The main statute which provides the primary statutory basis for the registration and protection of trade marks in Israel is the Trademark Ordinance 1972 [New Version] (the “Trademark Ordinance”).

The Trademark Ordinance is complemented by the following regulations:

• Trademark Regulations – 1940;
• Trademark Regulations (Appeals before District Court) 1987; and
• Trademark Regulations (Implementation of Madrid Protocol) 2007.

The relevant legal framework also includes the following statutes:

• Merchandise Marks Ordinance 1929; and
• Protection of Appellation of Origin and Geographical Indications Law 1965.

In addition, Israel recognises common law trade mark rights, primarily by the civil wrong of passing off:

• Commercial Civil Wrongs Law, Section 1.

The Copyright Act of 2007 (the “Copyright Act” or “Act”) governs copyright in Israel. The Act provides that copyright will not subsist in a work other than in accordance with the provisions of the Act. There is no “common law copyright”.

Israel is a member of the following treaties/conventions:

• Paris Convention for the Protection of Industrial Property;
• WIPO TRIPS Agreement;
• WIPO Copyright Treaty;
• WIPO Performances and Phonograms Treaty;
• Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods;
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
• Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents;
• Lisbon Agreement for the Protection of Appellations of Origin and their International Registration;
• Berne Convention for the Protection of Literary and Artistic Works;
• Phonograms Convention;
• Universal Copyright Convention (Geneva);
• Universal Copyright Convention (Paris), 1971;
• Geneva Phonograms Convention;
• Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974);
• Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations; and
• Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.

Israel is registered with the following protocol:

• Protocol relating to the Madrid Agreement Concerning the International Registration of Marks – Madrid Protocol (1989).

Treaties do not have direct applicability unless and until implemented by legislation.

The rights of foreign trade mark owners are governed by the same laws and agreements as the rights of local trade mark owners.

Under the Copyright Act, foreign works are protected for a period not exceeding the duration of copyright protection in their country of origin, provided that the work was published in Israel or that a treaty was signed between Israel and the other country regarding copyright protection.

Any mark may be registered in so far as it can distinguish the goods and services of the trade mark owner from those of others.

A “mark” is defined as “letters, numerals, words, images or other signs or combinations thereof, in two or three dimensions”. This flexible definition includes, among others, words, logos and labels, in colour or black and white, pure colour marks, 3D trade marks, motion, holographic marks and sound marks. No scent or taste marks have been registered as yet.

Registration of 3D marks consisting solely of product shapes is possible only in exceptional cases, providing the following three conditions are fulfilled – the requested device:

• is being used to mark the goods and to identify the origin of the goods (rather than being the image of the goods);
• does not serve an essential aesthetic or functional role; and
• due to use has acquired distinctiveness to the extent that it is apt to convince the registrar that the case concerned is special and exceptional.

Well-known marks are entitled to extra protection. A well-known trade mark:

• even if not registered, will entitle its owner to exclusive use of the mark for the goods or services for which it is well known in Israel, or for goods of the same description; or
• once registered as a trade mark, will entitle its owner to exclusive use of the mark even for goods that are not identical or of the same description, if the use of the mark by someone other than its owner may indicate a connection between the aforementioned goods and the owner of the registered mark, and the owner may be harmed as a result of said use.

Service marks may be registered.

Certification and collective marks may be registered.

The basic requirement for trade mark protection in Israel is distinctiveness. A mark may not be registered unless it can be used to distinguish between the goods of the owner of the mark and those of others.

A mark may acquire distinctiveness through extensive use, primarily in Israel. The registrar or the court that determines distinctiveness through use, should consider the extent to which the actual use has made the mark distinctive of the goods or services concerned.

A valid trade mark registration entitles its owner to the exclusive use of the trade mark for the goods covered in the registration, subject to conditions and disclaimers indicated therein.

The Trademark Ordinance provides extra protection for well-known trade marks:

• A well-known mark entitles its owner to exclusive use of the trade mark in respect of the goods for which it is well known in Israel, or goods of the same description.
• A well-known registered trade mark also entitles its owner to exclusive use in respect of goods which are not of the same description, if the use by someone who is not the owner may indicate a connection between those goods and the registered owner and, consequently, the registered owner may suffer damages.

Under Israeli law, there is no pre-registration or post-registration requirement for proving use. However, a registered trade mark that has not been in use in Israel for three consecutive years might become vulnerable to cancellation on the grounds of non-use, in the absence of special justifying circumstances.

Use of a mark in a purely descriptive manner may prevent a pending application from being registered or lead to cancellation of a registered trade mark, on the grounds of descriptiveness and non-distinctiveness.

The symbols “TM” and ® may be used to indicate trade mark use and registration (respectively). Marking is not mandatory.

Falsely indicating that a product is protected by trade mark registration (eg, by using the ® symbol), is a criminal offence.

