registrations effected prior to that date but in respect of which specifications have been converted in accordance with paragraph (2) of this clause, goods are classified in the manner set out in the Fourth Schedule to these Regulations.

Application by Registered Owner to Convert Item Proposed by Registrar

(2) Where the specifications of a registered trade mark are based upon the Third Schedule to these Regulations, the registered owner may apply to the Registrar using the prescribed form and request to convert the specification in such a manner so as to be able to base such specification on the Fourth Schedule to these Regulations whether by avoiding some good from the specifications or not, but so that the original date of registration will remain as such. The Registrar will thereafter provide the registered owner with an proposal in writing, in accordance with sec. 28(3) of the Ordinance, setting out the manner in which, in the Registrar’s opinion, the Register must be amended. Two or more registrations of a trade mark in respect of a good included in the same class of the Fourth Schedule to these Regulations having the same date of registration may be merged after conversion in accordance with this paragraph.

Publication of Proposal and Objection

(3) Proposals for amendment made in accordance with see. 28(3) shall be published in Reshumot and notices of objection shall be given in the prescribed form within one month of the date of publication, together with a copy of the notice and a notice in two copies showing the manner in which the proposed conversion contravenes sec. 28(3). The Registrar shall send the duplicate copies to the registered owner immediately who may, within one month after receiving such duplicate copies, send the Registrar a contrary notice detailing the reasons for disagreeing with the objection, and should he do so, he shall also deliver a copy of such notice to the party that raised the objection. The Registrar may then demand or take evidence relating to the questions remaining in dispute, and prior to making a decision in the matter, may give the parties the possibility to make their claims in the matter, should one or other of them so desire.

Conversion of Specifications: Resulting Registration

(4) Where a proposal to convert a specification is published in accordance with paragraph (2) of this clause, and no objection has been filed, unless a decision has been made in respect of an objection and permission has been granted to covert the specification, the Registrar shall register all particulars in the register as are required to give effect to the conversion in accordance with the proposal as published, or in accordance with an amended proposal, if amended after the filing of an appeal in which those particulars were registered. For the purposes of making a decision in the matter of the future renewal of any particulars stemming from that, in accordance with sec. 21 of the Ordinance, the expression “end of time of the last registration” shall refer to the date to which it would have referred in respect of the registration prior to the conversion.

Documents

Documents, Size, etc.

6. Subject to any other orders made by the Registrar, all applications, notices, notifications and other documents which are to be delivered or sent to the Registrar under the Ordinance or under these Regulations shall be written on strong white paper, of approximately 13 inches in size, with a margin of no less than one and a half inches on the left hand side.

Delivery by mail

7.—(1) Any application, notification, notice or any document required or permitted to be delivered, addressed or given to the office or to the Registrar or to any other person may be sent by mail and any document so sent shall be considered as having been delivered on the date that the letter enclosing such would have been delivered in any event by means of ordinary mail.

When an Address is Considered as Sufficient

(2) Any letter addressed to the address of the registered owner of a trade mark or to his address for the delivery of documents, as noted in the register, or a letter addressed to any person requesting the registration of a trade mark, or to any person objecting to such registration, in accordance with the address appearing on the application or on the letter of objection, or in accordance with the address provided for the purpose of delivery as set out in clause 9, shall be considered to be a letter containing a sufficient address.

Address to Be Complete

8. Where a person must provide the Registrar with an address under the Ordinance or under these Regulations, the address provided must always be as complete as possible.

Address for the Delivery of Documents [Amendments: 5713, 5725]

9.—(a) Any person seeking to register a trade mark, or a permit under sec. 19A of the Ordinance, or any person objecting to either such registration, and any person seeking to transfer a trade mark into his ownership shall notify the Registrar of an address in Israel for the delivery of documents and such address shall be considered as that person’s address for the purposes of the Ordinance and these Regulations provided that such person does not give notice of any other address in Israel for the said purpose.

(b) For as long as an agency permit under clause 10 is in force, the agent’s address will be considered as that person’s address for the purposes of the Ordinance and neither these Regulations nor sub-clause (a) shall apply, unless that person or the agent are notified otherwise.

Agents

10.—(a) A person may give permission to an agent to perform any activity that that person may perform under the Ordinance or under these Regulations.

(b) No more than one agent may be permitted to act on any one matter, unless a number of agents who are partners or who are employed together in the same office are permitted to act together; however, the provisions of this clause shall not prevent more than one agent from appearing and making claims for any one client if so permitted.

(c) Where a number of agents are permitted under sub-clause (b), and those agents later cease working together, the agent whose address was given as the address of such agents shall be considered as the agent, should the granter of the permission to act or the agents themselves not provide notice to any other effect in this regard.

(d) The validity of the permission granted to an agent to act shall not expire so long as the permission to act has not been cancelled by express order in this regard connected to any matter in respect of which the permission to act was granted, however, the Registrar is entitled not to recognize a power of attorney ten years after one is issued, if he sees fit to do so.

Application for Registration

Application Form

11. An application to register a trade mark shall be made in the prescribed form as set out in the Second Schedule to these Regulations and must be executed by the application or his agent.

Application by a Partnership

12.—(1) Where an application for registration of a trade mark is filed by a partnership, it may be executed on behalf of the partnership by one or more of the partners in the partnership.

Application by a Company

(2) Where an application is filed by an incorporated body, it may be executed by a director, secretary or other senior officer of such incorporated body.

Execution by Agent

(3) Any application may be executed by an agent.

Application to Be Sent to the Office

13. All applications for registration of trade marks must be sent to the Registrar and must be addressed to the address of the Registrar.

