Law and Conventions: Israel adheres to the laws and conventions of the Israel Patents Law 1967; the Paris Convention, the Stockholm text and the Strasbourg Agreement. Israel is a party to the Patent Cooperation Treaty (PCT).
Patentability: A product or process which is new, useful and susceptible of industrial or agricultural application and which involves an inventive step. Methods of therapeutic treatment of the human body as well as new varieties of plants or animals are not patentable, with the exception, however, of microbiological organisms not derived from nature.
Novelty: Universal novelty requirements apply.
Requirements for Filing: Requirements for filing include: a specification in the English language, a Power of Attorney, and Priority Documents and Drawings. The Priority Documents and Power of Attorney, as well as Formal Drawings may be filed after the initial filing.
Examination and Prosecution: Examination normally occurs approximately three to five years following filing. Expedited examination is readily available. Publication takes place only following examination and allowance of the claims.
Oppositions: Oppositions may be filed within three months of the date of publication following examination and allowance.
Renewals: A first renewal fee is due three months from the date of grant for years 1-6. Additional renewal fees are paid before the expiration of the sixth, tenth, fourteenth and eighteenth years, counting from the date of the application. Where the prosecution of the application continues for more than six years, e.g. as a result of an opposition, or for any other reason, the renewal fees become payable only upon grant of the patent. There is a six-month grace period for the payment of renewal fees, upon payment of a fine.
Duration: The duration of a patent is twenty years, provided that renewal fees are timely paid.
Patent Term Extensions are available under certain circumstances.
Anti-counterfeiting In Israel
Over the past two decades, Israel has built a solid reputation for enforcing intellectual property rights in Israel in general and for enabling rights owners to take effective action against counterfeiters in particular.
Trademark rights, copyrights and design rights are enforced in Israel through civil and criminal proceedings:
Civil Enforcement of trademarks, copyrights and designs is based on the following laws:
- The Trademarks Ordinance
- The Copyrights Law
- The Designs Law
- The Commercial Injustice Law
There is also extensive Israel case law which recognizes causes of action for unjust enrichment.
Civil enforcement may be undertaken in various ways. One option is delivery of a cease and desist letter to the counterfeiter. Such letters are not recommended when a rights owner wishes the counterfeiter to surrender the suspect merchandise, since the counterfeiter will most likely sell or distribute the merchandise immediately following receipt of the letter.
Alternatively, trademark rights and copyrights may be asserted in the Courts through the filing of a Statement of Claim with the Israel Courts. The Statement of Claim may be accompanied by an Application for Interim Remedies. Such remedies may include, inter alia, an interim injunction and an interim collection order.
Two governmental entities enforce trademark rights and copyrights in Israel:
The Israel Police:
The Israel Police has dedicated Intellectual Property Enforcement Units in the Northern, Central, TelAviv and Southern Districts. There is also a National Unit which handles cases which are complex or span a number of jurisdictions.
A rights owner or the owner’s representative (hereinafter “rights owner/representative”) may file police complaints with these units regarding counterfeiting of trademarks and copyrights. After the filing of a complaint, the police investigate and decide whether to obtain a warrant and carry out a search at a suspect's premises.
The police also have the authority to initiate investigations and searches on their own initiative.
In at least half of the cases, the police request that the rights owner/representative be present during the search in order to identify counterfeit merchandise.
Following an investigation and/or search, the police decide whether to indict suspects. In the event that an indictment is filed, Criminal Court proceedings take place in which the rights owner/representative may be summoned to testify.
Most Criminal Court proceedings end in a conviction. Sentences typically include a suspended prison sentence, a fine and a destruction order.
It is important to note that the rights owner is financially responsible for the storage of all merchandise that is seized by the police and for the destruction of the seized merchandise following issuance of a Court order.
The Customs Authorities:
The Israel Customs Authorities (hereinafter "Customs") are responsible for monitoring importation of merchandise into Israel as well as the territories which are controlled by the Palestinian Authority.
There are currently two international airports (Ben Gurion Airport near Tel Aviv and Ramon Airport near Eilat), three seaports (Haifa, Ashdod and Eilat) and three land border crossings (with Jordan and Egypt) through which merchandise enters Israel.
Customs have the authority to seize merchandise which infringes trademarks, designs or copyrights.
Customs will not detain gray market goods.
A trademark owner may file a Customs Monitoring Notice with Customs. There is no official filing fee and one Customs Monitoring Notice will suffice, irrespective of the number of trademarks and/or copyrights to be monitored.
There is no need to renew the Customs Monitoring Notice since it is not limited in duration.
Customs have the authority to initiate investigations and seizures on their own initiative.
If Customs detect goods which are suspected to be counterfeit, the authorities will seize the goods and ask that the rights owner/representative confirm whether the goods are counterfeit. If the rights owner/representative certifies that the goods are counterfeit, Customs will seize the goods. The process that follows depends on the quantity and value of the goods seized.