A trade mark may also be protected by copyright law, if the conditions set by copyright law are met (eg, in the case of a unique logo).

The registrar may refuse the registration of a trade mark identical or confusingly like a person’s name or business name, if it is likely to deceive the public or cause unfair competition.

A trade mark registration will not prevent a person from use in good faith of their name or business name.

A mark that has a picture of a person on it will not be allowed unless the consent of the person concerned has been obtained. If the person has died, the registrar will require the consent of their relatives, unless the registrar is of the opinion that there are reasonable reasons not to require this.

Works eligible for copyright protection under the Copyright Act are: literary works (including works expressed in writing, lectures, tables, compilations and computer programs), artistic works (including drawings, paintings, sculptures, engravings, lithography, maps, charts, architectural works, photographic works and works of artistic craftsmanship including typefaces), dramatic works or musical works.

Regarding industrial designs – the Copyright Act stipulates that there will be no copyright in an industrial design as defined in the Patents and Designs Ordinance or as defined in the Designs Law, 2017-77, unless the design is not used and is not intended to be used for industrial manufacture.

The elements required to qualify for copyright protection for artistic works, dramatic works or musical works are “originality”, “fixation” and a connection of the work to Israel:

• “Originality” is not defined in the Copyright Act. Court cases have addressed the question of originality, moving along the years from a “labour” doctrine (minimum amount of work and effort) to a “creativity” doctrine (minimum intellectual contribution), and lately requiring both labour and creativity as a condition to copyright.
• “Fixation” – this rule has evidentiary purposes.
• The Copyright Act protects works that have a certain “connection to Israel”. This means: (i) the work was first published in Israel; or (ii) at the time of the work’s creation, its author was a citizen of the State of Israel, or their habitual residence was in Israel, regardless of whether the work was published in Israel.

In addition, if a treaty has been signed between Israel and another country, or if Israel has joined a treaty in this regard, the minister of justice may determine that works whose protection is required by the treaty in Israel, will be protected according to the provisions of the treaty.

The Copyright Act stipulates that:

• The author of a work is the first owner of copyright in the work and the producer of a sound recording is the first owner of copyright in a sound recording.
• In works created by employees, the employer is the first owner of copyright in a work made by an employee in the course of their service and during the period of their service, unless otherwise agreed.
• Regarding works made for hire – in a work made pursuant to a commission, the first owner of the copyright will be the author, unless otherwise agreed between the commissioning party and the author, expressly or by implication. However, regarding commissioned works, such as a portrait or a photograph of a family event or other private event, the first owner of the copyright therein will be the commissioning party, unless otherwise agreed.

The Copyright Act does not include any reference to work that was not created by a human (eg, work created by AI software, an animal, etc) and Israeli courts have not yet addressed this issue.

Joint Authorship

“Joint work” means a work created by several authors jointly, in which it is not possible to discern each author’s part in the work. Usually, joint work will be co-owned by its joint authors. There is no special rule in the Act regarding the use of a joint work but, according to court cases, the general rules of property apply – accordingly, each one of the co-owners has the right to “reasonable use” of the property, subject to payment to the other co-owners.

The rights granted to copyright owners, as detailed in Section 11 of the Copyright Act, state that the copyright owner of a work has an exclusive right to perform the following acts in respect of the work, or a substantial part thereof, as follows: 

• reproduction;
• publication – with respect to a work not yet published;
• public performance – with respect to a literary work, dramatic work, musical work and sound recording;
• broadcasting;
• making it available to the public;
• making a derivative work; and
• rental with respect to sound recording, cinematographic work or a computer program.

Moral Rights

The Act recognises moral rights. Accordingly, the author of a work (excluding computer programs) will have moral rights during the entire period of copyright protection. The moral right is personal, non-transferable and will be available to the author even if they do not have copyright in the work or if they have assigned the copyright in the work. The moral right includes the right of paternity, namely the right of the author to have their name identified with their work in the manner appropriate under the circumstances; and the right that no distortion will be made to the work, no mutilation, other modification, or any other derogatory act will be made in relation to the work, where any of the aforesaid acts would be prejudicial to the author’s honour or reputation.

The duration of copyright protection in a work is for the duration of the life of its author and 70 years after the author’s death.

Copyright in a typeface (font) will be for a period of 70 years from the date of publication thereof. Copyright in a work of which the state is the first owner will be for a period of 50 years from the date of its creation.

The rights in a copyrighted work are not eligible for termination.

