Trademark infringement

The Landmark Case Forcing Israeli Directors into Trademark Infringement Personal Liability

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In a notable brand protection decision addressing trademark infringement personal liability, the Tel Aviv District Court (CC 13315-08-20: Lifestyle Equities C.V. et al. v. Don Gili Co. Ltd. et al.) has delivered a significant judgment, handing down a total monetary recovery exceeding 3 Million NIS (inclusive of legal fees and expert expenses).

The 50-page ruling, which was recently covered by Globes, Israel’s leading financial newspaper, addresses the scope of corporate risk management and executive exposure by holding the defendant company’s individual directors personally, jointly, and severally liable for post-termination trademark infringement.

Background and Plaintiffs’ Claims: An 11-Year Litigation Battle

The plaintiffs, global owners of the international lifestyle brand Beverly Hills Polo Club (BHPC), were represented by Yossi Sivan Law Firm.

The resolution of this dispute represents the culmination of a fierce, 11-year battle in court—a prolonged and highly complex litigation process that demanded a tremendous amount of firm energy, persistence, and deep operational resources to establish clear corporate executive exposure.

According to the plaintiffs’ claims in the operative lawsuit, a critical turning point occurred when BHPC initiated an exhaustive forensic accounting audit into the local Israeli licensee. This forensic investigation uncovered underreported direct import volumes calculated at approximately 13 Million NIS, which the plaintiffs asserted was a systemic attempt to evade contractually mandated 10% royalty fees.

Based on these alleged material breaches, the licensing agreement was legally terminated. The plaintiffs contended that following the expiration of a standard inventory run-off period, the licensee’s two directors and equal shareholders continued to import, market, and distribute the trademarked apparel without a valid license.

The defendants, conversely, denied the allegations of systemic underreporting, disputed the findings of the forensic audit, and contested the plaintiffs’ calculation of damages throughout the lengthy proceedings.

The Judgment: Establishing Trademark Infringement Personal Liability

Following an extensive evidentiary review spanning over a decade, the Tel Aviv District Court adopted the plaintiffs’ core legal arguments, creating a new standard for trademark infringement personal liability and resulting in two groundbreaking judicial achievements for our firm:

1. A Rare Milestone: Overcoming “Minimum Damages” with Full Gross Profits

Historically, the vast majority of trademark infringement awards in Israel have been limited to conservative statutory “minimum damages” or modest, heavily deducted net-profit figures. Infringing companies routinely shield their illicit gains by deducting extensive operational overhead, manufacturing costs, and executive salaries to artificially reduce the final judicial award.

Our firm successfully defeated this defense and shifted the legal precedent. Backed by the data established through our forensic accounting, the court ruled that the plaintiffs were entitled to a disgorgement of the complete, gross profits generated by the unauthorized use of the BHPC trademarks. By establishing that the financial remedy must reflect actual gross revenue rather than standard minimal caps, this case sets a powerful new benchmark for how intellectual property damages are calculated in Israel.

2. Passing the Bill Directly to Corporate Officers

To ensure the award could be fully recovered, our firm successfully applied tort law principles to bridge the gap between corporate debt and personal liability. The court found that because the individual directors possessed explicit knowledge of the contract’s termination, their operational decisions to continue trading under the brand name constituted personal and active trademark infringement.

Consequently, the court stripped away their corporate immunity, ordering that the company’s full gross profits must be paid by the individual directors out of their own private pockets. The court flatly rejected a defense raised by one director who claimed his role was limited to “logistics,” ruling that an active directorship and a 50% equity share made him a full partner in the operational infringement.

📋 Judicial Awards & Financial Breakdown

The final judgment allocates the total economic recovery across distinct categories of corporate exposure and trademark infringement personal liability:

  • Contractual Debt (Against the Corporate Entity): Don Gili Co. Ltd. was ordered to pay approximately 1.6 Million NIS for unpaid past royalties and contractual breaches determined during the pre-termination audit period, alongside associated legal expenses.

  • Trademark Infringement Gross Profits & Fees (Against the Directors Personally): For the post-termination phase, individual directors Shalva Gineli and Ilan Rozen were held jointly and severally liable to pay 1,419,195 NIS in personal trademark infringement damages (derived entirely from the company’s gross profits) and legal expenses.

