ISRAEL Law and Practice Contributed by: David Gilat and Matan Kovacs, Gilat, Bareket & Co, Reinhold Cohn Group
6. Other IP Rights 6.1 Trade Marks
there are extraordinary reasons to do so), and to take into account: • the proportion between the remedy actu - ally adjudicated and the remedy originally requested; • the manner in which the parties conducted themselves; • the complexity of the case, the resources spent to conduct it; and • the sum of the fees requested by the prevail - ing 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 pro - ceeding (including an interlocutory proceeding), it may order that party – regardless of the result of the action – to pay the costs of that proceed - ing to either the opposing party or the State of Israel. 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-pro - prietary 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 devices – even a lesser degree of similarity is sufficient to establish the mislead - ing similarity needed for a finding 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 cannot 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 con - fusion between different preparations using the same API (albeit differently).
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