As all practitioners in the IP field are aware, the International Classification of Goods and Services under the Nice Convention, was amended by dividing Class 42 into four classes — 42 to 45.
The Israeli Patent Office has now issued guidelines confirming that the new classification will be binding as of January 1, 2002. Until December 31, 2001, applications may be filed under either the current classification or the new one, but as of January 1, 2002, only the new classification will apply.
In cases of pending applications, the change in classification may be made at the initiative of either the applicant or the Trade Mark Office. Regarding registered trademarks, these may be reclassified, if so requested by the applicant although it is not compulsory to do so.
In the event of reclassification of an application/registered trademark, this may at times require division of an application/registration into a number of applications/registrations. In such a case, the registrations/applications will be accorded new serial numbers but will be entitled to and bear the original filing date. Filing fees will need to be paid for each new application/registration stemming from such a division.
It should be noted that in accordance with Israeli law, classification does not play an important role in determining the scope of rights under a registered trademark in case of infringement, and the main determining factors are the description of goods or services and the consequent likelihood of confusion with the alleged infringing trademark. Thus, we do not currently see a reason to apply for reclassification of existing registrations.
With regard to searches, the Patent Office indicated in its guidelines that for applications in Classes 43, 44 or 45, a search will also be made in Class 42 in order to locate prior trademarks which have not been reclassified.
Designs: Protection of Ornamental Feature Applied to Different Versions of an Object
The Patent Office has issued guidelines regarding the protection of an ornamental feature that may appear in different versions of an object. The example given in the guidelines are different versions of a telephone handset, all of which contain the same ornamental feature. Another example of this principle may be an ornamental feature printed on different types of shirts, etc.
The guidelines indicate that in such cases it is sufficient to submit a single application for the registration of a design. Such a design application should include a novelty statement relating to the ornamental feature for which protection is requested, accompanied by drawings or photographs of one specimen product.
Thus, if the novelty of a design is embodied in a specific feature, it is advisable to let us know so that we can include a novelty statement, which in effect will somewhat broaden the scope of protection of the design.
Continued Increase in the Number of Patent Applications
According to a recent article in Globes (the Israeli business daily), in the year 2000, 6,802 patent applications were filed with the Israeli PTO, 1,599 of which originated in Israel. Of those originating outside Israel, 2,982 originated in the United States. The data show a continued increase in the number of patent applications filed. The data for the preceding three years are as follows: 1997 — 2,886 applications; 1998 — 5,056 applications; 1999 — 5,957 applications.
The article provided above is for informational purposes only. It is not provided for the purpose of providing legal advice and may not be considered or relied upon as such.