Domain Name Theft in Israel: Prevention, Recovery, and Legal Processes

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Internet LawDomain name theft is a growing concern for businesses in Israel. This article explores the phenomenon, prevention strategies, and legal processes for recovering stolen domain names, with a focus on the unique Israeli context.

Understanding Domain Name Theft

Domain name theft occurs when a malicious actor gains unauthorized access to a domain name registration account and transfers the domain to another registrar without the owner’s consent. This can have severe consequences for businesses, including loss of online presence, reputation damage, and potential revenue loss.

Prevention Strategies

Secure Your Domain Registration

To protect your domain from theft:

– Use strong, unique passwords for your domain registrar account
– Enable two-factor authentication
– Keep contact information up-to-date
– Use domain locking features provided by your registrar

Trademark Registration

Registering your domain name as a trademark in Israel provides an additional layer of protection. In Israel, trademark registration is handled by the Israel Patent Office. A registered trademark:

– Grants exclusive rights to use the mark
– Strengthens your legal position in domain disputes
– Can be used as evidence of ownership in legal proceedings

Recovery Process

If your domain name is stolen, act quickly to recover it:

1. Contact your domain registrar immediately
2. File a complaint with the relevant authorities
3. Consider legal action or alternative dispute resolution

Legal Processes in Israel

IL-DRP Procedure

The Israel Internet Association (ISOC-IL) offers the IL-DRP (Israeli Domain Name Dispute Resolution Policy) for resolving domain disputes. This process is relevant for .il domain names and is often faster and less expensive than court proceedings.

To initiate an IL-DRP procedure:

1. File a petition with ISOC-IL (appeal@isoc.org.il)
2. Demonstrate that:
– The domain is identical or confusingly similar to your trademark
– You have rights to the name
– The current holder has no rights to the name
– The domain was registered or used in bad faith

3. Pay the required fees
4. Wait for the panel’s decision

During the IL-DRP process, the domain’s registration status is frozen.

UDRP Procedure

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is relevant for generic top-level domains (gTLDs) like .com, .net, and .org. While not specific to Israel, it can be used by Israeli businesses for international domain disputes.

Court Proceedings

When alternative dispute resolution is insufficient, you may need to pursue legal action in Israeli courts to return your domain name. This is particularly relevant for complex cases or when seeking damages.

Choosing the Right Process

– Use IL-DRP for .il domains and straightforward cases
– Consider UDRP for international domains
– Opt for court proceedings in complex cases or when seeking damages

SEO Considerations for New Businesses

When recovering or choosing a new domain name, consider these SEO-friendly strategies:

– Include relevant keywords in your domain name
– Keep the domain short and memorable
– Use hyphens sparingly
– Choose a .co.il extension for local Israeli businesses

Conclusion

Domain name theft is a serious threat to businesses in Israel. By implementing strong prevention measures, understanding the legal processes available, and acting quickly in case of theft, you can protect your online presence and recover stolen domains effectively.

Remember, registering your domain as a trademark provides an additional layer of protection and strengthens your position in disputes. Whether you choose the IL-DRP process, UDRP, or court proceedings, act swiftly to protect your digital assets and maintain your online presence.

 

Good News for Vespa Lovers: Iconic Scooter Design Now Legally Protected

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In the colorful landscape of the 1980s, when neon colors adorned the streets and synth-pop music filled nightclubs, many remember one vehicle that became an iconic symbol of the era: the legendary Vespa. A mere glance from afar was enough to recognize a Vespa. Its groundbreaking design, the rounded belly falling beneath the driver’s seat, and the rear that cleverly concealed the back wheel, like an artistic object telling the story of the time, were all symbols of Vespa’s uncompromising identity, making it one of the most popular vehicles.

Its round lines, chrome finish, and vibrant paint jobs reflected the enthusiasm and optimism of the era. Whether it was the red Vespa speeding by or the black Vespa with heavy rock decorations, each scooter told a different story, reflecting the personality and spirit of its rider. In every corner of the city, you could feel the noisy exhaust of the Vespa, as if the engine was demonstrating its love for everyone singing the famous pop songs of the time.

And the sound, how can we forget that sound? As if small stones were clattering inside the exhaust like popcorn in the exhaust pipe, creating a unique sound recognizable from afar that was associated only with the Vespa.

Riding a Vespa became a symbol of self-discovery, spirit, and the experience of true freedom that spread to every corner of the popular culture of that era. Riding a Vespa meant breaking away from traditional norms, embracing the spirit of adventure, and exploring the world independently. Thanks to its unique design, the Vespa became a true cultural motor phenomenon. When the adventurous riders got married and started families, they attached a funny little container on wheels with a seat and a windshield, turning the Vespa into a hybrid motorcycle for two, one next to the other, which they called the Vespa with a sidecar.

In Israel, two main models were imported, PX150 and PX200, with the difference being in the engine size and declared power – 9 HP for the 150 version versus 12 HP for the 200 version, with a maximum speed of around 90-100 km/h.

Almost forty years later, the Vespa brand is still alive and kicking, mainly in Italy. In Israel, however, you can hardly find any Vespas on the roads except for collector’s items and museums.

Recently, there has been a massive wave of motor nostalgia, with scooter manufacturers trying to revive the old success wave of the Vespa by designing their scooters similar to the original Vespa design. Vespa did not like this and began taking legal action against the Chinese company manufacturing these scooters.

During the legal discussions, the question arose whether Piaggio, the rights owner of the Vespa brand, is entitled to exclusivity on its unique design despite it being an old model produced decades ago, thereby preventing Chinese competitors from marketing various Vespa look-alikes. Additionally, the question arose whether car manufacturers are entitled to exclusivity on their vehicle designs.

