The daily routine of a trademark attorney in Israel is quite diverse. Trademark attorneys accompany clients throughout the process of trademark registration, which has different possible complexities. They also represent in proceedings before the designated court of the Israel Patent Office. Furthermore, they represent in civil court proceedings related to trademark infringement and similar actions that are taken against infringers. Below, a trademark attorney from our firm will share information about this wide range of services.
Decker & Ofir is a boutique law firm, specializing in trademark law and Intellectual Property (IP). The firm provides comprehensive legal services in the field of trademark law, including representation in trademark registration proceedings, representation in trademark infringement cases, etc. Our attorneys are well experienced with representing Israeli and international clients in various trademark matters.
What are Trademark Attorney’s Areas of Practice in Israel?
Protecting brands and the reputation of a company is a crucial and basic task in every territory in which a company operates. The ultimate way to protect brands and companies’ reputation is by registering them as trademark. Studies already found a correlation between trademark rights ownership and companies’ revenues (for instance, see this EPO study). Companies that protect their trademarks often enjoy significantly higher revenues than companies without trademark protection.
Since in order to be effective, trademark protection requires much more than mere trademark registration, trademark attorneys provide a wide range of services. These services include, apart from assisting with local and global registration, taking different legal actions against trademark infringement. Such actions require expertise and first-hand familiarity with the local trademark laws that apply in a certain territory.
Below we will present the different areas of practice of a trademark attorney in Israel, based on our experience. We will elaborate on the different stages of trademark registration procedure, the available legal actions against trademark infringement and the way local representation of an Isareli attorney could help avoiding different undesired consequences in Israeli trademark matters.
Trademark Registration in Israel Requires Expertise in Advance
Over the past 20 years, there have been some significant developments in the Israeli trademark system. This includes the introduction of an international registration, as well as the ability to submit Israeli trademark applications online. However, legal representation remains common in Israeli trademark application proceedings, and for a good reason.
There are various activities involved in the process that require expertise and familiarity with the local law. without knowing the specific requirements and regulations involved in the process, one might lose the protection which could have been granted to his mark. To avoid such an undesired outcome, legal assistance from a local trademark law can be of crucial help.
For instance, it is very important to conduct a search for similar or identical trademarks before filing the application. The Israel Patent Office offers a free search engine for local registered trademarks. While it is a good place to begin the search, it should not be limited to the particular territory. Moreover, trademark search is in itself an activity which requires knowledge in the field, in order to understand whether the marks are qualified for registration according to the Israeli trademark legislation and the relevant case law.
For instance, even when a mark is not registered in Israel for a particular class of goods, it could still prevent registration of similar marks for other classes of goods, due to potential dilution of a known trademark. That was the conclusion in one of the most important judgements of the Israeli Supreme Court in the Bacardi case. We elaborated on that case and the topic of trademark dilution here.
Processing of Trademark Applications
The next stage after conducting a preliminary search and submitting a trademark application is the examination of the application in the trademark office. This may be a complicated and lengthy process. Examiners’ main duty in this regard is to verify whether the mark meets the criteria set in the Trademark Ordinance.
If the criteria of the law are not met, a report specifying the examiner’s objections will be sent to the applicant. The applicant will then have to respond to the report and defend her argument regarding the qualification of the mark. Resolving the objections for the registration should result in the approval of the mark. This would lead to the publication of the mark in the Israeli Trademarks Journal and others will be able to file an opposition for registration, on which we will elaborate below.
Representation in Trademark Proceedings Before the Trademark Registrar
The Trademark Ordinance states that any person may file an opposition to a trademark registration. The possible opposition claims are that the opponent is the owner of the trademark, or that the mark is not qualified for trademark registration. Filing an opposition will initiate opposition proceedings before the Israeli trademarks registrar.