Collective rights management systems are regulated in Israel under the Commercial Competition Law rather than under the Copyright Act and include the following organisations:

• ACUM – an organisation administering the rights assigned to it by its members: authors, composers, lyricists, poets, and music publishers.
• The Federation of Records – the Israeli branch of the international organisation IFPI, which promotes and protects the copyright of record companies.
• The Federation of Israeli and Mediterranean Music – the organisation that promotes and protects the copyright of Israeli and Mediterranean record companies.
• TALI – the Collecting Society of Film and Television Creators in Israel represents the copyrights of Israeli screenwriters and directors.
• ESHKOLOT – the Society for the Performing Rights of Israeli Artists represents all performing artists in Israel.
• EILAM – the collecting society of Israeli performing musicians represents musicians in Israel.

There is no copyright register in Israel and registration is not required for owners of an original work. Copyright protection is automatic and free from the moment a work is created.

However, from a practical aspect, it is advisable to use the copyright symbol © or the word “Copyright” to deter acts of copyright infringement.

Notices and Symbols

Under the Copyright Act, no special notice of copyright is needed. However, as mentioned above, it is advisable to use the copyright symbol © or the word “Copyright” to deter acts of copyright infringement.

See 3.7 Copyright Registration.

See 3.7 Copyright Registration.

A work which is entitled to copyright protection under the Copyright Act may also be protected by trade mark to the extent that the work is entitled to protection according to the Trademark Ordinance.

Industrial designs – the Copyright Act stipulates that there will be no copyright in an industrial design as defined in the Patents and Designs Ordinance or as defined in the Designs Law, 2017-77, unless the design is not used and is not intended to be used for industrial manufacture.

Under Israeli law, trade mark rights may be acquired through registration as well as through use (“common law rights”). The latter may be claimed mainly through the civil tort of passing off. Furthermore, earlier use may constitute grounds for opposition to or cancellation of a later application. In addition, in the case of contentious proceedings between two pending applications, priority in use and priority in filing are both considered, but earlier use in good faith, particularly in Israel, will usually prevail.

Nevertheless, registration is highly advisable for several reasons, including the following:

• not having to establish use and goodwill as a precondition to protection;
• an infringement of a registered trade mark is a criminal offence, allowing the trade mark owner to file a criminal complaint or to request that the police take action against the infringement;
• goods infringing a registered trade mark may be detained at the border by the customs authorities, on their own initiative or at the request of the trade mark owner;
• registered trade marks are cited against later applications for confusingly similar marks; and
• registration allows the owner to plan ahead and launch brands according to a pre-planned strategy without worrying about conflicts with earlier users, as long as the owner filed their trade mark earlier, and started using it in Israel less than three years after registration.

Israel has a trade mark register, maintained by the Israel Patent Office (“ILPO”). The Israeli register is publicly available online, and includes an up-to-date extract of registered/pending trade marks and essentially the entire official trade mark file.

It is common to conduct an availability search before applying for trade mark registration. The ILPO offers a search service. The online trade mark database of the ILPO is also searchable, but this search is less reliable. Common law searches (eg, in the online database of the companies register, domain name searches, general Google searches and others, depending on the relevant field) are less common but also available.

A trade mark registration may remain valid for an unlimited period, subject to its renewal every ten years.

Following the renewal deadline there is a six-month grace period in which a registration may still be renewed, subject to payment of belated renewal fees.

When a mark is not renewed by the end of the grace period, it is removed from the register and may no longer be renewed. However, it is still possible to request its reinstatement due to special circumstances supported by an affidavit, within six months of the end of the renewal grace period.

A non-renewed registration which has been removed from the register, is deemed valid for an additional year after the renewal date, for the purpose of citation or opposition against a pending application; unless the registrar is convinced that during the preceding two years, the trade mark has not been commercially used in good faith or that use of the pending mark is unlikely to cause confusion due to previous use of the removed trade mark.

Any person, local or foreign, natural or a legal entity, may apply for trade mark registration.

Multi-class applications are allowed.

The review of trade mark applications involves both technical and substantial aspects.

A simple signed power of attorney must be submitted when filing through an agent.

The official filing fees are:

• for first class – ILS1,858; and
• for each additional class – ILS1,397.

Under Israeli law it is not required that a trade mark is used before filing or even before registration. However, after three consecutive years of non-use after registration, the registration may become vulnerable to cancellation, in the absence of special justifying circumstances.

The Trademark Office examines pending marks on relative grounds, namely, potential conflicts with prior registrations or applications.

Among others, the following marks are not eligible for registration:

• a mark that may deceive the public or that contains a false indication of origin, or a mark that encourages unfair competition;
• a mark identical or confusingly similar to a mark already registered in the name of another owner in respect of the same goods or services or in respect of goods or services of the same description;
• a mark that is identical or confusingly similar to a well-known trade mark, even if it is not registered, for goods or services for which it is well known in Israel or for goods of the same description; and
• a mark which is identical or confusingly similar to a well-known trade mark that has been registered as a trade mark, even for goods that are not identical or of the same description, if the use of the mark by someone other than its owner may indicate a connection between the aforementioned goods and the owner of the registered mark, and the owner of the registered mark may be harmed as a result of said use.

