Israel

Cooperation between law firms and the Israeli customs authorities continues to improve; a notable number of training courses for customs officials are taking place and seizures are proceeding smoothly. In the courtroom, a significant issue in need of resolution is the extent to which unjust enrichment should apply to trademark and unfair competition matters. However, international brand owners are flocking to Israel in droves, thanks to the success of the country’s accelerated filing system, which allows the registration process to be completed within four months of filing.

Firms: enforcement and litigation

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

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 Patent & Trademark Attorneys
Herzog Fox & Neeman
Meitar Liquornik Geva Leshem Tal Law Offices
Seligsohn Gabrieli & Co
Soroker Agmon Nordman
Adin-Liss Law Offices
Adin-Liss Law Offices has long been a formidable force in both trademark prosecution and enforcement; its recent merger with Pyernik Patent Attorneys has enlarged the scope of its IP practice and made it a true one-stop shop. Of late it has been cannily managing the portfolios of global titans such as Abercrombie & Fitch and Twitter and obtaining registrations under the Madrid system for a slew of local businesses. While the team has reams of experience in its ranks, it is a streamlined operation in terms of overall staff numbers; this allows for low overheads, meaning it can offer extremely competitive prices to clients. The “professional, responsive, proactive and knowledgeable” Dan Adin and Eran Liss form the beating heart of the team. They have worked shoulder to shoulder on so many matters that they can now practically finish each other’s sentences. Greenwich Polo Club recently benefited from their seamless cooperation on a claim for trademark infringement filed by the owner of Beverly Hills Polo Club. Crack litigator Adin has an “extraordinary ability to negotiate the best solution in agreements with third parties and to really think outside the box”, while the versatile Liss brings significant in-house experience to the table, having previously worked for an international internet company.
Dr Shlomo Cohen & Co
Dr Shlomo Cohen & Co files trademarks for clients from a vast array of sectors – including computer software, electronics, pharmaceuticals, hotels, transport, food and beverages – and once the rights have been secured, its tireless litigators will fight tooth and nail to protect them. With Israel being a significant shipping route for counterfeits coming into Europe from Asia, it has also been busy educating customs officials and organising seizures. Name partner Shlomo Cohen is a celebrity on the country’s IP scene; he has served as president of the Israeli Bar Association and published material in journals and textbooks the world over. “Cohen is someone you see everywhere. He’s involved in all the big battles and represents illustrious clients.” Experience on both sides of the contentious/non-contentious divide makes him an all-around top choice.
Gilat, Bareket & Co, Reinhold Cohn Group
The combined offering of premium litigation force Gilat, Bareket & Co and patent and trademark attorneys Reinhold Cohn & Partners continues to prove irresistible to many household names; Lacoste, Puma, Ferrero and AT&T are just four recent beneficiaries of its services. “Reinhold Cohn Group is a leading firm with a flourishing trademark practice. It has by far the largest filing workload in the country – no other firm even comes close in that regard – and it is excellent in enforcement matters, too.” For intractable conflicts, there are few better options than David Gilat. “He is a very experienced litigator, who is responsive, creative and business minded and communicates clearly and concisely.” Having been involved in the much-publicised Supreme Court Bacardi case – the first in Israel to recognise the concept of well-known marks – he is fazed by nothing and knows what it takes to set a precedent. He regularly teams up with fellow enforcement heavyweights Luiz Blanc and Orit Gonen. “Blanc is a brilliant lawyer with outstanding experience. He’s seen almost everything there is to see in the field of intellectual property, and is a real fighter – someone who will work hard to obtain the best result for his client at the lowest possible cost.” Gonen’s singular commercial law expertise and adeptness at alternative dispute resolution set her apart. Founding partner Eran Bareket is the fulcrum around which the practice revolves and he is admired by nascent practitioners. However, he is not one to rest on his laurels and works tirelessly to leave his mark on the IP landscape. “He’s a superb professional – diligent, thoughtful and a fantastic litigator.” Having forged strong links with police officials and customs authorities, Roy Kornick excels in anti-counterfeiting work. “Every problem is different and Kornick always provides tailored solutions. He’s a true professional, who is a pleasure to work with and whose advice is timely, effective, budget conscious and in line with clients’ overall goals.” On the non-contentious side, the “extremely efficient, experienced and skilled” Ronit Barzik-Soffer is as good as they come. Helming the trademark department, the meticulous strategist wins plaudits for her long-term thinking and business acumen.
Herzog Fox & Neeman
Herzog Fox & Neeman dispenses “strong practical and commercial advice, which allows companies to achieve their aims swiftly and cost-effectively”. Nestled within a full-service setup, its IP stars work hand in hand with practitioners in other departments to offer clients a complete package: trademark portfolio management that takes into account and evaluates all restructuring and tax opportunities. Practice head Karen Leslie Elburg underpins the firm’s gleaming reputation in the internet and entertainment sectors. “She is a seriously experienced corporate lawyer with exceptional knowledge of the gaming field and real expertise in licensing and technology transfer work. Thanks to her excellent instincts, she knows how to distil complex information into concise summaries for her clients’ easy digestion. On top of all that, she has a fabulously personable style, which makes her a pleasure to work with.”
