Trademarks in Israel 2024

Trademarks in Israel 2024

Trademarks in Israel 2024

TRADEMARKS 2024

ISRAEL

Ronit Barzik-Soffer, Luiz Blanc

(Reinhold Cohn Group)

LEGAL FRAMEWORK

Domestic law

  1. What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Israeli jurisdiction comprises:

Please note that the available links are for updated legislation only.

International law

  1. Which international trademark agreements has your jurisdiction signed?

Israel has signed the following international trademark agreements:

  • the Paris Convention for the Protection of Industrial Property;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;
  • the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
  • the Hague Convention Abolishing the Legalization Requirements for Foreign Public Documents;
  • the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration;
  • the Convention Establishing the World Intellectual Property Organization; and
  • the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks.

Regulators

  1. Which government bodies regulate trademark law?

The Israel Patent Office is the government body regulating trademark law.

REGISTRATION AND USE

Ownership of marks

  1. Who may apply for registration?

Any person or legal entity may file an application for trademark registration. Citizenship or residency is not required.

Scope of trademark

  1. What may and may not be protected and registered as a trademark?

Any mark may be registered insofar as it is capable of distinguishing the goods and services of the trademark owner from those of others. A ‘mark’ is defined as ‘letters, numerals, words, images or other signs or combinations thereof, in two or three dimensions’. This broad and flexible definition includes, among others, words, logos and marks in color. This includes word marks and logos, color marks(marks consisting of one or more colors only – with no wording or design), three-dimensional trademarks (including product and packaging shapes), motion marks (a mark that makes a series of motions), holographic marks and sound marks. No scent or taste marks have been registered yet.

Marks may also be registered for services.

Certification and collective marks may also be registered.

Unregistered trademarks

  1. Can trademark rights be established without registration?

Trademark rights may be established without registration, based on local goodwill, under the tort of passing off. The establishment of such local goodwill usually requires long and substantial use in Israel, but in exceptional cases, use abroad may suffice.

Famous foreign trademarks

  1. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A foreign trademark that is also famous domestically is protected even if not used domestically. If it is not registered in Israel, it is entitled to protection against the use and registration of a confusingly similar mark in respect of goods or services for which the mark is known or goods or services of the same description. I

f it is registered in Israel, it is entitled to protection against the use and registration of a similar mark in respect of goods that are not of the same description, provided that such use could make the public believe that a connection exists between the goods or services concerned and the owner of the registered trademark, and that the owner could be harmed as a result of such use.

The benefits of registration

  1. What are the benefits of registration?

The benefits of registration are:

  • a trademark registration in Israel confers a right to exclusively use the trademark in Israeli territory;
  • a trademark registration in Israel provides a legal presumption of right and ownership;
  • a trademark registration in Israel provides a right to take legal action against infringement based on the Trademark Ordinance;
  • a trademark registration in Israel provides availability of a border enforcement mechanism allowing detention of suspected infringing goods by the customs authorities;
  • a trademark registration in Israel provides a possibility to file a complaint with the police for counterfeiting; and
  • extended protection for well-known marks.

Filing procedure and documentation

  1. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

A power of attorney on behalf of the applicant and in favor of the attorney filing the application has to be submitted to the Trademark Office to file a trademark application. The form must be signed by a competent officer of the applicant company and a scanned copy of the executed document is submitted. The original has to be available upon request by the registrar. Legalization or notarization of said document is not required.

In cases where conventional priority is claimed on the basis of a corresponding foreign application under the Paris Convention, the applicant must provide the following documents: an authorized copy of the corresponding foreign application along with an English translation. The applicant must file all the mentioned documents at the Trademarks Office within three months from the filing date of the application (a deadline that may be extended).

Where a device or stylized mark is involved, a specimen in JPG format should be submitted. Where a sound mark is involved, a specimen in MP3 format is required.

Electronic filing is available. For corporations and trademark attorneys filing for others (lawyers or patent attorneys), it is obligatory.

Official trademark availability searches are available before filing.

An official trademark similarity search covers a single international class only. The official fee per search is 690 shekels (approximately US$205depending on the US dollar to shekel exchange rate at the time).