 

Confirmation of Receipt of Application

14. The Registrar shall send the application a confirmation of receipt of the application upon or following its receipt.

Application to Include Drawing of the Mark

15.—(1) Any application for the registration of a trade mark must include a drawing of the trade mark, affixed to the application in the place set aside for such in the prescribed application form. Where the mark is a three-dimensional mark, a drawing or picture of the mark shall be affixed to the application in such a way as to make it possible to see what the mark looks like, such drawing or picture to be affixed as aforesaid.

Where Drawing is Larger than the Space Set Aside for It

(2) Where the drawing is larger than the above space, it shall be affixed to a sheet of linen or such other material that the Registrar shall consider appropriate. Part of the drawing shall be affixed to the space set out above, while the rest of it may be folded.

Additional Drawings [Amendments: 5723, 5725]

16. Six additional drawings of a trade mark, on thick paper of the same size as the application form conforming exactly with the drawing affixed to the application form, are to be sent together with every application for registration of a trade mark.

Drawings of Marks to Be to Scale

17. All drawings of marks are to be to scale.

Applications to be made in particular classes [Amendment: 5725]

18. A separate application for registration of a trade mark shall be made in respect of every class in which registration is sought, and if one application for registration is made that includes goods classified in various classes, the Registrar will view the application as if it were an application for the registration of the mark in the class that in the Registrar’s opinion most of the goods intended to be covered by the registration of the mark fall into.

Drawings to Be Satisfactory

19. Where any drawing of a mark does not satisfy the Registrar, he may require that another drawing be made to his satisfaction in its place prior to dealing with the application.

Examples of Trade Marks in Exceptional Cases

20.—(1) Where it is impossible to provide a sketch or other drawing or example as set out above, an example or copy of the trade mark may be sent, whether in its ordinary size or reduced, in such a form as the Registrar may find convenient.

(2) Similarly, the Registrar may, in exceptional cases, place an example or copy of a trade mark which could not be comfortably viewed in a standard manner, and may make a notation of such in the Register in such manner as he sees fit.

Translation of Words that Are Not in One of the Official Languages

21. Where a trade mark contains a word or words that are not written in Hebrew or in Arabic, the Registrar may require an exact translation of that word or of those words, and should the Registrar so require, the translation shall be signed and confirmed by the applicant or his agent.

Registration of Marks Registered Overseas [Amendment: 5725]

21A.—(a) An applicant for the registration of a trade mark registered as a trade mark in its country of origin in accordance with the provisions of sec. 11A of the Ordinance shall notify of such in the application form, and shall make a copy of the certificate of registration of the trade mark in its country of origin available to the Registrar, approved by the appropriate authority in such country, together with a certified translation of it into an official language if written in any other language.

(b) An application of this type may be filed at any time prior to the receipt of the trade mark.

Application to Register a Mark Based on Priority [Amendment: 5725]

21B. A person seeking to register a trade mark by virtue of priority under the provisions of sec. 41 or 41A of the Ordinance shall give notice of such in the application form and shall make available to the Registrar, no more than three months after filing the application, a copy of the first application filed in the foreign or Union country, approved by the appropriate authority in such country together with a certified translation of it into an official language if written in any other language.

Procedures Upon Receipt of Application

Searches
[Amendments: 5743 (No. 2), 5748]

22.—(a) Upon receipt of the application for registration, the Registrar shall order a search of trade marks and applications pending in order to discover whether marks for the same goods or the same description of goods identified with the mark sought to be registered, or similar enough to it to be misleading, are registered in the Register.

(b) The search referred to in sub-clause (a) shall be performed in respect of all applications for registration in accordance with the order of filing of applications with the office.

(c) An applicant who provides a reasonable explanation for such may file a reasoned application for the search of a site and may attach to such a copy of the receipt for payment of the set fee.

Acceptance

23. When the search is undertaken, if the Registrar is of the opinion, based on hearing the application and all of the evidence that the application adduces or seeks to adduce, that there is no objection to the registration of the mark, the Registrar may accept the application,

whether unconditionally or subject to such conditions, amendments, variations or limitations as he sees fit to impose and as shall be notified to the applicant in writing.

Legal Procedures in Applications Where Reasons for
Non-Acceptance Come to Light
[Amendments: 5712, 5725]

24.—(a) Where, after the search pursuant to clause 22 and perusal of the application and all evidence adduced or sought to be adduced by the applicant, reasons come to light for the disqualification of the mark from being registered, a notice in writing of such reasons shall be sent to the applicant.

(b) Where the applicant does not, within three months from the date of the notice referred to in sub-clause (a), ask to make claims before the Registrar or does not file a detailed response in writing within such time, the Registrar shall send a notice of non-completion of registration under sec. 16 of the Ordinance, in the form prescribed in the Second Schedule.

(c) Where the applicant has not fulfilled a demand within three months from the date on which a notice under sub-clause (b) was sent to him, the application shall be considered to have been cancelled unless the Registrar extends the period of provision of a response prior to the end of the three month period or unless the applicant provided reasonable justification for the non-cancellation of the application.

Conditional Acceptance [Amendments: 5712, 5725]

25.—(a) Where the Registrar is prepared to accept an application subject to conditions, amendments, variations or limitations, and the applicant objects to such, the applicant may, within three months of the date of the notice of such acceptance, request an opportunity to make claims before the Registrar or to file his reasoned objections within such period.

(b) Where the applicant does not object as set out in sub-clause (a), he shall notify the Registrar of such in writing.

