Israel Israël Israel. Report Q191. in the name of the Israeli Group by Tal BAND. Relationship between trademarks and geographical indications

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1 Israel Israël Israel Report Q191 in the name of the Israeli Group by Tal BAND Relationship between trademarks and geographical indications Questions I) Analysis of current legislation and case law 1) Do your country s laws have enactments or systems dealing specifically with GIs, e.g. a registration system for GIs? If so, what are the criteria of registrability? To which national authority must an application for protection be made? Does the applicant have the right to appeal against the refusal of the national authority to register a GI? If so, to which entity? 1.1. General Both Geographical indications ( GIs ) and appellations of origin ( AOs ) are governed, in Israel, by statute, under the Appellations of Origin and Geographical Indications (Protection) Law, ( the AOGI Law ). The term AO is encompassed in the definition of Gl. However, the two rights are treated, in many respects, differently under the Israeli system. Accordingly, in order to provide an adequate response to this question, I will address each of such rights separately Appellations of Origin Israel is a member of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration ( the Lisbon Agreement ). The AOGI Law was enacted in order to implement, in Israel, the provisions of the Lisbon Agreement An AO is the geographical name of a country, region or locality contained in the name of a product which is intended to convey that such product has its origin there and that its quality and properties are mainly due to that geographical area, including its nature and people Rights in AOs are protected by means of registration granted by the Israeli Trade Marks Office ( the ITMO ). Local AOs are examined by the Israeli Registrar of Trade Marks ( the Registrar ) in order to ascertain whether: i) the applicant has duly complied with the formalities established under the AOGI Law; and ii) such local AO, prima facie, may indeed be classified as an AO. In addition, local AOs may be subject to opposition as well as cancellation proceedings. 1

2 A foreign AO must first be approved for registration in its country of origin and thereafter be sent by the International Bureau to all members of the Lisbon Agreement, which have the discretion to refuse protection. Applications for the registration of foreign AOs in Israel are generally subject to the same examination procedure as that existing for local AOs and opposition proceedings may also be filed against the registration of such foreign AOs An applicant has the right to appeal against the refusal of the national authority to register a GI With respect to the length of protection granted to AOs, local AOs are protected for an initial term of ten years from the date of filing the relevant application therefor in Israel and may be extended for additional consecutive periods of ten years each, without limitation, if the Registrar finds that the designation remains an AO. The validity of a foreign AO expires when it is no longer protected in its country of origin. According to decisions rendered by the Israeli Supreme Court it was held that, under the AOGI Law, the validity of a foreign AO cannot be challenged once it has been registered. However, since the enactment of Section 33B of the AOGI Law in 2000 (subsequent to the aforesaid decisions), a registered foreign AO may also be challenged on the ground that it is not an AO, as defined in the AOGI Law, when its proprietor seeks its enforcement Geographical Indications A GI is an indication which identifies, in Israel, a product as originating from a territory of a member country of the WTO or a region or locality within such territory, where a given quality, characteristic or the reputation of such product may be attributed essentially to the fact that it originates from that geographical origin GIs are protected as such and no registration system for GIs exists in Israel. GIs are protected for so long as they fall within the definition of a GI under the AOGI Law In order to qualify for protection as a GI, it is necessary to establish, inter alia, that the GI has acquired goodwill as a GI in Israel. 2) What is the status of a GI in your country? Does the registration of a GI confer a property right? Who would be the rightholder of a GI? Can GIs be the subject of dealings such as assignment, mortgage and licensing? 2.1. Gls and AOs are both recognised as an intellectual property right The registration of an AO confers a property right As stated in paragraph above, rights in AOs are protected by means of registration granted by the ITMO. As soon as an AO has been properly recorded in the national Register, the proprietor of the relevant AO (whether foreign or Israeli), may enforce its registered AO The requirement for obtaining GI protection is subject to proof of ownership rights in an indication which, in Israel, is recognised, as a GI. According to a decision rendered by the Israeli District Court dealing with grapes grown in a certain area, geographical goodwill is not necessarily shared by all the manufacturers or cultivators in a geographical region but, rather, vested (in that particular area) in the group or entity which manufactures or cultivates its products in a geographical region in a specific manner which confers on the relevant product a particular quality, characteristic or reputation that results in recognition of the indication as a GI. (That decision was based on the tort of passing off and was given before the enactment of statutory protection for GIs.) 2