The legal battle that began in 2017 recently ended with a resounding victory for Piaggio, the owner of the Vespa brand. The Italian court ruled that the external design of the Vespa has “artistic value” that far outweighs the technical and functional nature of the design and is therefore protected by copyright. This ruling means that manufacturing scooters whose external design is similar to the original Vespa design in Italy constitutes copyright infringement and is therefore prohibited.

Alfa Romeo Giulietta Case

Interestingly, this ruling contradicts another ruling by the Italian court in the case of Alfa Romeo and Lancia given about three years ago. Alfa Romeo is known for its fast sports cars, but more than anything it is known for the unique designs of its vehicles, evoking feelings of speed, status, and success. One of the most beautiful Alfa Romeo models is the Alfa Romeo Giulietta, produced from the 1950s in various versions. Anyone who grew up in the 1980s surely remembers this car and the looks it drew as it scorched the road with its amazing engine sound.

Recently, an interesting legal question arose in the Italian court – is the beauty and unique history of a vehicle a justification to grant it copyright protection?

The story began when a company manufacturing toy car models started marketing the Alfa Romeo Giulietta model without receiving permission from Alfa Romeo. Alfa Romeo filed a lawsuit in court, requesting an injunction to prevent the toy company from marketing these models, claiming that the toy models infringe on Alfa Romeo’s copyright on its original design.

This claim was rejected by the Turin court, which refused to grant any copyright protection to the vehicle designs. The court ruled that an industrial design intended for mass production may be protected by copyright if it has some “artistic value” that can be inferred from cultural recognition, museum displays, design awards, design by a famous artist, and a price far above the market price.

The court reviewed these conditions and ruled that the Alfa Romeo Giulietta design did not meet them, as the Giulietta model’s design did not meet the requirement of “artistic value” and did not provide added value to the design beyond the functionality inherent in similar vehicles from the same category. Additionally, it was determined that the designers of the models (the lawsuit was also filed regarding Lancia models) were talented designers but were not “artists” by profession, and therefore their work is not considered “artistic creation.”

But if we are talking about art, why is the legendary Vespa entitled to copyright protection while the Alfa Romeo Giulietta model is not? In my opinion, the external design of the Alfa Giulietta, reflecting style, sport, and motor art that no longer exists, has much higher artistic value than the Vespa. It seems that in this unique field, the last word has yet to be said, and it is likely that car manufacturers will continue to fight for the exclusivity of their designs, even for old models that are no longer in production.

The author is a lawyer specializing in intellectual property and brand protection.

The Hebrew version of this article was published in the Israeli car magazine Queen of the Road

Disclaimer: The information provided on this website is for general informational purposes only and does not constitute legal advice. The content on this site should not be relied upon or used as a substitute for consultation with professional legal advisors.

Understanding Trademark Infringement in Israel : A Guide for International Brands

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Trademark infringement is a significant concern for international brands operating in Israel. As a country with a robust intellectual property legal framework, Israel offers strong protection for trademark owners, but navigating the local laws and enforcement procedures can be complex.

This guide provides essential information for international brands to understand and combat trademark infringement in Israel.Trademark Protection in IsraelIsrael’s trademark law is primarily governed by the Trademark Ordinance, which has been amended to include protection for well-known trademarks. The country’s legal system incorporates elements of common law, meaning that court decisions play a crucial role in shaping trademark protection standards

Key aspects of trademark protection in Israel include:

  1. Registration: While not mandatory, registering a trademark in Israel provides stronger protection against infringement.
  2. Well-known trademarks: Following the landmark Bacardi case in 1998, well-known trademarks receive enhanced protection, even if not registered in Israel.
  3. Dilution protection: The law recognizes trademark dilution as a form of infringement, particularly for well-known marks.

Types of Trademark Infringement

Trademark infringement in Israel can take various forms:

  1. Direct infringement: Unauthorized use of an identical or similar mark on related goods or services.
  2. Dilution: Use of a similar mark that may weaken the distinctiveness of a well-known trademark.
  3. Passing off: Misrepresentation of goods or services as those of another brand.

Enforcement MeasuresInternational brands have several options for enforcing their trademark rights in Israel:

  1. Civil litigation: Filing a lawsuit in court for trademark infringement.
  2. Customs seizures: Working with Israeli customs authorities to prevent the import of counterfeit goods.
  3. Administrative actions: Filing oppositions or cancellation proceedings with the Israeli Patent Office.
  4. Cease and desist letters: Sending formal notices to potential infringers before pursuing legal action.

Key Considerations for International Brands

  1. Proactive registration: Consider registering your trademark in Israel, even if it’s well-known internationally, to ensure maximum protection.
  2. Market monitoring: Regularly monitor the Israeli market for potential infringements.
  3. Local expertise: Engage Israeli legal counsel familiar with local trademark laws and enforcement procedures.
  4. Evidence gathering: Collect and maintain evidence of your trademark’s use and reputation in Israel to support potential legal actions.
  5. Tailored approach: Each infringement case is unique, so develop a strategy that considers the specific circumstances and local legal nuances.

Recent Developments

A landmark case in Israeli trademark law has set a new precedent for retailer liability in trademark infringement disputes. The case of Lifestyle Equities CV & others v. Rami Levi & others, involving the international fashion brand BEVERLY HILLS POLO CLUB (BHPC), has significant implications for trademark protection in Israel.

Key points of the case:

1. BHPC discovered unauthorized underwear bearing their trademark in Israeli markets, distributed through Rami Levy stores by Yafiz..

2. On April 27, 2023, the Tel Aviv District Court ruled that Rami Levy Shikma Marketing 2006 Ltd. and Yafiz Fashion Ltd. must compensate BHPC with over 3,000,000 NIS for trademark infringement.

3. This ruling established that third parties can be held accountable for trademark infringement, and that limitations set in a license agreement are enforceable against such entities.

4. The case has garnered international attention, with World Trademark Review 2023 noting it as “a significant breakthrough” that could help rights holders seek greater compensation.