(c) Where the applicant does not act in one of the ways set out in sub-clauses (a) or (b), the Registrar shall send a notice of non-completion of registration under sec. 16 of the Ordinance, in the form prescribed in the Second Schedule.

(d) Where the applicant does not act in one of the ways set out in sub-clauses (a) or (b) within three months from the date of dispatch of the notice prior to the end of the three month period set out in sub-clause (c), the application shall be considered to have been cancelled, unless the Registrar extends the date for such acts or unless the applicant provided reasonable justification for the non-cancellation of the application.

 

Registrar’s Decision [Amendments: 1940, 5712 (No. 2)]

26.—(1) The Registrar’s decision after the said clarification, or in the absence of such clarifications where a reasoned written response or reasoned objections are filed and the applicant does not seek to make claims, shall be made available to the applicant in writing, and should the applicant object to such decision, he may, within one month of the date of decision, request that the Registrar detail the reasons for his decision in writing and provide details of the material that he used in coming to his decision.

(2) Where the Registrar presents demands that the applicant does not object to, the applicant must fulfil them before the Registrar gives the said written notice. For the purposes of appeals, the date of dispatch of such a notice to the applicant shall be considered the date of the Registrar’s decision.

Waiver [Amendment: 5725]

27. The Registrar may require the applicant to insert a notice of waiver into the application, to the extent that the Registrar may see fit to so require.

Such a requirement shall be treated as a condition under clause 25.

Special Trade Marks Under Section 10 of the Ordinance

Attachments to Application for Registration of Collective Mark [Amendment: 5725]

28. A copy of the articles of association and any other material indicating the supervision of one member over the other members in a collective mark shall be attached to an application for registration of a collective mark.

[Amendment 5727]

29. (Repealed).

Attachment of Notice of Reasons [Amendment: 5725]

30. An applicant must attach the reasons upon which the application is based to every application for registration of a trade mark, together with the rules on the basis of which permission to use the trade mark will be granted.

Clarification

31. When the Registrar receives an application he may require further evidence, to the extent that he sees fit, and should he see the need for such, he shall hear the applicant’s claims, and shall decide whether the filing of the application is permitted, and with what terms, conditions, amendments or limitations.

Publication etc.

32. If the filing of the application is permitted, it shall be published and treated to all intents and purposes as an ordinary application and shall be open to objection in the same manner and all proceedings may be taken in respect of it as if it were an application made under sec. 11 of the Ordinance.

Publication of the Application

33.—(1) When an application is received, the Registrar shall publish notice of it in Reshumot, for the period of time and in the manner that he orders; the notice shall be published at the applicant’s expense.

(2) If a drawing of the trade mark is not attached to the notice of an application, the Registrar shall set out in the notice the place or places where an example or drawing of the trade mark have been placed, so that any person so desiring may go and see it.

Wooden Mold or Electrotype of the Mark to be Made

34.—(1) For the purposes of publication, the applicant may be required to make, at his expense, a wooden mold or electrotype of the trade mark, or several molds or electrotypes of it, should such be necessary, which shall be of the size and character as the Registrar may order from time to time, or to create such other details or publication means for the trade mark as the Registrar may require.

(2) Where the Registrar is not pleased with the wooden mold or the electrotype provided by the applicant or his agent, the Registrar may require a new wooden mold or electrotype before publishing the notice.

Objections to Registration

Objection

35. Within three months from the date of publication of an application for registration of a trade mark in Reshumot, any person may present the office with a written notice of objection to the registration.

Notice of Objection
[Amendment 5725]

 

36. The above notice must be set out in the form prescribed in the Second Schedule to these Regulations, and must include the reasons upon which the objection to the registration is based. If the objection is because the mark is similar to marks already registered in the Register, the objector must note the numbers of such marks and the folios of Reshumot in which they were published. Two copies of the objection must be attached to the notice and sent by the objector to the applicant.

Notice in Opposition
[Amendment: 5725]

37. Where the applicant wishes to oppose the objection, he must deliver a written notice in opposition to the office, within two months after receipt of the copy above, in the prescribed form, detailing the reasons for which he opposes the objection, and at the same time, he must deliver two copies of the notice in opposition to the objector. The applicant must also detail the facts set out in the notice of objection to which he admits.

Evidence in Support of Objection [Amendment 5725]

38. The objector must deliver to the office all evidence that he desires to adduce, within two months after the date of delivery of the copy of the notice in opposition, in the form of declarations under oath, in support of his objection, and he must deliver copies of such evidence to the applicant.

Evidence in support of application [Amendment 5725]

39. Where the objector does not deliver any evidence, he is considered to have waived his objection, unless the Registrar orders otherwise, and where he does deliver evidence, the applicant must, within two months of the date of delivery of the copies of the declarations, deliver to the office all evidence that he desires to adduce, in the form of declarations under oath, and he must deliver copies of such evidence to the objector.

Evidence in Response by Objector [Amendments: 5712 (No. 2), 5725]

40. In response to such, the objector may, within two months of the delivery of copies of the applicant’s declarations, deliver to the office evidence by way of declaration under oath, and he must deliver a copy of such to the applicant. This evidence shall be reduced only to matters that comprise a response.

[Amendment 5725]

40A. (Repealed).

Further Evidence

41. No party may adduce further evidence, however, in any case before the Registrar, the Registrar may, at any time, should he see fit, grant the applicant or the objector permission to adduce any evidence upon whatever conditions he sees fit, whether as to costs or any other matter.