The registrar will allow the following corrections and amendments in a trade mark application or registration upon request by the applicant or registrant:

• the correction of a mistake in the applicant’s name or the applicant’s address;
• making a change to the list of goods and services that does not expand the description;
• adding a disclaimer or notification that does not expand the rights conferred by the registration;
• voluntary cancellation of the trade mark application or registration; and/or
• consolidation of several registrations of the same mark, which were all filed on the same date.

Generally, as long as a trade mark is not yet registered, whether already allowed or not, the registrar may correct a mistake in the pending application, including insubstantial details in the mark itself.

A trade mark applicant may request to divide the application according to the classes included in the application. Each of the applications which survives the division will be considered as filed on the same date as the original application.

A typical situation in which a trade mark applicant may request a division of the application is when a citation or an opposition is more relevant to some of the classes included in the application than to others.

If ownership has been transferred with regard to some of the goods for which a trade mark is registered or pending, the registrar will divide the trade mark registration/application into separate registrations/applications.

Whoever is harmed by the fact that a certain entry was not recorded in the register or was omitted from it, or was recorded in it without sufficient reason, or remained in it illegally, or an error or defect occurred in it, may submit to the registrar a request for correction (including total cancellation), in the prescribed manner.

The registrar’s decision on such a request is subject to appeal before a district court.

Registered trade marks may be cancelled upon requests by third parties on the same grounds available in opposition, within five years after registration. There is no time limit to cancellation on the grounds of filing in bad faith.

Providing the registrar with false information in connection with a trade mark application is a criminal offence.

Registration may be refused on absolute grounds that generally pertain to characteristics inherent in the trade mark itself.

The following marks are not eligible for registration:

• a mark implying a connection with the president or with his house or the patronage of the president, and a mark that can be inferred from said connection or patronage;
• the Israeli flag, institutions or symbols, flags of foreign countries and international organisations and their symbols, and any sign similar to one of them;
• official pedigree marks, official signs and seals in which a state usually indicates supervision or guarantee, and any mark similar to them, as well as a mark from which it can be concluded that the owner benefits from the patronage of a head of state or government, or that the owner supplies goods or renders services to a head of state or government, all if it has not been proved to the registrar that the owner of the mark is entitled to use the same mark;
• a mark in which one of the following appears – “patent”, “registered patent”, “according to a state document”, “registered”, “registered model”, “copyright”, “imitation of this – counterfeit”, or an expression similar to these;
• a sign that harms or may harm public order or morality;
• a mark that may deceive the public or that contains a false indication of origin or a mark that encourages unfair competition;
• a mark that includes a geographical indication for goods whose origin is not in the indicated geographical area, if the geographical indication is misleading in relation to the true geographical area of the origin of the goods;
• a mark that includes a geographical indication that is literally correct, but that contains a misrepresentation as if the goods originated in another geographical area;
• a mark that is identical to a symbol with only a religious meaning;
• a mark that has a picture of a person on it, unless the consent of the person concerned has been obtained, and if it is the picture of a person who has died, the registrar will require the consent of the relatives, unless the registrar has reason to believe there are reasonable reasons not to require this;
• a mark that consists of numerals, letters or words, which are commonly used to indicate or describe the relevant goods or services or their nature or quality, unless the mark has acquired a distinctive character;
• a mark whose usual meaning is geographical or a surname, if it is not presented in a special form, unless it has acquired a distinctive character; and
• a mark identifying a wine or alcoholic beverage that includes a geographical indication, if the origin of the wine or alcoholic beverage is not in the same geographic area.

Israel is a party to the Madrid Protocol, and thus allows trade mark owners to extend their international trade mark protection by designating Israel in their international registration.

The deadline to oppose a trade mark is within three months of the publication date, non-extendable, but subsequent deadlines are extendable, subject to the other party’s consent. 

Any aggrieved person may file a cancellation action within five years from the date of the trade mark registration on the same grounds available for filing oppositions.

There is no time limit for filing cancellation actions against trade mark registrations on the grounds of filing in bad faith.

Registered trade marks are vulnerable to revocation proceedings if they were not used by their registered owners during three consecutive years after their registration.

There is no copyright registration in Israel.

The legal grounds for filing an opposition include several absolute reasons to refuse the trade mark’s registration in accordance with the provisions of the Trademark Ordinance and other relative reasons based on an opponent’s claims to be the owner of the mark.

Israeli law recognises the dilution of famous registered or unregistered trade marks as a relative ground to attack the use or registration of a conflicting trade mark.

Trade marks are vulnerable to cancellation proceedings on the same absolute and relative grounds available for filing oppositions, if the registration is likely to encourage unfair competition, on the grounds of non-use or if the trade mark has been filed in bad faith and if there was good faith intention to use the mark. 