This decision highlights several important aspects of trademark protection in Israel:

– The importance of proactive market monitoring to detect infringements.
– The potential for significant compensation in trademark infringement cases.
– The liability of retailers and distributors in trademark infringement disputes.
– The enforceability of license agreement limitations against third parties.

It’s worth noting that an appeal to the Supreme Court is currently in progress. This case underscores the evolving nature of trademark law in Israel and the increasing protection afforded to international brands. It also emphasizes the need for both international brands and local retailers to be vigilant about trademark rights and potential infringements.

Importance of Trademark Protection in Israel

For international brands operating in Israel, this case demonstrates the importance of:

1. Registering trademarks in Israel, even if well-known internationally.
2. Regularly monitoring the market for potential infringements.
3. Taking swift action against infringers, including third-party distributors and retailers.
4. Working with experienced local counsel familiar with the nuances of Israeli trademark law and recent legal developments.

This landmark decision opens new avenues for brand protection in Israel and sets a precedent that could influence future trademark infringement cases in the country.

 

Disclaimer: This article is provided for informational purposes only and does not constitute legal advice. The information contained herein should not be relied upon or used as a substitute for consultation with professional legal advisors. Every situation is unique, and you should consult with a qualified attorney for advice concerning your specific circumstances.

Plant Breeders’ Rights in Israel: A Comprehensive Guide to Agricultural Innovation Protection

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Introduction to Plant Breeders’ Rights

Plant Breeders’ Rights (PBR) in Israel represent a crucial component of intellectual property law designed specifically for the agricultural sector. This unique legal framework provides protection for new plant varieties, encouraging innovation in agriculture and horticulture. Established by the Plant Breeders’ Rights Law of 1973, Israel’s PBR system aligns with international standards, particularly the International Convention for the Protection of New Varieties of Plants (UPOV Convention), which Israel joined in 1984.

 

Understanding the Legal Framework

The primary objective of Plant Breeders’ Rights is to foster agricultural advancement by granting exclusive rights to developers of novel plant varieties. This system strikes a balance between protecting the interests of plant breeders and promoting overall progress in agriculture. By providing legal protection, it incentivizes investment in research and development of new plant varieties, which is essential for sustainable agriculture and food security.

 

Key Eligibility Criteria for Plant Variety Protection

For a plant variety to qualify for Plant Breeders’ Rights in Israel, it must meet three fundamental criteria:

  1. Novelty: The variety must be distinctly different from any known existing varieties.
  2. Uniformity: It must display consistent characteristics across all specimens.
  3. Stability: The variety’s essential properties must remain stable after repeated reproduction or propagation.

 

Who Can Apply for Plant Breeders’ Rights?

Plant Breeders’ Rights applications in Israel can be submitted by:

– Israeli citizens or residents

– Citizens or residents of countries that are members of the UPOV Convention

– Legal entities (such as companies or research institutions) established or registered in Israel or UPOV member states

 

 

The Importance of Timely Registration

Israel’s Plant Breeders’ Rights system operates on a “first-to-file” principle. This emphasizes the critical importance of prompt registration following the development of a new plant variety. Breeders are encouraged to file their applications as soon as their variety meets the eligibility criteria to ensure protection.

 

Distinguishing Plant Breeders’ Rights from Patents

It’s important to understand that Plant Breeders’ Rights differ from traditional patents. While patents typically protect technological innovations, Plant Breeders’ Rights are specifically tailored to safeguard new plant varieties. This distinction reflects the unique nature of agricultural innovations and the specific needs of the plant breeding industry.

 

Scope and Benefits of Plant Breeders’ Rights Protection

Obtaining Plant Breeders’ Rights grants the holder exclusive commercial rights over the registered plant variety. These rights include:

– The authority to control production and reproduction of the variety

– The right to condition the variety for propagation

– Exclusive rights for offering for sale, selling, or marketing the variety

– Control over importing or exporting the protected variety

– The ability to stock the variety for any of the above purposes

 

Duration of Plant Breeders’ Rights Protection

In Israel, the duration of Plant Breeders’ Rights protection varies:

– Standard protection period: 20 years from the date of registration for most plant varieties

– Extended period for perennial plants: 25 years (applicable to grapevines, fruit trees, forest trees, and other perennial species)

– The Minister of Agriculture has the authority to extend these periods in specific cases, considering factors such as the nature of the plant and its breeding cycle

 

International Cooperation and Recognition

Israel’s participation in the UPOV Convention facilitates international recognition and protection of plant varieties. This global cooperation is crucial for:

– Ensuring protection of Israeli varieties abroad

– Allowing foreign varieties to be protected in Israel

– Promoting international collaboration in plant breeding research

 

Economic and Agricultural Impact of Plant Breeders’ Rights

The Plant Breeders’ Rights system plays a pivotal role in:

– Stimulating investment in plant breeding research and development

– Enhancing agricultural productivity through improved plant varieties

– Increasing crop diversity, which is essential for food security and environmental sustainability

– Supporting the growth of Israel’s agricultural sector and its competitiveness in global markets

 

Conclusion: The Future of Plant Breeding in Israel

Plant Breeders’ Rights in Israel offer a robust and comprehensive system for protecting and promoting agricultural innovations. By providing strong legal safeguards for new plant varieties, this framework encourages ongoing research and development in agriculture. The system not only benefits plant breeders but also contributes significantly to the broader agricultural industry, food security, and economic growth. As agriculture continues to face global challenges, the importance of Plant Breeders’ Rights in fostering innovation and sustainable practices becomes increasingly evident.

When Can the Trademark Office Refuse or Limit a Coexistence Agreement ?

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When it comes to trademark applications, the road to registration can be riddled with hurdles. For example, the Trademark Office may issue a refusal due to a likelihood of confusion with a registered trademark. 