Exhibits

42. Where exhibits are attached to the declarations filed in the objection, copies or printouts of such exhibits must be delivered to the other party, and when it is impossible to make such copies or printouts easily, the original exhibits sent to the office must be made available for viewing. During the clarification stage, the original exhibits must be displayed unless the Registrar orders otherwise.

Translation of Certificates into Foreign Languages

43. Where mention is made in a notice or declaration filed in respect of an objection of a document not written in Hebrew or Arabic, a certified copy of such document must be presented in two copies.

Clarification

44. After the evidence has been heard, the Registrar must fix a time for clarification of the claim and he must provide the parties, at least ten days in advance, with a notice of the time set down above. The two parties must notify the Registrar of whether they wish to make claims before him. The Registrar may refuse to hear the claims of a party that did not notify him of such prior to the date of clarification.

Registrar’s Decision

45. After hearing the claims of one or all parties desiring to make claims, the Registrar shall hand down his decision in the suit and shall advise the parties of his decision, and if neither party wishes to make claims, the Registrar shall hand down his decision without hearing claims.

Costs of Hearing Where Applicant Does Not Oppose Objection

46. Where the applicant does not oppose the objection, when the Registrar comes to decide whether to award costs of the hearing in favor of the objector, he must look into the question of whether the matter could have been prevented had the objector provided the applicant with a sufficient notice prior to filing the objection.

Non-Completion of Registration

Non Provision of Response [Amendment 5725]

47. Where a person does not respond to a requirement of the Registrar not dealt with under clauses 24, 25 or 27, within the time period determined for the said requirement, and in the absence of any such determination within one month of the date of the requirement, the Registrar shall give notice to the applicant of non-completion of registration under sec. 16 of the Ordinance, in the form prescribed in the Second Schedule. Where the applicant does not respond within three months of the date of such notice, the application will be considered to have been abandoned, unless the Registrar grants an extension for the provision of a response for such reasons as he may set down in writing, prior to the end of the three month period.

 

Notation on the Register

Notation on the Register

48.—(1) Three months after the date of publication of any application in Reshumot, the Registrar shall, as soon as possible, note the trade mark on the Register, subject to any objection and decision regarding any objection, and after the payment of the set fee.

(2) The Register shall note the date of registration, the goods in respect of which the trade mark is registered and any details mentioned in sec. 3 of the Ordinance, together with details of the trade, business, profession, or occupation of the owner of the trade mark, and any details that the Registrar considers necessary.

Procedure Where Applicant Dies Prior to Registration of Mark

49. Where the applicant for registration of a trade mark dies after the date of application and prior to the date of registration in the requested Trade Marks Register, the Registrar may, after the fixed publication time has passed, and if he becomes aware that the applicant has died, note the name, address and description of the person to whom the business belongs in lieu of that of the deceased applicant, after that person’s ownership of the business has been proven to the Registrar’s satisfaction.

Certificate of Registration

50. After a trade mark is registered, the Registrar shall provide the applicant with a certificate in the prescribed form.

Renewal of Registration

Renewal of Registration [Amendments: 5746, 5748]

51.—(1) At any time, and no later than three months before the end of the last time for registration of a trade mark, the owner of the mark or a person acting on his behalf may file an application to renew the registration of the mark, in the prescribed form.

Fees

(2) A copy of the receipt for payment of the set renewal fee must be attached to the application.

Execution of Application

(3) The applicant must sign his name and note his address on the application, and if an application is filed by a person who is not the registered owner, the Registrar shall be entitled to request that that person provide him within one month with confirmation of payment of the fee, signed by the registered owner, and if no such confirmation is sent, the Registrar may return the fee and treat it as unreceived.

Notice of Receipt of Renewal Fee

(4) Where the Registrar does not demand confirmation as above, he shall advise the registered owner, according to his registered address, of receipt of the fee, that the fee has been received and that the registration will be renewed on the appropriate date.

Notice Prior to Removal of Trade Mark from Register [Amendments: 5725, 5746, 5748]

52.—(1) Where no application for renewal is filed, the Registrar shall send a notice in the prescribed form to the owner of the trade mark at its registered address; such notice as aforesaid shall be sent no later than one month and no earlier than two months prior to the end of the last date for registration of the trade mark.

Notice of Non-Payment

(2) If at the end of the last date for registration of the trade mark the renewal fee has not been paid, the Registrar shall immediately publish this fact in Reshumot and if, within six months of the date of publication of such notice, an application for renewal is received together with payment of the renewal fee and the set fee for delay, the Registrar may renew the registration without removing the trade mark from the Register.

Removal of Trade Mark from the Register [Amendments: 5725, 5746]

53.—(1) Where six months have passed following the date of publication of the notice, and the set fees have not been paid, the Registrar may remove the mark from the Register as of the last date for registration, however, where the renewal fee and the renewed validity fee are paid later, the Registrar may re-enter the mark in the Register should he be of the opinion that it would be right to do so, under such conditions as he may see fit to impose.

(2) Where a trade mark is removed from the Register, the Registrar must ensure that a notification of the removal and the reasons for the removal is entered in the Register.

Notice and Publication of Renewal

54. A notice of the renewal of registration shall be sent to the registered owner and the renewal shall be published in Reshumot.

Transfer

Application to Register Transfer etc. (Amendment: 5725]

55. Where a person becomes entitled to a registered trade mark by virtue of a transfer or any other legal act, such person must file an application with the Registrar in the prescribed form to register such rights.

Details to Be Provided in the Application

56. The said application must contain the name, address and description of the person claim the right in the mark, together with complete details of the document under which the claim is made, where such a document exists, and such document is to be made available to the Registrar for perusal.