🎙️ Firm Perspective: Shifting the Commercial Risk Landscape

This precedent-shifting case marks a profound evolution in how local courts handle intellectual property enforcement.

Historically, corporate defendants in Israel often approached trademark violations as a calculated business risk, assuming that an empty corporate shell would absorb the financial hit while they walked away with the revenue.

This ruling completely shatters that calculus. By combining the disgorgement of gross profits with direct trademark infringement personal liability after an 11-year uphill battle, the court has signaled that the financial consequences of bad-faith infringement will follow directors straight to their personal bank accounts.

For global brand owners, the judgment underscores the vital importance of pursuing rigorous forensic audits, maintaining long-term litigation stamina, and asserting aggressive personal liability claims when navigating post-termination licensing disputes.

For inquiries regarding international licensing frameworks, brand enforcement, or corporate risk mitigation in Israel, please contact our Tel Aviv office.

Case Reference: CC 13315-08-20 (Tel Aviv District Court), Lifestyle Equities C.V., Lifestyle Licensing B.V. v. Don Gili Co. Ltd., Shalva Gineli, and Ilan Rozen.

⚖️ Legal Disclaimer

The content of this article is provided for informational and educational purposes only and does not constitute formal legal advice or the formation of an attorney-client relationship. While this publication highlights a specific judicial precedent achieved by Yossi Sivan Law Firm regarding trademark infringement personal liability, legal outcomes depend substantially on the specific facts and circumstances of each individual case. Readers should not act upon this information without seeking professional legal counsel tailored to their corporate or jurisdictional needs.

combating counterfeit goods Israel

Combating Counterfeit Goods Israel: Retailer Liability

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Introduction

In a rapidly evolving global market, protecting your brand from intellectual property theft is a continuous battle. For international brands, navigating local enforcement requires a proactive approach and a deep understanding of local laws. If you are focused on combating counterfeit goods Israel, you need a legal team that goes beyond standard filing to actively protect your commercial interests.
Yossi Sivan Law Firm is dedicated to delivering exceptional legal services and fierce, constant protection for your brand.
 

Strategies for Combating Counterfeit Goods Israel

 
Effective brand protection requires “boots on the ground.” We prioritize fierce and constant protection for our clients. To achieve this, our firm hires dedicated agents to regularly monitor local markets and stores in Israel for unauthorized or fake products. We provide our clients with detailed monthly reports on the presence of these goods. If we detect an infringement, we promptly advise you on the appropriate course of action and aggressively pursue litigation to enforce your rights. Understanding the best strategies for brand owners to combat counterfeit goods in Israel is the first step toward securing your market share.
 

Landmark Decisions on Retailer Liability

When litigation is necessary, our firm delivers unprecedented results. Recently, our firm achieved a “significant breakthrough” that opens new avenues for brand owners. This landmark decision sets a precedent for retailer liability in trademark infringement disputes, allowing rights holders to seek greater compensation directly from retailers selling fakes. Furthermore, our firm has successfully litigated cases resulting in a record-breaking trademark infringement award upheld by the Israeli Supreme Court.
Contact Top Intellectual Property Experts.
 
Yossi Sivan is recognized by Legal 500 as a pioneer who has carved his path through the top echelon of Israeli intellectual property. If you require assistance with combating counterfeit goods Israel, contact our Rehovot office at 972-8-6197090 or email yossi@sivan-law.com.
 

Update: Israeli Supreme Court Upholds Record-Breaking Trademark Infringement Award

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A ground breaking Trademark Infringement Award in Israel. In a significant development for intellectual property rights in Israel, the Supreme Court has denied the appeal filed by Rami Levi Shikma Marketing 2006 Ltd. and Yafiz Fashion Ltd. 

In this decision, the Supreme Court is affirming one of the largest trademark infringement awards ever granted in the country (following the withdrwal of the appeal by the defandnats).