Suppose the applicant and the owner of the cited mark agree to a coexistence agreement. Does the Trademark Office have to accept the coexistence agreement and cancel the refusal?

This very question was at the heart of a recent landmark case in Israel. The outcome might just surprise you!

The Initial Setback

An application was filed for the trademark CVISKAL under class 3, designated for laundry products. However, it hit a snag when the Trademark Office refused the application due to its similarity to an already registered mark, CVISCAL, also in class 3. This refusal was grounded in concerns over potential market confusion between the two marks.

A Path to Coexistence

In response, the applicant and the owner of the registered mark CVISCAL reached a coexistence agreement, which was subsequently submitted to the Trademark Office. This agreement was intended to resolve the issue and allow both trademarks to coexist peacefully in the market.

However, the Trademark Registrar decided to impose a limitation on the agreement, stipulating that CVISKAL’s laundry products could only be sold to institutions.

The applicant found this restriction unacceptable and filed an appeal to the District Court, arguing that the agreement should have been accepted without additional limitations.

The Appeal

The applicant contended that the Trademark Registrar should have respected the coexistence agreement as it was, without imposing further restrictions.

On the other hand, the Trademark Registrar maintained that he possessed the discretion to reject or limit coexistence agreements to prevent market confusion, in line with his responsibility for the trademark registration system in Israel.

The District Court’s Decision

The District Court ultimately sided with the applicant, accepting the appeal. The Court agreed with the Trademark Registrar that both marks are confusingly similar, and that the Registrar has the authority to limit the list of goods in registration to avoid confusion.

However, it ruled that the Trademark Registrar should have considered the specific circumstances surrounding the coexistence agreement.

The Judge distinguished between two types of refusals:

  1. Relative Refusal Based on Registration: This occurs when a trademark application is refused due to its similarity to an already registered mark. In such cases, a coexistence agreement between the applicant and the owner of the cited mark is typically aimed at overcoming the refusal.
  2. Parallel Applications: This occurs when similar or identical trademarks are applied for, but neither has been accepted yet. Both applicants might receive refusals and enter into a coexistence agreement to resolve the issue.

Coexistence in Parallel Applications

In cases of parallel applications, the court acknowledged that the Trademark Registrar has the full authority to reject a coexistence agreement, as both parties are primarily motivated by their interest in getting their marks registered. This shared interest might lead them to overlook public interests and the potential for market confusion.

According to Israeli law, if two or more trademark applications are filed for similar or identical marks intended for related goods or services, and none of these applications has been accepted yet, the Trademark Office initiates interference proceedings under Section 29 of the Trademarks Ordinance.

These proceedings determine which application will prevail and proceed to registration, unless coexistence is possible. During interference proceedings, applicants must consider the possibility of reaching a coexistence agreement to resolve the conflict.

Coexistence in Relative Refusals

However, in the case of relative refusals based on registration, the court took a different stance. When the owner of a registered mark agrees to coexist with the applicant, both parties have a vested interest in preventing market confusion and differentiating their products.

Therefore, the public interest is effectively safeguarded by the parties themselves. Over-intervention by the Trademark Office, such as limiting the list of goods beyond the agreed terms, could harm the parties’ interests and unfairly benefit third parties.

The Court’s Final Ruling

Eventually, the court decided to accept the coexistence agreement without the limitations imposed by the Trademark Office. This decision highlighted the importance of considering the specific circumstances and interests of the parties involved in a coexistence agreement.

Strategic Implications for Trademark Applicants

This decision is crucial for trademark practitioners, highlighting that applicants need to understand the nature of the refusal they face:

For refusals based on another application, coexistence agreements could be rejected, leading to litigation and interference proceedings where both parties must prove their right to the mark.

For refusals based on similarity to a registered mark, coexistence agreements are likely to be accepted without additional limitations.

This ruling underscore the importance of strategic planning in trademark registration and the handling of coexistence agreements.

**Disclaimer:** This article is for informational purposes only and does not constitute legal advice. For specific legal guidance, please consult a licensed trademark attorney

Unveiling Israel’s Most Important Trademark Decisions of 2023

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Gain insight into Israel’s trademark legal landscape with a focus on significant trademark decisions that shaped the year.

1.  Liability of Third Parties in Trademark Infringement Cases – Lifestyle Equities CV & others v. Rami Levi & others

One noteworthy case that stands out is Lifestyle Equities CV & others v. Rami Levi & others, a legal milestone with implications reaching beyond the courtroom.

A pivotal moment in Israeli trademark law this year was the ruling on the BEVERLY HILLS POLO CLUB international fashion brand. Lifestyle Equities C.V. and Lifestyle Licensing B.V., stewards of the renowned BEVERLY HILLS POLO CLUB (BHPC) brand, recognized for its iconic horse, rider, and polo stick logo, found themselves embroiled in a legal discourse shedding light on trademark infringement within the country.

Having entrusted an Israeli company with the license for BHPC products, the plaintiffs uncovered unauthorized underwear bearing their trademark in Israeli markets, distributed through Rami Levy stores by Yafiz.

Despite warnings and legal actions taken, the infringing products persisted on Rami Levy’s shelves, even following the termination of the license agreement. This initiated a legal process marked by extensive evidence, private investigator findings, and expert opinions.

Items sold by Rami Levy with BHPC trademark

On April 27, 2023, the Tel Aviv District Court issued a noteworthy decision, ruling that Rami Levy Shikma Marketing 2006 Ltd. and Yafiz Fashion Ltd. must compensate the BHPC brand custodians with an amount exceeding 3,000,000 NIS for trademark infringement—a significant award within Israel for this type of infringement.

Crucially, this case established a legal precedent, asserting that third parties can be held accountable for trademark infringement, and that the limitations set in a license agreement are enforceable against such entities.

