ISRAEL Law and Practice Contributed by: David Gilat and Jacob Kasulin, Gilat, Bareket & Co, Reinhold Cohn Group
6. Other IP Rights 6.1 Trade Marks
• the complexity of the case, the resources spent to conduct it; and • the sum of the fees requested by the prevailing party. Where other costs are concerned, the courts are instructed to adjudicate all costs actually made and required for the proceedings, subject to the prevailing party detailing those costs in their summations and providing documentation in support. In addition, if the court finds that a party has caused the unnecessary elongation of a proceeding (including an interlocutory proceeding), it may order that party – regardless of the result of the action – to pay the costs of that proceeding to either the opposing party or the State of Israel. Although Israeli law in principle allows recovery of “actual costs”, courts typically award only a partial recovery of the actual expenditure, depending on the judge, the complexity of the matter, and the quality of the supporting evidence. In patent and life sciences cases, higher awards are possible given the technical complexity and the reliance on expert evidence, but “full recovery” remains rare. Legal costs are ordinarily assessed at the conclu ‑ sion of the proceedings, as part of the final judgment, unless the court issues an interim costs order in rela ‑ tion to interlocutory applications. Israeli courts may make interim costs awards in connection with inter ‑ locutory motions (eg, provisional remedies, discovery or procedural disputes). Such awards are enforceable immediately, unless a stay is granted. 5.6 Relevance of Claimant/Plaintiff Conduct to Relief In Israel, all legal actions – including the launch of litigation proceedings and the conduct of such – are subject to good faith. Failure to act in good faith may result in the non-granting of equitable relief (such as an interlocutory injunction) or in a limitation on the enforceability of a substantive right (in forms such as reduced damages or an injunction with a delayed entry into force).
Trade mark law in Israel is governed by the Trade Mark Ordinance of 1972, and, to a lesser extent, by the Commercial Torts Law of 1999 (which deals with the law of passing off). There have been several cases of trade mark disputes relating to the life sciences and pharma sector, centred mostly around naming and get-up – either names or get-ups which were too close for comfort to the name or get-up of an existing, established drug, or names that were too similar to the relevant International Non- proprietary Names (INN), which should remain open to the trade and therefore excluded from trade mark protection. In respect of the first kind of disputes, the case law provides that where a consumer’s mistake, however unlikely, could bring about severe health hazards – as is the case with pharmaceuticals and medical devic ‑ es – even a lesser degree of similarity is sufficient to establish the misleading similarity needed for a find ‑ ing of trade mark infringement. The same is true for passing off, where – subject to a showing of goodwill inured to the benefit of the plaintiff or its product – using misleadingly similar get-up is prohibited. In respect of the second kind of disputes, the case law provides that INNs or the dominant parts thereof can ‑ not be registered as trade marks, either because those should remain open to the trade (if the preparation is based on the same API) or because they could lead to confusion between different preparations using the same API (albeit differently). 6.2 Copyright The issue of copyright in Israeli law is governed by the Copyright Law of 2007, which provides, among other things, protection for textual works. Copying of any text which is original and fixed – such as use instructions of a given preparation – could amount to copyright infringement. A plaintiff in a copyright infringement may pass the burden of proof on to the defendant if it is able to
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