Israeli Trademark Law Guide

This guide is intended to give the reader an overview of Israeli Trade Mark Practice and Procedures.

We have attempted to keep the text as brief as possible so that it can be used as a quick reference guide. We hope that this guide will be useful for foreign attorneys, agents, paralegals, and IP managers.

Whilst all care has been taken in the preparation of this guide, it does not constitute legal advice and it cannot give rise to a client-attorney relationship, nor any liability on the part of the authors for any decisions, actions, or inactions taken in reliance of this guide.

Part A: Prosecution Procedure

1.1 General

(a) Definition of a “mark”

According to the Israeli Trademark Ordinance, a “mark” means “letters, numerals, words, devices or other signs, or combinations thereof, whether two-dimensional or three-dimensional”. 

In terms of what types of mark may qualify as trademarks, the definition of “mark” is wide enough to include three-dimensional marks, abstract color marks and sound marks.

However, it is probably impossible to obtain a valid registration of taste marks or olfactory marks in Israel. Although applications for taste marks or olfactory marks have not yet been examined to date, it seems that such marks do not meet the definition of a “mark” in the Israeli Trademark Ordinance.

(b) Filing date requirements

Once an Israeli trademark application is filed, a filing date is accorded, provided that the application contains: applicant’s name and address, a graphic representation of the mark, a list of goods/services, and a receipt of payment of the official filing fee.

If any of the filing date requirements is not met, a deficiency notice is issued by the Trademark Office. In such case the filing date is deferred to the date on which all requirements are met. Each of the requirements is separately discussed below.

1.2 Graphical representation

(a) General

A trademark application may include only one graphic representation of the mark. An application for a series of marks is not allowed.

(b) Black and white vs. color representation

A black and white or greyscale representation of a trademark is not identical with a color representation. A black and white representation is color neutral, meaning that the application claims the represented mark in all colors, whereas a color representation of a mark means that the applications claims the mark only in the colors depicted.

Note that it is impossible to change the application to black and white after filing. Therefore, if the applicant does not seek to limit the application to any specific color, he or she should file a black and white representation of the mark.

(c) Sound marks

An application for a sound mark must include a representation of the musical notes comprising the mark, and a digital audio file of the mark.

(d) Three-dimensional marks

An application for a three-dimensional may consist of more than one graphic representation, in order to disclose the entire outline of the mark. The application must expressly indicate that the application is for a three-dimensional mark.

1.3 Acceptable identification of goods and services

(a) General

A trademark application must contain a list of goods and services in relation to which it is sought to register the mark. The list must be classified in accordance with the Nice Agreement.

The scope of protection defined by the original list of goods and services cannot be extended. If the applicant wants to protect additional goods or services after filing, a new application must be filed.

The list of goods and services applied for must meet the following criteria:

_      Each of the goods and services identified must be clear and precise.

_      Each of the goods and services identified must proper to the class in which it is applied for.

_      The list of goods and services must not include registered trademarks.

_      The list of goods and services must not include unauthorized appellations of origin.

(b) Overly broad terms

It is Office practice to reject overly broad or vague terms in the list of goods or services. The list must be worded in such a way as to indicate clearly the nature of the goods or services identified.

The Trademark Office does not permit class headings as part of an acceptable identification of goods and services in classes 1, 3-12, 16, 17, 19-21, 28-31.

In order to facilitate a smoother trademark registration process, it is advisable to select pre-approved terms from WIPO’s Goods and Services Manager.

(c) Lower threshold for registration: pharmaceutical preparations

Applicants in the pharmaceutical industry are often still in the R&D stage at the time of filing, and do not yet know the exact intended uses of the preparations. In order to facilitate applications in the pharmaceutical field, the Trademark Office established a lower threshold for registration of applications consisting of pharmaceutical preparations. According to Trademark Office rules, an application consisting of pharmaceutical preparations may be allowed even if the specification of goods is overly broad, on the condition that the applicant undertakes to identify the exact pharmaceutical preparations intended for use within 5 years from the filing date. This allows applicants whom are still in the R&D stage to timely register their trademarks and defer the requirement to identify the specific pharmaceutical preparations to a later stage, when the exact nature of the preparations is clarified.

The Trademark Office also accepts for registration broader specifications of goods related to pharmaceutical preparations, in case the applied for mark is a “house mark” of the applicant.

(d) Unacceptable terms

The Trademark Office considers the following terms to lack the required level of clarity and precision:

_      Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry (class 1)

_      Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry (class 1)

_      Pharmaceutical preparations (class 5)

_      Pharmaceutical and veterinary preparations (class 5)

_      Pharmaceutical preparations and substances (class 5)

_      Medicinal preparations (class 5)

_      Goods of common metal not included in other classes (class 6)

_      Machines and machine tools (class 7)

_      Hand tools, hand-operated (class 8)

_      Hand-operated hand tools (class 8)

_      Manually operated hand tools (class 8)

_      Hand tools and implements [hand-operated] (class 8)

_      Hand tools and implements, hand-operated (class 8)

_      Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, life-saving and teaching apparatus and instruments (class 9)

_      Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking [supervision], lifesaving and teaching apparatus and instruments (class 9)

_      Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking [supervision], life-saving and teaching apparatus and instruments (class 9)

_      Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, life-saving and teaching apparatus and instruments (class 9)

_      Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking [supervision], lifesaving and teaching apparatus and instruments (class 9)

_      Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking [supervision], life-saving and teaching apparatus and instruments (class 9)

_      Medical apparatus (class 10)

_      Medical instruments (class 10)

_      Surgical and medical apparatus and instruments (class 10)

_      Surgical, medical, dental and veterinary apparatus and instruments (class 10)

_      Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth (class 10)

_      Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes (class 11)

_      Apparatus for locomotion by land, air or water (class 12)

_      Marketing (class 35)

_      Marketing services (class 35)

_      Product marketing (class 35)

_      Direct marketing (class 35)

_      Direct marketing services (class 35)

_      On-line advertising and marketing services (class 35)

_      The bringing together, for the benefit of others, of a variety of goods, excluding the transport thereof, enabling customers to conveniently view and purchase those goods (class 35)

_      Repair (class 37)

_      Repair services (class 37)

_      Installation services (class 37)

_      Installation and maintenance services (class 37)

_      Installation, maintenance and repair services (class 37)

_      Repair, maintenance and installation services (class 37)

_      Construction, repair, maintenance and installation services (class 37)

_      Telecommunications (class 38)

_      Telecommunication (class 38)

_      Telecommunication services (class 38)

_      Treatment of materials (class 40)

_      Scientific and technological services (class 42)

_      Scientific and technological services and research (class 42)

_      Scientific and technological services and related research and design services (class 42)

_      Scientific and technological services and research and design relating thereto (class 42)

_      Scientific and technological services and research and development relating thereto (class 42)

_      Scientific and technological services and research and design services related thereto (class 42)

_      Scientific and technological services and research and design services relating thereto (class 42)

_      Personal and social services regarding individual needs (class 45)

_      Personal and social services provided by third parties to meet the needs of individuals (class 45)

_      Personal and social services rendered by others to meet the needs of individuals (class 45)

1.4 Priority claim

The right of priority has the effect that the date of priority counts as the date of filing of the Israeli trademark application for the purposes of establishing which rights take precedence.

The Convention priority right may be claimed during the six months following the first filing, provided the country of first filing was a party to the Paris Convention or to the WTO, or a country with a reciprocity agreement with Israel.

The priority must be claimed in the application.

Within three months of filing, applicant must provide the Trademark Office with a certified copy of the priority document.

The applicant may claim the priority of one or more previous trademark applications.

The applicant may claim partial priority claims, in case the applicant wishes to include additional, non-convention goods and/or services in the Israeli application.

1.5 Disclaimer

A disclaimer is a statement by the applicant disclaiming any exclusive right to an element of the mark which is not distinctive.

An applicant cannot disclaim use of its trademark on a particular good or service in its specification. If the applicant wishes to limit the scope of the goods and services for which protection is sought, he must apply to restrict the list of the goods and services itself.

Until recently, the Trademark Office has often-required applicants to submit a disclaimer with respect to elements of marks that were not distinctive. However, recent Trademark Office guidelines established new rules abolishing any requirement to disclaim non-distinctive matter. The new rules are based on the assumption that a trademark registration grants its owner the exclusive right to use the mark as a whole, and not the exclusive right to use any one element of the mark. Any one element of a mark is considered “disclaimed”, even if it is not expressly disclaimed in the application. Therefore, there is no requirement nor is it of any merit to disclaim non-distinctive elements in an Israeli trademark application.

1.6 Collective and certification marks

Israeli trademark law provides protection for collective and certification marks:

(a) Collective marks

A collective mark indicates that the goods or services bearing the mark originate from members of an association, rather than just one trader. An applicant for a collective trademark must show that the mark is intended for use by members of the association concerned, and that the association maintains some control over the use of the mark by its members.

(b) Certification marks

A certification mark indicates that the goods or services bearing the mark are of a certain quality, accuracy or that they meet some other standard or criteria. An applicant for a certification trademark is required to submit with the Trademark Office a set of regulations governing the use of the mark.

2.1 Examination timeline

(a) General

Once an Israeli trademark application is filed, a filing date is accorded, and the Trademark Office issues a receipt. At this early stage, the Trademark Office only checks if certain filing date requirements have been fulfilled.

Within approximately 1 year from the filing date of the application (depending on the case backlog at the Israeli Trademark Office) the examination begins. There is no need to request examination.

(b) Office action deadline

Where an office action has issued, the applicant is given a period of three months to overcome the refusal. It is possible to obtain an extension of time for responding to an office action. A total extension period of eight months is available for each office action. A total extension time of 15 months is available for the entire examination of the application.

The entire procedure for examining an application, up to allowance, must be terminated within two years from the date on which the first office action had issued.

Where an application is allowed, the mark is published in the Israeli Trademarks Journal for opposition purposes. Within three months from the date of publication, any person may file with the Registrar a notice of opposition to the registration of the mark. The deadline to file the opposition is non-extendable. If no oppositions are filed, the trademark is registered.