The Trademark Office automatically extends the searches to additional relevant classes, which are,however, not always fully covered (depending on the specific goods or services in the list of goods or services provided with the search request). A search for a device mark covers only one class. The cost is the same as above.

Registration time frame and cost

  1. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

At the current rate of examination at the Trademark Office, applications are usually examined approximately five to seven months after filing.

The official fee for filing a trademark or service mark applications is 1,731 shekels for the first or single class (approximately US$515 depending on the US dollar to shekel exchange rate at the time) and 1,301 shekels for each additional class (approximately US$385 depending on the US dollar to shekel exchange rate at the time).

The mark comes into effect at the date of its registration (at the end of the opposition period without any opposition or after overcoming the opposition); however, the relevant date for the rights to a mark that has been filed for registration or has been used is the filing date.

Accelerated examination is available under special circumstances such as an ongoing or impending infringement, upon submission of a supporting affidavit, specifying the grounds for the request.

Accelerated examination is likely to take place within a month of its request.

The official fee for accelerated examination is approximately 812 shekels (approximately US$250, depending on the US dollar to shekel exchange rate).

A rough estimate of the total cost for the registration of an average mark in a single class is several thousand US dollars.

Classification system

  1. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The 11th edition (2019) of the International Classification system is followed.

Multi-class applications are available. The official fees for filing multi-class trademark or service mark applications are:

  • first-class: 1,623 shekels; and
  • each additional class filed simultaneously for the same mark: 1,219 shekels.

Examination procedure

  1. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The review of trademark applications involves both technical and substantial aspects. The substantial examination includes both absolute and relative grounds.

When examining technical aspects, the examiner makes sure that all technical requirements are fulfilled, including the filing of a power of attorney, payment of additional fees, etc.

The examiner then examines the wording of the description of goods or services (checking for clarity, non-ambiguity, not overly generalized, etc) and the classification. Then, if the description of goods or services appears to cover other or additional classes than those initially requested, the examiner may require changing the classification or adding classes to the application.

The Trademark Office then examines the mark on relative grounds (potential conflicts with prior registrations or applications) as well as absolute grounds.

Letters of consent may help overcome an initial refusal based on a cited mark, but the examiner is not bound to cancel a citation upon submission of a letter of consent.

Applicants or representatives (trademark or patent attorneys) may respond to rejections by the trademark office within three months (extendable).

Use of a trademark and registration

  1. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

There is no pre- or post-registration term by which an owner of a registered trademark is required to provide proof of use in Israel, and under Israeli trademark law, the registrar does not require submission of proof of a trademark’s use, on his or her own initiative.

However, if a mark has not been used for three consecutive years after its registration, the registration becomes vulnerable to cancellation upon request by an interested party, on the grounds of non-use. In such a case, submission of proof of use is required to defend the registration.

Markings

  1. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The symbols ™ and ® may be used to indicate trademark use or registration. Marking is not mandatory.

Falsely indicating that a product is protected by trademark registration (by the ® symbol, or by indicating Registered Trademark, etc), is a criminal offence. Section 3 of the Product Marking Ordinance states that any person designating a false commercial description to a product, and any person that sells or offers for sale such goods, is liable to penalties (a fine and even imprisonment), unless such persons prove that they did so without intent to deceive. We are unaware of criminal cases where this provision was actually implemented, but in practice, such situations (of false indicating trademark registration) may also be used in civil suits to establish bad faith (e.g, denying a party equitable relief).

Appealing a denied application

  1. Is there an appeal process if the application is denied?

Yes, there is an appeal process if the application is denied:

  • one may appeal the examiner’s initial refusal or requirement within three months (extendable up to 11 months, or longer under special circumstances);
  • one may subsequently request a hearing before the registrar;
  • the registrar’s decision is subject to an appeal to the district court within 30 days; and
  • one may file a motion to appeal a district court decision to the Supreme Court within 30 days.