Customs will seize suspect goods for three working days and will immediately notify the party named in the Customs Monitoring Notice or the rights owner/representative if a Customs Monitoring Notice was not filed. Customs will also send digital photographs of the seized goods to the rights owner/representative.
This notification usually sets the amount of a bank guarantee which the rights owner/representative must post in order for Customs to seize and detain the suspect goods. This guarantee is intended to cover damages in the event of a determination of unjustified seizure of goods. The amount of the guarantee is related to the value of the goods, as assessed by Customs. In most cases, the rights owner/representative obtains a sample of the goods only after the guarantee is posted.
Customs will disclose the quantity of goods detained to the rights owner/representative. Prior to the filing of the bank guarantee, Customs will not divulge the particulars of the importer.
If the value or quantity of the goods seized is comparatively small, Customs may exercise its discretion to seize the goods using the following abbreviated procedure:
Prior to seizing the goods, Customs may require the owner/representative to provide a brief written opinion confirming that the goods are counterfeit and to submit a letter of undertaking to join Customs as a party if the importer sues for the return of the goods. As well, the rights owner/representative must agree to indemnify the importer for any harm caused if it becomes apparent that the goods were illegitimately seized. The rights owner/representative is not obligated to provide a bank guarantee. Following receipt of the opinion and the undertakings, Customs will destroy the goods, without divulging the particulars of the importer.
However, in most cases, Customs will act as follows:
Once the rights owner/representative ascertains that the goods are counterfeit and the rights owner/representative wishes Customs to seize them, the rights owner/representative named in the Customs Monitoring Notice or otherwise identified must immediately post a bank guarantee in order to receive the particulars of the importer. If the rights owner/representative does not post a bank guarantee, Customs will release the goods to the importer.
Once the rights owner/representative posts a bank guarantee, Customs will disclose the particulars of the importer in order to enable filing of a civil lawsuit by the rights owner. The goods will be released if the rights owner/representative does not show evidence that a lawsuit has been filed against the importer within ten days. In addition, if a lawsuit is not filed against the importer, the bank guarantee may be forfeited and the rights owner will be ineligible to receive compensation.
Once the requirements of Customs are met, Customs will hold the goods until a court decision is obtained or until the parties reach an agreement.
It is important to note that goods are stored by Customs at third-party storage facilities. Charges for cumulative storage costs and destruction of goods will be determined based on an agreement between the parties or according to a court decision. If the storage and destruction costs are not paid by the responsible party that has agreed or been ordered to pay, the sum of these costs will be deducted from the bank guarantee which has previously been posted by the rights owner.
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.
Trademark Law in Israel is governed by the Trademarks Ordinance (1972) as currently amended.
A trademark is any letter, numeral, work, image or other sign or combination thereof, either two dimensional or three-dimensional. The terms “Mark” and “Trademark” are commonly used to refer to trademarks, service marks, certification marks and collective marks.
Which Marks May be Registered?
Trademark for Goods — A mark used or intended to be used for goods which are manufactured or traded. Only a mark which distinguishes the goods of the owner of the mark from those of other entities (‘Distinctive Mark’) is eligible for registration.
Trademark for Services — A mark (‘Service Mark’) used or intended to be used for a service.
Collective Trademark — A trademark, belonging to an organization which has an interest in the goods or services that the mark is intended to designate, to be used by members of that organization for those goods or services.
Certification Trademark — A mark intended to be used by an entity that does not conduct a business, in order to certify the origin, components, method of production, quality or any other characteristic of the goods in which it has an interest or to certify the nature, quality or category of the services in which it has an interest.
The Commissioner will register a trademark previously registered in the country of origin unless:
A. Registration of the mark in Israel infringes the rights acquired in Israel by another entity.
B. The mark lacks distinctiveness.
C. The mark consists only of letters or indications which may be used in commerce to
designate the category, quality, quantity origin, destination, time of production or value
of the goods or services.
D. The mark is commonly used in current language or in commercial practices established
in Israel in good faith.
E. The mark is contrary to public order or morality.
F. The mark is likely to mislead the public.
3-D images of packaging containers may be registered only if the following
three cumulative requirements are met:
1. The applied-for image is used as a trademark.
2. The applied-for image does not serve an actual esthetic or functional role.
3. The applied-for image has accumulated distinctiveness as a result of use.
In the event that the three-dimensional image is composed of additional components which serve to identify the source of the goods, such as the ‘house mark’ of the applicant, the image may be exempt from these three requirements.
The Trademark Register
- Israel Patents, Designs and Trademarks Office — To register a trademark in Israel, an application for registration must be filed with the Israel Patents, Designs and Trademarks Office (hereinafter the “Office”).