(c) Expedited examination

Applicant may file a request for the expedited examination of his application. The request for expedited examination must be accompanied by an affidavit setting forth facts substantiating the claim that the examination of the application must be expedited. The following reasons are deemed sufficient grounds for expediting an examination:

_      The mark is being used by a third party without authorization from the applicant.

_      The applicant intends to file an international application based on the national basic application.

_      The applicant intends to license the mark.

_      The mark was previously applied for, but could not be registered because the amendments required by the examiner could not be applied within the previous application.

_      The mark had been registered but was mistakenly cancelled due to non-payment of renewal fees.

The Trademark Office is quite liberal in granting motions for expedited examination. It takes about 2-3 weeks from the granting of the motion until the examination commences.

2.2 Examination grounds

Upon examination, the Trademark Office assesses the trademark eligibility for registration. The assessment is made both with respect to the inherent distinctiveness of the mark (absolute grounds) and with respect to the mark’s similarity to prior registrations and pending applications for the same description of goods (relative grounds). Both absolute and relative grounds for refusals are discussed in detail in § 3 and § 4 below.

As part of the examination process, the examiner conducts a thorough search of the Register for prior registrations and pending applications that are identical or similar to the applied for mark. In the event that the applied for mark is identical or confusingly similar to a prior trademark registration, the examiner will issue an office action.

Israeli examiners do not conduct a survey of the market, the consumers, channels of distribution, extent of goodwill of the marks etc. Therefore, in the event the applied for mark is only prima facie confusingly similar to a registered mark, any doubt will be manifested in a refusal to accept the mark, and the onus to prove that the mark is eligible for protection will be put on the applicant.

Where the examiner is of the opinion that the applied for mark is somewhat similar to a prior trademark registration, yet not similar to the point of confusion or deception, he will allow the application. In such circumstances the examiner is likely to subject the allowance of the application to applicant’s consent that the Trademark Office furnishes the owner of the registered trademark with a notice advising him that the application has been allowed, so that the owner of the registered trademark may be able to timely oppose it, if he so decides.

Where the applied for mark is confusingly similar to a pending trademark application, the examiner will initiate interference proceedings between the two applications. The filing date of the respective application has no bearing in this regard. For more information on interference proceedings, please see § 5 below.

2.3 Amendments to the representation of the mark

The representation of a mark in a trademark application may be amended during examination provided that:

_      the application was not yet granted;

_      the request for the amendment does not require the examiner to conduct an additional search and examination of the application; and

_      the amendment will not result in broadening the rights conferred on the application.

2.4 Divisional applications

Divisional applications are available during examination, yet only for multiple class applications. The applicant may, at any time prior to registration, request that the application be divided into separate applications, each for a separate class of goods. The filing date of each of the divisional applications shall be the date of filing of the original application.

2.5 Ex-parte hearing

In case the examiner refuses to allow an application, the applicant is entitled to request an ex-parte Hearing before the Registrar. The request must be submitted within three months from the date on which the last office action was issued.

Part B: Grounds For Refusal

3.1 General

The key term of art in Israeli trademark law is “distinctiveness”. Under Israeli law, a mark is not eligible for registration if it is not capable of distinguishing the applicant’s goods or services in respect of which the trademark is sought to be registered from the goods and services of other persons.

A trademark is considered distinctive and eligible for protection if it is either inherently distinctive or has acquired distinctiveness through secondary meaning.

3.2 The spectrum of distinctiveness

(a) General

Israeli case law has adopted the classic formulation set out by the US Federal Court in Abercrombie & Fitch to determine whether a mark is inherently distinctive. The Abercrombie categories arrays marks within a spectrum of distinctiveness in an ascending order reflecting their inherent distinctiveness: generic, descriptive, suggestive, and arbitrary or fanciful.

(b) Generic marks

Marks describing the very essence of the goods or services they cover are devoid of any distinctive character and thus remain in the public domain and are not subject to trademark protection.

(c) Descriptive marks

Marks ordinarily used to describe the quality, quantity, intended purpose, value, geographical origin, or some other characteristic of goods or services they cover. Descriptive marks are not inherently distinctive, but may be registered subject to proof of acquired distinctiveness.

(d) Suggestive marks

Marks alluding to a feature or quality of the goods or services they cover without directly describing them. Suggestive marks are inherently distinctive and eligible for registration.

(e) Arbitrary or fanciful marks

Marks that have no connection to the goods or services they cover. Arbitrary marks are inherently distinctive and eligible for registration.

3.3 The boundary line between descriptive and suggestive marks

(a) General

At the extremes of trademark protection are generic terms, which can claim no protection, and arbitrary or fanciful terms, which may always claim protection. In the broad middle ground, where most of the trademark battles are fought, are the descriptive and suggestive marks.

The exact position of the boundary line between descriptive and suggestive marks is almost impossible to define in the abstract.

(b) The Imagination test

The most popular method under Israeli case law to determine the suggestive-descriptive boundary is the “imagination test”. Under the imagination test, the question is how immediate and direct is the thought process to go from the designation to some characteristic of the product. Traditionally, Israeli courts refer to the length of the mental leap: If one, seeing the mark or hearing it, immediately understands the connection between the mark and the goods, their quality and characteristics, then the mark is descriptive. If, on the other hand, one should think at least for a moment until the connection between the mark and the goods becomes clear, then the mark is suggestive

(c) Public interest and constitutional rights

When assessing the boundary line between descriptive and suggestive marks, Israeli courts give weight to the public interest of free competition and to constitutional rights such as freedom of expression and freedom of occupation. These considerations may at times tip the balance toward a decision that a particular term is descriptive rather than suggestive. In the matter of Avi Malka (Avi Malka v. Avazi, C.A. 8981/04), the Israeli Supreme Court stressed the fact that descriptive terms are in the public domain. The court held that, as a matter of free competitive policy, no one seller should be given the exclusive right to describe a product by an important characteristic, and thus preempt or limit competitors’ use of the term to describe their own products. The court observed that the public interest of free competition and constitutional rights such as freedom of expression and freedom of occupation require the court to delineate the boundary line between descriptive and suggestive marks in utmost caution. In light of the above, the court stated: “It seems that where a particular term falls within the middle ground between merely descriptive and only suggestive, so that the term includes descriptive aspects in addition to suggestive elements, the considerations mentioned above [i.e., free competition, freedom of expression and freedom of occupation] tip the balance toward the decision that the term is descriptive.”

3.4 Office policy in respect of certain types of trademarks

(a) General

It is Office practice to reject trademark applications that consist wholly of a sign that is used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods and services applied for.

The following is a summary of the Israeli Office’s current practice in respect of certain types of trademarks.

(b) Combinations of words

A mere combination of elements, each of which is descriptive, remains descriptive. However, if due to the unusual nature of the combination it creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, that combination will be considered distinctive.

(c) Letter/Number Combinations

Non stylized-marks comprising a single letter or a single number are deemed devoid of distinctive character.

Combinations of two digits are usually deemed devoid of distinctive character, because such combinations are usually used for measurements, quantities etc.

Marks consisting of a combination of two letters, three digits, or a combination of letters and digits are usually considered eligible for registration.

(d) Misspellings and omissions

A misspelling does not necessarily render a distinctive character to an otherwise descriptive mark. However, if the misspelling is fanciful, striking or changes the meaning of the word, it then renders the mark a distinctive character.

(e) Abbreviations and acronyms

Abbreviations of descriptive terms are in themselves descriptive if they are commonly used that way, and the relevant public recognizes them as being identical to the full descriptive meaning.

(f) Figurative marks

Where a distinctive figurative element is added to an otherwise non-distinctive word element, then the mark may be eligible to registration. On the other hand, basic or banal figurative elements do not add distinctive character to a mark.

(g) Stylized word elements

The less common a typeface is, the more distinctive it is. In order to add distinctive character to a mark, the typeface’s stylization should create an immediate and lasting memory on the part of the relevant public.

(h) Multi-word trademarks

Marks which consist of five words or more are deemed devoid of distinctive character, but may be registered subject to proof of acquired distinctiveness.

(i) Geographic References

Trademarks comprising a geographical indication which may serve in trade to designate the geographical origin of the goods or of rendering of the service are generally considered part of the common vocabulary and as such should be kept available for all traders to use.

Where the geographical indication is arbitrary with respect to the goods or services, and it is not likely that the relevant customer would perceive the geographical indication as in fact indicating the geographical origin of the goods or of rendering the service, the mark may be registered.

Where the geographical Indication is combined with distinctive elements, such as a distinctive design, or where the trademark acquired distinctiveness through use, the mark may be registered, on the condition that the mark is not misleading with respect to the place from which the goods originate.

The Trademark Office policy with respect to geographical indications for wines and alcoholic beverages is stricter. Geographical indications for wines and alcoholic beverages may not be registered as trademarks for wines and alcoholic beverages not originating in the geographical area indicated regardless of their being misleading or not.

(j) Slogans

Until 2012, the Israeli Trademark Office applied a very restrictive policy with respect to registration of slogans, and inclined to refuse slogans’ registration on grounds of non-distinctiveness. However, in the matter of Eveready (Eveready Battery Company Inc. v. The patent and Trademark Registrar, R.A. 21488-05-11) the Tel Aviv District Court had significantly lowered the threshold of registrability for slogan trademarks. According to the Everyday decision, the Trademark Office must apply the same criteria to establish distinctiveness for slogans as for any other mark. Nevertheless, the court pointed out that slogans that are merely informational or that are common laudatory phrases or statements are not perceived as an indication of the commercial origin of the goods or services. In such cases, it is still difficult to establish distinctive character in relation to slogans.

A slogan is more likely to be considered distinctive whenever it is seen as more than a mere advertising message, such as in the following instances:

_      the slogan has a number of meanings;

_      the slogan constitutes a play on words;

_      the slogan introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected;

_      the slogan has some particular originality or resonance; or

_      the slogan triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.

