Trademark enforcement is not always an easy task. It requires to choose among various legal actions that are available for trademark owners. Different authorities can be involved in the process, including the court, the customs and the police. In this article, a trademark attorney from our firm will explain, based on his experience, what you should know about trademark enforcement.
Decker & Ofir is a boutique law firm specializing in trademark law and intellectual property (IP). The firm represents Israeli and international clients in various IP legal matters. The services offered by the firm include assistance with handling trademark registration in different countries, representation in trademark legal proceedings, assistance with trademark enforcement, etc.
What Legal Actions Should Trademark Owners Choose in Order to Enforce Their Rights?
Trademarks, similarly to other IP assets, grant their owners an exclusive right to use them. When a third party uses the owner’s trademark without permission (“license”), it might base a claim for trademark infringement. Unfortunately, in today’s world, trademark infringement became a commonly wide phenomenon. It requires taking different legal actions in order to prevent trademark infringement, when occurring.
Yet, since there are different forms of trademark infringement, there are also different legal actions that can be taken. For instance, an unauthorized use of a logo in a restaurant’s sign might be resolved by filing a lawsuit before the court. However, in some cases, there might be a need to take further actions. Such can be cases of an import or marketing of counterfeit goods. In these cases, the involvement of the enforcement authorities might be necessary.
Another case would be filing an application for the registration of a mark, which infringes an existing trademark. The common action here would be to file an opposition against the registration of the infringing mark.
Things could get even more complex when trademark enforcement is needed outside of the owner’s country. In these cases, familiarity with the local law and legal arrangements is crucial for efficient enforcement. We are often asked by international clients about the different channels of trademark enforcement in Israel. Thus, we wish to elaborate below about the available options for trademark owners to enforce their rights in the Israeli territory.
Does a Trademark Must Be Registered for the Purpose of Enforcement?
This question is crucial in order to understand what are the available remedies and legal actions in each particular case. The Israeli law does grant protection to unregistered trademarks in some cases. Since 2010, the law officially began to recognize and protect well-known trademarks.
However, registered trademarks enjoy a wider scope of protection than unregistered trademarks. For instance, according to the Israeli Trademarks Ordinance, the owners of a registered trademark can obtain damages and an injunction as legal remedies against trademark infringement. The owner of a well-known trademark can obtain only an injunction.
Obtaining damages might still be possible in cases of unregistered marks. Yet, it would require to use another legal basis (such as the tort of “passing off”, according to the Israeli Commercial Torts Law). Such lawsuits could be more complex and require meeting different legal criteria. Thus, trademark registration is highly recommended in order to properly enforce the rights of a mark’s owner.
Enforcement Via Court
The main channel of trademark enforcement is a civil lawsuit. The Trademarks Ordinance provides several remedies against trademark infringement. The most common remedies are damages and an injunction (a court’s order to cease the infringement).
Yet, there are other available remedies. For instance, the court is authorized to order the destruction of infringing goods, as well as conducting other actions in connection with them. Such remedies would often be granted in order to prevent counterfeit goods from entering into the market.
Seeking damages in court is often challenging in trademark infringement lawsuits. Among the reasons for that are the hurdles of indicating the exact scope of the infringement, as well as calculating the amount of damages accurately.
A possible way to solve these complexities is to make an estimation of the amount. Courts often use this solution in trademark infringement cases. Another solution could be suing for further legal grounds. Under the tort of passing off, for instance, the court can grant damages of up to 100,000 ILS (approx. 30,000 USD).
Trademark cases often require further legal actions, rather than merely seeking monetary compensation. In order to prevent future cases of trademark infringement, courts may grant the remedy of injunction.
Sometimes, the act of infringement continues to occur while the legal proceedings are still held. In such cases, trademark owners would often seek a preliminary injunction, in order to immediately stop the infringement. It is important to note that under the Israeli law, it is possible to file a petition for a preliminary injunction up to 7 days before filing a lawsuit. It can also be requested without the presence of the defendant.
Execution of Court Decisions
What can a trademark owner who won in court do when the defendant refrains from respecting the judgement? Such cases often require the involvement of the Israeli Law Enforcement and Collection System Authority. This authority is in charge of execution of court decisions, using specialized tribunals for that purpose. These cases require expertise not only in Trademark Law, but also in repossession.
Enforcement Via Customs Authorities and Police
There are 2 main government authorities that can further assist trademark owners with enforcement of their rights. One of which is the Israeli Customs. The Customs Ordinance authorizes the different Customs units to hold the release of infringing goods that arrive to Israel. This can be a very efficient way to prevent the import and marketing of counterfeit goods within the territory.
In some cases, trademark infringement can further be enforced by the Israeli police. According to the Trademark Ordinance, trademark infringement might count as a criminal offense. The penalties include fines of up to millions of Israeli shekels (hundreds of thousands of US dollars), and even imprisonment of up to 3 years.
The Israeli police have a specialized unit, which enforce IP related crimes, including trademark infringement. It should be noted that apart from criminal enforcement by the police, trademark infringement can base private criminal proceedings in Israel. A unique legal arrangement enables private parties to file a criminal complaint before the Israeli court, against trademark infringement.
Various Legal Tools to Enforce Trademark Rights
In conclusion, the Israeli law provides different enforcement channels to handle trademark infringements. Legal actions in court may include lawsuits for damages, injunctions and other remedies. Trademark owners can further contact the Customs authority, in order to prevent infringing goods from being imported to and marketed in Israel.
In some cases, trademark infringement may even lead to criminal proceedings. This variety of ways to handle trademark infringement, necessitates choosing the appropriate legal actions wisely. An expert trademark attorney can assist you to make the relevant choice in your case, according to the particular circumstances.
Contact a Trademark Attorney in Israel
For more questions and inquiries about trademark enforcement in Israel, an expert trademark attorney from our firm would be pleased to assist you. The law firm of Decker & Ofir has extensive experience with representing Israeli and international clients in various trademark matters and IP litigation.