Israel - trademarks - Supreme Court Faces Novel Trademark Issues

In a recent decision, the Israeli supreme court faced some novel issues converning the trademark practice.

The supreme court faced an appeal by Pascol advanced technologies inc., on the trademark adjudicator´s decision to allow the trademark Gatewave for registeration, despite appealant registered trademark "Gateway 2000".

As a part of the decision, the supreme court faced the following novel and important issues:

A. Should new trademarks registered by the trademark owner (appealant) during the opposition proceeding be granted any weight in the decision?

The court ruled that even new trademarks cannot be ignored if they were registered in good faith.

B. The extent of the protection of a generic/descriptive trademark after registeration

The supreme court ruled that even after registeration, a descriptive or generic mark will be granted less protection, and even a mark with minor changes may lead to the conclusion that there is no infringment.

C. When checking whether there is a risk for misleading consumers, Should the court rely only on the registered description of goods and services, or should the actual use of the trademark be taken into account.

The court ruled that while the starting point is the trademark registry, the actual use of the trademark should not be ignored, and the registeration should be considered as giving some "space" to the trademark owner to extend his use.

Zeev Fisher, Adv. 23/6/2007