Copies of documents

57. The Registrar may demand, in any event, a certified copy of any document filed with him for his perusal which is filed to prove rights in a mark.

Claim Attached to Application [Amendment: 5725]

58.—(1) Where the applicant does not claim a right on the basis of any document or other piece of writing on his part containing proof of his rights, unless the Registrar rules otherwise, such person must file, whether together with the application or after filing the application, a special notice of his rights, and in such notice, the applicant must provide full details of the facts on which his claim for ownership of the trade mark is based.

(2) Where the Registrar so demands, a declaration under oath shall be attached to the prescribed form.

Proof of Rights [Amendment: 5725]

59. In any event, the Registrar may demand any person seeking to register as owner of a trade mark to provide proof or additional proof of rights of ownership.

Notation on the Register

60. Where the applicant’s right becomes apparent to the Registrar, the Registrar shall register the applicant as owner of the trade mark, and shall note on the Register such details as he shall see fit having regard to the document on the basis of which the right is acquired, where such a document exists.

Applications Under Section 19(2) of the Ordinance

Applications Under Sec. 19(2) of the Ordinance [Amendment: 5725]

61.—(1) Any application made to the Registrar under sec. 19(2) of the Ordinance shall be drafted in the prescribed form and shall have a copy of the receipt of payment of the set fee attached to it.

(2) A notice setting out the facts in respect of the trade marks, the division of which the Registrar is asked to permit, shall be attached to such application.

 

Registrar to Investigate and Decide

62.—(1) Upon receipt of such application and notice the Registrar shall investigate the facts and may request the adduction of such evidence that he may view as necessary in respect of such application.

(2) Prior to deciding on the matter, the Registrar shall provide the parties or their representatives, where there is a need for such, with the possibility of making their claims.

(3) The Registrar’s decision shall be given in writing.

Notation on the Register

63. After dividing the marks in accordance with sec. 19(2) of the Ordinance, the Registrar shall make a notation on the Register next to each of the registered trade marks connected with such division, and shall mention, in such notation, the date of decision on the basis of which the division was effected.

Applications to Register Permits in a Mark

Application to Register Permit [Amendments: 5725, 5745]

63A.—(a) An application to register a permit under sec. 19A of the Ordinance shall be filed in the form prescribed in the Second Annex, and shall be filed by the owner of the mark and the applicant for registration as owner of the mark, together with the documents required in order to show the matters set out in sec. 19(b)(1) and together with a copy of the receipt for payment of the fee set out in the First Annex.

(b) A separate application shall be filed for each mark in respect of which applications are being made to grant permits and separately for each class in which such marks are registered.

Examination of Application to Register Permit [Amendment: 5725]

63B.—(1) The Registrar shall examine the application referred to in Clause 63A and the documents attached thereto and shall advise the applicant whether, in the Registrar’s opinion, the permit is suitable for registration.

(b) For the purposes of the examination referred to in sub-Clause (a), the Registrar may require any material that he needs, in his opinion, for the examination, and the parties shall provide the Registrar with such material within three months of the date of demand for such.

Right to Voice Claims
[Amendment: 5725]

 

63C. Where the permit is, in the Registrar’s opinion, unsuitable for registration, the Registrar shall give the parties the opportunity to make claims to him.

Publication of Acceptance of Application [Amendment: 5725]

63D. Where the Registrar accepts a permit for registration, the Registrar shall publish the acceptance in Reshumot at the expense of the party in receipt of the permit.

Particulars to Be Registered [Amendment: 5725]

63E. In noting the fact of the grant of a permit on the Register, the date of the registration and the date of the grant of the permit shall be noted thereon. The address of the owner of the rights and the goods in respect of which the permit was granted.

Application to Amend Registration [Amendment: 5725]

63F. An application to amend or to cancel the registration of a permit shall be filed in the form prescribed in the Second Annex with the reasons for the application being attached thereto, in duplicate, together with two further copies for the owner of the mark or the holder of the permit, as the case may be. An application filed by a third party shall be filed together with four copies for the owner of the mark or the holder of the permit; where the application is filed by the owner of the mark and the holder of the permit as one, or by one of them with a letter of consent attached and signed by the other of them, further copies need not be attached.

Procedures in Applications to Amend or Remove [Amendment: 5725]

63G. The provisions of these regulations relating to objection procedures shall apply, mutatis mutandis, to hearings held in respect of the amendment or cancellation of registration.

Change of Address

Change of Name or Address in the Register [Amendments: 1940, 5725]

64. Any registered owner or holder of a permit in respect of a trade mark who changes his name, address or address for the service of notices, must immediately apply to the Registrar, using the prescribed form, to note the new address for the service of notices on the Register, and after payment of the set fee, the Registrar shall amend the Register accordingly.

Applications Under Section 27 of the Ordinance

Applications Under Sec. 27 of the Ordinance

65. Applications made to the Registrar under sec. 27 of the Ordinance may be filed by the registered owner, or if he be bankrupt, by his trustee, or if the registered owner is a company in liquidation, by the liquidator, and in other cases, by such person whom the Registrar may decide is to be the person permitted to act on behalf of the registered owner.

 

Evidence

66. Where such an application is filed, the Registrar may require whatever evidence he sees fit, be it by declaration on oath or in any other manner, in respect of the circumstances in which the application is filed.

Publication of Application

67. Where an application for registration of a waiver or memorandum relating to a trade mark is filed, prior to a decision being made in the matter, the Registrar shall publish the application in Reshumot for one month in order to enable any person so desiring to file written reasons as to why he demands that the applicant not be allowed to register such waiver or memorandum.