It’s worth noting that the legal journey is ongoing, with an appeal to the Supreme Court currently in progress. Further insights into the legal findings of the case can be explored HERE.

This decision has garnered international attention, with WTR 2023 reporting: “A landmark ruling in Israel could help rights holders seek greater compensation and sets a precedent for retailer liability in trademark infringement disputes”.  READ MORE.

Lifestyle Equities CV was represented by Yossi Sivan Law Firm

2.  61865-03-17 Chloe S.A.S v. Oil le Amor Ltd – Use of Perfume Brand Names as Indicators

Our journey into pivotal trademark decisions in Israel continues with a compelling case that probes the question: Can the sale of perfumes featuring scents akin to renowned brands, using translated names as indicators, constitute trademark infringement?

In a recent ruling, an Israeli court scrutinized a scenario where a company manufacturing affordable perfumes asserted that their fragrances closely mirrored those of upscale counterparts.

The defendant strategically employed translated names (to Hebrew) of well-known perfume brands, including Chloe, Hugo Boss, Britney Jean Spears, Lancome, ZINO DAVIDOFF, and more, for association and identification.

Eschewing the use of logos or English names, the defendant incorporated the term “COMPATIBLE SCENT” in Hebrew alongside the translated brand names. The legal dispute revolved around the legitimacy of this practice and whether it amounted to trademark infringement.

The defendant contended that their actions were permissible, asserting that customers were fully aware they were purchasing their products, not those endorsed by the trademark owners.

The District Court dismissed the lawsuit, stating that directly using registered trademarks or imitating them with minor distinctions that lack substantial differences could potentially infringe trademarks. However, Israeli law permits referencing products with registered trademarks for similar goods, provided it doesn’t lead to consumer confusion.

In this case, the Court determined that the defendant’s actions did not infringe on the plaintiffs’ trademark rights, emphasizing the absence of confusion and the good faith presentation of brand names by the defendants. Moreover, the use of translated names was not considered “trademark use” under trademark law, precluding any claims of trademark infringement.

Perfume Brand Names as Indicators – Reasonable and True Use

The judge concluded that utilizing translated names was a reasonable and true use of the mark, supporting the fair use claim. The Court mandated practical adjustments for products sold in Israel, requiring the replacement of the English term “Compatible” on labels with its Hebrew equivalent in a larger font for enhanced visibility.

In summary, the Court ruled that the defendant’s practices did not constitute trademark infringement or any violation of other laws, such as publicity rights or unjust enrichment.

This case sheds light on the delicate balance between potential trademark infringement and the legitimate utilization of brand names as indicators. Intriguingly, within the past two years, the market has once again pushed the boundaries of trademark protection in the perfume domain.

A Trend in Perfume Cases – Prioritizing the Interests of Free Competition over the Rights of Trademark Owners

In a previous incident, a distinct case unfolded where defendants marketed original perfume liquids, bearing the “Channel” brand name as an indicator. Despite the District Court’s initial ruling that such sales did not amount to trademark infringement, the Supreme Court remanded the case for further assessment.

This episode underscores the Israeli courts’ tendency to prioritize the interests of open competition over the rights held by trademark owners, exemplifying a recurring trend in perfume-related legal disputes.

Further insights into the legal findings of the case can be explored HERE.

3.  Harnessing the Power of Word Marks: A Lesson in Trademark Protection

In the realm of intellectual property, filing a trademark application for a word mark emerges as a potent strategy for businesses and organizations eager to safeguard their brand. This article underscores the significance of Word Mark Registration in Israel, delving into its effectiveness and the recent case of the Israeli Trademark Office.

A word mark, distinct from a design mark, comprises words, phrases, or slogans, devoid of any design or symbol. Opting for a word mark over a design mark can offer businesses a more streamlined and potent means of brand protection.

The recent case involves a shoe store applicant filing a trademark application featuring a BUTTERFLY design in Class 25.

The Trademark Examiner, however, rejected the application, citing similarity to a registered word mark “BUTTERFLY” in Class 25 owned by Tamasu Butterfly Europa GmbH.

The Trademark Registrar employed the “triple test” to evaluate the potential for confusion, considering visual and sound elements, the type of goods and marketing channels, and specific circumstances. Emphasizing the dominant feature, the Registrar concluded that the word “BUTTERFLY” held sufficient strength in the fashion industry to protect against various designs.

Despite the addition of words like “SUPREME QUALITY” in the requested mark, the Registrar deemed them transparent to consumers. The application was rejected based on the likelihood of confusion with the registered word mark “BUTTERFLY.”

This case serves as a compelling example of why word mark registration is indispensable for brand owners, ensuring robust brand protection.

It also cautions against applicants, already using a trademark, seeking a hearing before the Trademark Registrar, as a decision indicating a likelihood of confusion may inadvertently support a potential infringement claim by the owner of the cited mark.

In navigating the complexities of trademark registration, the risk of potential infringement claims underscores the importance of securing a registration, a consideration that often outweighs the risks associated with forgoing it.

Further insights into the legal findings of the case can be explored HERE.

4. Navigating Trademark Oppositions: The Pitfalls of Global Reputation without Registration

MONTURE V. MONTURA

In a recent trademark opposition case in Israel, the question arises: Can a worldwide fashion label successfully oppose a similar mark without holding a trademark registration? The consequences of not registering a trademark in Israel are brought to the forefront in this compelling scenario.

Facts of the Case:

Tasci S.r.l, the proprietor of the globally recognized Montura brand, entered the Israeli market in 2017 without filing for a trademark. Operating without a specific store in Israel, Tasci S.r.l found itself in a trademark dispute with José Guillermo Treger, owner of the Panama fashion brand MONTURA, who filed a trademark application in Israel in 2019.

José Guillermo argued visual distinctions between the marks and emphasized that his brand caters to a different demographic and fashion category than Tasci S.r.l’s sport and hiking-oriented line.