- Register — The Office maintains a Register which is open to inspection by the public through the following link: http://www.trademarks.justice.gov.il.
- Exclusive Use Rights — Valid registration of an entity as the owner of a trademark entitles the owner to the exclusive use of the trademark on the goods or for the services for which the trademark is registered, subject to any condition or limitation entered into the Register.
- Exclusive Use of a ‘Well Known’ Trademark — A ‘well known’ trademark, even if it is not a registered trademark, entitles its owner to the exclusive use of the trademark for goods and services for which it is well known in Israel or for goods or services of the same category.
A ‘well known’ trademark that is a registered entitles its owner to exclusive use for goods or services which are not of the same class, if use of the trademark by an entity other than the owner of the rights is likely to indicate a connection between the goods or services and the owner of the rights and the owner may be harmed as a result.
- Limitation on Exclusive Use Rights — Registration of a trademark will not prevent any person from making true use of his or her own name, of the name of his or her business or that of his or her predecessor’s business, or the geographic name of the place of the business or of a genuine description of the character or quality of its goods or services.
If a trademark incorporates any part that is not distinctive in character and if the Commissioner decides that the owner of the mark is not entitled to exclusive use of that part, the Commissioner may require a disclaimer of the right to exclusive use of that part. Such a disclaimer will only affect the rights of the owner of the mark that derive from the registration of the mark.
- Remedies: Enforcement: Infringement — The owner of the rights is entitled to bring a civil action against infringers. Remedies such as injunctive relief and damages are available. If the infringement is of a well known trademark which is not a registered trademark, the owner of the rights will only be entitled to injunctive action. The Court may also order the destruction of counterfeit or infringing goods.
- Validity — In any legal action on behalf of a registered trademark, the fact that an entity is registered as the owner of a trademark is prima facie evidence that the original registration of the trademark and all of its subsequent assignments are valid.
- Opposition — Any party may file a Notice of Opposition to the registration of a mark within three months after the date of publication. This three month deadline is non-extendable.
Grounds for Opposition:
A. Any reason for which the Commissioner may refuse registration under the provisions of the Trademarks Ordinance.
B. The opponent claims ownership of the mark.
The Notice of Opposition must contain the grounds for opposition. The applicant has two months to respond to the opposition. If the applicant does not respond, the applicant’s application will be regarded as abandoned. If the applicant chooses to contest the opposition, the applicant must submit evidence in the form of an affidavit. The Commissioner will consider the evidence and decide whether registration is to be permitted and whether any conditions are to be applied to the registration.
Competing Claims to Identical Marks — If different entities submit applications to be registered as owners of identical or similar trademarks for the same goods or services or goods or services of the same description, the Commissioner may refrain from registering any of those applications until their rights are determined by an agreement approved by the Commissioner. If there is no agreement, the Commissioner will decide which of the applications will proceed to examination. The decision of the Commissioner may be appealed to the District Court.
Concurrent Use — Concurrent registration may be permitted if the Commissioner finds that there is concurrent use in good faith or other special circumstances which justify registration of identical or similar trademarks for the same goods or services or goods or services of the same description in the name of several owners.
Registration — If an application is accepted and no opposition has been filed or if an opposition has been decided in the applicant’s favor, the trademark is registered.
Average Processing Times:
Examination Begins — 8 months from filing
Registration — 18 months from filing
Duration of Protection — All registrations are valid for an initial period of ten years.
Renewal of Registration — The registration may be renewed for successive periods of ten years from the date on which the application was filed.
Renewal Before Expiration — Before the expiration date, the Commissioner notifies the owner of the registration of the date on which the registration will expire. The fees must be paid within 3 months prior to expiration of the registration period.
Renewal After Expiration — Renewal may be effected within six months following expiration upon payment of the fee and a penalty. If renewal is not completed within six months after the expiration date, the Commissioner removes the trademarks from the Register. If a trademark has been removed from the Register because the renewal fee was not paid, it will be treated as if it were a registered trademark for purposes of conflicting applications for registration for one year after its expiration.
Reinstatement — The Commissioner may reinstate a registration on the basis of conditions at the discretion of the Commissioner and upon payment of a prescribed fee.
Removal of Registration for Non-Use — Any interested party may submit an application for cancellation of a registration on the grounds that there was no bona fide intention to use the trademark in connection with the goods or services for which the trademark was registered, and that no bona fide use was made of the trademark in connection with the goods or services for which it was registered during the three years prior to the filing of the application for cancellation.
Registration of the mark will not be cancelled if there is proof that no use was made due to special circumstances in commerce and not because of an intention not to use the mark or to abandon it in respect of the goods or service.
The following constitute ‘use’ of a trademark:
Use of the trademark in manufacturing or selling a product in Israel by the owner of the rights or by a registered licensee, on condition that the use is monitored by the owner of the rights.