There is no expungement or re-examination procedure available in Israel unless an appeal court decides to transfer the matter back to the registrar for reconsideration of certain points or the entire decision.

Regarding copyright – see 5.1 Timeframes for Filing an Opposition or Cancellation.

Any person may file an opposition. Opponents may rely on prior common law rights in a trade mark based on goodwill acquired through use of the trade mark. Opponents may represent themselves in opposition proceedings, but this is not a recommended practice in view of the litigatory character of the proceedings.

There is an official fee of ILS936 for each mark and class of goods opposed, and the average cost for drafting the detailed notice of opposition is around ILS15,000–18,000 plus 18% VAT, depending on the complexity of the claims.       

Rectification of the register, including cancellation of a registration, may be requested by any person aggrieved by “the non-insertion or omission from the Register of any entry, or by any entry made in the Register without sufficient cause, or by any entry wrongly remaining on the Register, or by any error or defect in any entry in the Register”. Revocation on the grounds of non-use may be filed by any interested person.

Regarding copyright – see 5.1 Timeframes for Filing an Opposition or Cancellation.

Opposition proceedings in Israel resemble a trial with submission of detailed statements of opposition and response, filing of evidence in the form of affidavits, cross-examination of the affiants in a hearing before the trade mark registrar, and written summations. The parties may, however, agree on a different procedure, avoiding the need for a hearing by requesting that the registrar issue a decision based only on the written documents filed by the parties.

There is no formal preliminary discovery of documents between the parties in opposition proceedings. The statement of opposition and the response need to be drafted in a detailed manner and the evidence filed afterwards needs to conform with the information provided in the pleadings.

Cancellation and revocation actions need to be brought before the Trademark Office, however, defendants can attack the validity of a plaintiff’s trade marks in the frame of an infringement lawsuit.

Partial cancellation and revocation actions are available in Israel with respect to specific classes of goods and services. Partial cancellation actions based on non-use are available not only with respect to specific classes of goods and services, but also with respect to specific goods and services.

Regarding copyright – see 5.1 Timeframes for Filing an Opposition or Cancellation.

Applicants have the right to file an appeal against final decisions refusing the registration of a trade mark.

Parties have the right to file an appeal against final decisions in opposition, cancellation or revocation proceedings to a district court.

Appeals concerning non-final miscellaneous decisions in opposition, cancellation or revocation proceedings are appealable by leave to a district court. 

District court decisions may be appealed by leave to the Supreme Court.

A trade mark may be amended in cancellation and revocation proceedings by the registrant, the registrar or due to an order of the court. Possible amendments are changes of ownership; restriction or removal of specific goods, services or entire classes in multi-class registrations; the recording of disclaimers; and slight amendments to the trade mark which do not increase the scope of protection or do not incur a substantial change.

Regarding copyright – see 5.1 Timeframes for Filing an Opposition or Cancellation.

Trade mark revocation and cancellation actions are heard before the registrar while infringement actions are only heard before the courts. Revocation and cancellation actions may eventually be heard before a court, if a request for cancellation/revocation of a trade mark is raised by the defendant as a defence claim. Pending a court infringement action, it is common practice to request the registrar to stay cancellation or parallel proceedings.

Regarding copyright – see 5.1 Timeframes for Filing an Opposition or Cancellation.

Trade marks filed in bad faith or fraudulently are vulnerable to cancellation proceedings without any time limit by any aggrieved person.

Regarding copyright – see 5.1 Timeframes for Filing an Opposition or Cancellation.

Trade Marks

A trade mark may be assigned by a contract or by law, in respect of all or some of the goods for which it is registered, together with the goodwill of the business or separately. However, the registrar may refuse to record an assignment if it is likely to mislead the public or if it is against public order.

Copyright

According to the Copyright Act, copyright may be assigned by contract or by law and the owner of a copyright may grant an exclusive licence or non-exclusive licence with respect to the copyright.

Assignment of the copyright or the granting of a licence may refer to the copyright in whole or in part, and it can be limited to a certain territory, period of time, or to specific acts with respect to the work. In the case of granting an exclusive licence, a written document is needed.

However, moral right is personal and non-transferable, and will be available to the author even if such author does not have copyright in the work or if they have assigned the copyright in the work to someone else.

After death, the rights are regarded as part of the late owner’s estate.

Trade Mark

According to the Israel Trademark Ordinance, a trade mark owner may allow another person to use their trade mark in respect of all or some of the goods for which the mark is registered.

However, the authorisation to use will not be valid unless recorded in the Trademark Register.

Such a trade mark licence may be sole, exclusive or non-exclusive, perpetual or limited in time.

The registrar may refuse to record an authorised user if this is likely to mislead the public or if this is against public order.

