The field of intellectual property (IP) is, in fact, a world of various legal tools that aim to protect different intellectual assets. Therefore, it is essential for attorneys working in the field of IP to have a deep understanding about these legal tools and expertise in the different IP sub-fields. This includes trademark law, design law and copyright law. What are the services offered by an IP lawyer in Israel? In this article we will review some of the main services in different IP subfields and elaborate about them.
The law firm of Decker & Ofir is an Israeli-based IP firm. The firm specializes in trademark law, design law, copyright law and other intellectual property fields. The firm represents international and Israeli clients in IP legal proceedings and disputes. The services provided by the firm include assistance with handling trademark and design registration in Israel and abroad, portfolio management, legal representation in IP disputes, etc.
What are the Fields IP Lawyer Practices In?
The IP world is almost endless in its depth, as it covers various areas and protects many different assets. The most known ones are probably copyrighted works, patents and trademarks. Yet, there are many other assets, such as industrial designs, trade secrets, new breeds of plants and geographical indications. An IP lawyer is required to be familiar with those different subfields, in order to assist with protecting the different intellectual assets that exist. Below we will focus on the main services provided by an IP lawyer in Israel.
Trademark Registration – Why Should You Consider Protecting Your Brands in Israel?
The modern world we are living in becomes more and more global and digital. Businesses from different places around the world are expanding their activity and opening branches abroad. Yet, unfortunately not all businesses pay enough attention to the importance of properly protecting their rather most important asset, which is their reputation. The most effective way to protect it is by conducting trademark registration of the business’ name, its brands, slogans, logos, etc.
Interestingly, although the process of trademark registration becomes more accessible and digitized, it is certainly not as global, when compared with the situation in the current business world. Trademark law remains territorial, which means that generally speaking, trademark protection in a certain territory requires the registration of your trademarks in each territory you want your brands to be present at.
Nowadays, the Israeli market has become extremely attractive for international businesses from various fields. The Israeli consumer has an increasing interest in foreign brands, and this creates a demand that many international companies attempt to satisfy.
On the other hand, it may occur that a business from abroad would attempt to enter the Israeli market, but will find out that its brand is being used by a local business, and even locally registered as a trademark by this business. The ultimate way to prevent such an event from occurring is by conducting a trademark registration in Israel. It is highly recommended that this and other activities that are needed in order to protect your brand in Israel would be handled by a local IP lawyer from, with the necessary expertise to do it properly.
Why is the Expertise of a Local Trademark Lawyer from Israel Necessary for the Protection of Your Trademark in Israel?
Usually, trademark registration in Israel requires conducting a trademark search before filing a trademark registration application. There could be additional activities required during the process, such as responding to office action by the trademark department of the Israel Patent Office. After the application is being approved, there is still a likelihood that a third party will oppose the registration. This would initiate legal proceedings before the Trademark Registrar.
In order to perform the above mentioned activities properly, a deep understanding of trademark law and the structure of the Israeli and international trademark system is crucial. Otherwise, the trademarks might be refused for registration. Therefore, it is highly recommended to be represented by an Israeli trademark attorney, with the relevant experience needed in order to handle the process properly.
Trademark Registration Alone is Not Sufficient!
Registering your brands as trademarks is crucial in order to grant them comprehensive legal protection. However, protecting your trademarks requires taking additional activities, on both the marketing side and the legal side.
On the marketing side, there needs to be a use of the mark. If the mark is not being used, it could end up being revoked from the registry. On the legal side there is a need to enforce the exclusive use granted in the mark, which could mean taking legal actions against infringers (third parties using the trademark without authorization or license).
Legal actions do not automatically mean taking the case to court. While enforcement via court is a common action to take, there is a variety of substitutional or additional activities available against trademark infringement. Such activities include sending a C&D letter (which will demand a response to it by the other party) or using an alternative dispute resolution (ADR) track, such as arbitration or mediation.
If court proceedings take place, there might also be a need of executing the court’s orders and judgements. It would often require the involvement of the Israeli Law Enforcement and Collection System Authority. In order to choose the ultimate enforcement track for you, being assisted by a local trademark attorney would be highly beneficial. We elaborated on the important topic of trademark enforcement here.
Israeli Copyright Law – in What Ways is it Significant?
The Israeli Copyright Law came into force in 2008. It is similar to parallel copyright legislations from other western countries, but it also has its unique features. The law grants the owners of creative works the exclusive right to perform various actions. This includes copying, distributing, broadcasting, renting and transferring the works.
The law further protects the right to make derivative works, which means works that are based on the original one. For instance, translation of a novel. The law also protects the known moral right of artists, which is the right to be credited, as well as the duty not to use a work in a way that harms the creator’s reputation.
There are various available legal actions that can be taken against copyright infringement, as well as remedies that can be claimed. Claiming damages can be done based on the actual financial loss due to the infringement. However, the law also enables copyright owners to claim damages in a sum of up to 100,000 ILS (approx. 29,500 USD) without being obliged to prove an actual damage. The law also enables the option of claiming an injunction against the continuity of the infringement.
Before going to court, it is customary to send a warning letter, which is used in order to notify the infringers about the infringement and requesting them to cease from their infringing activity. Such letters might help in reaching a compromise between the parties before facing the court. Should court proceedings still take place, there might be a need to deal with defenses that can be raised by the other party against the infringement. In order to do that, the expertise of an IP lawyer with knowledge of the copyright law in Israel is essential.
Design Law in Israel – How Can an IP Lawyer Assist You in Protecting Your Designs?
The Israeli design law regime provided, until recently, a relatively limited protection to industrial designs. Design protection in Israel was governed by an old ordinance, from the days of the British mandate. It provided an insufficient legal framework, given the needs of contemporary industrial designers. It also did not provide legal protection to international designs that had not been registered in Israel.
The new Isreali Designs law that came into force in 2018 changed the rules of the game completely, with respect to design protection in Israel. The new law offers many features that were not in existence previously. This includes protection for unregistered designs, the ability to register designs that have already been published and the possibility to register international designs (in accordance with the international Hague System) for the first time.
Complying with the new law and protecting designs in Israel could be extremely challenging without the knowledge and expertise of an IP lawyer, specializing in design law. This is true with regards to registration of the design, renewing it every 5 years, enforcing the right to use the design exclusively and also addressing different legal matters that may appear along the way. You can read more about the topic here.
Contact an IP Lawyer in Israel
Above we elaborated on the different services offered by an IP lawyer in Israel. For any further questions and inquiries about the topic, you may contact an IP expert attorney from our firm, who will be happy to assist you with all you need to know. The law firm of Decker & Ofir is well experienced with representing clients in various trademark and IP matters, in Israel and abroad.