Brief Recap: The District Court’s Landmark Ruling

As previously reported, the Tel Aviv District Court delivered a trailblazing Trademark Infringement Award in April 2023, ordering Rami Levi and Yafiz Fashion to pay over 3 million₪ (including 2,413,836₪ plus interest and expenses) to Lifestyle Equities C.V. and Lifestyle Licensing B.V., the owners of the Beverly Hills Polo Club (BHPC) brand, for unauthorized sales of branded products.

The plaintiffs were representing by Yossi Sivan Law Firm.

This judgment was notable for several reasons:

  • Record Compensation: The Trademark Infringement Award is among the highest ever seen in Israel for a trademark infringement case, calculated based on the defendants’ actual gross profit instead of estimated damages or reasonable royalties.

  • Third-Party Liability: For the first time, a commercial distributor was held responsible even when it did not directly manufacture the infringing goods, establishing that retailers cannot shield themselves from liability by relying solely on their suppliers.

  • Enforcement of Licensing Restrictions: The court enforced restrictions limiting distribution to specific retail channels, confirming that licensees and third parties must respect such restrictions when notified.

Supreme Court Denies Appeal: Major Milestone for Brand Owners

Following the District Court’s decision, Rami Levi and Yafiz filed an appeal to the Israeli Supreme Court. The Supreme Court has now rejected their appeal, cementing the lower court’s judgment and its legal precedents.

This outcome is a phenomenal achievement for brand owners in Israel. The Supreme Court’s decision unequivocally reinforces trademark protections and demonstrates the judiciary’s willingness to uphold substantial remedies, including disgorgement of unlawful profits, in favor of rights holders.

It sends a clear message: brand owners can successfully pursue meaningful enforcement, and commercial distributors must take intellectual property compliance seriously.

This decision stands as a milestone for the protection of international brands in Israel’s market and sets an important precedent for future trademark enforcement actions.

Dislcaimer: 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.

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.

 

 

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.

trademarks in Israel

Difference Between National Registration and International Registration of Trademarks

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National registration and international registration are two ways to protect trademarks around the world, and both have advantages and disadvantages.

Advantages of National Registration:

  1. Cost: National registration is typically less expensive than international registration, as it only involves the fees associated with filing and prosecuting the trademark application in a single country.
  2. Simplified Process: National registration processes are often simpler and quicker than international registration processes. This is because they are designed to be familiar to local applicants, and the national trademark office is more likely to have a better understanding of local laws and customs.
  3. Better Protection: National registration provides better protection in the country where the trademark is registered. National registrations are subject to local laws, which may be more favorable to trademark owners, and trademark owners may have more resources available to enforce their rights.

Disadvantages of National Registration:

  1. Limited Protection: National registration only protects trademarks in the country where they are registered. This means that a trademark owner would need to file separate applications in each country where they wish to have protection.
  2. Language and Cultural Barriers: National registration can be challenging in countries where the language and culture are unfamiliar to the trademark owner. This may make it difficult to navigate the registration process or to enforce trademark rights in that country.

Advantages of International Registration:

  1. Protection in Multiple Countries: International registration provides protection in multiple countries with a single application. This is particularly useful for businesses that operate or plan to operate in multiple countries.
  2. Simplified Process: The international registration process is designed to be simpler and quicker than filing separate applications in each country. The international application is filed with the World Intellectual Property Organization (WIPO), which acts as a central registry.
  3. Cost-Effective: International registration can be cost-effective for businesses that wish to protect their trademark in multiple countries. The fees for international registration are typically lower than the fees for filing separate applications in each country.

Disadvantages of International Registration:

  1. Limited Scope of Protection: International registration only covers countries that are signatories to the Madrid Protocol. This means that there may be countries where protection cannot be obtained through an international registration.
  2. More Complex Process: The international registration process can be more complex than national registration, as it involves complying with the requirements of multiple countries and working with different national trademark offices.
  3. Dependence on Home Registration: International registration is dependent on the home registration, meaning that if the home registration is cancelled or invalidated, the international registration may also be affected.

In conclusion, both national registration and international registration have advantages and disadvantages, and the decision of which system to use depends on the needs and circumstances of the trademark owner. National registration may be more appropriate for businesses that operate in a single country, while international registration may be more appropriate for businesses that operate in multiple countries. Ultimately, it is essential to work with experienced trademark attorneys to determine the best strategy for protecting trademarks around the world.