Copyright

Licensing of copyright may refer to the copyright in whole or in part, it may be exclusive or non-exclusive and it may be limited to a certain territory, period of time, or to specific acts with respect to the work. The licence may be perpetual. In the case of granting an exclusive licence, a written document is needed.

Trade Marks

Authorised users

A trade mark licensee should be recorded in the Israel Trademark Register as an “authorised user” in respect of all the relevant trade mark registrations.

Use by a person other than the registered owner will not accrue to the trade mark owner unless the other person is recorded as an authorised user. This applies even when the user is a wholly owned subsidiary of the trade mark owner.

The registrar will record an authorised user provided that this is unlikely to mislead the public and is not against public order. Accordingly, when applying to record an authorised user, either the licensor or licensee is obliged to confirm that the recording of the licence is unlikely to mislead the public, to the best of their knowledge and understanding.

When applying to record an authorised user, the following documents are required: a power of attorney from the licensor; a power of attorney from the licensee; the licence agreement or a certified copy.

Assignment

An assignment should be recorded in the Trademark Register. It is recommended that change of ownership should be recorded as soon as possible.

Non-registered users

Use by a non-registered user might present a serious problem when the use concerned is exclusive (or if there are several users, none of whom is the registered owner of the mark or recorded as an authorised user). In such a case, after three consecutive years from the registration date, the trade mark registration might become vulnerable to cancellation on the grounds of non-use, despite the use by the non-recorded user(s).

A mark may even lose its distinctive character as a result of prolonged use thereof by a non-recorded user. This follows from the old English authorities regarding use by a non-registered licensee. Moreover, the Israeli Supreme Court has applied an even broader reading of this section, by refusing to hold valid a licence which had not been registered. In said judgment it was held that where the parties to a licence agreement do not intend to register same, the agreement is deemed illegal. Such an agreement may not be enforced, nor can a cause of action be based thereon.

Copyright

Regarding copyright – see 5.1 Timeframes for Filing an Opposition or Cancellation.

In copyright and trade mark matters there is no special limitation period. These matters are therefore subject to the general statute of limitations, which sets a limitation period of seven years. In addition, copyright infringement claims are subject to equitable defences, such as laches (undue delay).

However, Israeli jurisprudence has recognised the “continuing infringement” doctrine. Accordingly, a continuous infringing act creates renewed causes of action. It is therefore possible to claim remedies for the period of the violation that occurred during the seven years preceding the date of filing the claim. Every day the violation continues creates a new cause of action, which restarts the counting of time under the statute of limitations.

Trade Mark Infringement

To establish trade mark infringement, the owner of a registered trade mark needs to prove the unauthorised use of its registered trade mark or of a similar trade mark with respect to the same goods or services, or with respect to goods or services of the same description.

The owner of a registered and well-known trade mark may support an infringement action on the basis of the unauthorised use of its trade mark or of a similar trade mark thereto even with respect to goods and services of different descriptions, if the use of the mark is likely to indicate a connection in consumers’ minds (“likelihood of association”) between the goods and services of the unauthorised user and those of the registered owner of the trade mark, and that the latter might be harmed as a result of such use. 

The owner of an unregistered well-known trade mark may obtain protection against the unauthorised use of its trade mark or of a similar trade mark with respect to goods and services of the same description.

There is no special registration for well-known trade marks in Israel, and the recognition of well-known trade marks is made during proceedings before the court and the registrar. Therefore, to prove the existence of a well-known registered or unregistered trade mark, the trade mark owner must bring solid evidence to prove exceptional goodwill acquired locally through the continued and extensive use and promotion of its mark, and particularly the recognition of the mark in public circles, and the extent to which it is known as a result of its marketing.

Dilution and other infringements

Besides the regular claims concerning trade mark infringement, the owner of a well-known trade mark may also claim infringement based on the dilution doctrine. Dilution by blurring is recognised by Israeli courts in cases where the use of a mark adversely affects the distinctive character and scope of protection of a well-known mark, distorting the strength of the rights acquired by the owner of the well-known mark.

Other types of trade mark infringement, including but not limited to dilution by tarnishment and contributory infringement, are likely to be recognised by Israeli courts, which are open to adopting doctrines accepted by foreign laws and jurisdictions.

Copyright Infringement

The main legal claims regarding copyright infringement are violation of the exclusive right of the owner to use its work, or a substantial part thereof, without the permission of the owner, for:

• reproduction of the work;
• publication of the work (with respect to a work not yet published);
• public performance of the work; 
• broadcasting;
• making the work available to others; or
• making a derivative work.

Direct and indirect infringement

The copyright infringement may be direct infringement or indirect infringement.

Indirect infringement occurs when a person knew, or should have known, that a copy of the work is an infringing copy in cases of: 

• selling or letting for rental; 
• possessing an infringing copy for a commercial purpose;
• distributing an infringing copy on a commercial scale;
• exhibiting an infringing copy to the public in a commercial manner; and
• importing an infringing copy into Israel, not for personal use.

