Procedures and strategies for anti-counterfeiting: Israel

Legal framework

The following relevant laws apply to anti-counterfeiting in Israel:

• the Trademarks Ordinance (5732-1972);
• the Trademarks Regulations 1940;
• the Trademarks Order (Protection of Industrial Property) 1934;
• the Merchandise Marks Ordinance 1929, as amended;
• the Merchandise Marks Regulations 1935;
• the Appellations of Origin (Geographical Indications) (Protection) Law (5725-1965);
• the Appellations of Origin (Procedure of Registration of Appellations of Origin Originating in a Foreign Country) Regulations (5727-1967);
• the Appellations of Origin (Procedure of Registration of Appellations of Origin Originating in a Foreign Country) Regulations (5727-1967);
• the Appellations of Origin (Procedure before Appeal Committee) Regulations (5727-1966);
• the Symbols Protection Act (5735-1974);
• the Unjust Enrichment Law (5739-1979);
• the Commercial Torts Law (5759-1999); and
• the Consumer Protection Law (5741-1981).

In addition, Israel is party to the following international treaties:

• the Paris Convention for the Protection of Industrial Property (1883), Stockholm (1967);
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs);
• the Nice Agreement on the International Classification of Goods and Services (1957), Stockholm (1967);
• the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958), Stockholm (1973); and
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

Border measures

According to the Customs Ordinance, Customs is entitled to detain imported goods that are suspected of infringing trademarks.

It is possible, although not mandatory, for rights holders to file a complaint while recording their registered trademarks with Customs. It is highly recommended that such a complaint be filed if the rights holder is aware of specific shipments of infringing goods bound for Israel or if it wishes to bring certain trademarks to the attention of Customs.

When a complaint is filed with Customs, the following documents must be submitted:

• a guarantee in which the trademark owner undertakes to indemnify Customs and/or the importer for any unjust damages;
• photographs and/or catalogues of goods depicting the trademark, in order to enable Customs to distinguish genuine goods from infringements;
• power of attorney;
• the trademark extract from the Israeli (or international) patent and trademark registrar; and
• specific information regarding the importer and country of origin of the infringing goods, if available.

Notwithstanding the above, Customs is authorised to seize suspected goods (whether as a result of a complaint submitted by the rights holder or as a result of a random examination of shipments arriving in Israel). Once such goods are seized, Customs must send appropriate notice to the rights holder and the importer.

In most cases, Customs initiates a short procedure while agreeing to destroy the goods based on a written opinion submitted by the rights holder, in which it indicates the reasoning behind its belief that the goods are indeed infringing and provides that it will compensate the importer for any financial damage that may be inflicted as a result of the seizure, as well as joining Customs in any lawsuit initiated by the importer. Such circumstances include:

• a small shipment;
• a small shipment including several brand-name goods;
• a low value shipment;
• a shipment suspected of violating the legal import rules; or
• goods arriving in a parcel through the mail.

In some cases where the shipment includes a large number of goods or goods of higher value, Customs will initiate a standard procedure (in accordance with the TRIPs agreement), under which the rights holder must file a lawsuit. It is possible to settle the matter prior to filing suit. The settlement agreement between the rights holder and the importer must be authorised by a customs legal adviser. As an initial step the rights holder must submit a bank guarantee to Customs in order to compensate the importer for any financial damage that may be inflicted as a result of the seizure or the filing of a lawsuit.

Whether a standard or short procedure is initiated, on receiving the customs notification the rights holder has three working days (with a possible further three-day extension) in which to respond. It may either submit the required bank guarantee/relevant documents to complete the short procedure. Only after the bank guarantee has been submitted will Customs advise the rights holder of the importer’s details and allow it to obtain a sample of the seized goods. As such, if the rights holder decides to proceed with the short procedure, it will not receive any details regarding the shipment.

Upon filing the bank guarantee, the rights holder can either settle the matter amicably with the importer or file a lawsuit against it within 10 working days of the notice date (an extension of 10 working days is available upon filing a reasoned request).

Should the rights holder choose to take no further action, the goods will be released.

Criminal prosecution

Trademark infringement may constitute a criminal offence. In the past, the authorities did not intervene in criminal prosecution with regard to trademarks; such procedures were mainly initiated by trademark owners (see below). In 2003 the Israeli police established specialised IP units, which may act based on information obtained as a result of their own investigations or a complaint from a rights holder. In criminal prosecutions initiated by the state, a representative of the rights holder may be expected to give testimony and appear as a witness before the court.