Opposition proceedings are somewhat similar to civil lawsuits. They also consist of several stages and include filing of pleadings and evidence, investigations of declarants and final decision of the registrar. As mentioned, the proceedings are held before the trademark registrar, in the Israel Patent Office’s designated court. As such, they require expertise and familiarity with the Israeli trademark law and the relevant case law. It is even more crucial in the case of the applicants, as they bear the burden of proof that their mark is qualified for registration.
There are other types of trademark proceedings in the Israel Patent Office’s court. One is interference proceedings. This type of proceedings occur when 2 or more parties file a trademark application that the Trademark Office deems as confusingly similar. The registrar will determine which of the applicants should prevail and move forward to registration of their mark.
Another type of proceedings is revocation proceedings. Such proceedings can be relevant in cases where another party wishes to revoke a trademark which is already registered from the registry. These proceedings are more challenging from the perspective of that party, as it bears the burden to prove that the trademark should be revoked.
Legal Actions Against Trademark Infringement: It Often Begins With a Letter
Infringing use of a trademark by unauthorized parties could cause destructive damage to the reputation behind the trademark. There are various available legal tools against such acts. While the remedies are often being claimed in court proceedings, there are other potential actions that could be effective against infringement. One of which is sending a warning letter to the infringers. Warning letters could save time and money, as they encourage the infringing party to reach a settlement instead of handling lengthy court proceedings.
Even if the letter does not lead to the stoppage of the infringing act nor prevent the necessity of acting against the infringer, they could still be beneficial in court. They could serve as proof that the trademark owners attempted to reach a solution outside of court, in a more efficient and time-saving way.
Representation in Legal Lawsuits
The main available legal tool against trademark infringement is filing a civil lawsuit. The law provides different remedies that could be claimed in trademark lawsuits. The most common remedies are damages and an injunction (a court’s order to cease the infringement).
Other available remedies are, for instance, an order for the destruction of infringing goods, or for other actions in connection with them. Such orders are usually given as means to prevent counterfeit goods from entering into the market.
Seeking damages in trademark infringement lawsuits is often challenging. One of the main reasons for that is the difficulty in indicating the accurate scope of the infringement, as well as calculating the precise amount of damages in advance. Courts often solve these difficulties by making an estimation of the amount when filing the lawsuit.
Another solution could be expanding the lawsuit to additional legal grounds, apart from trademark infringement. For instance, under the ground of passing off, the court can grant damages of up to 100,000 ILS (approx. 30,000 USD). Understanding what are the available grounds in each lawsuit is crucial, and requires expertise in Israeli trademark law and other related IP fields.
As trademark infringement cases involve unauthorized use in intellectual assets, they 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.
In many cases the infringing act continues to occur while the legal proceedings are still held. In these cases, trademark owners would often seek a preliminary injunction, in order to stop the infringement immediately. The Israeli law allows for filing a petition for a preliminary injunction up to 7 days before filing a lawsuit. It can also be requested ex parte, which means without the presence of the defendant.
Court proceedings can be lengthy and therefore they would not always be sufficient against acts of infringement. In cases of import of counterfeit goods or large scales of imported counterfeit goods that are being sold in Israel, swift actions ought to be taken. In such cases, trademark owners could seek the services of the Israeli Customs and the Israeli Police.
The Israeli Customs Ordinance authorizes the different Customs units to hold the release of infringing goods that arrive to Israel. This could prevent the import and marketing of counterfeit goods within the Israeli territory very efficiently. A trademark attorney from Israel could help with communication with the Cusoms authorities and with handling the necessary legal arrangements.
In some cases, enforcement by the Israeli police could be another possible action against infringements. 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. To read more about trademark enforcement in Israel, see this article.
In this article we explained about the wide range of areas in which a trademark attorney in Israel practices. For any further questions, a trademark attorney from Decker & Offir law firm in Israel is available to assist in any issue. Our attorneys specialize in trademark law and intellectual property, and are experienced with handling trademark registration and obtaining legal protection to IP assets for Israeli and international clients.