Third-party opposition

  1. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Trademark applications are published for an opposition period of three months during which a third party may file an opposition on absolute and relative grounds. Absolute grounds include descriptiveness, marks harmful to public policy, deceptive marks and marks encouraging unfair competition. Relative grounds include marks harmful to third-party property rights and applications identical or similar to another’s business name.

Registered trademarks may be canceled by third parties on the same absolute and relative grounds available in oppositions within five years of the date of the trademark registration. There is no time limit to file a cancellation action against a trademark registration on the grounds that it has been filed in bad faith.

An additional ground for removal of a trademark from the registry occurs if there has been no use of the mark during the three years preceding the petition for removal.

Opposition and cancellation proceedings are similar and include the submission of detailed statements, filing of evidence in the form of affidavits, a cross-examination hearing before the registrar and written summations.

The registration of a trademark is not a condition for filing opposition or cancellation proceedings. Brand owners may attack trademark applications and registrations on the basis of common law rights acquired through use of the trademark and also on the basis of international goodwill attached to a trademark.

The range of costs associated with a third-party opposition or cancellation proceeding will vary on the merits of each case.

Duration and maintenance of registration

  1. How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration may remain valid for a period unlimited in duration, subject to its renewal 10 years after filing, and thereafter every 10 years. Renewal takes place upon request and payment of the official fees:

  • single class registration – each renewal: 3,084 shekels (approximately US$915).
  • multi-class registration:
  • first-class renewed: 3,084 shekels (approximately US$915); and
  • each additional class renewed: 2,602 shekels (approximately US$775).

Following the renewal deadline, there is a six-month grace period in which a registration may be renewed, subject to payment of belated renewal fees. However, when a mark is not renewed by the due date or within the six-month grace period (with payment of belated renewal fees), it is removed from the register and may no longer be renewed. At that stage, it is possible to request its reinstatement by filing a suitable affidavit, but such a request has to be filed within six months. In other words, if more than a year has passed since the renewal date, it is no longer possible to renew or reinstate a lapsed registration.

Moreover, the canceled registration is deemed valid for an additional six-month period and consequently may be cited during the examination of a new application.

Surrender

  1. What is the procedure for surrendering a trademark registration?

The unilateral surrender of a registered trademark during cancellation or other contentious proceedings is not recommended since the trademark owner risks being ordered to pay costs to the applicant for cancellation. In such proceedings, it is recommended for the parties to file a joint notice to the trademarks office requesting withdrawal of the registration and termination of the proceedings without an order for costs.

Related IP rights

  1. Can trademarks be protected under other IP rights?

The registration of a trademark does not preclude other different intellectual property protections such as copyrights and industrial designs.

Trademarks online and domain names

  1. What regime governs the protection of trademarks online and domain names?

The protection of trademarks online and domain names are governed by the same system of trademarks and unfair competition laws.

The use of domain names or trademarks online that are identical or confusingly similar to a registered trademark or an unregistered well-known trademark constitutes infringement. In addition, the owners of unregistered trademarks, namely, brand owners that acquired common law trademark rights and goodwill through use of a trademark, are also entitled to enforce their rights against the unauthorized use of trademarks online or domain names that are identical or confusingly similar under unfair competition laws, such as passing off, and, based on the circumstances, unfair interference with access to a trader’s business, under sections 1 and 3 of the 1999 Commercial Civil Wrongs Law, respectively.

The Israel Internet Association provides an expedited procedure resolution for disputes concerning the allocation of domain names under the .IL ccTLD filed or used in bad faith, including disputes with respect to domain names that are identical or confusingly similar to registered or unregistered trademarks.

LICENSING AND ASSIGNMENT

Licenses

  1. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

Under Israeli trademark law, the actual user of a trademark has to be recorded in the Israeli Trademark Register as an ‘authorized user’ in respect of all the relevant Israeli trademark registrations. The use of a registered trademark by a person other than the registered owner may not be regarded as ‘use of the mark’ by the trademark owner, unless the other person is an authorized user. In other words, for any trademark use (exclusive or non-exclusive) to accrue to the registered owner of a mark, the actual user has to be recorded as such in the Trademark Register.

In connection with the above rule, the current practice of the Israeli Trademark Office is very strict and applies even when the user is a wholly owned subsidiary of the trademark owner.