(k) Three-dimensional shapes

A three-dimensional configuration for a shape of a product or for a product’s package is generally considered devoid of inherent distinctive character.

Nevertheless, any three-dimensional trademark configuration may be entitled to protection subject to proof of acquired distinctiveness, if the following requirements are met:

_      the configuration serves, de facto, to identify the goods just by their shape;

_      the configuration is not necessary to obtain a technical result; and

_      the configuration does not give a substantial aesthetic value to the goods.

Where a representation of a three-dimensional trademark contains distinctive elements, such as words, labels or figurative elements, which might render the trademark a distinctive character, the Office may allow the application even if it does not meet all of the above standards.

(l) Marks that are customary in trade

Marks which have become customary in the trade are deemed devoid of distinctive character, but may be registered subject to proof of acquired distinctiveness

(m) Marks that should be kept available in the trade

Terms that the Office believes should be kept available to other traders, are deemed devoid of distinctive character, regardless of the question if those terms have in fact become customary or not. Nevertheless, such terms may be registered subject to proof of acquired distinctiveness.

(n) Marks injurious to public policy

Marks that may be injurious to public policy are not eligible for registration. The following marks fall in this category:

_      marks expressing extreme violence, chauvinism, racism;

_      marks which may be offensive to certain sectors of the public;

_      marks liable to create confusion where there is a genuine danger that the public would erroneously purchase an article that might endanger its health; and

_      marks that Infringe on copyrights.

(o) Cultural emblems

The unauthorized registration of state emblems such as national flags and armorial bearings, official signs and the emblems of intergovernmental organizations is prohibited. In the same vein, the unauthorized registration of marks suggesting its proprietor enjoys the patronage of or supplies goods or renders services to a head of state, a government or a president, is also prohibited. Finally, emblems having a religious significance are also prohibited from registration.

(p) Non-traditional trademarks

Abstract color marks and sound marks are entitled to protection subject to proof of acquired distinctiveness

Taste marks, moving images and holograms are not eligible for registration in Israel.

(q) Other marks

The following marks are generally considered non-eligible for registration:

_      marks comprising the following: “Patent”, “patented”, “Registered”, “copyright” or similar terms;

_      common surnames;

_      color names;

_      plant species;

_      telephone numbers;

_      radio frequency numbers; and

_      simple, common geometrical figures.

3.5 Establishing secondary meaning

(a) General

Secondary meaning is a new and additional meaning that attaches to a non-inherently distinctive mark. If a given mark is not inherently distinctive, it can be registered or protected as a trademark only upon proof that it has become distinctive. This acquisition of distinctiveness is referred to as “secondary meaning.”

(b) What must be proven to establish secondary meaning?

It is not necessary for the secondary meaning to displace entirely the primary descriptive meaning of a mark. However, when the mark is used in relation to the goods or services in question, the average consumer should understand the sign to denote origin.

The ultimate test in determining whether a mark has acquired secondary meaning is the success, rather than mere efforts, in educating the public to associate the mark with a single source.

The extent to which the secondary meaning must displace the primary descriptive meaning to justify registration as a trademark is a question of degree, which depends upon the degree of distinctiveness of the mark. The less distinctive the mark, the greater the quantity and quality of evidence of secondary meaning needed to prove the requisite degree of distinctiveness.

(c) Kind of evidence

The traditional manner of proving secondary meaning is by circumstantial evidence. Such circumstantial evidence may consist of evidence of the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; amounts spent in promotion and advertising; amount of sales and number of customers; the scope of publicity given the mark, and any similar evidence showing wide exposure to the mark in question.

Examples of evidence, which may prove secondary meaning, include items such as sales brochures, catalogues, price lists, invoices, annual reports, turnover figures, advertising investment figures and reports, as well as customer or market surveys.

3.6 “Telle quelle” registration

Israeli trademark law provides owners of foreign registered trademarks the option to register their mark in Israel under a lower threshold for the distinctiveness of the mark. Under the “telle quelle” provision, a mark that is registered as a trademark in its country of origin should be accepted for registration in Israel unless it is determined that the mark is “devoid of any distinctive character.” This provision was interpreted very broadly to mean that any mark that has even a slight measure of distinctive character “above zero” is eligible for registration. A trademark should absolutely lack any distinctive character whatsoever in order to be refused under this provision.

The “telle quelle” provision is a powerful prosecution tool. Foreign applicants often invoke the “telle quelle” provision when filing for inherently weak marks, such as slogans, three-dimensional and descriptive marks, and many times succeed in registering the mark on this basis. Thanks to the “telle quelle” provision, foreign applicants are able to register many of their trademarks that otherwise would have been rejected by the Israeli Trademark Office.

When a mark is registered under the “telle quelle” provision, a note to that effect appears on the registration certificate. Marks registered under the “telle quelle” provision are dependent upon their registration in the country of origin, a fact which renders them slightly more vulnerable to cancellation than standard marks.

4.1 General

(a) Trademark Office search

As part of the examination process, the Trademark Office conducts a search of the Register for prior registrations and/or pending applications that are identical or similar to the applied for mark.

Israeli examiners conduct a thorough search for local registrations and applications. However, Israeli examiners do not conduct a survey of the market, the consumers, channels of distribution, extent of goodwill of the marks etc.

Therefore, in the event the mark is similar to a registered mark, any doubt will be manifested in a refusal to accept the mark, and the onus to prove that the mark is eligible for protection will be put on the applicant.

(b) Determining likelihood of confusion

If the examiner determines that there is a likelihood of confusion between applicant’s mark and a previously registered mark or marks, the application will be refused.

Israeli case law established several tests that aggregately evaluate, from several different perspectives, the factual entirety that is relevant to determine likelihood of confusion between marks. Together, these tests are known as the “Three-Fold Test”, and are divided into three sub-tests: (1) the similarity of the marks; (2) the nature of goods and class of consumers; (3) other relevant circumstances.

4.2 Similarity of the marks

(a) Epistemic point of view Ð the average consumer

In determining whether there is a likelihood of confusion, courts and the trademark office consider the effect of similarity of trademarks upon a hypothetical average consumer. The hypothetical average consumer bears certain epistemological characteristics, which serve as kind of a general legal yardstick to determine the degree of similarity between marks necessary to establish likelihood of confusion.

The hypothetical average consumer is considered reasonably informed and reasonably observant. He normally perceives a mark as a whole and does not proceed to analyze its various details. He does not have the advantage of placing the marks in dispute side-by-side, but must rely instead on his recollection of the marks, which is often times imperfect or hazy. These general characteristics maintain that the appreciation of the similarity of marks should be based upon the overall impression created by the marks in their entireties, bearing in mind their distinctive and dominant components. Little assistance is to be obtained from a meticulous comparison of the marks, letter by letter and syllable by syllable.

(b) Criteria for analyzing similarity

Israeli case law provides several criteria for analyzing and determining similarity between marks in certain prototype scenarios:

_      When the marks at issue are both design marks, the similarity of the marks is decided primarily on the basis of visual similarity.

_      Similarity in sound is more relevant for goods provided over the counter. Similarity in appearance is more relevant for goods placed on the shelves.

_      If a mark comprises both wording and design, greater weight is often given to the wording, because it is the wording that consumers would use to refer to or request the goods or services.

_      Where the two marks under comparison have a common element, which is also common to the trade, the comparison should be made by looking more closely at the other portions of the marks.

_      The distinctive and dominant components of a mark are given more weight. If the dominant portion of both marks is the same, then the likelihood that consumers will be confused is increased.

_      The initial syllables of a mark are normally more dominant.

_      If a mark is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters.

_      The addition of descriptive or common matter to one of two otherwise similar marks does not serve to avoid a likelihood of confusion.

_      Similarity is not limited to the eye or ear. If the concept of the marks is the same, then then the likelihood that consumers will be confused is increased.

4.3 The nature of the goods and the class of consumers

(a) General

The second part of the Three-Fold Test encompasses a bundle of sub-tests that relate to the goods and services in question. The most important sub-test among them is the similarity of the goods or services test. Other sub-tests subsumed under this heading include the distribution channels test, the identity of the consumers test and the level of attention and expertise of the consumers test.

(b) The Similarity of goods and services

The identity or similarity of goods or services is a necessary condition for a finding of likelihood of confusion. The Israeli trademark Ordinance provides that the goods or services must be Ôof the same description’. There can be no likelihood of confusion where the goods or services are not Ôof the same description’.

The classificatory system governed by the Nice Convention has only little bearing in determining whether goods and services are Ôof the same description’. Even where parties’ goods or services are classified under different classes by the Nice convention, they may still be considered Ôof the same description’, and vice versa.

However, the classes of the Nice Classification are structured according to factors that may be relevant for the similarity analysis, and therefore, often times, the fact that the respective goods or services are listed in the same class of the Nice Classification may indicate similarity.

In determining whether goods or services are Ôof the same description’, the key consideration is whether the goods or services are of the same Ôcommercial family’, i.e. commonly dealt in by the same trader. This matter is looked at from a commercial point of view. Where it appears that the public could believe that the goods or services come from the same undertaking, the goods or services are considered Ôof the same description’.

The determination of a party’s goods or services is made on the basis of the goods or services recited in the application or registration. If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described. The Trademark Office does not read any restrictions or limitations into the registrant’s specification of goods or services. Therefore, the terminology employed in the specification of goods and services nay be a crucial determinant of whether goods or services are Ôof the same description’ or not.

There is no absolute borderline drawn between goods or services Ôof the same description’ and goods or services which are not Ôof the same description’. Rather, the Israeli case law makes clear that, as a thumb rule, the more similar the goods or services are, the lower is the degree of similarity of the respective marks required to establish a likelihood of confusion.

(c) Distribution channels

Distribution channels may vary between retail stores, wholesale stores, selling directly to the customer, selling through agents directly to individual customers or companies, and multi-level marketing.

If the goods are made available through the same distribution channels, the consumer may be more likely to assume that the goods or services are in the same market sector and are possibly manufactured by the same entity, and vice versa.

