Israel

Thanks to the effectiveness of its accelerated filing system, Israel is an attractive destination for brand owners. Examination normally commences within 12 to 16 months of filing, but if a fee is paid, it is possible to have this take place within one month – and have the whole registration process sewn up within four. This is especially valuable for companies seeking to invest in vital new brands. However, the threshold for inherent distinctiveness is unusually high and the Israel Patent Office tends to reject 3D trademark applications altogether in the absence of exceptional circumstances. Practitioners also note that although the customs authorities are highly motivated, the cost effectiveness of anti-counterfeiting procedures could be improved.

Firms: enforcement and litigation

1
Gilat, Bareket & Co, Reinhold Cohn Group
S Horowitz & Co
2
Adin-Liss Law Offices
Liad Whatstein & Co
Pearl Cohen Zedek Latzer Baratz
3
Dr Shlomo Cohen & Co
Herzog Fox & Neeman
Luthi & Co
Price Plinner Law Offices
Sanford T Colb & Co
Soroker Agmon Nordman

Firms: prosecution and strategy

1
Ellen B Shankman & Associates
Pearl Cohen Zedek Latzer Baratz
Reinhold Cohn Group
2
Adin-Liss Law Offices
Dr Shlomo Cohen & Co
S Horowitz & Co
3
Ehrlich & Fenster
Herzog Fox & Neeman
Meitar Liquornik Geva Leshem Tal Law Offices
Soroker Agmon Nordman
Adin-Liss Law Offices
Adin-Liss is a formidable boutique with significant experience on both sides of the contentious/non-contentious divide. It furnishes clients with uniquely tailored filing advice and defends valuable trademarks with gloves off in the courtroom; but at no stage do practitioners lose sight of clients’ long-term business objectives or commercial realities. Name partners Dan Adin and Eran Liss are the A-listers of the practice. Adin is “very responsive, efficient and precise – his reports include an analysis of all available options; he considers everything. Clients trust him completely”. Having previously worked in-house at an international internet company, Liss has priceless first-hand insight into clients’ needs and an intimate understanding of the online space. The pair have lately been assisting world leader Salesforce with its portfolio and representing Greenwich Polo Club against an infringement claim filed by the owner of the Beverly Hills Polo Club brand.
Dr Shlomo Cohen & Co
IP heavyweight Dr Shlomo Cohen & Co has long had an ardent following of both up-and-coming local companies and Fortune 500 corporations. It offers the full spectrum of services, from searching and filing to business-focused brand management and robust enforcement. While the contentious side of the practice is still recovering from the loss of Liad Whatstein, the firm retains a deep font of knowledge in the form of name partner Shlomo Cohen – a “fantastic and really prominent litigator” whose expertise keeps clients coming back for more. Anti-counterfeiting is a strong suit for this statesman of the Israeli IP scene.
Ehrlich & Fenster
Well-oiled prosecution machine Ehrlich & Fenster has a unique flair for the registration of complex 3D trademarks and a wealth of experience in cancellation actions before the Israel Patent Office. Its service is hailed as professional and efficient, and its counsel as pellucid and pragmatic. Trademark team head Yoel Sztybel is a cosmopolitan practitioner who has made a name for himself offering strategic branding counsel with a distinctly international flavour. The medical devices, pharmaceuticals and biotech sectors are strongholds.
Ellen B Shankman & Associates
A titan of Israel’s non-contentious IP scene, compact but cutting-edge boutique Ellen B Shankman leads the online charge, thanks to its singular domain name and social media know-how; world-renowned electronics companies also feature prominently on its client roster. It has a prodigious filing record and is a frequent fixture at the Israel Patent Office. The “fantastic” Ellen Shankman formerly chaired the International Trademark Association’s Internet Committee; also admitted to practise in the United States, she is a favourite with foreign clients.
Herzog Fox & Neeman
On the back of a blinding 12 months, Herzog Fox & Neeman breaks into the WTR 1000 for the first time this year. Its multi-talented IP team has an “outstanding reputation for licensing and technology transfer issues”, but also tackles prosecution and enforcement mandates with aplomb. Notable recent highlights include advising the 888 Group on all issues surrounding its worldwide trademark portfolio and representing Gold (Top) Computers and Technologies in a thorny domain name suit initiated by Gigabyte Technology. Leading on both matters, Karen Leslie Elburg “is extremely knowledgeable and has excellent instincts. Her advice is always commercially focused; she achieves clients’ aims quickly and cost effectively. She is a pleasure to deal with and is ably supported by her team, at both associate and paralegal level”.
Liad Whatstein & Co
Liad Whatstein & Co has been a breath of fresh air on the Israeli IP landscape since it opened its doors in 2014. Its anti-counterfeiting practice is one of the best in the country; the team is in constant communication with customs officials and orchestrates key seizures on a regular basis. Household names that appreciate its no-stone-unturned approach to counterfeiting include Bacardi, Kipling, Viacom, Paul & Shark, Crocs, FIFA and Mega Bloks. “Its members have excellent educational backgrounds, theoretical knowledge of the field, perseverance, reactiveness, strong communication skills, creativity when it comes to solving seemingly dead-end situations, and the ability to draw reasonable and logical conclusions from limited information.” Founding partner Liad Whatstein has served as chairman of the IP Chapter of the Israel Bar Association and is unquestionably one of the most respected litigators in the country. “Having worked in intellectual property for over 20 years, he has a sound commercial reasoning that allows him to stand out, not only as a heavyweight litigator, but also and most notably as a business partner – one who is willing to walk the extra mile and think and act outside the box in order to get important deals through.”
Luthi & Co
Over the last 12 months Luthi & Co has delivered knock-out blows to challengers in a spate of feisty trademark brawls. The firm is at its best in the pharmaceuticals and high-technology fields, and has carved out a niche handling matters involving geographical indications; it has also been making waves in the non-traditional marks space. Its client roster features prestigious national and international brands – not least thanks to its sophisticated understanding of the US and Chinese markets. Name partner Richard Luthi is “very responsive, reliable and organised – you know your case is in safe hands when he is handling it.” No courtroom curveballs can rattle him.
Meitar Liquornik Geva Leshem Tal Law Offices
The squad at Meitar Liquornik Geva Leshem Tal is “highly respected, especially in technology, private equity and venture capital circles, which helps immensely. Its members provide a very strong business perspective; they take into account the commercial pressures and incentives that affect IP clients.” Prosecution and filing whizz Yoav Oestreicher and licensing maven David Mirchin are the cornerstones of the practice. Oestreicher has recently been handling a portfolio comprising more than 500 trademarks for tobacco juggernaut Philip Morris; while Mirchin – who is hailed for his “responsiveness, cost effectiveness and expertise” – has been negotiating the transfer of IP rights in Yahoo!’s acquisition of RayV.
Pearl Cohen Zedek Latzer Baratz
Full-service Pearl Cohen Zedek Latzer Baratz is a unique proposition on the Israeli trademark scene, thanks to its extensive know-how in ancillary areas and boots on the ground in New York, Boston and London. “The firm is very responsive and provides a top-quality service for very reasonable rates. In particular, it does a great job on trademark registration and opposition matters; it has strong connections with IP offices worldwide.” The “insightful and inventive” Dor Cohen Zedek practises flawlessly on both sides of the contentious/non-contentious divide. She has lately been representing Speedo Holdings in a worldwide tussle with Brooks Sports and Assos in potentially precedential proceedings against ASOS. Colleague Yossi Markovich has teamed up with her on both matters: “Yossi is a superb litigator – one of the best in Israel. He is extremely knowledgeable, strategically smart and business minded.”
Price Plinner Law Offices
Price Plinner eats, sleeps and breathes intellectual property. The pioneering boutique supports clients on all manner of trademark briefs, but shines with particular lustre when faced with apparent stalemates in contentious clashes. Leading from the front is name partner Eyal Price – a “fabulous IP lawyer, for trademarks and more, with profound knowledge in the field. He is really personable and it’s easy to get along with him.” Price has a wealth of experience before both Israel’s highest courts and the Israel Patent Office.
Reinhold Cohn Group