Liad Whatstein & Co
For “superb enforcement services” brand owners need look no further than the “extremely impressive IP practice” at Liad Whatstein & Co. The State of Israel, Bacardi, Viacom and FIFA have all knocked on its door. The “state-of-the-art, pioneering” firm is particularly impressive on the anti-counterfeiting side, and thanks to a network of associates in the Palestinian Authority, carries out sophisticated campaigns in that territory, too. A recent example of this was its collaboration with Louis Vuitton to close down an unauthorised shop. Leading from the vanguard, Liad Whatstein is a courtroom celebrity. “He’s certainly one of the best in Israel in terms of formulating a strategy, obtaining the necessary evidence and then conducting actions. He knows how to simplify complicated matters, and on top of that, is incredibly responsive – a tireless advocate for his clients.”
Luthi & Co
Since 1986 Luthi & Co has been shaking up trademark law in Israel, setting new precedents and paving the way for the protection of colour marks. This has earned it widespread respect in the market: “The litigators there are highly reputable and have a very impressive track record.” A recent beneficiary of its expertise was Cosmopharm, a subsidiary of Sano-Bruno’s Enterprises; the team represented it in a preliminary injunction procedure filed by L’Oréal and walked out with a favourable settlement. Pharmaceuticals are certainly a key focal point for the firm, but it also assists plenty of clients in the toy and beverage sectors. Name partner Richard Luthi has 30 years’ experience under his belt and it shows; he has an encyclopaedic knowledge base and pleads with striking power and poise. Having handled the Cosmophorm work, Daniel Lerner joins him in the WTR 1000 for the first time this year. His level-headedness and remarkable recall immediately inspire confidence in clients.
Pearl Cohen Zedek Latzer Baratz
The sensational Pearl Cohen Zedek Latzer Baratz stands out for its work on both sides of the contentious/non-contentious schism; it has every key industry sector locked down and dispenses 360-degree counsel alive to long-term business goals. International offices in New York, Boston and London serve to sweeten the deal. Start-ups, research institutions and Fortune 500 companies have all placed their trust in the firm. Chairing its Israeli trademark and designs group, Dor Cohen Zedek exemplifies its holistic ethos. She has the foresight and analytical acuity to put together infrangible strategies, and is not one to shy away from a fight. “Clients value her profound knowledge of trademark matters and her extremely professional way of dealing with requests.” Also blazing a trail in Israeli intellectual property is teammate Yossi Markovich; cool headed and enviably experienced, he is a fine ally to have when the temperature rises.
Price Plinner Law Offices
Price Plinner is a nimble boutique with a reputation that belies its size. It is at its best in courtroom battles, where its three fearless litigators extinguish enforcement fires with alacrity. Name partner Eyal Price is unquestionably the most renowned of the squad. He can explain complex technical issues to anyone and is a master when it comes to thinking on his feet. He served on a government committee for the revision of civil procedure laws for the Israeli Patents, Designs and Trademarks Office (ILPO).
S Horowitz & Co
“S Horowitz & Co is truly exceptional. No other full-service firm has a comparably strong IP practice.” For more than half a century, it has been firmly at the forefront of Israeli trademark law – expertly supporting clients from backrooms to courtrooms. Its stature rests – in no small part – on the reputation of pre-eminent professionals Avi Ordo and Tal Band. The versatile Ordo has been balancing portfolio management work for the likes of NBCUniversal Media, Allergen and Toyota, while also representing Habitat in complex preliminary injunction proceedings. “He’s extremely bright, thorough, resourceful and commercial – one of the finest lawyers around. An aspect of his excellent trademark work that cannot be overstated is his responsiveness. He’s able to switch gears when necessary and always uses time efficiently. Plus, his cross-examination skills are simply second to none. On a scale of one to five stars, he must get six.” Band has coordinated a huge number of multi-jurisdictional disputes in his storied career and is currently assisting Anheuser-Busch on proceedings concerning its famous BUDWEISER trademark. Supporting him on this complicated matter are WTR 1000 debutants Moran Katz and Dovev Apel. “Katz is extremely intelligent, knowledgeable, professional, responsive and creative. While she scrutinises the details closely, she never loses sight of the bigger picture.” She counts pharmaceuticals and consumer products among her choice industries. With significant experience before the ILPO, not to mention the civil courts, Apel is an “outstanding trademark practitioner, who has deep understanding of the law and significant litigation experience. Clients really appreciate the time he spends getting to know their markets.”
Sanford T Colb & Co
Established in 1976, Sanford T Colb & Co has cemented itself as a firm fixture on the nation’s IP landscape. This forward-looking boutique is willing to burn the midnight oil to devise strategies to secure its clients’ IP rights and subsequently throws plenty of punches in the courtroom. Dynamic duo David Colb and Eitan Shaulsky perform seamlessly together. Colb is a shrewd operator licensed to practise at the ILPO and the US Patent and Trademark Office, before which he maintains an excellent record. Businesses calling on Shaulsky are in equally safe hands. Captaining the litigation limb of the practice, the silver-tongued contentious maven possesses profound case law knowledge.