Note that the weight placed on this sub-test is in decline, as more and more supermarkets, drugstores and department stores sell goods of all kinds.

(d) Identity of consumers

Largely diverging customers weigh heavily against likelihood of confusion. Where it is highly unlikely that the goods or services will both be encountered by their potential consumers in the usual course of events, the likelihood of confusion between the marks diminishes.

In a similar vein, where the targeted consumer is limited and distinct, or where there exists only limited accessibility to the goods in question, the likelihood of confusion between the marks diminishes.

(e) Level of consumer’s attention and expertise

Where circumstances suggest that mainly sophisticated purchasers or experts would purchase the relevant goods, the likelihood of confusion diminishes.

Where circumstances suggest that the purchase of the goods or services is particularly careful, the likelihood of confusion also diminishes. Often, purchasers of costly goods pay closer attention and are less likely to be confused.

In contrast, where circumstances suggest that the purchase of the goods or services is particularly impulsive, the likelihood of confusion increases.

4.4 Other relevant circumstances

(a) General

The third part of the Three-Fold Test encompasses a list of non-conclusive factors, each of which may be deemed relevant, at times, depending on the circumstances of the case. The list of factors under this heading is open, and the court may adduce any number of factors in a given case to determine a likelihood of confusion. We shall discuss below the factors that are traditionally subsumed under this part of the Three-Fold Test.

(b) Enhanced distinctiveness

The distinctiveness of the earlier trademark has been held to be an important consideration for assessing likelihood of confusion. Trademarks that possess a strong distinctive character, either inherently or because of the reputation they acquired, enjoy broader protection than trademarks with a less distinctive character.

In ex parte proceedings, this factor is often irrelevant, because the examiner is not expected to submit evidence regarding the fame of the cited mark. However, this factor is usually considered more significant in inter partes proceedings.

(c) Family of marks

A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but also the common characteristic of the family, with the trademark owner.

In ex parte proceedings, this factor is often irrelevant, because the examiner is not expected to submit evidence regarding the family of marks of the cited mark. However, this factor is usually considered more significant in inter partes proceedings.

(d) Evidence on actual confusion

Evidence of actual confusion is not required in order to establish a likelihood of confusion between marks. However, if such evidence is available, it often affects the determination of likelihood of confusion.

(e) Third-Party registrations

Generally, the existence of third-party registrations or third party use cannot justify the registration of another mark that is similar to a previously registered mark as to create a likelihood of confusion. However, third-party registrations or third party use may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services.

(f) Agreements between the parties

Where parties are bound by co-existence agreements controlling the use of their respective marks, use of the marks in accordance with the agreement constitutes strong evidence that the marks may coexist without confusion.

Where the parties were subject to a license, distribution or employment agreement, and the licensee, distributor or employee decides to adopt a mark similar to that of his former licensor, supplier or employer, the likelihood of confusion increases, because such act may count as intended misappropriation of goodwill.

4.5 Overcoming likelihood of confusion refusals

When searching for local registrations and applications, Israeli examiners do not conduct a survey of the market, the consumers, channels of distribution, extent of goodwill of the marks etc. Therefore, in the event a mark is similar to a registered mark, any doubt is manifested in a refusal to accept the mark, and the onus to prove that the mark is eligible for protection is put on the applicant.

In order to overcome a likelihood of confusion refusal, the applicant may file written submission with the examiner, arguing against the refusal. The following evidence and/or amendments may significantly enhance the chances of overcoming a refusal:

_      Evidence on the relevant markets, consumers, channels of distribution, extent of goodwill of the marks etc., showing that that the likelihood of confusion between the marks is in fact negligible.

_      Evidence of use of the mark showing that there has been honest concurrent use of the respective marks in the marketplace without any known instances of confusion. Evidence of concurrent use may weigh heavily against likelihood of confusion where the concurrent use has taken place over a relatively long period.

_      Amendment of the specification of goods and services, to remove any conflict with the cited mark.

_      For cited marks over three years on the Registry, there may be scope to file an application for revocation of the prior mark based on non-use. Should the non-use revocation application be successful and remove the conflict with the prior mark, this will permit the examiner to waive his citation in most cases. A discussion of non-use revocation applications is provided in Part C Section 4 below.

_      An applicant may submit a consent agreement. A consent agreement needs only contain the prior registrant’s consent to registration of the applied-for mark and a statement that source confusion is believed to be unlikely. The Trademark Office does not require agreements that detail the particular reasons why the relevant parties believe no likelihood of confusion exists or that specify the arrangements undertaken by the parties to avoid confusing the public. However, the Trademark Office is not bound to accept the letter of consent, and may reject it in clear-cut cases of likelihood of confusion.

Part C: Interference, Opposition, Cancellation And Revocation Proceedings

5.1 Overview

Where separate applications of identical or confusingly similar trademarks in respect of the same or similar goods are filed, and the later application was filed before the prior application is accepted, the Trademark Office initiates interference proceedings between the applications.

At the first stage of the proceedings, the Trademark Office asks the parties to negotiate a possible co-existence agreement.

If the parties fail to reach an agreement, the Registrar initiates an inter-partes proceeding. The parties must file their evidence within three months from the date on which the Registrar initiated the inter-partes proceedings. Thereafter, the parties have one month to file evidence in response. Following the filing of evidence, a hearing takes place, where both parties’ affiants are cross-examined. Finally, the parties file their briefs. After the briefs are filed, the Trademark Registrar renders a decision.

5.2 Key considerations

(a) General

In determining which party has better rights in its mark, the Israeli Registrar considers two key factors: (1) good faith of the parties (2) goodwill and scope of use of the marks. We shall discuss each of these factors below.

(b) Good faith of the parties

Both parties must prove that they adopted the mark in good faith, and not as an attempt to misappropriate the adverse party’s goodwill in its mark. If the Registrar finds that one of the parties adopted the mark in bad faith, the case is decided against the party that acted in bad faith, regardless of other circumstances obtaining.

(c) Goodwill and scope of use of the marks

Where there is no element of bad faith, the factor that usually decides the case is the extent of use of the marks. Each party must prove it has acquired more goodwill in the mark than the adverse party has. Evidence that can show goodwill in the mark include items such as sales brochures, catalogues, price lists, invoices, annual reports, turnover figures, advertising investment figures and reports, as well as customer or market surveys.

5.3 Parallel registration

Where the Registrar finds that both parties adopted the marks in good faith, and neither has acquired significantly more goodwill than the other has, he may determine that both applications shall be registered.

Usually, parallel registration is subject to certain conditions and limitations, applied to ensure that the parallel registration of both applications shall not result in consumer confusion. Such conditions and limitations may relate to the specification of goods and services or to the territory in which the parties conduct their businesses.

5.4 The filing date criteria

Normally, the applications’ filing date bears no consequences on the case. However, under unusual circumstances, where the Registrar finds that both parties adopted the marks in good faith, neither party has acquired significantly more goodwill than the other has, parallel registration of both applications may result in consumer confusion, and no amendments or limitations to the applications are applicable, the Registrar may determine the case based on the filing date of the applications. In such a case, the application with the earlier filing date shall proceed to registration, whereas the application filed later shall be rejected.

6.1 Overview

The opposition proceeding enables a third party to prevent a trademark applicant from getting his mark registered. The opposition proceeding may be invoked by any person; the right to oppose trademark applications is not limited to an interested party or to an “aggrieved person”.

A notice of opposition must be filed with the Registrar within three months from the date of publication of the mark. The deadline to file an opposition is non-extendable.

The grounds for an opposition may be any of the grounds based on which the Registrar could have refused the application. In general, there are two types of grounds of opposition. One is based on the inherent unregistrability of the disputed mark (an Ôabsolute’ ground). The other is founded on the likelihood that the disputed mark will be confused with, or otherwise interfere with, an earlier trademark or other intellectual property right (a Ôrelative ground’). Most oppositions are filed on grounds of conflict with an existing registered trademark, or other relative grounds. Oppositions based on what would be an absolute ground of refusal of the application are less common.

Absolute grounds of opposition correspond to the grounds of non-registrability which are discussed in detail in § 3.

Relative grounds of opposition correspond to the grounds of non-registrability which are discussed in detail in § 4.

6.2 Important emphases

(a) Locus standi

The right to oppose trademark applications is not limited to an interested party or to an “aggrieved person”. Any person may file an opposition.

(b) Burden of proof

In opposition proceedings, the burden of proof lays on the applicant (i.e., the party seeking registration). The applicant must prove that the mark is eligible for registration.

(c) Use of opponent’s mark

Where an opposition is based on grounds of identical or similar earlier registered trademark, the applicant is not entitled to attack the opponent and ask for evidence of genuine use of the opponent’s mark during the previous three years. Applicant may only attack opponents registered mark by filing a separate non-use revocation petition.

Where an opposition is based on grounds of identical or similar earlier marks which are not registered, the opponent bears the burden of proving that his mark is well-known, or that the registration of the applied for mark is otherwise liable to create confusion among the consumers.

6.3 Procedure

(a) Arguments and evidence

A notice of opposition is a statement of arguments setting forth the grounds that are to be relied upon in the opposition proceedings by the opponent. The opposer is not required to submit any evidence substantiating the grounds of opposition at this stage.

Once the notice of opposition is submitted, the applicant should file arguments in response within two months.

The opposer is then required to file its evidence within two months. Evidence may consist of affidavits and/or expert opinions. Within two months thereafter, the applicant is required to file its evidence. The opposer is then entitled to file evidence in response, within two months. Evidence in response should be strictly in reply to the applicant’s evidence. Where evidence filed in response comprise evidence that could have been included in the first place in the opposer’s main evidence, such evidence may be stricken out by the Trademark Office, at the request of the applicant.

(b) Language

Formally, all pleadings in the opposition proceedings must be filed in Hebrew. Nevertheless, it is standard practice of the Trademark Office to accept affidavits and exhibits in English.