3 2.5. As indicated above, no registration is available for GIs. There is no indication in the law if GIs may be assigned, mortgaged and/or licensed. In my opinion, GIs (including AOs) cannot be so assigned, mortgaged and/or licensed for the reason that GIs, by their nature, do not confer a right which may freely be assigned, particularly in the case where the rights are assigned to a person who fails to comply with the requirements of the AOGI Law. The granting of a licence in an AO (or a GI for that matter) to describe goods which are not the original goods frustrates the purpose of the AOGI Law by causing confusion among the public as to the quality of the AO. 3) Is the application for or registration of a GI made public in your country? Is it possible to oppose such application or registration or cancel such registration of a GI? If so, by whom and on what (absolute or relative) grounds (e.g. generic or descriptive term or prior trademark)? 3.1. When an application for registration of a AO has been accepted, the Registrar shall publish same in the Israeli Gazette (Reshumot) The publication shall indicate the AO, the product for which the AO is intended to denote and the person entitled to use the AO to denote a particular product, as named in the application Within three months from the date of publication of acceptance of the application, any person may oppose same by notifying the Registrar thereof in writing Grounds which may be raised for opposing the registration of an AO include the following: the designation for which registration has been applied is not an AO, but merely an indication of a provenance or type; and the person claiming to be the person entitled to the AO is not entitled to use same As aforesaid, no registration is available for GIs (other than for AOs under the Lisbon Agreement). 4) Must use requirements be satisfied in order to maintain GI protection? If so, is there any definition of what constitutes use? Are the legal rules established for appraising the maintenance of a trademark registration applicable to the appraising of the maintenance of GI protection? 4.1. No use requirements must be satisfied in order to maintain GI protection. As stated in paragraph above, GIs are protected for so long as they fall within the definition of a GI under the AOGI Law As stated in paragraph above, local AOs are protected for an initial term of ten years from the date of filing the relevant application therefor in Israel and may be extended for additional consecutive periods of ten years each, without limitation, if the Registrar finds that the designation remains an AO. The validity of a foreign AO expires when it is no longer protected in its country of origin The relevant legislation in place for appraising the maintenance of a trademark registration differ from those stated above with respect to AOs and GIs. 3

4 5) What is the scope of protection of a GI? Is it only protected against use of the name or also against use of elements of the specification of the GI (e.g. slicing, grating) or any other practice liable to mislead the public as to the origin of the product (e.g. use of same trade dress)? Are the legal rules established for determining the scope of trademark protection applicable to determining the scope of GI protection (e.g. in relation to reputed or well known GIs, likelihood of confusion, infringing and non infringing acts)? May rights in a GI be enforced even where a product which allegedly infringes those rights has been made purely for export? 5.1. Any unlawful use of an AO amounts to infringement, even if the true origin is indicated alongside the AO and even if the AO is accompanied by expressions such as kind, type, class, imitation or the like. Unlawful use of an AO may also give rise to criminal liability. The remedies specified in the AOGI Law in an action for infringement of an AO are injunctive relief and costs. According to one District Court decision, damages for infringement of an AO may be claimed under the tort of breach of statutory duty Unlawful use of a GI means use of a GI with respect to a product not originating from the indicated region, if such use is likely to cause confusion with respect to the true geographical origin of the product. Unlawful use of a GI for wines and alcoholic beverages occurs when use of the GI is made with respect to wines or alcoholic beverages not originating from the indicated region (likelihood of confusion not being relevant in this case). For remedies available in an action for infringement of a GI, see paragraph 5.1 above Under Israeli law, there is no limitation on the type of products to be covered under the system of protection granted to GIs (including AOs) No Israeli case law exists on whether GIs are protected against use of a name or also against use of elements of the specification of the GIs. No registration is available for trade dress The law is silent on the question as to whether rights in a GI may be enforceable even where a product which allegedly infringes those rights has been manufactured purely for export purposes. Prima facie, since, under Israeli law, the definition of the term use is quite broad, I would not rule out such term to include an exported product. 6) Can a GI be registered as individual trademark? If so, under what conditions? See paragraph 7 below. 7) Do your country s laws provide for collective or certification marks? If so, under what conditions can a GI be registered as a collective mark or a certification mark? 7.1. Section 11(11) of the Trade Marks Ordinance [New Version], ( the Ordinance ) provides, as a rule, that a mark whose ordinary meaning is geographical, is not eligible for registration, unless represented in a special manner or having acquired distinctiveness, i.e., a secondary meaning Sections 11(6a) and 11(6b) of the Ordinance provide that the following marks are not eligible for registration: a mark that includes a GI for goods that do not originate from the stated geographical area, if the GI is likely to deceive in respect of the geographical area from which the goods originate; and a mark which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory. 4

