Intellectual property litigation
The Litigation Department of Sanford T. Colb & Co. plays an integral role in the rigorous protection of intellectual property for its local and international clients. Maintaining a strong working relationship with customs and police authorities, the Litigation Department manages and supervises the enforcement of client rights through search and seizure of counterfeit items, advises clients through the complexities of prosecution of infringement issues and is responsible for determining strategy and action for all phases of the litigation process.
Sanford T. Colb & Co. is comprehensive in its approach to communication with clients in the course of the protection and prosecution of their rights and communicates in English as well as in Hebrew.
Intellectual Property litigation in Israel is conducted in the Israel Courts and in the Israel Patent and Trademark Office. There is no dedicated Intellectual Property Court.
In ascending order of consequence, the Israel Court system consists of Magistrates Courts, District Courts and the Supreme Court. The Supreme Court also serves as the Court of Appeals and the High Court of Justice.
Civil Intellectual Property-related lawsuits are filed primarily in the District Court and judgments may be appealed by right to the Supreme Court.
Remedies which may be obtained in the course of Intellectual Property-related lawsuits include interim and permanent injunctions, interim and permanent seizure, destruction of counterfeit and infringing goods, accounting, damages and costs.
A decision in a Civil lawsuit is handed down approximately two years after filing in the District Court as the Court of First Instance. Generally, the District Courts strongly encourage the litigating parties to settle or to submit the matter to mediation.
It has been our experience that the mediation option is efficacious for our clients only when the defendant truly wishes to resolve the lawsuit in an expedited manner and will abide by the recommendations of the mediator. Approximately half of our cases are settled before judgment.
Court proceedings are conducted in Hebrew and consist of the filing of a Statement of Claim, the filing of a Statement of Defense and optional interim proceedings such as discovery and interrogatories. There is often a preliminary hearing during which the Court encourages the parties to consider settlement or mediation.
We note that discovery in Israel is significantly shorter and less costly than it is in the United States.
An evidentiary stage follows filing of the Statement of Defense and optional interim proceedings, in the course of which the parties submit evidentiary affidavits and, as appropriate, expert opinions. Evidentiary hearings then follow, at which the parties' affiants are cross-examined.
Following the evidentiary stage, the parties submit written summations and then the District Court issues a decision in Hebrew.
There are exceptional instances in which the District Court and the parties agree to oral summations, usually immediately following the cross-examination of the parties' affiants.
Awards of Damages and Costs:
District Courts usually award damages and costs to the winning party. Even when the losing party is ordered to submit an accounting, the Courts do not usually award very substantial damages and awards of punitive damages are extremely rare. The award of costs is often significant and may reach approximately 75% of the actual litigation costs of the winning party.
Proceedings in the Israel Patent and Trademark Office
Pre-Grant Patent and Trademark Opposition Proceedings:
Israel is a pre-grant opposition jurisdiction for both Patents and Trademarks. Oppositions to Patent and Trademark applications are heard by the Commissioner of Patents and Trademarks in Jerusalem or an Assistant Commissioner or Judicial Officer. These proceedings are adversarial and are similar to the District Court proceedings described above.
A decision of the Commissioner may be appealed by right to the District Court. A refusal to register a Patent or Trademark by the District Court may be appealed to the Supreme Court, by leave of the Supreme Court.
Trademark Cancellation Proceedings
A third party may initiate cancellation proceedings within five years from the registration date, on the following grounds:
- The trademark was ineligible for registration from the outset.
- Registration of the trademark created unfair competition vis-à-vis the rights of the third party in Israel.
A third party may also initiate cancellation proceedings, no earlier than three years from the registration date, on grounds of non-use.
In addition, a third party may initiate cancellation proceedings at any time, on grounds that a trademark was registered in lack of good faith.
Trademark Cancellation proceedings are heard by the Commissioner of Patents and Trademarks in Jerusalem or an Assistant Commissioner or Judicial Officer. These proceedings are adversarial and are similar to the District Court proceedings described above.
Patent Cancellation Proceedings
A third party may initiate cancellation proceeding on grounds of obviousness, lack of novelty and lack of good faith.
There is no statute of limitation for initiating a patent cancellation action.
Patent Cancellation proceedings are conducted in the Israel Patent Office and are heard by the Commissioner of Patents and Trademarks in Jerusalem or an Assistant Commissioner or Judicial Officer. These proceedings are adversarial and are similar to the District Court proceedings described above.
One major difference is that when initiating patent cancellation proceedings in the Israel Patent Office, the party that initiates the proceedings submits its evidence together with its Statement of Case.