(c) Extensions of Time

All deadlines in an opposition proceeding are extendable, by one to three months, but for the deadline to file the notice of opposition, which is not extendable.

(d) Procedural motions

Inter-partes proceedings are subject to the Civil Proceedings Regulations. Accordingly, the Israeli Trademark Office is empowered to order discovery of documents, interrogatories, and other procedural motions. Discovery proceedings are discussed at length in § 15 (subsection 15.3) below.

(e) Hearing

Upon completion of the evidence stage, the Trademark Office sets a date for hearing in which the parties’ affiants are cross-examined. Affiants are obliged to attend the oral hearing.

(f) Decision

At the end of the hearing, the Registrar issues a schedule for the submission of briefs. After the briefs are filed, the Registrar renders a decision.

The Registrar’s decision in the opposition is subject to appeal to a district court within 30 days.

Interim decisions may be appealed to a district court subject to leave by the court.

(g) Cost Orders

In its decision, the Registrar may award legal fees and reimbursement of other litigation expenses for the prevailing party. The Registrar has broad discretion in determining the amount of legal costs to be paid. Often times the costs awarded do not reflect the actual costs expended by the prevailing party.

7.1 Overview

Proceedings for cancellation provide means by which a trademark that should not have been registered may be removed from the register. Any aggrieved person may file, at any time, a motion for the cancellation of a trademark registration.

The grounds for a cancellation filed within five years from the date of registration may be any of the grounds based on which the Registrar could have refused the application. It must be stressed that cancellation proceedings in Israel provide the exact same scope of discretion as the examiner enjoys when examining an application. Thus, cancellation proceedings in Israel are not limited to just providing a means of rectification of clear mistakes done by the examiner. On the contrary, cancellation proceedings provide the possibility of having a decision taken by the examiner being replaced by a different decision within the same scope of discretion.

Most cancellations are filed on grounds of conflict with an existing registered trademark. Cancellations based on what would be an absolute ground of refusal of the application are less common.

After a mark has been registered for five years, its validity cannot be challenged on relative or absolute grounds. Such a mark may only be cancelled on grounds that the application was filed in bad faith or that the mark was registered in Israel under the “telle quelle” provision and it is no longer registered in its country of origin.

7.2 Main differences between opposition and cancellation proceedings

(a) General

A cancellation proceeding is similar to an opposition proceeding, both in form and in substance. The same grounds are available in both proceedings, the same scope of discretion and similar procedural regulations apply. There are only few notable differences between a cancellation proceeding and an opposition proceeding. We shall highlight these differences below.

(b) Burden of prove

A cancellation proceeding takes place after the trademark is registered, whereas an opposition proceeding takes place before the applied for mark is registered. A granted trademark is presumed valid until the contrary is proven. Therefore, in cancellation proceedings, it is the party seeking cancellation that bears the burden to prove that the applied for mark is not eligible for registration, whereas in opposition procedure the applicant (i.e. the party seeking registration) bears the burden to prove that the mark is eligible for registration.

(c) Locus standi

Only a person “aggrieved” as a result of a trademark registration may file to cancel the registration, whereas an opposition may be filed by any person. However, the Trademark Office interprets the term “aggrieved” very broadly, so that in practice, any person or entity that might be considered affected by the registration may file to cancel a trademark registration.

(d) Timelines

A motion for cancellation of a registered trademark may be filed within a period of five years after the mark was registered. A notice of opposition may be filed only within three months from the publication date of the application.

7.3 Availability of cancellation proceedings five years or more after registration

(a) General

When a mark has been registered for five years, its validity cannot be challenged on relative or absolute grounds. Such a mark may only be cancelled on one of the following grounds: (1) The trademark application was filed in bad faith; or (2) The mark was registered in Israel under the “telle quelle” provision, and it is no longer registered in its country of origin. We shall discuss in detail each of these grounds.

(b) The trademark application was filed in bad faith

A motion for cancellation of a trademark on the grounds that the application was filed in bad faith may be filed at any time.

The Israeli courts and Trademark Office construe the term “bad faith” in this context quite liberally. In fact, Israeli case law does not provide any clear guideline for distinguishing between a mark that merely resembles a prior mark, and a mark that resembles a prior mark in a manner that suggests that it was filed in bad faith. Consequently, a trademark registration in Israel is never truly incontestable. There is always a risk (or a chance) that a trademark registration will be cancelled on the ground that it was filed “in bad faith”.

(c) The mark was registered in Israel under the “telle quelle” provision, and is no longer registered in its country of origin

A mark that was registered in Israel under the “telle quelle” provision, and is no longer registered in its country of origin, is vulnerable to cancellation at any time. Note that the cancellation of such mark is not automatic and the trademark owner may prove that at the time of filing the application, the mark was eligible for registration, had it been applied for under regular procedure.

7.4 Procedure

As far as procedure is concerned, cancellation proceedings are very much the same as opposition proceedings. For brevity’s sake, below is a short outline of the main stages of a cancellation proceeding. For an elaborate discussion of procedural issues, please refer to § 6 (subsection 6.3) above.

Cancellation proceedings commence upon filing of the motion for cancellation. The motion for cancellation is a statement of arguments setting forth the grounds that are to be relied upon in the cancellation proceedings. Once the motion for cancellation is submitted, the registrant should file arguments in response within three months.

Within two months thereafter, the applicant is required to file its evidence. Evidence may consist of affidavits and/or expert opinions. Within two months thereafter, the registrant is required to file its evidence. The applicant is then entitled to file evidence in response, within two months.

Upon completion of the evidence stage, the Trademark Office sets a date for hearing in which the parties’ affiants are cross-examined. Affiants are obliged to attend the oral hearing.

At the end of the hearing, the Registrar usually sets a timetable for the parties to file their summations. A decision will then be rendered by the Registrar within 6-12 months.

The Registrar’s decision in the cancellation is subject to appeal to the district court within 30 days. Interim decisions may be appealed to a district court subject to leave by the court.

8.1 Overview

There is no statutory requirement that an applicant for a trademark must at the time of filing make use of the trademark in Israel. Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are also not required.

However, lack of an intention to use the mark, or alternatively, non-use of the mark for a period of three consecutive years, may result in the trademark becoming vulnerable to revocation.

A motion for revocation of a trademark registration on the grounds of lack of an intention to use the mark may be filed at any time. A motion for revocation of a trademark registration on the grounds of non-use of the mark may be filed at any time starting from three years after the registration date of the trademark.

The first onus is on the petitioner to show at least preliminary evidence of non-use of the mark within the relevant period. Thereafter, the burden of prove shifts to the registrant, to show evidence of use within the relevant period, or to establish that, under the circumstances of the case, the non-use of the mark was justified.

With regards to procedural issues, revocation proceedings are identical to cancellation proceedings. See § 7 and § 6 (subsection 6.3) above.

8.2 Use requirement

(a) General

To satisfy the use requirement, the use must be genuine. Genuine use can be minimal. It is not required that the mark shall be used extensively. In some circumstances, even a single act of use may be deemed genuine. However, token use, internal use, or use solely in advertisements, do not constitute genuine use. Similarly, if the use is done in order to rebut a contention of non-use, it is not genuine use.

When a motion for revocation on grounds of non-use is filed, the registrant must provide evidence showing that, under his particular circumstances, his activities are those that a reasonable businessperson, who has a bona fide intent to use the mark, would have undertaken.

The use of the mark must be in Israel. Use of the mark abroad does not satisfy the demand for use in Israel.

(b) Use by Licensees and affiliated companies

A licensee must be recorded as a “registered user” at the Trademark Office. If a mark is used by a licensee that is not recorded as a registered user, the use does not accrue to the benefit of the trademark owner and is not deemed as proper use of the mark.

However, when it is clear that the company that uses the mark in Israel is affiliated with the trademark owner, then use of the mark usually accrue to the trademark owner even without registered user recordal.

8.3 Justified non-use

Non-use can be excused only if there are “special circumstances in trade” justifying the non-use of the mark. Special circumstances in trade typically include import restrictions or other government policies. Circumstances in the control of the trademark owner are considered unjustified.

Note that the Registrar has a discretion to refrain from revoking the registration, even where he finds no special circumstances in trade to justify non-use. The Registrar may apply his discretion in unusual cases where he finds that it is in the public interest not to revoke the registration. Such discretion is reserved only for the most exceptional cases, and is rarely applied.

Part D: Renewals, Amendments Assignments And Licenses

8.1 Overview

There is no statutory requirement that an applicant for a trademark must at the time of filing make use of the trademark in Israel. Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are also not required.

However, lack of an intention to use the mark, or alternatively, non-use of the mark for a period of three consecutive years, may result in the trademark becoming vulnerable to revocation.

A motion for revocation of a trademark registration on the grounds of lack of an intention to use the mark may be filed at any time. A motion for revocation of a trademark registration on the grounds of non-use of the mark may be filed at any time starting from three years after the registration date of the trademark.

The first onus is on the petitioner to show at least preliminary evidence of non-use of the mark within the relevant period. Thereafter, the burden of prove shifts to the registrant, to show evidence of use within the relevant period, or to establish that, under the circumstances of the case, the non-use of the mark was justified.

With regards to procedural issues, revocation proceedings are identical to cancellation proceedings. See § 7 and § 6 (subsection 6.3) above.

8.2 Use requirement

(a) General

To satisfy the use requirement, the use must be genuine. Genuine use can be minimal. It is not required that the mark shall be used extensively. In some circumstances, even a single act of use may be deemed genuine. However, token use, internal use, or use solely in advertisements, do not constitute genuine use. Similarly, if the use is done in order to rebut a contention of non-use, it is not genuine use.

When a motion for revocation on grounds of non-use is filed, the registrant must provide evidence showing that, under his particular circumstances, his activities are those that a reasonable businessperson, who has a bona fide intent to use the mark, would have undertaken.

The use of the mark must be in Israel. Use of the mark abroad does not satisfy the demand for use in Israel.