5 7.3. Section 11(12) of the Ordinance provides that marks for wine or spirits that include GIs, the origin of which products is not from the same area indicated by the geographical indication, are not eligible for registration Israeli law does provide for collective or certification marks. Section 1 of the Ordinance defines a collective mark as a trademark or service mark belonging to a body of persons interested in the goods or service for which the mark is intended to designate, and used, or intended to be used, by the members of that body in respect of such goods or service. According to section 15 of the Ordinance, the Registrar may register a collective mark if he is satisfied that it is intended for use by the members of the body of persons concerned and that such body has control over the use of the mark by its members The term certification mark is also defined in Section 1 of the Ordinance and refers to a mark intended to be used by a person, other than a person carrying on a business, to certify the origin, components, mode of manufacture, quality or any other characteristics of goods in which he is interested, or to certify the nature, quality or type of a service in which he is interested. According to Section 14 of the Ordinance, the Registrar may register a certification mark if he is satisfied that the proprietor of the mark is competent to certify the characteristics to be designated by the mark In my view, GIs may be registered as certification marks, provided that the relevant registration requirements are complied with by the applicant in order to procure registration. 8) Does inclusion of a protected GI as part of a trademark qualify as legal bar to the registration of such trademark? See paragraph 7 above and paragraph 10 below. 9) Do your country s laws, e.g. trade or merchandise legislation, require the application of correct designations of origin/source on agricultural products and food stuffs? 9.1. Israeli laws require the application of correct designations of the origin/source for all goods, including agricultural products and food stuffs The Consumer Protection Law, provides that a dealer shall do nothing likely to mislead a consumer as to any matter material to a transaction. The law emphasizes, inter alia, that the identity of the producer or the performer of the service and the location of production of the commodity shall be regarded as matters material to a transaction Under the Merchandise Marks Ordinance, 1929, a person is required to indicate on any goods the place or country in which any goods were made or produced. Any failure to do so, will give rise to criminal sanction under the Merchandise Marks Ordinance. 10) How are conflicts between trademarks and GIs resolved under your country s laws? Do they co exist or does either the trademark or GI prevail? Is there a rule for determining whether the trademark or GI should prevail, and what are the criteria to take into account (e.g. the first in time, first in right rule, the reputation of the geographic region or the reputation of the trademark, the length of time that the name has been used to indicate the geographic region and the extent of such usage, the length of time that the trademark has been used and the extent of such usage)? Section 33A of the AOGI Law (enacted in 2000 in order to implement Article 24(5) of TRIPS into the Israeli legislation) provides that where an application is made to register a trademark, and such trademark was registered in good faith or where rights 5