Law firm Gilat, Bareket & Co and trademark attorney firm Reinhold Cohn Group work seamlessly in concert to provide a comprehensive, streamlined offering. “It is responsive, cost effective and creative, and its excellent counsel is concise, clear and business focused.” The contentious star is the “superb” David Gilat, whose “professionalism and invaluable support” continue to wow clients. He has lately been representing Ferrero in the enforcement of its NUTELLA trademark against a company named Nutella Sha'am Sharky Garby. Collaborating with him on this is Luiz Blanc, another polished courtroom performer for whom the transfer of domain name ownership is a forte. Orit Gonen also teamed up with Gilat to assist Puma with an opposition to an application concerning its TIGRIS + device mark. Orit’s smooth negotiation skills and thoughtful approach come into their own in mediation. Founding partner Eran Bareket’s name is known far and wide, making him a magnet for foreign clients. Roy Kornick has been kept busy assisting Sanrio – the owner of all rights relating to the iconic HELLO KITTY mark – with consequential seizures and border control measures; he has forged strong links with the customs authorities. On the prosecution side, Ronit Barzik-Soffer is an “extremely experienced, knowledgeable and practical professional who provides commercially sound solutions”. She leads the trademark department at Reinhold Cohn Group and is adept at managing sprawling multinational portfolios.