(b) Use by Licensees and affiliated companies

A licensee must be recorded as a “registered user” at the Trademark Office. If a mark is used by a licensee that is not recorded as a registered user, the use does not accrue to the benefit of the trademark owner and is not deemed as proper use of the mark.

However, when it is clear that the company that uses the mark in Israel is affiliated with the trademark owner, then use of the mark usually accrue to the trademark owner even without registered user recordal.

8.3 Justified non-use

Non-use can be excused only if there are “special circumstances in trade” justifying the non-use of the mark. Special circumstances in trade typically include import restrictions or other government policies. Circumstances in the control of the trademark owner are considered unjustified.

Note that the Registrar has a discretion to refrain from revoking the registration, even where he finds no special circumstances in trade to justify non-use. The Registrar may apply his discretion in unusual cases where he finds that it is in the public interest not to revoke the registration. Such discretion is reserved only for the most exceptional cases, and is rarely applied.

9.1 General

The registration of a trademark expires on the ten-year anniversary of the filing date of the application to register the trademark. A trademark may be renewed for a further ten years and at ten-year intervals thereafter.

An application for renewal may be filed within three months before the renewal date.

9.2 Grace period

The Trademark Office provides a six month grace period following the renewal due date whereby a trademark owner may still renew the registration subject to payment of extension fees.

If no renewal is filed during the six-month grace period, the Trademark Office cancels the registration.

9.3 Effect of cancellation

A cancelled registration may constitute an obstacle for registration of conflicting applications for a period of one year after the cancellation date.

9.4 Restoration

After the registration is cancelled, the trademark owner may file for restoration of the registration within a period of six months from the date of cancellation. A motion for restoration must be accompanied with an affidavit ascertaining the reasons for the failure to renew the trademark on time. The Registrar has full discretion whether to grant such a motion, depending on the circumstances of the case.

10.1 Name changes and mergers

To record a company name change or merger, the trademark owner must submit one of the following documents:

_      an official document confirming the change, from the Company Registrar or other entity that registers such changes in the state of incorporation;

_      a true copy of the official publication of the change; or

_      notarized deed approving that the change was registered with the competent authority in the country of incorporation.

A motion to record a merger must also be accompanied with a power of attorney signed by the new owner of the company.

10.2 Amendments in the list of goods and services

An applicant may amend the list of goods and services in a trademark application only in order to restrict or clarify the specification.

After registration, a trademark owner can only apply to remove goods or services from the list.

10.3 Amendments to the representation of the mark

An applicant may amend the representation of a mark in a trademark application only on the condition that the amendment does not require additional search and examination, and does not expand the rights deriving from the trademark.

Amendments to the representation of the mark are not allowed after the mark is registered.

11.1 General

Both trademark applications and trademark registrations may be assigned.

An assignment can be for some or all of the goods or services listed.

Goodwill need not be included in an assignment.

11.2 Procedure

To record an assignment, the assignee must file a motion to record the assignment, accompanied by the following documents:

_      An original or certified copy of the assignment deed. The assignment deed must include specific reference to the registration(s) and/or application(s) to be assigned.

_      Power of attorney signed by the assignee.

_      Confirmation by of one of the parties to the agreement, or by their counsel, that to the best of their knowledge the assignment is not liable to mislead the public, or, if the assignment deed itself so implies, a reference shall be made to the relevant provision in the agreement.

11.3 Accompanying goodwill

Both a pending application and a trademark registration can be assigned with or without the accompanying goodwill. The validity of an assignment cannot be challenged on the basis that it was assigned without the goodwill.

11.4 Timing of recordation of assignments

A timely recordation of an assignment is important, as it determines the rights of the assignee under the law, such as, for example, in the following scenarios:

_      An unrecorded assignment may be unenforceable against a purchaser of the trademark in good faith and for value who had no notice of the unrecorded assignment.

_      Solely the entity recorded on the Register may obtain relief for infringement.

_      The mark may be vulnerable to removal for non-use if the registered owner no longer controls the use of the mark.

12.1 General

Trademarks would have much less value if only a vertically integrated company could take the advantage of the use of the mark. Wherever consumer market exist, manufacturers and other purveyors of goods and services find licensing a preferred means for the marketing, distribution and advertising of their products.

The licensing of a registered trademark is permitted in Israel, subject to examination of the license and its being recorded on the Register. The recordation of the license in this manner, which is popularly referred to as a “registered user” registration, is mandatory. Use of a trademark by an unregistered licensee does not accrue to the benefit of the trademark owner, and, as a result, the trademark registration may become vulnerable to revocation on grounds of non-use.

12.2 Who must be recorded as a registered user?

Any person who manufactures the goods in Israel, applies the mark to the goods in Israel, or provides the services under the mark in Israel, must be recorded as a registered user at the Israeli Trademark Office.

A mere distributor of goods is not required to be recorded as a registered user.

Affiliated companies are formally required to be recorded as registered users. Nevertheless, in practice, when it is clear that licensee is affiliated with the trademark owner, then its use of the mark in Israel is attributed to the trademark owner even when the licensee was not recorded as a registered user.

12.3 Recordation of licenses

It is not mandatory to record with the Trademark Office the entire license agreement. It is customary to record only a short license agreement drafted for that purpose alone. A short agreement normally includes the parties’ details, details of the licensed registrations, whether the license is exclusive or not, the term of the license, and, if the license applies only to some of the goods or services listed in the registration(s) Ð a specification of those goods and services.

A motion to record a license must be accompanied by the following documents:

_      An original or certified copy of the license agreement (the entire license agreement, or a short form agreement drafted for that purpose.

_      Power of attorney signed by the licensee.

_      Confirmation by one of the parties to the agreement, or by their counsel, that to the best of their knowledge the license is not liable to mislead the public, or, if the license agreement itself so implies, a reference shall be made to the relevant provision in the agreement.

12.4 Rights of the registered user

A registered user does not acquire any proprietary rights in the trademark, nor any goodwill arising from the use of the mark.

A registered user cannot enforce rights in the trademark against third parties, just by virtue of it being a licensee. The registered user acquires only the rights accorded to it in the license agreement.

12.5 Revocation of licenses

A motion to record a revocation of a license filed by the licensee, must be accompanied by the following documents:

_      an original or certified copy of license revocation document, signed by the licensee; and

_      power of attorney signed by the licensee.

A motion to record a revocation of a license, or to record amendments to a license, filed by the licensor, must be accompanied by the following documents:

_      a deed of consent signed by the licensee; and

_      power of attorney signed by the licensor.

Where a motion to record a revocation of a license is filed by the licensor, without a deed of consent signed by the licensee accompanying the motion, an opposition proceeding shall be commenced.

The Office requirement that the licensor must submit a deed of consent signed by the licensee in order to record a revocation of the license was just recently enacted, and it remains be seen how strongly it will be enforced. In any event, we recommend that the licensor take the following measures at the time of recording the license, in order to try to circumvent this requirement:

_      Add a provision to the license agreement stating that the license may be revoked by the trademark owner at his sole discretion.

_      Have the licensee sign a non-revocable power of attorney authorizing the licensor or his counsel to sign on behalf of the licensee on any agreement that may be required in order to record a revocation of the license with the Trademark Office.

Part E: Trademark Infirngement

13.1 Overview

Trademark infringement in Israel is use of a registered trademark, or of a mark confusingly similar to a registered trademark, in relation to goods and/or services in respect of which the trademark is registered, or in relation to goods and/or services of the same description.

The mere use of a sign that is identical to a registered trademark is prohibited, even in the absence of consumer deception, unless the use is genuine, such as trademark use for gray market goods.

A trademark infringement claim may only be based on a registered trademark, with the exception of a “well-known trademark”. A mark that is not registered in Israel, but is well-known, confers the same protection a registered trademark does.

Use of a well-known and registered trademark in respect of any goods or services, to represent a connection between the user and the trademark owner, which damages the proprietor’s interests, is prohibited.

13.2 Unauthorized use of a mark confusingly similar to a registered trademark

A registered trademark confers on its owner the right for exclusive use of the mark with respect to the goods and services covered by the registration and goods and services of the same description. In order to succeed in a claim of trademark infringement, the plaintiff must prove that the trademark used by the defendant is likely to be confused with plaintiff’s registered trademark.

The tests for determining confusing similarity in trademark infringement cases are the same tests that determine non-registrability of trademark applications on relative grounds. These tests are discussed in detail in § 4.

13.3 Unauthorized use of a trademark identical to a registered trademark

Normally, in order to succeed in a claim of trademark infringement, the plaintiff must prove that the trademark used by the defendant resembles the protected trademark to such extent that is likely to create confusion among the consumers. However, when the defendant is using the plaintiff’s trademark itself, with respect to same or similar goods and services, the mere use of the exact same trademark by the defendant constitutes a trademark infringement, and the plaintiff is not required to prove likelihood of confusion between the marks.

13.4 Unauthorized use of a well-known trademark

(a) General Ð Well-known trademarks

Under Israeli law, the proprietor of a well-known trademark is entitled to broad protection for his trademark.

Obtaining a status of a well-known trademark requires proof by evidence. Nevertheless, the well-known status of some marks may be in the judicial knowledge.

Israeli law does not provide a procedure for obtaining registration of a trademark as well-known, nor any standards for determining whether a trademark is well-known. The question of whether a trademark is well-known in Israel is a question of fact, determined on a case by case basis. In determining whether a mark is well-known, the following criteria may be considered:

_      the degree of inherent or acquired distinctiveness of the mark;

_      the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

_      the duration and extent of advertising and publicity of the mark;

_      the degree of recognition of the mark by the relevant consumer public;

_      the channels of trade for the goods or services with which the mark is used; and

_      International acclaim;

 (b) Unauthorized use of an unregistered but well-known trademark

Israeli Trademark Ordinance confers on an unregistered but well-known trademark the same protection conferred on a regular (non-famous) registered trademark. Therefore, use of a mark confusingly similar to an unregistered but well-known trademark, with respect to goods and services for which the mark is well known, or to goods and services of the same description, constitutes a trademark infringement.