A typical situation in which use by a non-registered user might present a serious problem is when the use concerned is exclusive (or when there are several users, none of which is the registered owner of the mark or recorded as an authorized user). In such a case, after three consecutive years from the registration date, the trademark registration becomes vulnerable to cancellation on the grounds of non-use in spite of the use by the non-recorded user.

Recordal of the license may take place only after the mark is registered. However, it is obviously advisable to have the license agreement finalized and executed before the licensee starts using the mark.

To apply for the recordal of an authorized user in the Israeli Trademark Register, the following documents are required:

  • power of attorney on the licensor’s behalf;
  • power of attorney on the licensee’s behalf;
  • the license agreement; or
  • a certified copy.

None of these documents requires legalization.

Further, in accordance with the current policy of the Israeli Trademark Office, either the licensor or licensee are obliged to confirm that the license recordal is unlikely to mislead the public, to the best of its knowledge and understanding.

Assignment

  1. What can be assigned?

Any trademark registration or application may be assigned.

Assignment documentation

  1. What documents are required for assignment and what form must they take? What procedures apply?

To record an assignment we require a document attesting to the assignment of the Israeli trademarks and the power of attorney on the assignee’s behalf.

The assignment document may be in the form of a deed signed by the assignor or in the form of an agreement (certified copy, duly notarized) signed by both parties, specifically specifying the title and registration number of the trademarks. If an agreement including the assignment was already executed, it is possible to submit a confirmatory deed of assignment, which refers to the previous, more general agreement, and specifies only the details relevant to the assignment of the specific trademarks in Israel.

Currently, all documents are filed electronically at the Trademark Office, and we thus require scanned copies of all of the original documents (or of notarized certified copies). However, the registrar reserves the right to request the original documents at any time he or she deems necessary.

Validity of assignment

  1. Must the assignment be recorded for purposes of its validity?

An assignment does not have to be recorded to be valid. A chain of title (e.g, an assignment or merger) should be recorded in the Trademark Register. While there is no explicit time limit set in the law for such recordation, it is recommended to have the change duly recorded in the Trademark Register as soon as possible.

Security interests

  1. Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interests are recorded on the Israeli Pledge Register. Validity and enforceability require such recordation. Recordation of security interests at the Israeli Trademark Register is not possible.

ENFORCEMENT

Trademark enforcement proceedings

  1. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

A trademark owner may enforce its rights against an alleged infringer or dilutive use of a mark with an action before the court. The action may be filed together with a motion requesting interim relief.

Owners of well-known registered and unregistered trademarks as well as owners of registered trademarks may base their action on trademark infringement. Owners of trademark rights acquired through the use of the mark need to base their action on other causes of action to obtain protection, such as the tort of passing off, which is defined under the 1999 Commercial Civil Wrongs Law.

The Israeli judicial system consists of three different instances, namely, magistrates’ courts, district courts and the Supreme Court, and while there are no specialist courts, intellectual property matters are usually heard before district courts (the second instance).

The owner of a registered mark whose right has been infringed or faces infringement may be able to resort to administrative measures of protection, such as filing a complaint with customs to detain future shipments of goods likely to infringe upon its registered trademark.

In addition, several acts involving unauthorized use of registered trademarks and their imitations incur criminal liability under different trademark laws. For instance, according to the provisions of the Trademark Ordinance several acts incur criminal liability and corporate officers are also liable to penal measures. These criminal offenses include:

  • the unauthorized commercial marking of goods bearing a registered trademark with respect to the same goods, which is likely to create confusion;
  • the unauthorized commercial import of goods bearing a registered trademark with respect to the same goods or imitation of such mark that is likely to create confusion;
  • the commercial sale, distribution, or rent of goods marked or imported to Israel bearing a registered trademark with respect to the same goods; and
  • possession for trade purposes of goods so marked or imported.

Other criminal offenses are stipulated by the Merchandise Marks Ordinance, such as the prohibition to sell or possess for commercial or industrial purposes goods or items bearing a fake trademark.