The Trademark Commissioner’s Decision:

Despite visual and phonetic similarities, the Commissioner ruled in favor of José Guillermo. The key factor was Tasci S.r.l’s inability to prove its reputation and substantial sales in Israel. The evidence presented was deemed vague and insufficient, primarily reflecting global rather than local impact.

Insufficient evidence regarding the mark’s status as well-known further weakened Tasci S.r.l’s opposition. Consequently, the opposition was entirely rejected, and José Guillermo’s mark was approved.

Implications and the Importance of Registration:

This outcome, while potentially catastrophic for Tasci S.r.l, underscores the critical importance of registering a trademark in Israel. The rejection highlights the risk of relying solely on global reputation in trademark oppositions, particularly when evidence specific to the jurisdiction is lacking.

Notably, Tasci S.r.l’s subsequent filing of a trademark application may face challenges, given the Commissioner’s ruling on confusing similarity.

In defense, Tasci S.r.l faces a dilemma. Claiming no confusion contradicts their previous stance, emphasizing the need for a registered trademark in Israel for robust brand protection.

Conclusion:

This case serves as a stark reminder: relying on global recognition alone in a trademark opposition is fraught with risks. For businesses with a global footprint, filing a trademark application in Israel is not a choice—it’s a necessity.

Protect your brand, mitigate risks, and ensure comprehensive legal coverage by taking the crucial step of registering your trademark in each jurisdiction where you operate. Don’t leave your brand’s fate to chance.

Further insights into the legal findings of the case can be explored HERE.

Please be aware that the information provided in this article is intended for general informational purposes only and should not be considered legal advice. For specific legal matters, it is recommended to consult with a licensed attorney.

 

 

How to Overcome A Trademark Refusal Issued by the Israeli Trademark Office

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Overcoming a trademark refusal in Israel, as in any jurisdiction, requires a strategic approach that involves understanding the reasons for the refusal, gathering relevant evidence, and potentially engaging legal assistance. Here’s a general guide on how to handle a trademark refusal issued by the Israeli Trademark Office:

1. Review the Trademark Refusal :

Carefully review the official refusal notice you received from the Israeli Patent Office (IPO). Understand the specific grounds on which your trademark application was refused. Common reasons include similarity to existing marks, lack of distinctiveness, and descriptive nature of the mark.

2. Consult an Attorney :

If you haven’t already, consider seeking legal advice from a trademark attorney with expertise in Israeli trademark law. A qualified attorney can help you understand the grounds for refusal, assess the strength of your case, and provide guidance on the best course of action.

3. Analyze the Grounds for Refusal :

Work with your attorney to analyze the grounds for refusal and determine whether they are valid. If the refusal is based on prior conflicting trademarks, assess whether the similarities are significant enough to cause confusion among consumers.

4. Evidence and Arguments :

Develop a strong case by gathering evidence that supports the distinctiveness, non-confusing nature, or other key aspects of your trademark. This might include evidence of prior use, market recognition, consumer surveys, and other relevant materials. Your attorney can help you present compelling arguments based on this evidence.

5. Negotiation and Response :

Your attorney will prepare a well-structured response to the Israeli Trademark Office’s  refusal notice. This response should address each ground of refusal with relevant arguments and evidence. Sometimes, engaging in negotiation with the IPO’s examiners can lead to a resolution without needing to go through a formal appeal process.

6. Appeal Process :

If the refusal is not resolved through negotiation, you might need to consider filing an appeal with the Trademark Registrar or the relevant court. The appeal process involves presenting your case to a higher authority, and your attorney will guide you through the necessary steps and documentation.

7. Modification or Amendment :

Depending on the reasons for refusal, you might have the option to amend your trademark application to address the issues raised. Your attorney can advise you on the feasibility of making changes to your application.

8. Monitor Deadlines :

Keep track of deadlines for responding to the IPO or other relevant authorities. Missing deadlines could jeopardize your ability to overcome the refusal.

9. Consider Local Practices :

Israeli trademark law and practices may differ from those in other jurisdictions. It’s important to understand and adhere to the specific procedures and requirements of the Israeli trademark system.

Remember that trademark law can be complex, and each case is unique. Engaging a knowledgeable attorney who specializes in trademark law can greatly increase your chances of successfully overcoming a trademark refusal in Israel.

For responding a Trademark Office Refusal contact us.

Is Selling Perfumes with Similar Scents using Famous Brand Names as Indicators Considered Trademark Infringement ?

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Does selling perfumes with similiar scent to those of famous brand names, while using the translated names of such brands as indicators, qualify as trademark infringement ?

In the fragrance industry, companies invest extensive efforts to establishing a unique commercial identity and recognizable scents.

This involves also creating exquisite perfume bottles, crafting distinct fragrances and planning meticulous promotional campaigns.

Certain renowned fragrances are distinguishable even from a distance. 

Background

A recent Israeli court ruling delved into a situation where a company producing cheap perfumes claimed their scents closely resembled those of high-end perfumes.

The Defendant used translated names (to Hebrew) of famous perfume brands for association and identification, such as Chloe, Hugo Boss, Britney Jean Spears, Lancome, ZINO DAVIDOFF and more.

Below are the defendant’s bottles and sale presentations:

The Defendant used the words COMPATIBLE SCENT (in hebrew) in proximity to the translated names of the brands. They didn’t use the logos or English names of the famous brands.

The dispute questioned the legality of this practice and whether the defendant company had infringed trademark law.

The defendant argued its actions were permissible as customers were aware they were buying their products, not those from the trademark owners, therefore there could be no confusion.

The case raised fundamental questions:

Did the defendant infring the trademark law using similar marks in Hebrew ?

Could the defendant claim the “fair use” doctrine, asserting their use of trademarks aimed to describe their products?

Did the defendant commit unlawful enrichment ?