MEET US AT THE INTA 2023 SINGAPORE

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Dear Clients and Colleagues,

We are thrilled to announce that we will be attending the INTA 2023 Annual Convention in Singapore from May 16th until May 20th.

The event is the premier gathering of trademark professionals from all around the world and is an incredible opportunity for us to connect with colleagues, clients, and partners, and to stay up to date with the latest trends and developments in our field.

We are excited to share our knowledge and experience with other industry leaders, and to learn from the best in the business. We look forward to catching up with old acquaintances, meeting new friends, and building relationships that will continue to thrive for years to come.

In addition to the convention, Singapore is a fascinating and dynamic city with a lot to offer. We suggest taking some time to explore the following attractions:

  1. Gardens by the Bay – This stunning 101-hectare garden features more than a million plants from around the world, including towering SuperTrees and a world-famous Flower Dome.
  2. Marina Bay Sands – The iconic three-tower hotel features an observation deck with breathtaking views of the city skyline, as well as a casino, a shopping mall, and a range of restaurants.
  3. Sentosa Island – This tropical island resort is home to a wide range of attractions, including Universal Studios Singapore, a water park, beaches, golf courses, and more.
  4. Chinatown – A vibrant cultural district filled with colorful shops, street vendors, temples, and traditional architecture.
  5. Merlion Park – A must-visit for first-time visitors to Singapore, this iconic statue features the head of a lion and the body of a fish, and is a symbol of the city’s history as a fishing village.

We can’t wait to see you at the INTA 2023 Annual Convention and to explore all that Singapore has to offer. If you have any questions about the convention or the city, please don’t hesitate to contact us.

Best regards,

Yossi Sivan Law Firm 

Summary of 2021 Israel Trademark and Patent Office Report

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Check Out the Latest Trademark Filing Statistics in Israel 2016 – 2021

1.      National trademark applications (3%) and international applications (14%) both increased in 2021.

2.      A total of about 9% more applications have been filed this year than the previous year.

3.      The number of applications submitted this year (2021) is the highest ever.

4.     48% of all trademark applications filed in Israel were national applications filed by local attorneys, which means trademark attorneys from other countries still prefer to file their trademark applications using local attorneys after seeking advice and counsel from local attorneys.

5.      Approximately 75% of trademark applications filed each year in Israel are from foreign applicants, meaning most come from outside Israel.

Registration of a trademark in Israel is best secured by working with local attorneys.

 

The Fatal Result of a Trademark Infringement Claim

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“Rules Written in Blood” is an old Israeli saying that perfectly sums up the need to learn from others’ mistakes before choosing the right path.

As a brand owner or trademark lawyer, taking enforcement action if you see any competitors or others using confusingly similar marks is the first step to consider.

However, suing for trademark infringement can sometimes result in a fatal result for the brand. 

One example can be found here.

What is an Indirect Attack ?

In Israel, the defendant may raise several defenses to a trademark infringement claim.

Indirect attack is one of the defenses.

In an Indirect Attack, a defendant may claim that the plaintiff’s trademark registration is invalid, or shouldn’t have been registered in the first place, and therefore should be cancelled.

The plaintiff could request cancellation based on a lack of distinctive character or descriptiveness of the trademark registration (absolute grounds).

This could be a majore risk for the brand owner.

Court is Examining The Registrability of the Mark

In a recent case brought by a cosmetic company, this risk was perfectly illustrated.

An infringement claim has been filed to the Israeli Tel Aviv Magistrates Court, in which the Plaintiff has claimed that the use of the mark “Messeia” by the defendants on cosmetic products constitutes trademark infringement.

The Plaintiff owns the trademark registration for the mark “Messiah” in class 3.

Photos of the Plaintiffs products and the Defendants are presented below:

Plaintiff’s Products:

Defandnat’s Products:

It should be noted that an indirect attack could be generaly initiated in a trademark infringement procedure within the framework of the infringement claim itself, even if no separate motion for cancellation has been filed to the Israeli Trademark Office or no separate declarative motion has been filed. 

In this case, the Court has taken one step further, and although the defendant did not specifically raise the claim of indirect attack, the Tel Aviv Court first examined the registrability of the plaintiff’s trademark registration.  