Applications Under Section 24 of the Ordinance

[Amendments: 5725, 5748]

68. An application to amend a trade mark may be filed in the prescribed form together with a copy of the receipt of payment of the set fee and six copies of the mark as it is to appear after the amendment.

Publication of amendment

69. Once permission is given, the Registrar shall ensure that the application files a mold showing the trade mark in its amended form for the purpose of publication in Reshumot, and immediately upon receipt of the mold, the Registrar shall publish the mark, as amended, in Reshumot.

Applications Under Sections 22 and 25 of the Ordinance

Applications to Amend or to Remove a Trade Mark from the Register [Amendment: 5725]

70.—(1) An application to amend the Register or to remove a trade mark from the Register, if filed with the Registrar, must be in the prescribed form, as set out in the Second Annex to these Regulations.

(2) Two copies as well as the notice in triplicate setting out in detail the substance of the benefit to the applicant, the facts on which the applicant bases his claims and the amendment requested should be attached to such an application.

(3) Copies of the application and the notice shall be sent immediately by the Registrar to the registered owner.

Further procedure

71. Upon filing such an application, and upon sending a copy of it to the registered owner, the provisions of clauses 37 through 46 shall apply, mutatis mutandis, to the claim and the further procedures relating to the claim shall be arranged in accordance with such provisions, mutatis mutandis, as if repeated. In the event of any doubt, any party may request instructions from the Registrar.

Removal in the Absence of Response [Amendment: 5725]

71A.—(a) Where the owner of a mark does not respond to an application under clause 70 within three months of the date of receipt of the application at the Registry, the Registrar shall notify the applicant of such and the applicant shall file its evidence in the matter within two months of the date of such notice.

(b) Where the applicant has filed its evidence, the Registrar shall set a time for hearing the applicant’s claims and the Registrar shall not remove the mark unless he is convinced that it is just to do so.

Intervention of Third Party

72. Any person other than the registered owner, claiming a benefit in a registered trade mark in respect of which an application was made under clause 67, may apply to the Registrar, using the prescribed form, to permit it to intervene in the matter, and the Registrar may refuse or accede to the granting of permission for such, after hearing the parties in respect of the matter, on such terms as the Registrar may see fit. Prior to dealing with such application in whatever manner, the Registrar may demand that the applicant give an undertaking to pay the Registrar’s expenses incurred in deciding to the benefit of one of the parties under the circumstances.

Jurisdiction to Hand Down Ruling

Hearing of Claims

73. Prior to the Registrar’s exercise of his jurisdiction to rule on such matters vested in him by virtue of the Ordinance or these Regulations, to any person’s disadvantage, the Registrar must, if so required, hear the claims of any person harmed by the exercise of such jurisdiction.

Application to Make Claims

74. Any application to make claims must be filed within one month of the date on which the matter arose in respect of which the Registrar is required to exercise his jurisdiction to rule.

Procedure in Applications to Make Claims

75.—(1) Where such an application is received, the Registrar must provide ten days’ advance notice to the Registrar setting out the time in which the applicant or the applicant’s agent may make claims.

(2) Within five days of the date on which such notice was delivered via regular mail, the applicant must notify the Registrar as to whether he wishes to make claims in the matter or not.

 

Obligation to Notify of Registrar’s Decision

76. Any person connected to the matter must be notified of the Registrar’s decision taken in exercise of his jurisdiction to rule.

Publication of Amendments in the Register

Publication of Amendments and Additions in Register [Amendments: 1947, 5726]

77. Any amendment or addition to details entered in the Register relating to a trade mark shall be published by the Registrar in Reshumot, at the expense of the applicant.

Search

Application to Search [Amendments: 5725, 5755 (No. 2)]

78.—(a) Where the Registrar is so requested in writing, in the prescribed form, and after the payment of the prescribed fee, the Registrar may order that a search be undertaken—

(1) of any kind relating to trade marks registered or the registration of which has been requested, which are similar to a mark sent by the applicant for the search;

(2) for any registered trade mark of an owner of a particular mark or whose owner sought the registration of such mark;

(3) of any other particular available for public inspection in the Registrar’s database.

(b) the Registrar may order that such person be advised of the results of the search: on condition that the Registrar shall not be in any way liable for any imprecision that may appear in the report or the notice of the results of the search undertaken pursuant to these Regulations.

Inspection Hours

Inspection Hours [Amendments: 5725, 5746]

79.—(1) The office shall be open to the public on Sunday through Thursday, where such days are not holidays or holiday eves, between the hours of 08:30 and 12:30, other than those days officially recognized as public holidays and any days that may be listed from time to time on the board to be hung in a conspicuous place at the office.

(2) Any person desiring to inspect the Register may do so at any time in which the office is open.

Authority Not to Require Evidence

Waiver of Evidence

80. Where any person is required under these Regulations to do any act or thing, or to sign on any document or to make any declaration on his own behalf or on behalf of any constituted body, or if any document or evidence is to be delivered to the Registrar or if any such is to be left with the Registrar, or with the office, and it is proven to the satisfaction of the Registrar that for whatever reasonable consideration such person cannot do such act or thing, or sign such document or make such declaration, or that such document or evidence cannot be filed with or left with the Registrar as aforesaid, the Registrar may, after the filing of such satisfactory proof, and subject to such conditions as he might see fit to impose, waive the act, thing, document, declaration or evidence.

Amendments

Amendment of Documents

81. Any document or sketch or any other drawing of a trade mark, and any procedural fault which the Registrar is of the opinion may be amended, may be amended without harming the benefit of any person if the Registrar sees fit, on such conditions and in such manner as the Registrar shall see fit.