Infringement of a moral right

In addition, it may be argued that there has been infringement of a moral right if someone does not attribute a work to its author, or if the work is distorted or modified or undergoes any other derogatory use, where such act would be prejudicial to the author’s honour or reputation.

Collective rights management

Collective rights management is established in Israel under the Commercial Competition Law and not under copyright.

Trade Mark Infringement

To establish trade mark infringement, the trade marks are compared considering their overall impression. The threefold test stipulated by the Israeli Supreme Court, is to compare the visual and phonetic similarity between the marks, the similarity of the goods, the circle of customers, the channels of distribution, as well as other case circumstances, including the conceptual similarities between the marks based on the general idea behind them.

The scope of protection afforded to a mark depends on its inherent distinctiveness. The protection afforded to suggestive trade marks is likely to be substantially lower than to trade marks which are inherently distinctive.

The definition of trade mark infringement in the Trademark Ordinance does not imply the condition of consumer confusion as an element of the tort. However, case law determines that the two main goals of trade mark laws are the protection of consumers and of owners’ proprietary rights. Accordingly, even if actual confusion is not an intrinsic element of the tort and trade mark infringement is determined also in the absence of consumer confusion, the actual confusion between the compared marks is normally considered a determining factor to establish infringement.

Copyright Infringement

When deliberating whether an act amounts to infringement of copyright the following parameters, established by the Act, should be considered.

For a work to benefit from the protection of the Act:

• the work should be original and fixed in any form;
• the work should not be an idea or procedure and method of operation; or mathematical concepts or facts or data; or news of the day; and
• the work should not be a “design” as defined in the Patents and Designs Ordinance, unless the design is not used, or intended to be used, in industrial manufacture.

Did the infringer violate the exclusive right of the owner to use the work, or a substantial part thereof, for purposes allocated exclusively to the owner of the copyright under the Act?

Are the acts in question included in the “permitted uses” as defined in the Copyright Act?

There are no prerequisites for filing a trade mark or copyright lawsuit. However, while there is no formal requirement to send a warning letter before submitting the lawsuit, it is recommended practice to do so.

The magistrate and district courts have jurisdiction over trade mark and copyright infringement claims. A claim for compensation in an amount below ILS2.5 million and/or injunctive relief in an amount equal to or below ILS2.5 million, will be heard by the competent magistrate’s court. Any claim for compensation of injunctive relief above ILS2.5 million, as well as any claim for injunctive relief the value of which cannot be estimated, will be heard by the competent district court.

Costs that typically arise before filing a lawsuit relate to warning letters, negotiations, collection of evidence or preparing expert opinions (eg, in cases regarding software infringement and market surveys).

Foreign copyright owners do not need to register to bring infringement claims in Israel.

In exceptional cases, the infringer may file a claim for declaratory relief and request that the court declares that their actions do not constitute a violation of copyright or trade mark (eg, when the dispute is over a legal matter that goes beyond the scope of the dispute between the specific parties).

Under the Civil Procedure Regulations, the parties to copyright and trade mark disputes are usually directed by the court to consider the possibility of mediation at the early stage of the proceedings. The parties might also consider approaching an arbitrator.

Trade mark and copyright decisions on infringement actions are exclusively provided by the courts.

There are no specific definitions for the term “counterfeit” and accordingly, goods bearing identical or confusingly similar trade marks are considered counterfeits. All procedures, remedies and statutes that are pertinent to a claim based in trade mark infringement are also relevant to counterfeiting goods, including civil and criminal liability.

Regarding counterfeits or bootlegging of copyright – the remedies are compensation, statutory compensation with no need to prove damages (up to ILS100,000), injunctions, and collection and destruction orders. The courts address counterfeits and/or bootlegging as copyright infringement.

In addition, criminal procedures can be taken in cases of commercial trade or import for trade purposes of infringing copies. The maximum penalty is up to five years in prison.

There are no special procedural provisions regarding copyright or trade mark proceedings. All proceedings are subject to the Civil Procedure Regulations.

A valid trade mark registration gives the registered owner the exclusive right to use the mark concerning the registered goods and to prevent others from using an identical or confusingly similar mark with respect to the same goods or goods of the same description.

Where a well-known mark has been registered, the scope of exclusive use and prevention of infringements is broadened beyond the registered goods and goods of the same description.

Trade marks registered for five years and more are not susceptible to cancellation proceedings, unless they have been filed in bad faith, or if they have not been used for three consecutive years, in which case, they may be revoked.

The owner of a registered trade mark does not need to establish goodwill regarding the trade mark, but only prove the likelihood of confusion with the allegedly infringing mark.

Owners of registered trade marks may file complaints to the customs authorities to cease future shipment of infringing goods.

