Protection of a Well known trademark that was not registered in Israel

Protection of a Well known trademark that was not registered in Israel

Yair Aloni, Adv.
October 26, 2016

Trade mark registration bestows upon its owner the exclusive right of using it, but is there a protection in Israel also for international well knows marks that were not registered in Israel, but are identified with the product? Can one use such mark in Israel without the permission of its owner,  where the mark is known and recognized globaly but is not dully registered in Israel?

In a case recently discussed in the Central Lod District Court regarding a commercial use of the name of the famous artist Salvador Dali was made for the purposes of marketing apparel products in Israel. The Court held that the name Salvador Dali is unfamiliar in Israel in the market of apparels and the consumer audiences in Israel does not recognize this type of goods with the artist Dali, despite being a well-known artist.  Thus, the Court dissmissed the argument that the name is a well known mark that entitlles protection.

Israeli law defines a well-known mark as a mark owned by a person who is a citizen, a member country (under the Paris Convention for the Protection of Industrial Property), a permanent resident or has an active industrial business in it, even if the mark is not a registered trademark in Israel or used in Israel.

Israeli law sets two tests for determining whether a trademark is a well recognized mark in Israel: "The extent to which the mark is recognized in the relevant public circles and the extent to which it is recognized as a result of marketing effort".  However, this is not a closed list and the law is open to other considerations.

Under Israeli law a well-known trade mark, even if not registered, will grant its owner exclusive use in Israel of the mark in respect of the goods for which the mark is well known for, or for goods in of the same class. Thus, for example, one may not use a trade mark such as "McDonalds" for the purpose of marketing hamburgers even if the word “McDonalds” was not registered as a trademark in Israel.

The objective is to protect the reputation and the mark’s obvious distinction acquired in practice, even if the formal registration was not made. Courts have adopted different tests to determine whether a mark is a well-known mark in Israel, such as the degree of recognition of the mark; The degree and extent of its use; The extent, scope and duration of publicity given to it; The geographical scope of those factors; The degree of the inherent or acquired uniqueness of the mark; The degree of use of similar marks by third parties; The nature of the goods or services and trade channels for the goods or services bearing the mark; The extent to which the mark signifies reputation of quality goods; and the extent of the commercial value attributed to it.

Note, that the scope of protection and how these tests will be applied depend on the circumstances of each case. Therefore, in order to determine whether a particular mark, which may be protected for its 'well known' character, can be used it is advised to consult with an attorney who practices such matters for further examination of the issues.