The Judgmnent

The District Court dismissed the lawsuit. It held that directly using registered trademarks by third parties could infringe trademarks. Similarly, copying them with minor differences not creating substantial distinction could also be infringement.

Nevertheless, Israeli law allows referencing products with registered trademarks for similar goods, as long as no consumer confusion arises.

The Court determined that the defendant’s actions did not infringe upon the plaintiffs’ trademark rights, since there is no confusion, and considering that the references to the brand names were presented in good faith by the defandnats.  

The Court also ruled that the use of the translated names of the famous brands is not considered to be “trademark use”, under trademark law, therefore there is no trademark infringement.

Names of Perfume Brands as Indicators – Reasonable and True Use

The judge decided that the use of the translated names of such brands is anyway a true and reasonable use of the mark, which supports the fair use claim.

The Court required the defendant to prove fragrance similarities and decided that the defendants has succeeded proving such a similarity.

However, the Court imposed practical adjustments for the Defendant’s products sold in Israel. The English term “Compatible” on labels had to be replaced with its Hebrew equivalent, with a larger font size for visibility.

In conclusion, the Court ruled defendant’s practices is not considered to be trademark infringement or any violation of other laws (such as publicity right or unjust enrichment). 

This instance highlights the intricate balance between potential trademark infringement and the legitimate utilization of brand names as indicators. Interestingly, within the past two years, the market has once again ventured to explore the boundaries of trademark protection within the perfume brand domain.

A Trend in Perfume Cases – Prioritizing the Interests of Free Competition over the Rights of  Trademark Owners

In a prior occurrence, a distinct case emerged where the defendants marketed original perfume liquids, delicately poured into compact bottles, while utilizing the “Channel” brand name as an indicator. This particular case progressed through the legal system, culminating in an appeal to the Supreme Court subsequent to the District Court’s initial ruling. The District Court’s verdict maintained that the sale of original perfume liquids employing brand names as indicators did not amount to trademark infringement. The Supreme Court then engaged in the case and remanded it to the District Court. The task at hand was to assess, guided by the expert opinions submitted by the involved parties, whether the act of rebottling substantially altered the perfumes. This determination stands as yet another illustration of how Israeli courts exhibit a propensity for prioritizing the interests of open competition over the rights held by trademark owners.

We estimate that an appeal will be soon filed against this judgment.  

C.F. (Tel-Aviv District Court) 61865-03-17 Chloe S.A.S and others v. Oil le Amor Ltd. (July 30, 2023).

Disclaimer: nothing in the above shall be considered as any legal advice whatsover.

Items sold by Rami Levy with BHPC trademark

Record-Breaking Trademark Infringement Award In Israel – Good News for Brand Owners

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In a groundbreaking legal ruling that has captured attention, the Tel Aviv District Court has recently delivered a record – breaking trademark infringement award with far-reaching implications.  

Rami Levi, one of the biggest supermarket chains in Israel, has been ordered to compensate Lifestyle Equities, the owner of the iconic BEVERLY HILLS POLO CLUB, in one of the highest awards in Israel for trademark infringement.

This landmark decision sets an extraordinary precedent in Israel’s legal arena, representing a remarkable triumph in the realm of trademark infringement.

The court ruling concluded a long-standing dispute between the parties, which lasted nearly a decade.

Here’s the story in a nutshell:

General Background

The plaintiffs, Lifestyle Equities C.V. and Lifestyle Licensing B.V., own the rights to the well-known BEVERLY HILLS POLO CLUB (BHPC) brand, featuring the iconic horse, rider, and polo stick, marketed in many countries worldwide, primarily in the fashion, footwear, bags, and more.

The plaintiffs granted a license to an Israeli company for the design, production, and distribution of BHPC products in Israel, specifically in the category of underwear.

The license included various restrictions, including a prohibition on distributing the products in food stores and marketing products not approved by the plaintiffs.

In 2014, the plaintiffs discovered that underwear products bearing their trademark, which were not approved as required, were imported to Israel by Yafiz and sold in Rami Levy stores.

Items sold by Rami Levy with BHPC trademark

The plaintiffs also learned that the license holder transferred her operations to another company without informing the plaintiffs or obtaining their approval. Under these circumstances, it was alleged that the products sold in Rami Levy stores were infringing.

In 2014, the plaintiffs sent warning letters to Rami Levy and Yafiz, demanding they cease the distribution of the infringing products.

However, the infringing products continued to be sold in Rami Levy stores despite the plaintiffs’ warnings, and this continued even after the license agreement was terminated and a lawsuit was filed against the company, claiming that it had stepped into the shoes of the license holder.

When Rami Levy and Yafiz refused to cease the distribution of the infringing products, the plaintiffs filed a lawsuit in 2017 against Rami Levy, Yafiz, and other importers.

The lawsuits led to a prolonged and complex legal battle, during which numerous pieces of evidence were presented regarding the trademark infringement, including findings by private investigators and expert opinions.

In 2022, the parties agreed to submit the dispute to the District Court (Judge Guntevenik) for a decision based on oral summaries by the parties, without cross-examinations.

The Judgment

On April 27, 2023, the court issued its judgment in the case.

The Tel Aviv District Court ruled that Rami Levy Shikma Marketing 2006 Ltd. and Yafiz Fashion Ltd. must compensate Lifestyle Equities C.V. and Lifestyle Licensing B.V., the owners of the BEVERLY HILLS POLO CLUB brand, in the amount of over 3,000,000  ₪ (2,413,836 ₪  plus interest and expenses) for trademark infringement.

This is one of the highest amounts awarded in Israel in recent years in the field of trademark infringement.

This landmark case sets a new benchmark in Israel’s legal landscape, representing one of the most substantial trademark infringement awards in recent years.

