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Reif & Reif
Law Offices & Notary
Enforcing your Trademark in Israel
As soon as your trademark is registered, you can begin to enforce it.
In Israel, it can take a couple of years until you have a certificate of registration in your hands , due to the backlog at the Israel Trademarks Office. However, it is also possible to "fast-track" an application, which can cut down the process to a mere 6 months.
Once the mark has been registered, you can sue anyone that has infringed the mark at any time since it was published. In other words, the registration has limited retroactive effect. For example, if we file an application on 1st January 2014, and a third party starts to copy and infringe the mark on 1st March 2014, and the mark is published on 1st February 2015 and registered on 1st June 2015, then, as of 1st June 2015, we can sue that third party, in respect of the infringement during the period commencing as of 1st February 2015.
When is a registered mark adjudged to have been infringed by a third party? If a third party begins to use a mark which is identical to our registered trademark, without our permission, in connection with the same type of goods or services for which our trademark is registered, then that third party will probably be infringing our registered trademark. It is likely that we would be able to sue that third party, and demand injunctions, damages and other relief. In certain circumstances, we may also be able to obtain an interim injunction, which will prevent further infringement while the main court case is being heard.
But trademark protection is even stronger than that. Even if the third party's mark is not identical to our registered trademark, we will still be able to take court action, if the mark is confusingly similar to our registered trademark. In order to determine whether there is "confusing similarity", the court will apply what has come to be known as the "three-pronged test". The court will compare the two marks as to appearance and sound; it will compare the types of goods/services; and it will consider all other relevant circumstances, using a common sense approach. By way of example, the mark "Samba" was held by Israel's Supreme Court to be confusingly similar to the registered trademark "Bamba", where both the third party mark and the registered trademark were for snacks.
In rarer cases, where your trademark is "well-known" in Israel, by virtue of the fact that it has acquired very substantial goodwill in Israel, the trademark may enjoy even broader protection. In such cases, it can sometimes be possible to take legal action even when your trademark is not registered in Israel, or where the third party is using its mark in respect of goods or services which differ from those for which your trademark is registered.
Legal proceedings on the grounds of trademark infringement will often include other grounds of action as well, such as "passing-off". This can be applicable where your trademark is not actually registered in Israel, but your competitor is selling a product which is so similar to your product, in appearance, packaging, branding etc., as to confuse the consumer into thinking that it is, in fact, your product. This requires that your product and brand enjoy substantial goodwill in Israel.
At Reif & Reif, we specialise in court proceedings for the protection of trademarks, and for prevention of counterfeit activity. We would be delighted to hold an introductory meeting with you, face to face or via Skype, to learn how we can be of assistance to you and your business.