ISRAEL Law and Practice Contributed by: Ronit Barzik-Soffer, Luiz Blanc and Rakefet Peled, Reinhold Cohn Group
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special procedural provisions regarding copyright or trade mark proceedings. All proceedings are subject to the Civil Procedure Regulations. 8.2 Effect of Registration A valid trade mark registration gives the registered owner the exclusive right to use the mark concerning the registered goods and to prevent others from using an identical or confusingly similar mark with respect to the same goods or goods of the same description. Where a well-known mark has been registered, the scope of exclusive use and prevention of infringe - ments is broadened beyond the registered goods and goods of the same description. Trade marks registered for five years and more are not susceptible to cancellation proceedings, unless they have been filed in bad faith, or if they have not been used for three consecutive years, in which case, they may be revoked. The owner of a registered trade mark does not need to establish goodwill regarding the trade mark, but only prove the likelihood of confusion with the allegedly infringing mark. Owners of registered trade marks may file complaints to the customs authorities to cease future shipment of infringing goods. Owners of registered trade marks may file criminal complaints regarding the infringement of their trade marks to the IP unit of the police, or initiate private criminal complaints with the court. Regarding copyright – no registration is needed. 8.3 Costs of Litigating Infringement Actions Besides the attorney’s fees, the typical costs for bringing an infringement action in the first instance are official fees of 2.5% based on the stipulated sum of the action (half when submitting the lawsuit and
half before the main hearing), plus expert and survey fees if needed.
9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The main defences in trade mark infringement are that the trade marks are not confusingly similar or are intended for different goods and services, eliminating the likelihood of consumer confusion. An additional common defence anchored by case law is an indirect attack on the plaintiff’s trade mark. All absolute and relative claims available to cancel a trade mark registration in proceedings before the registrar are also available as defence claims in infringement matters. Other defence claims may be based on prior rights and the goodwill of the trade mark acquired through local use and/or registration, genuine descriptive use of the mark, and honest concurrent use of a trade mark. When preliminary relief is requested, other common equitable defences are available against the plaintiff’s ability to obtain the preliminary order, such as: • acquiescence, namely, the silence of the plaintiff against the continued infringement of its trade mark; • laches, namely, the unreasonable delay in bringing the action; and • the filing of the motion in bad faith, eg, the omis - sion of an important factual claim or document. While such claims may also be brought in the frame of the main action, in such cases, the impact of the claim is normally restricted to the sum of the monetary relief stipulated. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The use of a business name, a geographical loca - tion or a personal name will not constitute trade mark
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