Court Ruled that the Plaintiff’s Trademark Should be Cancelled

The Court has ruled that according to Paragraph 11 (7) to the Trademark Ordinance, marks identical with or similar to emblems of exclusively religious significance are not registerable.

The mark “Messiah” is protected as a symbol with a clear and exclusive religious meaning, meaningful in both Jewish and Christian religions, therefore the mark is not registrable.    

Thus, the Court ruled that the Plaintiff’s trademark registration for the mark Messeia should be cancelled.

In order to formally cancel the mark, the Court requested to send a copy of the decision to the Trademark Office.

So, the Plaintiff sued for trademark infringement, but ultimately lost his registration.

A fatal result for the brand owner.

Owners of brands should carefully consider their risks before initiating a trademark infringement claim, including losing their registration.

 

Disclaimer: The above may not be considered as any legal opinion whatsoever and users are requested to get a professional advise.

trademark refusals Israel

5 Tips on How to Overcome Trademark Refusals in Israel

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There are several types of refusals typicaly issued by the Israeli Trademark Office.

We have decided to share with you our 5 important tips on how to overcome a Trademark Refusal in Israel based on our extensive experience in Trademark prosecution.

This is a must read for every trademark attorney who files Trademarks in Israel. 

Beware of What You Write in Your Response – All Trademark Files in Israel are Public

Since 2015 all trademark files in Israel, covering most of the examination process of trademark applications, are public and can be viewed easily online by others.

It is very important to understand that any claim you claim to overcome any refusal may be held against the client, either by a certain competitor or by any other third party who can easily gain access to the online files. Make sure no confidential information is subbmited in your response.   

For example, if you agree to limit the protection of your application just to overcome a certain refusal your limitation can be used by any third party to block any claim of trademark infringement against him.

Your pleadings in the prosecution process might negatively affect your enforcement options. Therefore, we always recommend asking a local attorney to provide a short brief of the respond by bullet points in English.     

Do Not Respond Immediately to an Office Action – Wait and Consider All Options First

Our first instinct as trademark attorneys is to ask a local attorney to respond to an  office action before the deadline. It is very important to consider all options before you do so. Such option can be for example to wait until the other side has responded.

For example, once you receive a refusal (Office Action) in which your application cannot be registered based on similarity to other application that hasn’t been accepted yet, you might want to wait until the owner of the cited application has answered, to see his respond and then to decide on the proper course of action.

In that case you can wait until a few days before the deadline expires to review the other side’s response first. Reviewing the claims of the representatives for the cited application first, can provide you with material advantage in the process.

Ask the Local Attorney to Demonstrate the Use of the Mark using Online Information

In cases of lack of distinctive character refusals, trademark attorneys are confronting claims against the character of the mark. It is very important to show the examiners the actual use in the market using online information.  

In many cases we were able to prove that the mark is distinctive by showing the specific use in the market and how the specific use in the market acquires a special character to the mark. 

Use Foreign Registrations   

In cases of lack of distinctive character refusals, if your client has foreign registrations from his Country of Origin for the same mark and for the same list of goods, then you can use Section 16 of the Israeli Trademark Ordinance and request that the new application will be based on the foreign registration. By doing so you can efficiently overcome a lack of distinctive character refusal.

Ask the Local Attorney to Call the Examiner BEFORE Responding the Office Action

Experience shows that in many cases a quick chat with the Examiner can do miracles and can be even more efficient than an elaborated response.

We recommend in some of the cases to ask the local attorney to have a short chat with the Examiner, to understand his views and specifically ask him what you can provide in order to change his mind BEFORE submitting a detailed response.

While investing the time and energy in talking with the Examiner can be time consuming, it is very important to understand that if you fail to convince the Examiner, the second phase would be traveling to Jerusalem, attending the hearing and persuading the Trademark Registrar, this could be very costly for the client even before appealing the decision to the relevant District Court.                        

Yossi Sivan & Co. Law Office is specialized in Trademark Prosecution and litigation in Israel.

 

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The above shall not be considered as any legal opinion whatsoever and we recommend consulting with a professional attorney.