To open a criminal proceeding, the mark owner may either file a complaint with the police with respect to the infringement of a registered trademark or file a private criminal complaint with the court.

Procedural format and timing

  1. What is the format of the infringement proceeding?

The Israeli judicial system consists of three different instances, namely, magistrates’ courts, district courts and the Supreme Court, and intellectual property matters are usually heard before district courts. A trademark infringement or dilution action is initiated by filing a statement of claims detailing the facts that if subsequently proven will establish the cause of action.

The defendant must file a defense statement and the plaintiff, at its discretion, may respond to the defense statement with a statement of response. Once the exchange of pleadings is finished the case proceeds to pretrial during which the parties conduct preliminary proceedings, which may include discovery, inspection, disclosure of specific documents and interrogatories. Afterwards, there are one or more pretrial hearings, intended to resolve the pending preliminary issues in dispute between the parties and obtain decisions on miscellaneous motions.

During the pretrial, the judge will decide on the next stages of the proceedings and the due dates for submission of evidence by the parties, usually comprising written affidavits, surveys and expert opinions. Once the parties have submitted their evidence a trial hearing is scheduled for the cross-examination of the affiants and experts. Subsequently, the parties will exchange their summations and the judge will later on hand down his or her decision.

To open a criminal proceeding, the trademark owner has the option of filing a complaint with the IP unit of the Israeli police; the criminal proceedings are handled and controlled by the state. In cases when the trademark owner decides to control and handle the criminal proceedings, it is also entitled, depending on case circumstances, to file a private criminal complaint to a magistrates’ court.

The typical time frame for trademark infringement, dilution actions or criminal actions from the filing of the claim until the issuance of a decision is between two to three years.

Burden of proof

  1. What is the burden of proof to establish infringement or dilution?

The burden of proof in trademark infringement proceedings will vary according to the relevant causes of action.

For infringement of a registered trademark, the trademark owner should demonstrate unauthorized use of its registered trademark or of a similar trademark with respect to the same goods or services or with respect to goods or services of the same description.

In cases of infringement of a registered and well-known trademark, the trademark owner mark may obtain protection against the unauthorized use of its trademark or of a similar trademark also with respect to goods and services of different descriptions. For this purpose, he or she should demonstrate that such use is likely to indicate a connection in the consumer’s mind (likelihood of association) between such goods and services and him or herself and that he or she might be harmed as a result of such use.

There is no separate registration of well-known marks, so that the determination of whether a registered mark is well-known is a judicial determination that shall take into account the extent to which the mark is known in public circles relating to it and the extent to which it is known as a result of marketing.

In cases of infringement of an unregistered well-known trademark, the trademark owner may obtain protection against the unauthorized use of its trademark or of a similar trademark with respect to goods and services of the same description.

The owner of an unregistered trademark may not institute a cause of action on the basis of trademark infringement, but under the tort of passing-off. To establish passing-off, a plaintiff must prove two elements, namely, his or her goodwill (reputation) in his or her goods or services and likelihood of confusion as to the origin of the goods or services.

To determine confusing similarity for the purposes of establishing trademark infringement and passing off, when assessing similarity between trademarks Israeli courts examine the marks in their entirety, having regard to their overall impression. A threefold test applies that examines the visual and phonetic similarity between the marks, the similarity of the goods, the targeted customers and channels of distribution, as well as other case circumstances, including the general idea behind the marks. While with respect to trademark infringement actions the focus is on the confusing similarity between the marks themselves, for the purposes of passing off, likelihood of confusion is examined having regard to the entirety of the defendant’s conduct.

The dilution doctrine may apply in cases of registered and unregistered well-known trademarks, and internationally famous businesses. Dilution will exist also in the absence of likelihood of confusion, in cases when the trademark possesses strength exceeding specific goods and services and where the infringing use is intended to promote the business of another trader through free-riding on the goodwill of the trademark’s owner famous mark, through blurring its distinctiveness.

Standing

  1. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Only trademark owners, including owners of a well-known unregistered mark, may seek relief in cases of trademark infringement. A licensee cannot bring an action for trademark infringement. Owners of registered trademarks can also initiate criminal proceedings filing a private criminal complaint with the court or filing a complaint with the IP unit of the police.

