Expedited Procedure for Registering a Trademark

June, 2017 / EKW

When a person or company is interested in granting protection to a mark, name, figure or logo in which they are using or intending on using in the future, they should submit an application to the trademarks registrar, for registration of the mark as a trademark. The process of registration of a trademark is determined in the Trade Marks Ordinance[1] and the Trademarks Regulations[2] (the “Regulations“).

When submitting the application to register a trademark, the applicant must state under which classifications he wishes that the mark will be registered, out of a detailed list of goods and services[3]. Thus, the mark receives the suitable protection under the relevant classification (such as sweets, sports products, hoteliery services etc.). Selecting the classification benefits both the applicant, who protects its mark against competitors acting in his field so that they may not use it, and also third parties who may still register a trademark with an identical or similar name, but under a different classification.

When submitting an application to register a trademark, the average handling time by the trademarks registrar until its approval, is over a year! This long period is problematic, at times, for applicants since their specific circumstances may require a quicker examination of the application to register a trademark in order to protect their commercial interests.

There is an expedited procedure, precisely for that, called “expedited examination “, which significantly shortens the period of time in which an application to register a trademark is approved. This procedure is established in Section 22(c) of the Regulations determining that in order for an application to be accepted for “expedited examination”, the applicant must demonstrate reasonable reasons which justify the expedited examination.

Reasons most likely to be accepted by the trademarks registrar as reasonable, are:

1. The mark was used by an unauthorized entity.

2. An international application based on the national application, is intended to be submitted.

3. The mark was submitted in the past and there were changes requested which could not have been performed under the framework of the first application.

4. The mark was registered in the past and was deleted due to a mistake.

5. There is intention of granting license of use for others in the mark.

6. Additional special reasons which, according to the department’s discretion, will be regarded as justified reasons.

Section 2 above, is extremely beneficent to applicants which are interested in granting a wider protection to their trademark, through registering it also in registries of foreign countries. The best way of doing so, is through using the Madrid Convention, in which Israel is a member of. Through the Convention, the applicant for registration of a trademark or the owner of a registered trademark, requests that the mark be also registered in the trademarks registry of all the countries which are members of the Madrid Convention. In this context, when an applicant is interested in registering his mark in other countries as well, submitting an application under expedited examination is necessary, since it very much reduces the duration of the registration process.

In addition, it may be noticed that Section 6 above serves as a type of general clause, which, under its framework, the applicant may specify different reasons that, to his opinion, justify expedited examination of the mark, apart from those specified in sections 1-5. One example for such “special reasons” specified in Section 6, which was approved by the trademark registrar more than once, is investing major resources by the applicant for the purpose of basing and distributing his mark, justifying an expedited examination of the application, in order to prevent “a waste” of the resources spent until that stage and which will be spent in the future, all this while the applicant is uncertain of the existing extent of protection to his mark.

On the technical side, in order to submit an application for expedited examination, the applicant must pay a special fee and submit an affidavit specifying the facts and circumstances which justify, to his argument, expedited examination. Thereafter, the application is examined immediately by the authorized entity and insofar as the examination is approved, the application is transferred immediately to an examiner which will examine the file as soon as practicable.

Insofar as the examiner approved the application to register a trademark, it will be published in the trademarks register for a period of three months, during which, third parties may submit oppositions to its registration under the claim that the registration impairs another existing mark with goodwill in the same field. Only upon the lapse of three months and insofar as no oppositions were submitted, the trademark is approved for registration.

In summary of the aforesaid, submitting an application to register a trademark as “expedited examination” significantly shortens the duration of time under the framework of which the trademarks registrar approves the application. Such expedition grants a higher certainty to the registration applicant with regards to the legal status of his mark and the extent of protection granted to it. However, not all reasons justify approval of expedited examination and there is also a relatively high fee to be paid with submitting the application, but the advantages latent for the applicant when his application for expedited examination is approved, justify, to our opinion, submitting it in that format.

[1] Trade Marks Ordinance [New Version], 5732-1972.

[2] Trademarks Regulations, 1940.

[3] www.justice.gov.il/Units/RashamHaptentim/Units/trademarks/Pages/classification.aspx