Notwithstanding the above, the proprietor of a well-known trademark that is not registered in Israel may be entitled to protection against conflicting marks not just with respect to goods or services for which the mark is registered, but also with respect to goods and services of a different description. Such protection may be conferred under the doctrine of dilution. Trademark dilution constitutes an independent ground for legal action, regardless of the applicability of trademark infringement action. In order to succeed in a dilution claim the plaintiff must show that four cumulative conditions are met: the trademark is well-known; the trademark has acquired an independent and powerful image that exceeds any specific product; the unauthorized use of the trademark is intended to promote the business of the user on account of the goodwill of the well-known trademark; the trademark used in bad faith and in violation of fair competition rules. It is important to stress that only in extreme and exceptional cases a dilution claim is upheld absent a determination of trademark infringement.

(c) Unauthorized Use of a registered and well-known trademark

A registered and well-known trademark confers on its owner protection against conflicting marks not just with respect to goods or services for which the mark is registered, but also with respect to goods and services of a different description, provided that such use indicates a connection with the owner of the registered and well-known trademark, and the proprietor of the registered and well-known trademark is liable to suffer damages as a result of such use.

Under this heading, use of a mark that indicates a connection with the owner of a registered and well-known trademark may constitute a trademark infringement.

It is not yet settled what the exact threshold for establishing an indication of a “connection” with the owner of a the trademark as a result of conflicting use is, or what damages the trademark owner is required to prove in order to succeed on this ground. It is certain that the threshold for establishing an indication of a “connection” with the owner of the trademark is lower than the threshold for establishing likelihood of confusion. It seems that a “connection” may require an affinity in the mind of the consumer, a requirement which would be satisfied if it can be shown that the well-known trademark would be diluted as a result of the conflicting use. However, one should keep in mind that this ground of action is not the same as the ground of dilution, though the demarcation between the two is not clear. As of yet, there has been little case law on the subject. Future case law will have to be observed as to how these criteria will be clarified and evolved.

2.1 Examination timeline

(a) General

Once an Israeli trademark application is filed, a filing date is accorded, and the Trademark Office issues a receipt. At this early stage, the Trademark Office only checks if certain filing date requirements have been fulfilled.

Within approximately 1 year from the filing date of the application (depending on the case backlog at the Israeli Trademark Office) the examination begins. There is no need to request examination.

(b) Office action deadline

Where an office action has issued, the applicant is given a period of three months to overcome the refusal. It is possible to obtain an extension of time for responding to an office action. A total extension period of eight months is available for each office action. A total extension time of 15 months is available for the entire examination of the application.

The entire procedure for examining an application, up to allowance, must be terminated within two years from the date on which the first office action had issued.

Where an application is allowed, the mark is published in the Israeli Trademarks Journal for opposition purposes. Within three months from the date of publication, any person may file with the Registrar a notice of opposition to the registration of the mark. The deadline to file the opposition is non-extendable. If no oppositions are filed, the trademark is registered.

(c) Expedited examination

Applicant may file a request for the expedited examination of his application. The request for expedited examination must be accompanied by an affidavit setting forth facts substantiating the claim that the examination of the application must be expedited. The following reasons are deemed sufficient grounds for expediting an examination:

_      The mark is being used by a third party without authorization from the applicant.

_      The applicant intends to file an international application based on the national basic application.

_      The applicant intends to license the mark.

_      The mark was previously applied for, but could not be registered because the amendments required by the examiner could not be applied within the previous application.

_      The mark had been registered but was mistakenly cancelled due to non-payment of renewal fees.

The Trademark Office is quite liberal in granting motions for expedited examination. It takes about 2-3 weeks from the granting of the motion until the examination commences.

2.2 Examination grounds

Upon examination, the Trademark Office assesses the trademark eligibility for registration. The assessment is made both with respect to the inherent distinctiveness of the mark (absolute grounds) and with respect to the mark’s similarity to prior registrations and pending applications for the same description of goods (relative grounds). Both absolute and relative grounds for refusals are discussed in detail in § 3 and § 4 below.

As part of the examination process, the examiner conducts a thorough search of the Register for prior registrations and pending applications that are identical or similar to the applied for mark. In the event that the applied for mark is identical or confusingly similar to a prior trademark registration, the examiner will issue an office action.

Israeli examiners do not conduct a survey of the market, the consumers, channels of distribution, extent of goodwill of the marks etc. Therefore, in the event the applied for mark is only prima facie confusingly similar to a registered mark, any doubt will be manifested in a refusal to accept the mark, and the onus to prove that the mark is eligible for protection will be put on the applicant.

Where the examiner is of the opinion that the applied for mark is somewhat similar to a prior trademark registration, yet not similar to the point of confusion or deception, he will allow the application. In such circumstances the examiner is likely to subject the allowance of the application to applicant’s consent that the Trademark Office furnishes the owner of the registered trademark with a notice advising him that the application has been allowed, so that the owner of the registered trademark may be able to timely oppose it, if he so decides.

Where the applied for mark is confusingly similar to a pending trademark application, the examiner will initiate interference proceedings between the two applications. The filing date of the respective application has no bearing in this regard. For more information on interference proceedings, please see § 5 below.

2.3 Amendments to the representation of the mark

The representation of a mark in a trademark application may be amended during examination provided that:

_      the application was not yet granted;

_      the request for the amendment does not require the examiner to conduct an additional search and examination of the application; and

_      the amendment will not result in broadening the rights conferred on the application.

2.4 Divisional applications

Divisional applications are available during examination, yet only for multiple class applications. The applicant may, at any time prior to registration, request that the application be divided into separate applications, each for a separate class of goods. The filing date of each of the divisional applications shall be the date of filing of the original application.

2.5 Ex-parte hearing

In case the examiner refuses to allow an application, the applicant is entitled to request an ex-parte Hearing before the Registrar. The request must be submitted within three months from the date on which the last office action was issued.

15.1 General

The majority of enforcement proceedings taking place in Israel for trademark infringement are civil. Trademark rights are private rights, and it is for the owner to take action where trademark infringement occurs. Civil cases need no knowledge on behalf of the infringer and require that a case be proved on the balance of probabilities.

15.2 Pre-trial procedures

(a) Cease and Desist letters

Before filing a trademark infringement complaint, it is customary, but not necessary, for the prospective plaintiff to send a cease and desist letter to the prospective defendant notifying him of the intention to file a complaint and giving him an opportunity to cure the alleged infringement.

(b) Unjustified threats

In Israel, there is no right of action against unjustified threats of infringement proceedings. Israeli Trademark Ordinance does not mention unjustified threats as a legal concept, and there is no case law on the subject.

(c) Pre-action interim remedies

A motion for an interim remedy may be filed before filing a trademark infringement complaint, if the complaint is subsequently filed within seven days from the date the order was granted or within a different time determined by the court.

A pre-action interim remedy may be requested ex parte or inter partes.

The court may grant a request for pre-action interim remedy if it is convinced that the request is justified, and provided that the request meets the criteria of a regular (not pre-action) motion for an interim remedy, which conditions are set forth below.

15.3 Main stages of a civil trial

(a) Exchange of pleadings

First, a complaint is filed with the district court and served on the defendant. The complaint must specify the grounds of the claim and the main facts substantiating the claim. The defendant then files an answer to the complaint, after which the plaintiff is entitled to respond to the defendant’s answer.

(b) Discovery proceedings

Once the exchange of pleadings is completed, the parties may conduct discovery proceedings, which may be comprised of requests for answers to interrogatories, requests for discovery and production of documents and requests for admissions.

A request for discovery and production of documents may relate only to documents which are in the possession or under the control of the adverse party and relevant to the issue in dispute. In a similar vein, interrogatories must include only relevant questions, focused on the issue in dispute, and such that do not require an unreasonable effort to answer. In principle, Israeli courts are inclined to guard against the pursuit of what have been termed fishing expeditions Ñ speculative requests for information without any real expectation about the outcome of the request or its relevance to the case.

Depositions, or out-of-court oral testimonies, are not available under Israeli civil law.

(c) Pre-trial hearings

Before the trial begins, the court holds a pre-trial hearing or hearings.

In a pre-trial hearing, the court may formulate and simplify the issues in the case, eliminate frivolous claims or defenses, obtain admissions of fact and documents to avoid unnecessary proof, make schedules for the submission of pre-trial briefs and motions, make rulings on pending motions, set dates for further pre-trial hearings, and discuss the possibility of a settlement.

Courts often facilitate the pre-trial hearings to prompt the parties to settle, and in appropriate cases may refer them to mediation.

(d) Submission of evidence

Once the case is ready for trial, the court will issue a schedule for the submission of the parties’ evidence. Parties’ evidence is submitted mainly in form of affidavits. The Affiant must be identified by name and address. The relationship of the affiant to the party must be stated. The source of the information in the affidavit (e.g. personal knowledge, reliance on company’s records, etc.) must be specified. The affiant must also provide documents which may corroborate the information provided in the affidavit.

In addition to affidavits, the parties may also submit expert evidence, consisting of expert opinions, for example Ð survey experts, linguistic experts, etc. The facts upon which an expert opinion is based must be proved by admissible evidence.

(e) Trial hearings

After the evidence is submitted, the court sets dates for trial hearings. At trial the affiants are crossed examined on their affidavits. A cross examination may be followed by re-examination.

Cross-examination is considered an essential component of trial. If the affiant does not appear for the cross-examination, his affidavit will not be considered as part of the evidence.

An affiant may be cross-examined on matters not raised in his affidavit. However, an affiant may not be cross-examined on matters which are not relevant to the case.

An examiner may ask leading questions on cross-examination.

(f) Conclusion of trial

At the end of the trial, the court issues a schedule for the submission of briefs. After the briefs are filed, the court renders a judgment.

In its judgment, the court may award legal fees and reimbursement of other litigation expenses for the prevailing party. The court has broad discretion in determining the amount of legal costs to be paid, and often times the costs awarded do not reflect the actual costs expended by the prevailing party.

Normally it takes between two and four years for a civil case to reach judgment in the first instance.