State prosecution of criminal offences

Criminal proceedings are initiated only with respect to registered trademark rights. Unregistered trademark rights may be protected only within the framework of civil proceedings.

Plaintiffs must prove that the defendant used the registered trademark without the rights holder’s authorisation or approval, in a manner that may deceive a third party.

If found guilty, defendants face imprisonment for up to three years, a significant fine and/or the forfeiture and destruction of the goods.

Private criminal complaint

The right to file a private criminal complaint is independent of the proceedings initiated by the state prosecution – that is, it is permissible in cases where the state prosecution has chosen not to investigate or prosecute a specific case. In such case, the burden of proof falls on the complainant. The complaint will be filed with the magistrates’ court.

In some cases the complaint may be turned over to the state prosecution. The same proceedings, remedies and jurisdictions apply to private complaints as to state criminal prosecutions.

A verdict in a criminal complaint may be used as prima facie evidence in a civil case where the defendant is found guilty and the verdict is final.

Civil enforcement

Trademark litigation in civil courts

Trademark litigation in Israel generally follows the basic procedures of general Israeli litigation. On average, a case involving trademark infringement takes anywhere between one and three years. This does not include appeals, which may take an additional one to two years. Claims relating to trademarks are generally filed with the district courts. That said, if the monetary value of the disputed goods is relatively low and there is no request for interlocutory relief, the claim should be filed with a magistrates’ court. Appeals against decisions of magistrates’ courts are filed with the district courts. District court decisions may be appealed to the Supreme Court.

Remedies

A preliminary injunction is the most common remedy granted to the owner of a registered IP right. A preliminary injunction may be issued if the rights holder can provide apparent proof of cause, convince the court of the urgency of the matter at hand and, in most cases, provide a bank guarantee. The court usually holds a comprehensive hearing to consider the case at hand. Similarly, permanent injunctions may be granted within the framework of the lawsuit.

An Anton Piller order is a seizure order (particularly available in counterfeit matters), under which the court empowers a party (usually the plaintiff) to enter the premises of a third party to search for and seize evidence of infringing activity.

Monetary damages awards are relatively small compared to those available in other member states of the Organisation for Economic Cooperation and Development. An award of damages generally requires proof of infringement and proof of damages, or at least a reasonable estimate. In assessing the amount of monetary damages, a court may require the plaintiff to provide actual damages. However, the court’s final award of damages will not necessarily be bound by the proof of actual damages provided by the plaintiff.

The courts routinely award damages without having to prove actual damages, based on the Commercial Torts Law (5759-1999). According to this law, compensation may be awarded without having to prove actual damages. However, this type of compensation is limited to NIS100,000 (approximately $28,000).

The court may order a defendant to provide the plaintiff with a complete audit of its accounts with respect to its infringing activities.

The courts generally award expenses to the prevailing party in litigation. However, costs are subject to caps set by regulation and rarely amount to more than 30% of the actual legal fees expended.

In cases of trademark infringement, a trademark owner may demand that the infringer transfer the infringing goods to the owner or destroy all of the infringing products.

Parallel imports

Parallel imports do not per se constitute trademark infringement, as the courts view them as healthy competition that results in reduced prices for the consumer. Nevertheless, it may be possible to prevent parallel imports where:

• the importer demonstrates bad faith;
• copyright infringement has taken place; or
• a contractual obligation has been breached.

In a district court ruling regarding Joop perfumes, the court ordered the halt of parallel imports after the importer removed the barcode labels attached to the perfumes. The court concluded that the importer had constructive knowledge of the existing contracts between the manufacturer and the licensed distributors; thus, it caused the manufacturer to breach its contracts with its authorised distributors. Further, the court concluded that the importer had removed the barcode labels in bad faith, thereby allowing the plaintiff to obtain damages from the importer on the basis of unjust enrichment.

Similarly, in more recent cases, the district courts have stopped parallel imports of different kind of goods based on the bad-faith approach taken by the importer and/or the breach of exclusive distribution agreements.

Anti-counterfeiting online

Dispute resolution

Online issues may be governed by the Israeli courts or the Israel Internet Association, which operates as the registry for domain names under the country-code top-level domain ‘.il’.

The association’s dispute resolution process is designed to resolve disputes regarding the allocation of ‘.il’ domain names. It is not intended to create or replace judicial precedence or jurisprudence. Agreeing to dispute resolution under these procedures does not constitute an arbitration agreement as defined by the Arbitration Law.