6 II) to a trademark have been acquired through use in good faith, the eligibility to register the trademark, the validity of its registration or the right to use the trademark will not be harmed, provided only that: i) the trademark is identical or similar to a GI or an AO; and ii) the filing of the application for registration of the trademark or the acquisition of the rights to use the trademark as aforesaid, was done prior to January 2000 or prior to the date on which the GI or the AO was granted in a member country in which the GI is located or in the country of origin, as the case may be Accordingly, the existence of a GI may adversely affect the rights of a third party in a trademark which is similar or identical to such GI, in the event the relevant date of acquisition of such rights or the filing of an application to use such rights, occurred after January 1, 2000 or after the date on which such GI was granted protection in the relevant member state or country of origin. Post January 1, 2000, competing rights in a GI, or in a trademark which is identical or similar to such GI, will be determined on a first in time, first in right basis Section 21B(b) of the AOGI Law allows any person who has made continued use of a GI of a member state identifying wines or spirits to continue to use such GI with respect to the same wine or spirit or related product, subject to either of the following conditions being met: (a) such use was done for at least 10 years prior to April 15, 1994; or (b) such use was done in good faith prior to such date. Section 21B(b) was enacted to implement Article 24(4) of TRIPS. Proposals for adoption of uniform rules The Groups are invited to put forward any proposals for adoption of uniform rules regarding the relationship between trademarks and GIs. More specifically, the Groups are invited to respond to the following questions: 11) Should countries provide for registration systems dealing specifically with GIs? If so, what should the key features of such system be? Should a multilateral system of registration of GIs be established? If so, what should the key features of such multilateral system be? Specifically, which international body should be tasked with establishing such system? How should the application for or registration of a GI be notified/made public (either in your country or at a multilateral level) in order to avoid that a trademark may conflict with a GI previously unknown to the trademark owner? As stated in paragraph above, the current Israeli legislation does not provide a registration system specifically allocated to GIs. I would imagine that any proposal to establish a system of this sort in Israel will be met with opposition from both the government and the Patents Authority, due to the onus associated with the examination of applications and subsequent management of registrations In my opinion, there is an advantage for setting up such a registration system due to the transparency and legal certainty to be gained from registration If it is intended to establish a system for the registration of GIs, it should be done on a national level, i.e., Israel (and not an international body) should be tasked with establishing its system, since one of the conditions required for recognizing a GI is the Israeli public s perception of the term as a GI If a system for the registration of GIs is adopted in Israel, then I believe that the most convenient manner for implementing same would be to direct that the GIs be registered as certification marks, subject to necessary modification. 6

7 12) Do you have any suggestions as to the acquisition, maintenance, scope and enforcement of GI protection? What should the scope of protection of a GI be? Should the legal rules established for appraising the acquisition, maintenance, scope and enforcement of trademark protection apply to the appraising of the acquisition, maintenance, scope and enforcement of GI protection? Regarding the protection of GIs, I believe that the rules applicable to certification marks, may be extended to include GIs. In addition, there is a need to confer on a GI the status ordinarily afforded to intellectual property rights, including the recordal in the relevant Trade Marks registry (or alternate registry) of the country seeking protection, the identity of the applicant, the identity of persons entitled to make use of the GI and the terms of such use. 13) Should a protection of GIs by individual and/or collective or certification marks be possible? The protection of GIs should not be based on an individual trademark since this would be contrary to the true perception of GIs. However, the protection of GIs by collective or certification marks should be permitted. 14) How should conflicts between trademarks and GIs be resolved? Please propose a specific rule for determining whether trademark or GI should prevail, which is likely to be broadly accepted. If co existence is contemplated, should such co existence be limited to the country of origin or relate to the relevant markets? Subject to transitional provisions, conflicts between trademarks and GIs may be resolved upon a first in time, first in right basis. Summary The current Israeli legislation does not provide a registration system specifically allocated to GIs; instead, GIs are protected for so long as they fall within the definition of a GI under the relevant statute. My opinion is that a registration system should be considered due to the transparency and legal certainty to be gained from such registration, and that this should be done on a national level. The protection of GIs could be effected by way of collective or certification marks, rather than individual marks. Subject to transitional provisions, conflicts between trademarks and GIs could be resolved upon a first in time, first in right basis. 7