Seligsohn Gabrieli & Co
Seligsohn Gabrieli & Co’s cohort of “knowledgeable, devoted and efficient attorneys” have a penchant for securing the registration of 3D trademarks and problematic slogans. Their domain name work is also of particular note. Having been on the scene for decades, the firm has established and nurtured an impressive local client base, including huge names such as Strauss Group and Sano-Bruno’s Enterprises, but its fame has spread far and wide, as shown by its representation of Cristiano Ronaldo, Gucci and Medtronic. Brothers Nahum Gabrieli and Ehud Gabrieli are a copybook partnership. They work effortlessly together, chewing over every possible course of action and ensuring all bases are covered; IBM has been lucky enough to benefit from this comprehensive approach first hand. Nahum supplements his formidable trademark enforcement practice with significant copyright and media licensing expertise. Ehud, meanwhile, is an anti-counterfeiting ace; when it comes to the fight against fakes, he is unremitting. He has also been instructing workers at the Israeli Customs Authority.
Soroker Agmon Nordman
Soroker Agmon Nordman is a great choice for both the stewardship of complex trademark portfolios and steadfast courtroom representation. Its razor-sharp team examines every detail of the relevant materials and separates the wheat from the chaff before coming up with clear, compelling solutions. However, it is also acutely sensitive to budgetary constraints and never loses sight of the bigger picture. Responsiveness and commercial awareness are hallmarks of its service. Prospective clients will not regret picking up the phone and dialling name partner Eran Soroker.
Yaacov Salomon, Lipschutz & Co
Debuting in the WTR 1000 for 2018, Yaacov Salomon, Lipschutz & Co has a “multi-disciplinary team of high-class professionals” who fear no one; “they have a deep understanding of the IP field and vast experience.” When a trademark enforcement matter comes their way, they immediately pool their expertise and analyse all available options. Recently the team won a valuable temporary injunction before a district court, and subsequently the Supreme Court, for BIG Shopping Centers. Overseeing this matter, “vigorous” enforcement whizz Narda Ben Zvi “brings to her litigation activities a keen intellect and a deep understanding of trademark law and practice, together with a professional thoroughness in everything that she does. She adds to this an extremely inquisitive mind that leads her to seek creative solutions for the issues she deals with. At the same time, she is well grounded in the practicalities of the profession, and never loses sight of the fact that the ultimate goal is to achieve the best possible result for her client”.
Ehrlich & Fenster Patent & Trademark Attorneys
The 2017-established Ehrlich Group comprises Ehrlich & Fenster, a renowned name on the non-contentious side; Ehrlich, Neubauer & Melzer, a litigation powerhouse; and IPTrade, a finely honed service geared towards the monetisation of intellectual property. Of late, this offering has been turning heads in the trademark community and local and foreign entities have been responding enthusiastically; it is currently filing a variety of applications for start-ups, universities and renowned businesses and tackling customs infractions with proficiency. Yehuda Neubauer heads the trademark and design department.
Ellen B Shankman & Associates
When it comes to non-contentious trademark services, Ellen B Shankman & Associates sets the pace in Israel. Exciting young national companies and Fortune 500 multinationals alike flock to it for help regarding the management of their trademark and domain name portfolios. Generic top-level domain issues are also becoming a growing specialism for the outfit. Founding partner Ellen Shankman treats every patron as if they were her only client; she is a remarkably hands-on practitioner, who familiarises herself with the ins and outs of relevant markets so that she can provide logical, business-minded counsel at the click of a button. “Shankman is experienced, highly professional and extremely knowledgeable – someone whom even competitors have tremendous respect for.”
Meitar Liquornik Geva Leshem Tal Law Offices
Home to over 280 attorneys, Meitar Liquornik Geva Leshem Tal is a colossal full-service firm with an international outlook; a striking number of its partners were educated at universities in the United Kingdom or the United States and its customer service is modelled on the top New York and US West Coast firms. A notable patron of its first-rate trademark offering is the tobacco giant Philip Morris, which it has been representing on a string of prosecution and oppositions matters. It is also a favourite among start-ups – providing counsel on every aspect of their business – and excels in software issues. For non-contentious assistance, David Mirchin is a fine choice. The sharp-witted, commercially minded practitioner is au courant with all the latest developments in the online world. When the courtroom calls, Yoav Oestreicher leads the charge. “Oestreicher is one of the best trademark litigators in Israel, and has experience representing some of the biggest technology companies out there. Clients think the world of him.” He has Samsung Electronics’ ear, which inevitably keeps him busy.

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
Dovev Apel - S Horowitz & Co
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
Moran Katz - S Horowitz & Co
Roy Kornick - Gilat, Bareket & Co, Reinhold Cohn Group
Daniel Lerner - Luthi & Co
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
Narda Ben Zvi - Yaacov Salomon, Lipschutz & Co

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
Moran Katz - S Horowitz & 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
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Issue 72