Representation Before the Trademark Registrar Various proceedings may be required during the course of registering a trademark with the Trademark Office, including:
- Objections by trademark examiners: After an application to register a trademark is submitted, trademark examiners review the application and perform a comparison to existing trademarks. During the course of the review, they may have objections to the trademark whose registration is sought, the classification requested, and more. These objections require a response that must be wise and efficient in order to broaden the protection for the trademark in the future.
- Opposition to registration of a trademark: After the trademark examiners approve the trademark, the application to register the trademark is published in the State Gazette in order to permit third parties to submit opposition to registration of the trademark. In such case, legal proceedings are commenced that are similar to court proceedings, regarding whether the trademark can be registered. and in what way.
- Cancelling a trademark for lack of use: Under Israeli law, a trademark cannot stay registered if it is not actually used. If over a particular period of time set by law, no actual use is made of a registered trademark, an application can be filed to cancel the registration. This process is also similar to a court proceeding and is conducted before the Trademark Registrar.
- Trademark deletion: Under certain circumstances, it is possible to file an application to delete a registered trademark, for example if it was registered in bad faith from the start. This process is also similar to a court proceeding and is conducted before the Trademark Registrar.
Representation in Court When someone’s right in a registered trademark is violated, they can file a lawsuit with a court of competent jurisdiction against the parties infringing on the trademark. In such a lawsuit, the plaintiff can seek injunctions to stop the infringement, court or quasi-judicial orders requiring destruction of infringing merchandise, as well as sue for damages. Under certain circumstances, one can file a motion for interim relief together with the filing of the lawsuit in order to quickly receive temporary relief from the courts. Representation in court in the field of trademarks requires special expertise and familiarity with the unique legislation and caselaw in this field. This is the reason that leading law firms in Israel and around the world refer clients to us in regard to intellectual property lawsuits including lawsuits for trademark infringements.