Trademark Strategy for Late Filers
The rival applications process is a unique mechanism in Israel allowing late-filers to contest a pre-filed application, focusing on substantive rights rather than mere priority
The “First to File” rule applies in most jurisdictions as most dominant registration rule, forcing late trademark-filers to engage in a post allowance opposition litigation procedure. In Israel however, a late-filer can simply file a new trademark application resulting in both pending applications entering into a rival application procedure, ensuring the Registrar will grant the trademark to both applicants or to the applicant who actually uses it in good faith.
Israel is known to have one of the most efficient and fast registration procedures in the world. Although the waiting time for examination is approximately five months, accelerated applications are usually examined within a few days. Israel is also a member of the major international IP treaties, including the Paris Convention and the Madrid Protocol, which ensures that rights holders can benefit from international protection mechanisms and streamlined procedures for cross-border filings.
One of Israel’s unique trademark registration procedures is the rival applications process, which allows trademark later-filers to potentially overcome the first-to-file rule, while competing face-to-face with the first trademark filer, and may the best applicant win!
Clause 29 of the Israeli Trademark Ordinance governs the registration procedure in the case of two identical or confusingly similar pending trademark applications. The clause reads: “Where separate applications are made by different persons to be registered as proprietors respectively of identical, or similar to a misleading degree, trademarks in respect of the same goods or goods of the same trade description, and the later application was filed before the acceptance of the prior application, the Registrar may refrain from accepting the applications until their respective rights have been determined by agreement between them approved by the Registrar. In the absence of such agreement or approval, the Registrar shall decide, for reasons which shall be recorded, which application shall continue to be processed pursuant to the provisions of this Ordinance.” Unlike the strict first-to-file rule, prevalent in most jurisdictions, Israel’s approach recognizes the importance of prior use, good faith, and reputation in determining entitlement for trademark registration and encourages negotiated settlements and co-existence agreements, subject to the Registrar’s approval.
Rival Applications vs. Opposition Procedure
The opposition procedure in Israel is a post-acceptance, pre-registration process. Once a trademark application is accepted and published in the Official Gazette, any third party may file a notice of opposition within three months. Grounds for opposition include non-eligibility claims such as lack of distinctiveness, likelihood of confusion and bad faith or the opponent claiming to be the true owner of the mark. Burden of proof is solely on the opponent.
The opposition procedure is adversarial and resembles a civil trial, with pleadings, submission of evidence, affidavits, expert opinions, oral hearings, cross-examination, and written summations, ending with the Registrar issuing a reasoned written decision, which may be appealed to the District Court within thirty days.
Rival applications process however is initiated during pre-allowance pending examination, in the case of two pending applications for identical or similar trademarks. Only the two applicants with conflicting applications can be a part of the procedure and the focus is on prior use and good faith rather than eligibility grounds. Burden of proof is equally on both applicants, as the focus is on comparative rights between the applicants, allowing parties with strong market presence to prevail even if they filed later.
In addition, the rival applications process is also much simpler and more cost-effective. Instead of waiting until the allowance and publication for oppositions of the first-filed application, the late-filer can simply file a new application of its own, consequently stopping and interfering with the examination of the prior filed mark.
The outcome of the rival applications process, where the two applicants are practically forced into negotiations to engage in a co-existence agreement (sometimes, including amendments to the classes and further definition to the list of goods or services), may be significantly different and much better for both applicants, than the outcome of an opposition procedure where the Registrar makes its own ex-adversarial decision.
Also, forcing the parties to engage into negotiations and agreements can be beneficial for late-filers, as in other jurisdictions the applicant of the first-filed application does not always have the incentive to negotiate a co-existence agreement, as due to the first-to-file rule, it gained the upper hand.
Lastly, in the rival applications process there is no need to wait months for the allowance and timely monitor the first filed application. Moreover, missing the opposition deadline is disastrous in this case as there are no opposition time extensions and once the trademark is registered, cancellation is usually much more challenging for the opponent.
Rival applications process however is initiated during pre-allowance pending examination, in the case of two pending applications for identical or similar trademarks
Rival Applications procedure – how does it work?
The Registrar notifies the applicants of the conflict and invites them to reach an agreement within three months (timely extensions are possible upon payment). If an agreement is reached, it must be submitted for approval to ensure that it does not compromise the public interest or create confusion. If no agreement is reached, or if the Registrar rejects the agreement, a formal rival claims proceeding is initiated. Each party is required to submit evidence supporting its claim to registration within two months. This typically includes affidavits and evidence detailing and showing the history of use, marketing efforts, sales data, and reputation of the mark.
Thereafter an oral hearing is held before the Registrar, during which the parties’ declarants may be cross-examined. Expert testimony may also be presented, particularly in cases involving technical or market-specific issues. Following the hearing, the parties submit written summations. The Registrar then issues a reasoned decision, determining which application will proceed to registration. The decision is based on three primary factors. The most significant factor is the extent and duration of use of the mark in Israel and the reputation acquired among consumers. The second factor is filing the trademark application in good faith. Third factor is the filing date, which while being relevant, it is generally given significantly less weight than the other two factors. The Registrar’s decision may be appealed to the District Court within thirty days just like an opposition decision and further appeals may be possible to the Supreme Court with leave.
Use and good faith over first-to-file
To conclude, the rival applications process is a unique mechanism allowing late-filers to contest a pre-filed application, focusing on substantive rights rather than mere priority. This is particularly advantageous for parties who have established use and reputation but missed the opportunity to file first. While in the opposition procedure, the opponent bears the burden of proof for grounds of non-eligibility of an allowed mark, rival application process allows the late-filer to interfere in the first-filed application’s examination, to force the first-filer into negotiations and settlements and if necessary, to turn to the Registrar for determining which application should proceed to registration, based mainly on factors of use and good faith. In practice, it is advisable for applicants with worldwide trademark use, to timely monitor the Israeli Trademark Database Website (available also in English) and contact an Israeli trademark attorney in case of a conflicting pre-filed trademark.
Disclaimer – The views expressed in this article are the personal views of the author and are purely informative in nature.