Extension of Time

82. The Registrar may, if he sees fit, extend the time set out in these Regulations for the doing of any act or the filing of any claim under them, after giving notice of such to the rest of the parties and after any steps set out in the notice have been taken, under such terms as the Registrar may see fit to order.

Days that Are Not to Be Counted

83. Whenever the last day prescribed under the Ordinance or under these Regulations for the performance of any thing falls on a day on which the office is not open, such thing may be performed on the day or days, if any other such days fall thereafter, after the day that is not counted.

Certificates

Certificates from the Registrar

84. Where the Registrar is required to provide certification regarding any registration, matter or thing which he may do under the Ordinance or under any of these Regulations, other than under sub-sec. (2) of sec. 15 of the Ordinance, the Registrar may grant such certification upon receipt of an application for such in writing, and upon payment of the prescribed fee. However, every certification so granted must recite whether it may be used in legal proceedings or in obtaining registration overseas or for any other purpose.

 

Certificates Sought to Be Used in Order to Obtain Registration Overseas

85. Where a certificate of registration is required in order to obtain registration overseas, the Registrar shall attach a copy of the mark to such certificate, and shall set out in the certificate such details as he sees fit relating to the registration of the mark, and he may omit from such certificate any reference to any waiver noted on the Register.

Declarations Under Oath

Form etc. of Declarations Under Oath

86.—(1) Declarations under oath required under these Regulations or used in any legal proceedings under these Regulations shall set out the matters to which they relate using headings and shall be drafted in the first person and shall be divided into orderly numbered paragraphs, each paragraph to be limited to one issue only, if possible.

(2) Any declaration under oath shall recite the description and true place of residence of the person making the declaration, may be written by hand, by machine, by lithograph or printed and shall bear the name and address of the person filing it and shall recite on behalf of whom it is filed.

Making of Declaration [Amendment 5712 (No. 2.)]

87. A declaration under oath required under the Ordinance or under these Regulations or to be used in any legal proceedings under them, shall be drafted and signed—

(1) in Israel—before a person authorized to receive a declaration under oath;

(2) overseas—before a representative of the State of Israel authorized to receive a declaration under oath, or before any person authorized to receive a declaration under oath in such country.

Court Orders

Court Orders

88. Where an order is made by a court in any matter under the Ordinance, the person to whose benefit the order was granted, or if there be more than one person, such person as the Registrar may determine, must leave a certified copy of the order at the office. Thereafter, the Registrar may change or amend the Register if there is a need for such.

Publication of Court Orders

89. The Registrar may order the publication in Reshumot of any court order under the Ordinance that he sees the need to publish.

90. The Trade Marks Regulations and the Regulation dated 30 September 1935, enacted under the Trade Marks Ordinance and published in the official paper, folio 542, on 10 October 1935, are hereby repealed, such repeal not to harm any thing done under such regulations, or any application or any other matter pending on the date of commencement of these Regulations.

 

[Amendment: 5759]
First Annex
(Clause 3)

 

			In New Shekels
(a)	1.	Upon filing an application for the registration of a trade mark of one class of goods under sec. 7 of the Ordinance.	814
	2.	(a) Upon filing a notice of objection, an application to amend the Register or an application to cancel the registration of a trade mark under secs. 24(a), 38 or 41 of the Ordinance	582
		(b) Upon filing a notice to make claims under secs. 24(f) and 41(b) of the Ordinance or clause 73 of the Regulations	259
	3.	(a) Upon filing an application to renew registration of a trade mark under sec. 32 of the Ordinance, renewal fee	2,067
		(b) fee for delay under clause 52(2) of the Regulations	52
		(c) fee for renewal of validity under clause 53(1) of the Regulations	801
	4.	Upon filing an application to amend registration, transfer ownership, register or cancel authority under secs. 20, 36(a), 37, 49(a), 51 or 52 of the Ordinance and upon filing an application to amend the Register where no other fee is prescribed	91
	5.	For search regarding one mark in one class under clause 78 of the Regulations	465
	6.	For approval of anything registered (certificate or extract), under sec. 6(b) of the Ordinance	38
	7.	Upon filing an application for extension of time under clause 82 of the Regulations, for every month or part thereof	52
	8.	Upon commencement of proceedings to determine the rights of an applicant in respect of identical or similar marks, under sec. 29 of the Ordinance	453
	9.	For a photocopy of any document, per page	2.50
	10.	Upon filing an application to examine a site under clause 22(c) of the Regulations	465
	11.	Publication fee	the publication fee published from time to time in Reshumot

 

 

(b) In this Annex, “index”—the consumer price index published by the Central Bureau of Statistics

(c) The fees set out in paragraph (a) shall be paid in accordance with the following increases:

(1) where the index published in the month of May in any given year compared to that published in November of the previous year has increased, the fees above shall increase on 1 July of that year in accordance with the increase in the index as aforesaid.

(2) where the index published in the month of November in any given year compared to that published in May of that year has increased, the fees above shall increase on 1 January of the following year in accordance with the increase in the index as aforesaid.

(d) The amount of the increased fee shall be rounded to the nearest New Shekel and the sum of 50 Agorot shall be rounded up.

(e) The Registrar of Trade Marks at the Ministry of Justice shall publish the form of paragraph (a) to this Annex in Reshumot as amended due to increases in the index.