S Horowitz & Co
Founded in 1921, S Horowitz & Co is a “prominent and seriously respected firm in Israeli IP, with an especially strong trademark team”. Companies the world over flock to it for holistic, business-focused counsel; elite players on its roster include NBCUniversal Media, Toyota Motors and Teva Pharmaceutical Industries. Key in attracting clients of this calibre is the partnership of Avi Ordo and Tal Band. Ordo is “one of the nation’s finest lawyers – an exceptionally capable adviser and litigator. He is remarkably intelligent, responsive, effective and well travelled. Plus he speaks excellent English and has an advanced legal degree from the University of California, Berkley”. Band chairs the IP practice and has served as president of the Israel chapter of the International Association for the Protection of Intellectual Property Rights; pharmaceuticals, life sciences and telecommunications are strongholds. Together, Ordo and Band have been representing LDI in crucial opposition proceedings against a competitor’s application to register a stylised trademark depicting the word EMOJI and the smiley emoji.
Sanford T Colb & Co
Enforcement powerhouse Sanford T Colb & Co staunchly defends the interests of clients of all stripes, from nascent local businesses to universities, public bodies and world-renowned multinationals. Anti-counterfeiting is a real forte; leveraging on close ties with the Israeli police and Customs, it works tirelessly to formulate devastatingly effective seizure strategies. The men to seek out for this service are David Colb and Eitan Shaulsky. Colb is a dogged and determined advocate who serves as treasurer of the Israel chapter of the Licensing Executives Society, and is famed for his commercial nous. Heading the litigation squad, Shaulsky is a safe pair of hands for clients embroiled in high-stakes battles. “Seligsohn Gabrieli & Co seriously knows intellectual property and has a longstanding tradition of conducting cases in the most professional manner.” Established some years before the Israeli Declaration of Independence in 1948, it has stood witness to the evolution of trademark law in the jurisdiction and is intimately familiar with the vicissitudes of case law. The “excellent” Ehud Gabrieli specialises in the music and broadcasting sectors, where his copyright know-how is an added bonus. Similarly well versed in the creative industries, Nahum Gabrieli represents a multitude of artists and producers; he is a strategic whizz who publishes widely.
Soroker Agmon Nordman

Soroker Agmon Nordman provides clients with the full suite of trademark services, from registration through portfolio management to brand monetisation and vigorous enforcement. Conveniently located in the same complex as the Israel Patent Office, it takes care of business swiftly and with minimal fuss. The commercially sound counsel of name partner Eran Soroker chimes well with the firm’s national and international clientele.

Individuals: enforcement and litigation

Tal Band - S Horowitz & Co
Shlomo Cohen - Dr Shlomo Cohen & Co
David Gilat - Gilat, Bareket & Co, Reinhold Cohn Group
Avi Ordo - S Horowitz & Co
Liad Whatstein - Liad Whatstein & Co
Dan Adin - Adin-Liss Law Offices
Eran Bareket - Gilat, Bareket & Co, Reinhold Cohn Group
Luiz Blanc - Gilat, Bareket & Co, Reinhold Cohn Group
Dor Cohen Zedek - Pearl Cohen Zedek Latzer Baratz
David RM Colb - Sanford T Colb & Co
Ehud Gabrieli - Seligsohn Gabrieli & Co
Nahum Gabrieli - Seligsohn Gabrieli & Co
Orit Gonen - Gilat, Bareket & Co, Reinhold Cohn Group
Miriam Hackmey - Glusman & Co
Roy Kornick - Gilat, Bareket & Co, Reinhold Cohn Group
Eran Liss - Adin-Liss Law Offices
Richard Luthi - Luthi & Co
Yossi Markovich - Pearl Cohen Zedek Latzer Baratz
Yoav Oestreicher - Meitar Liquornik Geva Leshem Tal Law Offices
Eyal Price - Price Plinner Law Offices
Eitan Shaulsky - Sanford T Colb & Co
Yossi Sivan - Yossi Sivan & Co Law Office

Individuals: prosecution and strategy

Ronit Barzik-Soffer - Reinhold Cohn Group
Shlomo Cohen - Dr Shlomo Cohen & Co
Dor Cohen Zedek - Pearl Cohen Zedek Latzer Baratz
Avi Ordo - S Horowitz & Co
Ellen B Shankman - Ellen B Shankman & Associates
Neil J Wilkof - Dr Eyal Bressler & Co
Karen Leslie Elburg - Herzog Fox & Neeman
Miriam Hackmey - Glusman & Co
Eran Liss - Adin-Liss Law Offices
David Mirchin - Meitar Liquornik Geva Leshem Tal Law Offices
Eyal Price - Price Plinner Law Offices
Yossi Sivan - Yossi Sivan & Co Law Office
Yoel Sztybel - Ehrlich & Fenster
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Issue 67