Trademark registration is an important step in the protection of intellectual property rights of any business. Trademark registration allows the owner to protect the identification mark of the business but the scope of the trade mark protection is territorial and limited only to the jurisdiction of registration. Can an international business protect its trademark in several territories at the same time without the need for registration in each jurisdiction?
In 2010 Israel joined the Madrid Protocol – a treaty that regulates the protection and registartion of international trademarks via one central system managed by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. This system allows registration in over a hundred countries that are members of the Madrid Protocol. Thus, it is currently possible to submit in Israel an application to register an international trade mark.
In order to submit an international trademark application, the applicant must first apply for a trademark in Israel or have a registered trademark in Israel. In addition, the applicant must be a person or entity who is a citizen of Israel or its place of residence is in Israel or that has significant industrial or commercial activity in Israel. The application is to be submitted on a designated form, known as MM2 and is subjected to the payment of a nominal fee to the Israeli Registrar of Trademarks and simultaneously also a fee for the international registration directly to WIPO. The Israeli Registrar of Trademarks conducts a preliminary review of the application which focuses on the technical aspects such as proper filling of forms, meeting the prerequisites and the linkage between the Israeli trademark and the international application (for example, the identity of the applicant, type of indication, scope of a specific sign, etc.).
If the request was duly submitted it will be transferred for review by the international office which, after its review, will register it in the international trademarks diary and then transfer it to all the jurisdictions in which the registration was requested for the purpose of substantive review of the application in accordance with the rules and regulations in each jurisdiction. Substantive examination process may take between 12 to 18 months, depending on the process in each jurisdiction, but at the end the date of filing of the international trademark application with the Registrar of Trademarks in Israel will be deemed the date of the registration. If the application lacks certain data or arrived at the international office over two months after its original filing the date of registration will be determined by the date the application was received at the international office or the date the of completing the missing data, as applicable. The validity of the international trademark is 10 years and may be renewed once a decade, subject to payment of a fee.
Israel joining the Madrid Protocol provides a significant advantage, especially in light of the great savings in costs arising from the need of taking the process of registering in each jurisdiction separately. However, because a broad understanding of the various bureaucratic systems is required to ensure effective and swift registration process it is highly recommended to consult with an attorney knowledgeable in the field.