ISRAEL Law and Practice Contributed by: Ronit Barzik-Soffer, Luiz Blanc and Rakefet Peled, Reinhold Cohn Group
licence is unlikely to mislead the public, to the best of their knowledge and understanding. When applying to record an authorised user, the fol - lowing documents are required: a power of attorney from the licensor; a power of attorney from the licen - see; the licence agreement or a certified copy. Assignment An assignment should be recorded in the Trademark Register. It is recommended that change of ownership should be recorded as soon as possible. Non-registered users Use by a non-registered user might present a serious problem when the use concerned is exclusive (or if there are several users, none of whom is the registered owner of the mark or recorded as an authorised user). In such a case, after three consecutive years from the registration date, the trade mark registration might become vulnerable to cancellation on the grounds of non-use, despite the use by the non-recorded user(s). A mark may even lose its distinctive character as a result of prolonged use thereof by a non-recorded user. This follows from the old English authorities regarding use by a non-registered licensee. Moreover, the Israeli Supreme Court has applied an even broader read - ing of this section, by refusing to hold valid a licence which had not been registered. In said judgment it was held that where the parties to a licence agreement do not intend to register same, the agreement is deemed illegal. Such an agreement may not be enforced, nor can a cause of action be based thereon. Copyright Regarding copyright – see 5.1 Timeframes for Filing an Opposition or Cancellation. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits In copyright and trade mark matters there is no spe - cial limitation period. These matters are therefore sub - ject to the general statute of limitations, which sets a
limitation period of seven years. In addition, copyright infringement claims are subject to equitable defences, such as laches (undue delay). However, Israeli jurisprudence has recognised the “continuing infringement” doctrine. Accordingly, a continuous infringing act creates renewed causes of action. It is therefore possible to claim remedies for the period of the violation that occurred during the seven years preceding the date of filing the claim. Eve - ry day the violation continues creates a new cause of action, which restarts the counting of time under the statute of limitations. 7.2 Legal Claims for Infringement Lawsuits To establish trade mark infringement, the owner of a registered trade mark needs to prove the unauthorised use of its registered trade mark or of a similar trade mark with respect to the same goods or services, or with respect to goods or services of the same descrip - tion. The owner of a registered and well-known trade mark may support an infringement action on the basis of the unauthorised use of its trade mark or of a similar trade mark thereto even with respect to goods and services of different descriptions, if the use of the mark is likely to indicate a connection in consumers’ minds (“likeli - hood of association”) between the goods and services of the unauthorised user and those of the registered owner of the trade mark, and that the latter might be harmed as a result of such use. and Their Standards Trade Mark Infringement The owner of an unregistered well-known trade mark may obtain protection against the unauthorised use of its trade mark or of a similar trade mark with respect to goods and services of the same description. There is no special registration for well-known trade marks in Israel, and the recognition of well-known trade marks is made during proceedings before the court and the registrar. Therefore, to prove the exist - ence of a well-known registered or unregistered trade mark, the trade mark owner must bring solid evidence to prove exceptional goodwill acquired locally through the continued and extensive use and promotion of its
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