Border enforcement and foreign activities

  1. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The owner of a registered mark whose rights have been infringed or who faces ‘reasonable suspicion’ that his or her rights will be infringed, may file a complaint with the customs authorities to detain the release of allegedly infringing goods that are being imported to Israel and to the Palestinian authorities.

The customs authorities may, either upon receiving such notice or at his or her own initiative, detain imported goods that prima facie infringes registered trademark rights. Detention by the customs is subject to the deposit of indemnification guarantee by the trademark owner and depending on the size of the shipment detained may be canceled if the owner fails to deposit a guarantee and bring a legal action within 10 days of the notice of detention.

There are no available border enforcement measures with the customs authorities in relation to the exportation of infringing goods from Israel.

Due to the territoriality of trademark rights, the courts are likely to limit their considerations to acts done in the territory of Israel. Eventually, a blatant infringement of trademark rights or other bad conduct made outside the territory of Israel may increase the chances of success of establishing the element of bad faith, such as for instance the personal knowledge of the defendant of an unregistered trademark that has acquired international reputation outside Israel.

Discovery

  1. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Discovery, inspection, disclosure with respect to specific documents and written interrogatories proceedings are available in Israel. Discovery proceedings are not available against non-parties. Anton Piller search and seizure orders may be granted if the court is convinced of the likelihood of the defendant destroying evidence or assets required for the trial.

Timing

  1. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The typical time frame for a trademark infringement or dilution action from the filing of the claim until the issuance of a decision is two to three years in the first instance and two years in the appeal. Applications for interim relief may be resolved within weeks, and sometimes several months.

Limitation period

  1. What is the limitation period for filing an infringement action?

There is a seven-year limitation for filing an infringement action, which is prescribed by law starting on the date the cause of action occurred. Where brand owners were not aware of the infringement, the limitation period starts on the date the infringement was brought to their attention. Relevant case law holds that each act of infringement gives rise to a new claim, making it possible to file an infringement action seeking injunctions after the seven-year limitation; however, damages can be recovered only for the seven-year limitation period.

Litigation costs

  1. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The official fee rate for filing the infringement or dilution action is 2.5 percent of the claimed amount. The court fees are paid in two equal installments:

  • the first when filing the action; and
  • the second up to 20 days prior to the date scheduled for the first evidence hearing.

It is common practice to indicate merely a nominal amount for court fees. The official fees related to the appeal will depend on the specific appeal concerned, but it will not surpass a few thousand shekels.

According to case law, the prevailing party is generally entitled to reimbursement of its reasonable legal costs and attorney fees, but the reimbursement is typically only partial and depends on several case circumstances, such as the parties’ conduct during the proceedings.

Appeals

  1. What avenues of appeal are available?

The Israeli judicial system consists of three different instances, namely, magistrates’ courts, district courts and the Supreme Court. Trademark infringement cases are normally heard before district courts as first instance and the decisions may be appealed to the Supreme Court. Other miscellaneous decisions, such as decisions in interim relief proceedings, may be appealed to the Supreme Court but only with leave.

Defenses

  1. What defenses are available to a charge of infringement or dilution, or any related action?

The most common defenses available to a charge of infringement or dilution are:

  • dissimilarity between the marks concerned, including phonetic, visual and conceptual differences between the marks;
  • unlikelihood of confusion due to different goods and services, different consumers and different or exclusive channels of distribution;
  • independent adoption of the mark in good faith and prior or concurrent rights acquired by the defendant through use of the mark in good faith;
  • weakness and descriptiveness of the allegedly infringed trademark, allowing co-existence;
  • challenges to the validation of an infringed trademark due to lack of distinctiveness, genericness; and
  • rights acquired in bad faith.

In addition, other common law defenses are available including estoppel, laches, acquiescence or waiver, or both.

Remedies

  1. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The remedies available to a successful party in an action for trademark infringement or dilution include permanent injunction, damage caused to the trademark owner such as loss of profit or alternatively an accounting for profits and profits unjustly made by the defendant. An award of damages may be based on proof of damage suffered by the owner or by way of judicial assessment.