[Amendment 5759 (No. 2)]
Second Annex²

 

Form Resh Samekh Mem 2

Additional Drawing of Trade Mark attached to Registration Application

 

Form Resh Samekh Mem 3

Permit to Agent

 

Form Resh Samekh Mem 4

Special Application to Register Trade Mark under Section 10

 

Form Resh Samekh Mem 5

Certificate of Registration

 

Form Resh Samekh Mem 6

Joint Application from Registered Owners and Transferee

to Register Transferee as Owner of Trade Mark

 

Form Resh Samekh Mem 7

Declaration by Transferee of Grounds for Form 6

 

Form Resh Samekh Mem 8

 

Form Resh Samekh Mem 9

Notice of Opposition

 

Form Resh Samekh Mem 10

Renewal of Registration Prior to Delivery of Notice

 

Form Resh Samekh Mem 11

Notice of Termination of Validity of Registration

 under Clause 52(1) of the Regulations

 

Form Resh Samekh Mem 12

Renewal of Registration of Trade Mark after Notice

 

Form Resh Samekh Mem 13

Application to Renew Trade Mark Within One Month of Publication of

Non-Payment of Renewal Fee or Re-entry of Trade Mark in Register,

Where Mark is Removed from Register Due to Non-Payment of

Renewal Fee

 

Form Resh Samekh Mem 14

Certificate of Payment of Renewal Fee

 

Form Resh Samekh Mem 15

Application to Register Waiver or Memorandum Relating to a Trade Mark

 

Form Resh Samekh Mem 16

 Application Under Section 24 of the Ordinance to Add to a Trade Mark

 or to Amend a Trade Mark

 

Form Resh Samekh Mem 17

Application to Amend the Register or to Remove a Trade Mark from the Register

 

Form Resh Samekh Mem 18

Application for Permission to Intervene in Court Proceedings to

Amend the Register or to Remove a Trade Mark from the Register

 

___________________________________________

 

¹ 1 A.R. 984, 1940, Schedule 2, p. (H) 192, (E) 228; Amendments: A.R. 1006, 1940. Schedule 2, p. (H) 541, (E) 664;

A.R.

1198, 1942. Schedule 2, p. (H) 795, (E) 942;

K.

T. 266, 5712 (2.5.1952), p. 802;

K.T.

291, 5712 (7.8.1952), p. 1270 [5712 (No. 2)];

K.T.

331, 5713 (29.1.1953), p. 581;

K.T.

934, 5719 (13.8.1959), p. 1816;

K.T.

1444, 5723 (3.5.1963), p. 1420;

K.T.

1731, 5725 (3.6.1965), p. 2122;

K.T.

1888, 5726 (2.6.1966), p. 2090;

K.T.

3361, 5735 (26.6.1975), p. 2085;

K.T.

3608, 5736 (28.10.1976), p. 216;

K.T.

4098, 5740 (6.3.1980), p. 1130;

K.T.

4168, 5741 (29.9.1980), p. 32;

K.T.

4270, 5741 (13.9.1981), p. 1500 [5741 (No. 2)];

K.T.

4410, 5743 (23.9.1982), p. 21;

K.T.

4493, 5743 (10.5.1983), p. 1307 [5743 (No. 2)];

K.T.

4537, 5744 (30.9.1983), p. 180;

K.T.

4701, 5744 (13.9.1984), p. 2562 [5744 (No. 2)];

K.T.

4917, 5746 (24.3.1986), p. 712;

K.T.

5053, 5747 (10.9.1987), p. 1272;

K.T.

5086, 5748 (21.2.1988), p. 498;

K.T.

5121, 5748 (21.7.1988), p. 990 [5748 (No. 2)];

K.T.

5124, 5749 (25.12.1988), p. 286;

K.T.

5193, 5749 (20.6.1989), p. 989 [5749 (No. 2)];

K.T.

5235, 5750 (21.12.1989), p. 166;

K.T.

5273, 5750 (14.6.1990), p. 723 [5750 (No. 2)];

K.T.

5314, 5751 (11.12.1990), p. 301;

K.T.

5364, 5751 (18.6.1991), p. 968 [5751 (No. 2)];

K.T.

5402, 5752 (9.12.1991), p. 500;

K.T.

5416, 5752 (27.1.1991), p. 689 [5752 (No. 2)];

K.T.

5450, 5752 (16.6.1992), p. 1164 [5752 (No. 3)];

K.T.

5486, 5753 (15.12.1992), p. 186;

K.T.

5531, 5753 (6.7.1993), p. 960 [5753 (No. 2)]

K.T.

5566, 5754 (16.12.1993), p. 271;

K.T.

5610, 5754 (30.6.1994), p. 1109 [5754 (No. 2)];

K.T.

5646, 5755 (22.12.1994), p. 430;

K.T.

5678, 5755 (1.5.1995), p. 1401 [5755 (No. 2)];

K.T.

5685, 5755 (15.6.1995), p. 1544 [5755 (No. 3)];

K.T.

5722, 5756 (14.12.1995), p. 256;

K.T.

5764, 5756 (18.6.1996), p. 1161 [5756 (No. 2)];

K.T.

5799, 5757 (17.12.1996), p. 222;

K.T.

5814, 5757 (27.2.1997), p. 443 [5757 (No. 2)];

K.T.

5834, 5757 (10.6.1997), p. 855 [5757 (No. 3)];

K.T.

5865, 5758 (10.12.1997), p. 126;

K.T.

5907, 5758 (22.6.1998), p. 963 [5758 (No. 2)];

K.T.

5944, 5759 (30.12.1998), p. 225.

² The Annex contains the forms set out therein—the language of the forms has been omitted.