15.4 Interim injunctions

(a) General

In trademark disputes it is often of vital importance to the aggrieved party to have a case heard as quickly as possible in order to halt the allegedly infringing act before full trail.

Injunctive relief can take a variety of forms. A defendant may be enjoined from any further infringing activity, or may be asked to take affirmative steps to prevent further damage and deception.

Where an interim injunction is granted, the trademark owner must submit a bank guarantee to compensate the defendant for any damage suffered by him as a result of the interim remedy, if the main action is ultimately dismissed.

In some cases the court may refuse to grant an interim injunction since it is not strictly merited on the facts, but will nonetheless seek to bring on the full trial earlier than otherwise may be the case

When considering a motion for a preliminary injunction, a court must weigh the following factors: likelihood of success, irreparable harm, balance of convenience, and where applicable, laches and clean hands. Each of these factors is briefly discussed below.

(b) Likelihood of success

First, the court must determine whether the plaintiff has demonstrated some likelihood of prevailing on the merits of the case.

The plaintiff must show a likelihood of success by establishing that he has a protectable mark and that a likelihood of confusion exists between the marks.

In determining likelihood of confusion, the following factors are considered: the similarity in appearance and sound of the marks, similarity of goods or services, strength of plaintiff’s mark, the degree of care likely to be exercised by consumers etc.

Likelihood of confusion in trademark infringement proceedings correspond to the grounds of non-registrability which are discussed in detail in § 4.

(c) Irreparable harm

After determining the likelihood of success, the court must determine whether the plaintiff has demonstrated an inadequate remedy at law and irreparable harm if the injunction does not issue.

Here the plaintiff must show that if he were ultimately to obtain a permanent injunction, he could not be adequately compensated by an award of damages for the loss sustained as a result of the continuing acts of the defendant.

(d) Balance of convenience

Finally, the court must consider the potential harm and injustice the defendant will suffer if the injunction is granted balanced against the potential harm and injustice to the plaintiff if relief is denied.

The plaintiff must show that the potential harm and injustice it will suffer if the relief is denied is greater than the potential harm and injustice to the defendant if injunction is granted.

For example, where the plaintiff has not yet used his trademark, but the defendant has invested heavily in advertising and manufacturing a product bearing the allegedly infringing mark, the court may be inclined not to grant an interim injunction.

(e) Laches

Equity aids the vigilant, not those who slumber on their rights. A person who has been wronged must act relatively swiftly to preserve his rights.

Any delay in bringing an infringement action may prejudice plaintiff’s chances of obtaining an interim relief.

(f) Clean hands

He who comes into equity must come with clean hands.

The unclean hands defense is not an absolute bar against a preliminary relief, certainly not in the trademark context, where courts show solicitude to the public in evaluating an unclean hands defense. The unclean defense cannot be used to justify the continued confusion of the public with respect to the origin of goods and services.

15.5 Ex parte injunctions

In urgent cases where irreparable harm would otherwise occur, an ex parte relief is available.

In order to obtain an ex parte injunction the plaintiff must show a strong prima facie case, actual or potential serious damage, and a real possibility that the defendant may destroy evidence, exhaust the stock of infringing goods, or otherwise render an inter partes preliminary injunction ineffective.

A plaintiff seeking an interim injunction ex parte must meet a high threshold of disclosure obligations, and disclose to the court any pertinent facts in its motion. Lack of sufficient disclosure may prejudice plaintiff’s chances of obtaining the relief.

As part of a motion for preliminary injunction, the plaintiff may petition the court to grant a search and seizure (“Anton Piller”) order. A search and seizure order authorizes an appointed person to enter the defendant’s premises and to photograph, seize, keep and manage the allegedly infringing material.

Given the nature of ex parte search and seizure orders, which are granted in secret and without the defendant appearing or being represented, some procedural safeguards have been enacted in Israel in 2001. These safeguards include, inter alia, the following: an independent and neutral lawyer must be appointed to conduct the search; the search must be conducted in the presence of two independent and neutral witnesses; and a computer technician must be appointed to conduct any computerized search.

As a result of these procedural safeguards, which render the execution of search and seizure orders cumbersome and relatively expensive, plaintiffs often abstain from seeking search and seizure orders, but in circumstances where it is absolutely necessary.

15.6 Final remedies

(a) Final injunctions

In an action for trademark infringement, the plaintiff is entitled to relief by way of injunction. A final injunction in trademark infringement proceeding is an order that requires the infringer to refrain from performing any further infringing act. Normally the injunction is coupled with other relief, such as damages.

Once infringement is established, injunctive relief is granted almost automatically.

In case of an infringement of a well-known trademark that is not a registered trademark, the Plaintiff is entitled to relief by way of injunction only, and is not entitled to damages.

(b) Account of profits

An account of profits is available for infringement of trademark rights. The remedy is based on the principle that the infringer has carried out the infringing act on behalf of the trademark owner. The trademark owner is therefore entitled to the profits made from the infringement.

Once liability is established, the owner can opt for either damages or an account of profits, but not both.

(c) Damages

The purpose of an award of damages is to put the plaintiff in the position he would have been had the infringement not occurred.

Proof of wrongful intent is not required for an award of damages.

Economic loss in a trademark infringement claim is difficult to assess with precision, and the courts make the best estimate they can, having regard to all the circumstances of the case and dealing with the matter broadly.

When calculating the damages caused to the trademark’s owner, the court may give weight to any of the following factors:

_      the flagrancy of the infringement;

_      the scope of infringement and the period it lasted;

_      evidence of actual damages caused to the trademark owner;

_      evidence of profits derived by the defendant;

_      evidence of actual confusion in the market; and

_      the need to deter potential infringers.

(d) Statutory damages

An award of statutory damages is available in passing off cases, in accordance with the Commercial Wrongs Act, which provides for a remedy of statutory damages, without proof of actual damages, at the amount of up to NIS 100,000 for each infringement. The Commercial Wrongs Act is not directly applicable in trademark infringement cases, but it applies indirectly, as a guideline for the amount of compensations due for each infringement.

(e) Delivery up for destruction

The court may grant an order for destruction of the goods which were created as part of the infringing activities or which served for their purpose. The court may alternatively grant an order for the transfer of ownership in the goods.

The court does not allow the possession of the goods by the defendant, even if the defendant removed the infringing marks from the goods, except in unusual circumstances.

16.1 Customs measures

(a) General        

Israeli law enables the customs authorities to seize goods that are imported into Israel if the importation infringes, or appears to infringe, a registered trademark.

The customs conducts random inspects of incoming shipments to Israel, so there is no guarantee of stopping counterfeit goods unless there is specific information about a particular shipment.

Upon seizure of goods suspected of being counterfeit, the customs may apply one of two possible procedures for bringing about the destruction of the seized goods:

_      a short procedure, where the goods are destroyed by the customs in a short period of time; or

_      a long procedure, where the trademark owner is required to initiate legal action against the importer, and the goods are put in storage until the case is decided.

(b) Short procedure

In most cases, where the goods are clearly counterfeit, and their value is not significant, the customs does not require the trademark owner to take legal action against the importer. In such cases, the trademark owner is only required to perform the following actions:

_      Provide a written opinion setting forth the basis for the claim that the seized goods are counterfeit.

_      Undertake to indemnify customs to cover possible unjustified damages that may be caused to the importer as a result of the detainment of the goods, as determined by a competent court.

_      Undertake to join legal proceedings regarding the release of the goods if such proceedings are initiated by the importer against the customs.

Upon completing the aforementioned actions within a prescribed time limit, the counterfeit goods are destroyed by the customs.

(c) Long procedure

Where there are no clear and sufficient evidence of the goods being counterfeit, or in cases of significantly valuable goods suspected of being counterfeit, the customs does not destroy the goods on its own. In such cases, the trademark owner must notify the customs that it intends to file a standard civil action against the importer, submit a bank guarantee with the customs, and subsequently Ð file a civil action against the importer. If the trademark owner does not carry out these steps, the seizure is cancelled and the goods are released.

It should be pointed out that in most cases the trademark owner is able to reach an agreement with the importer before having to file suit. Only in rare instances does the importer refuse to settle before the parties head to court.

16.2 Criminal action

(a) General

Under Israeli law, criminal sanctions are available whenever a trademark has been applied without the consent of the owner to goods, on packaging or on labels. Whilst the definition of the criminal offence is quite broad, in practice Israeli police applies it only with respect to the most clear-cut counterfeiting activities, where there is no real question of liability, and it is clear that the infringer knowingly and deliberately dealt with counterfeited goods.

(b) Criminal proceedings

Criminal proceedings are initiated by a complaint to the police. The complaint may be supported with any evidence the right owner has regarding the infringement. Once the police decides to pursue the case, it obtains a seizure order and raids the premises of the suspected infringer. The raid is accompanied by representatives of the right owner.

After the police seizes the goods, the right owner must provide a written opinion setting forth the basis for the claim that the seized goods are counterfeit. Thereafter, the file is transferred to the Attorney General who decides whether to bring suit against the infringers.

Criminal proceedings are often considered less attractive to right owners, because they do not carry any monetary relief. However, one should bear in mind that criminal proceedings are extremely cost effective, as the right owner is not involved in the prosecution of the case. Therefore, in clear counterfeit cases, where the police is likely to take action, and the right owner prefers to save litigation costs and attorney’s fees, criminal enforcement may be the best option available.

(c) Private criminal proceedings

Israeli law enables a trademark owner to bring private criminal proceedings against a trademark infringer. In such a case, the prosecution of the case is handled by the right owner’s attorney instead of the Attorney General’s representative. In general, initiating private criminal proceedings in trademark cases is hardly worthwhile, because on the one hand, no monetary relief is available, and on the other hand, the right owner does not save litigation costs and attorney’s fees. Moreover, criminal proceedings incur significant evidential requirements, and the burden of proof is much heavier than in civil proceedings. For all these reasons, private criminal proceedings are a less viable option in trademark infringement cases in Israel.

 

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