By Assaf J. Naim, Adv.
Many individuals as well as corporations are nowadays filing trademarks all over the world as well as in Israel.
Although it is well known that when filing a trademark there is no guarantee that the said application will proceed to registration. One can estimate, however there is no certainty in such subjects.
Interesting to note that international filers often file for a trademark in a foreign territory without performing an initial check to verify if someone else acquired rights in the desired name before them. Patent searches seem to be more popular than trademark searches, although trademark searches are often easier, and can more effectively minimize risks for the applicant.
In case an initial search is not conducted, the applicant may file the application, wait more than a year for it to arrive to examination, and then discover that someone else acquired rights in the name before him.
Some law firms include an initial search on their filing fees and it is advisable to ask beforehand, as it should be added that the applicant may perform a search himself, since the Israel Trademark Registry is open to the public even in English (http://patentim.justice.gov.il/db1.htm). Due to the difference in local law statutes, the applicant should seriously consider providing a professional with the result and ask for their opinion.
According to Israel Law, if applicant filed an application and during the examination, it is revealed and cited by the Examiner that another confusingly similar application exists, the Registrar will then initiate a Competing Marks Proceeding, by which the foreign applicant will be forced to prove he has stronger rights in the requested marks, as opposed to his opponent. This would mean that applicant would have to manage a full legal process without having a chance to plan such fees in the budget.
It is therefore highly important to conduct an initial search, even as an indication on potential problems that are currently known and are most likely to arise during the examination process.
