Licensing & Protection of Registered Trademarks in Israel

Licensing of registered trademarks in Israel requires verification of a license & its registration in the respective register. Registering a license in Israel is mandatory. It should be kept in mind that using unregistered trademarks doesn’t benefit their owners & may result in TM registration in Israel being annulled.

Benefits of Registration

Registering a trademark in Israel has a number of advantages, including:

• getting exclusive TM rights in Israel;
• a right to file a lawsuit;
• an enforcement mechanism that allows for detainment of counterfeit products by customs personnel;
• an opportunity to report counterfeit products to law enforcement agencies;
• extended protection for famous brands.

Licensing of TMs in Israel

Any manufacturer or provider of goods/services must be entered into Israeli Trademark Office’s register. Those involved in the distribution of products needn’t apply for registration. Applying for TM licenses in Israel can be done only after trademarks are registered.

Applying for TM registration in Israel’s register of trademarks requires submitting these documents:

• POA issued in a licensor’s name;
• POA issued in a licensee’s name;
• a license agreement or its certified copy.

No legalization is required for the above documents.

Obtaining Ownership of TMs in Israel

Obtaining ownership of trademarks in Israel doesn’t require registering a full-fledged license agreement with Israeli Trademark Office. Usually, a brief license agreement, which includes information from parties, details of licensed registrations, information on the terms of a license & its exclusivity & specification of services/goods used.

Rights of Registered Users

Registered users do not acquire any trademark ownership rights arising from using the mark. Also, they are forbidden from transferring TM rights to 3rd parties, as they’re considered a licensee. Registered users acquires only those rights which are granted to them under the license agreement.

License Revocation

Applying for license revocation in Israel requires submitting the following documents:

• original or certified copy of the license revocation document signed by the licensee;
• power of attorney signed by the licensee.

Applying for revoking a license or making changes to a license in Israel requires submitting the following documents:

• an act of consent bearing the licensee’s signature;
• POA bearing the signature of the licensor.

If the licensor submits an application for registration of revocation of the license without the  licensee’s consent, the latter are entitled to file a lawsuit.

ADR in Israel

Being the most popular ADR method in Israel, mediation is encouraged.by judges & requires mutual consent of the parties. The advantages of mediation involve control over a dispute, reduced costs & increased confidentiality.

Another popular ADR method is arbitration. The parties to a dispute have a right to appeal arbitral awards. Arbitration’s pros include the speed & non-public nature of the proceedings & the parties’ ability to pick an arbitrator who has extensive experience in trademark law.