In trademark infringement and dilution cases involving the tort of passing off, the plaintiff may be entitled to statutory damages without proof in an amount of up to 100,000 shekels for each tort. The amount of statutory damages awarded takes into account, among other things, the gravity of the matter, the number and duration of the infringing actions, the infringer’s conduct and the size of its business.

It is also possible to obtain an order for the destruction of infringing goods or their disposition to the trademark holder, as well as any other order that the court may deem prudent in the case circumstances, including different declarative judgments such as recognition of well-known trademarks.

In cases of infringement of unregistered well-known trademarks, the only remedy available in a cause of action based on trademark infringement is injunction; however, other remedies are available under different causes of action such as passing-off and unjust enrichment.

In appropriate cases, it is possible to file a motion requesting different preliminary remedies such as orders for interlocutory injunction, search and seizure orders and orders restricting disposition with respect to an asset. The motion for interim relief must be requested simultaneously with or shortly after filing the statement of claims; and in extraordinary circumstances of urgency, the interim relief may be granted ex parte, before the inter partes hearing.

There are several technical and substantial conditions to be met to have the interim reliefs granted and avoid the motion being denied. The motion needs to be filed together with an affidavit to support the factual claims, and the applicant needs to file a personal undertaking not limited to an amount and a third-party guarantee at an amount set by the court to indemnify the defendant for its eventual damages if the claim terminates or is found to be unjustified and is revoked.

The motion for interim relief must persuade the judge that the interim relief is crucial to prevent irreparable damages and keep the status quo, demonstrating reasonable chances of success in the main case and that the balance of convenience is in the plaintiff’s favor. Moreover, the plaintiff must draft the motion in good faith, disclosing all important facts and documents to the court, in a timely manner, since excessive delay in seeking the relief may amount to laches and dismissal of the motion.

There are different penalties applied in connection to offenses related to the infringement of trademarks such as the imposition of fines and imprisonment of up to three years.

ADR

  1. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

The most widespread alternative dispute resolution practice is mediation, which is a practice expressly encouraged by judges and the court system and requires the parties’ mutual consent.

The benefits of mediation include parties’ control over the dispute, the potential costs saved and confidentiality of the proceedings. A potential risk is bad management of the mediation.

Another common practice is arbitration. The verdict in arbitration practices is legally binding on both sides and enforceable in courts. The parties can agree on whether arbitration decisions are appealable.

Benefits of arbitration include expeditiousness of the proceedings due to the substantial workload in the Israeli court system, the non-public character of the proceedings and the parties being able to choose an arbitrator well acquainted with trademark laws.

UPDATE AND TRENDS IN TRADEMARKS IN ISRAEL

Key developments of the past year

  1. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Parallel importation of goods to Israel, and situations in which the alleged parallel importation amounts to trademark infringement, is a hot topic. Trademark owners, motivated by their official importers, are increasingly bringing to Israeli courts cases involving parallel importation of goods, trying to rely on different questionable conducts of the parallel importers to establish trademark infringement, and according to the conduct overcome the doctrine of exhaustion of IP rights after the first sale of the goods.

Recently, in CA 7934/20 Jafora Tabori Ltd v Ben Shlush Import and Export Ltd, the Supreme Court accepted an appeal filed by Tabori, a local manufacturer and owner of the registered rights in the trademark Schweppes, prohibiting Ben Shlush from importing into Israel soft drinks bearing the Schweppes mark produced in Ukraine.

The trademark rights to the trademark Schweppes in Ukraine are registered in the name of a different and unrelated company, European Refreshments Limited. While both Tabori and European Refreshments obtained restricted territorial rights in the mark in the 1990s from the previous owner of the rights worldwide, the UK company Cadbury-Schweppes, both companies substantially advertise the history and the international goodwill attached to the mark Schweppes that is common to both parties.

In view of the complexity of the case and the eventual influence on this important area of the law, we foresee that Ben Shlush will file an application to request a further hearing to reconsider the legal conclusions of the case.

* The information in this chapter was accurate as at September 2023.

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