Under the rules for the allocation of ‘.il’ domain names, the dispute resolution process will review third-party challenges to the existing allocation of a domain name by the association on a case-by-case basis. Disputes regarding the allocation of a domain name by a holder may be brought by a third party on the following grounds:

• The domain name is identical or confusingly similar to the complainant’s trademark, trade name, registered company name or legal entity registration;
• The complainant has rights in the name;
• The holder has no rights in the name; and
• The application for allocation of the domain name was made or the domain name was used in bad faith.

Courts

The courts have not yet considered what constitutes trademark infringement on the Internet. One noteworthy case is ML v Crazy Line, in which the Tel Aviv District Court dismissed trademark infringement and unfair competition claims against a defendant that used ML’s marks to trigger Google AdWords. The court gave considerable weight to the fact that the disputed trademarks were not used in the sponsored links themselves; instead, the trademark use took place “behind the scenes”. The court held that such use should not constitute infringement.

That said, magistrates’ courts have declined attempts to dismiss lawsuits in limine (ie, before the start of a trial) based on ML, indicating that such claims may be heard based on unjust enrichment.

However, in the more recent case of Proportzia Ltd v Dov Klein the Tel Aviv District Court reaffirmed ML, ruling that use of a trademark in the scope of Google AdWords does not constitute trademark infringement, unjust enrichment and/or a breach of privacy, dignity and liberty.

Further, in re Tommy Hilfiger the Supreme Court recently permitted the third-party use of a brand owner’s trademark in the domain name ‘tommy4less.co.il’. The court held that it was clear to the general public, in light of the specific wording of the domain name, that the website was not operated on behalf of or sponsored by the rights holder. Therefore, courts may allow the use of a brand owner’s trademark in a third-party domain name provided that the full wording makes it clear to the general public that the website is not connected to the rights holder.

Preventive measures/strategies

Rights holders should consider the following measures in order to detect possible infringements:

• reviewing the Trademark Gazette published by the Israeli Patent and Trademark Office;
• conducting regular online investigations;
• involving an investigation agency; and
• filing customs complaints, where appropriate.

In addition, rights owners should try to implement technical devices or other measures in their products in order to ensure the expedited detection of counterfeits and locations from where parallel imports have been imported.

Stringent manufacturing and distribution agreements, including jurisdictional limitations, may prevent the unauthorised distribution of goods created by authorised manufacturers working for rights owners, and may also help to prevent parallel imports.

Pearl Cohen Zedek Latzer Baratz

121 Menachem Begin Road

Azrieli Sarona Tower, 53rd floor

Tel Aviv 6701203

Israel

Tel +972 3 303 9000

Fax +972 3 303 9001

Web www.pearlcohen.com

Dor Cohen-Zedek
Senior partner
[email protected]

Dor Cohen-Zedek is a senior partner with Pearl Cohen Zedek Latzer Baratz, one of the leading IP firms in Israel. Ms Cohen-Zedek is admitted to practise in Israel and New York. She heads the firm’s Israeli trademark and anti-counterfeiting groups, advises on worldwide trademark and design strategy, and handles trademark and design prosecution, enforcement and litigation. Ms Cohen-Zedek is a member of the International Trademark Association (INTA), the International Association for the Protection of Intellectual Property (AIPPI), the Pharmaceutical Trademarks Group, the European Communities Trademark Association and MARQUES.

Yossi Markovich
Senior partner
[email protected]

Yossi Markovich heads the firm’s IP litigation group in the Israeli office. He specialises in dispute resolution, with an emphasis on IP litigation. Mr Markovich advises a number of major technology-based companies on a wide range of IP issues involving patents, trademarks, designs, copyrights, trade secrets, counterfeiting and unfair competition. His experience includes acting on behalf of major global corporations and academic institutions, as well as multinational fashion companies, leading hotel chains, prime broadcasting networks, major retail corporations and government agencies.

Itai Sela Saldinger
Associate
[email protected]

Itai Sela Saldinger is an associate in the IP litigation and the anti-counterfeiting groups at Pearl Cohen. He has extensive experience in IP enforcement and anti-counterfeiting solutions, and specialises in matters involving IP rights. Mr Sela Saldinger works in cooperation with the government authorities, including the customs authorities and the police’s IP units, to prevent the import and distribution of counterfeit goods in Israel and the Palestinian National Authority. Mr Sela Saldinger is a member of INTA and the AIPPI.