According to attorney Yossi Sivan representing Lifestyle Equities, there are several important and interesting elements in the court’s ruling:

One of the Highest Awards in Israel for Trademark Infringement

Firstly, the trademark infringement award is one of the highest awarded in Israel in recent years for trademark infringement. It includes compensation of all gross profit made by the Defendants amounting to approximately 2.4 million ₪, plus additional amounts for the filing date of the lawsuit and reimbursement of expenses, totaling over 3,000,000 millions NIS.

Attorney Yossi Sivan: “One of the Highest Trademark Infringement Awards in Israel”

Third-Party May be Liable for Trademark Infringement

Secondly, the court ruling indicates that a commercial party that received warnings about products it distributes cannot evade responsibility for potential intellectual property infringements and cannot place all the responsibility on the product supplier.

Failing to conduct a thorough investigation of the allegations while continuing to sell the infringing products might exposes the distributor to liability for trademark infringement.

The Judgment marks the first trademark case law in Israel where a third party (a commercial client such as supermarket chain of stores, who purchased the products from a supplier) is held responsible for trademark infringement and grants the brand owner a substantial compensation, one of the largest ever given in Israel.

Distribution Limitation of a License Agreement May Be Enforceable Against Third Parties

The third, ruling acknowledges that Rami Levy’s chain stores are “food stores” according to the license agreement. This establishes that the distribution of products bearing the trademark in food stores is prohibited.

The court accepted the plaintiffs’ position in this context, stating that distributors and marketers who did not directly contract with the rights-holding company are subject to the terms of the license agreement following the notices. 

Compensation Based on Unlawful Enrichment – Good News for Brand Owners 

The court’s compensation mechanism in this case is truly groundbreaking. Unlike typical instances of trademark infringement, where compensation is often estimated due to the challenge of proving financial damages, the court took a different approach.

Through meticulous analysis, the court accurately calculated the defendants’ actual gross profit, taking into account operational expenses. The plaintiffs provided comprehensive data, including import records, invoices, and receipts, enabling a precise calculation of compensation.

Rather than relying on the traditional compensatory damages mechanism established by the Trademark Law, the court applied an alternative remedy based on the unlawful enrichment law. This approach ensures that the compensation is directly tied to the actual gross profit derived from the infringement.

“… It should be noted here that “the rights holder can demand an injunction and compensation, but as an alternative to compensation, they can claim the unjust enrichment on the basis of unlawful enrichment act”.

Licensing Royalties Should Not Be The Basis of Compensation

The court firmly dismissed the defendants’ argument that only reasonable royalties should be awarded for using the plaintiffs’ trademark. Instead, it deemed the disgorgement of profits as the appropriate remedy, considering the nature of the case and the relationship between the parties.

The court recognized the plaintiffs’ efforts to trace the actual profits made, reinforcing the principle that compensation for trademark infringement should reflect the third party’s actual gross profit from the unauthorized sale of products.

” In light of the circumstances, it seems that returning the profits is indeed the suitable remedy… Therefore, it does not seem appropriate to award compensation in the form of reasonable royalty fees, a place where the profits can be traced.”

Furthermore, the court ruled that Rami Levy and Yafiz are jointly and severally liable for compensation, despite being separate entities. Their close collaboration and intertwined business activities justified this decision.

It’s worth noting that Rami Levy and Yafiz initially attempted to prevent the publication of the court ruling. However, the district court sided with the plaintiffs, acknowledging that there was no valid reason to withhold the ruling from public knowledge.

This trademark infringement award was granted under the provisions of Section 79A of the Israeli Court’s Law, wherein both parties consented to the Court exercising its discretion and making a judgment based on the available evidence and pleadings, without conducting cross-examinations.

The plaintiffs in this landmark case were represented by our law firm: Attorney Yossi Sivan of Yossi Sivan Law Firm 

Case Number TA 13671-02-17 Lifestyle Equities CV and others v. Rami Levi and Others (Tel Aviv District Court).

We would like to express our gratitude to Attorney Avi Ordo of Shorowitz & Co., who successfully cooperated with our firm and jointly represented in this case.

An appeal to the Supreme Court has been filed.

Please be aware that the information provided in this article is intended for general informational purposes only and should not be considered legal advice. For specific legal matters, it is recommended to consult with a licensed attorney.

Trademark Opposition in Israel: A Comprehensive Guide

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Understanding Trademark Opposition in Israel

In Israel, a trademark opposition is a legal proceeding initiated by a third party who challenges the registration of a trademark.

The opposition can be filed with the Israeli Trademark Office within three months of the publication of the trademark application in the Official Gazette.

Grounds for Opposition

The opposition can be based on several grounds, including:

  • Likelihood of confusion with an existing trademark
  • Lack of distinctiveness or descriptiveness
  • Deceptiveness or misleading nature of the trademark
  • Conflict with public order or morality

The trademark owner has the opportunity to respond to the opposition, and the parties can provide evidence and arguments to support their positions.

The decision is made by a trademark Registrar after considering all the evidence and arguments presented by both parties.

How to File a Trademark Opposition in Israel ?

Filing Procedures and Deadlines:

The opposition must be filed within three months from the date of publication of the trademark application in the official Trademark Gazette. The opposition can be filed electronically through the Israel Patent Office’s online filing system or by submitting a paper form.

Responding to Opposition

After the applicant receives the opposition, they may choose to file a counter-statement within two months, in which they respond to the grounds of opposition.

Evidence and Hearings: After the counter-statement is filed, the parties may submit evidence and attend a hearing.

Decision: The Israel Patent Office will then issue a decision, which can be appealed to the Israeli courts.

If the opposition is successful, the trademark application will be rejected, and the trademark owner will not be able to register their trademark. If the opposition is unsuccessful, the trademark registration will proceed, and the trademark owner will have exclusive rights to use the trademark in Israel.

It is recommended to consult with a trademark attorney who is familiar with the legal requirements and procedures for opposing a trademark in Israel.