Owners of registered trade marks may file criminal complaints regarding the infringement of their trade marks to the IP unit of the police, or initiate private criminal complaints with the court.

Regarding copyright – no registration is needed.

Besides the attorney’s fees, the typical costs for bringing an infringement action in the first instance are official fees of 2.5% based on the stipulated sum of the action (half when submitting the lawsuit and half before the main hearing), plus expert and survey fees if needed.

The main defences in trade mark infringement are that the trade marks are not confusingly similar or are intended for different goods and services, eliminating the likelihood of consumer confusion. 

An additional common defence anchored by case law is an indirect attack on the plaintiff’s trade mark. All absolute and relative claims available to cancel a trade mark registration in proceedings before the registrar are also available as defence claims in infringement matters.   

Other defence claims may be based on prior rights and the goodwill of the trade mark acquired through local use and/or registration, genuine descriptive use of the mark, and honest concurrent use of a trade mark.

When preliminary relief is requested, other common equitable defences are available against the plaintiff’s ability to obtain the preliminary order, such as:

• acquiescence, namely, the silence of the plaintiff against the continued infringement of its trade mark;
• laches, namely, the unreasonable delay in bringing the action; and
• the filing of the motion in bad faith, eg, the omission of an important factual claim or document.

While such claims may also be brought in the frame of the main action, in such cases, the impact of the claim is normally restricted to the sum of the monetary relief stipulated. 

The use of a business name, a geographical location or a personal name will not constitute trade mark infringement as long as it is in good faith and only necessary to identify the user.

The use of a trade mark merely for providing a true description of the character or quality of the goods is permitted if the following conditions are met:

• it is burdensome to identify the goods without using the mark and the use is necessary for identification;
• the use is reasonable and no more than is necessary to identify the goods; and/or
• the use does not create the impression of commercial sponsorship.

While unauthorised use of a registered trade mark for advertising constitutes infringement, it was determined by the Supreme Court that truthful comparative advertising serves the principle of free speech when it presents accurate facts about products or services, and it may be permitted if the use of the mark is strictly informative. 

The Copyright Act recognises the fair use exception. Fair use of a work for certain purposes will be considered as use of the work that does not require the permission of the copyright owner. Section 19 lists examples of purposes that may be considered “fair”, such as private study, research, criticism, news reporting, quotations, instruction and examination by an educational institution. Section 19 also provides the parameters that should be considered in respect of the scope of “fairness” of use: 

• the purpose and character of the way the work has been used;
• the character of the work used;
• the scope of the use in relation to the work in its entirety; and
• the impact of the use on the value of the work and its potential market.

In addition, the Act includes “specific permitted uses” such as the use of works in legal or administrative proceedings; the use of works that are publicly accessible; the broadcasting or reproduction of works which are situated in public places; and temporary copying of computer programs for back-up.

Regarding “parody” – court cases recognise “parody” as falling under the allowed use of “criticism”, as long as the use can be considered “fair”. For example, in specific circumstances, use of a work in a parody advertisement was considered “fair use”.

According to courts cases, the balance between freedom of speech/expression and copyright is assessed within the framework of the fair use exception.

The defendant may also claim that they are an “innocent infringer”. According to the Act, where a copyright has been infringed, but the infringer did not know, or could not have known, at the time of the infringement, that copyright subsisted in the work, the infringer will not be obliged to pay compensation in respect of said infringement. A mistake regarding the question of “who” is the rightful owner of the copyright does not establish this defence.

The parallel importation of genuine goods to Israel does not constitute trade mark infringement.

The owner of a trade mark registration in Israel exhausts its rights in the mark upon the first sale of the goods anywhere in the world.

Israeli law adopted the copyright exhaustion doctrine based on the interpretation of the term “indirect violation” under the Copyright Act, which requires the performance of an action on an “infringing copy”. An “infringing copy” is defined under the Act as “a copy made in Israel without the permission of the copyright holder”. In addition, the copyright exhaustion doctrine is based on case law.

There is no specific content related to digital content.

In actions for copyright and trade mark infringements, the plaintiff is entitled to receive injunctive relief, either interim or preliminary.

The plaintiff is entitled to receive temporary injunctive relief if it proves the legal right and if the balance of convenience is favourable. In order to receive such relief, the plaintiff should deposit a self-guarantee and additional guarantee as instructed by the court.

The court will grant the requested relief if it is convinced, on the basis of sufficient prima facie evidence, of the existence of a justifiable cause of action, and of the necessity of the temporary relief in order to achieve the purpose of the claim. Courts consider, inter alia, the balance of rights, namely, the damage that may be caused if the temporary relief is not granted, compared to the damage that may be caused if the temporary relief is granted; whether there is no other remedy with lesser impact on the respondent; and the good faith of the parties.

The court may also order the destruction of infringing goods as part of the final relief granted.

Calculating Damages in Trade Mark Infringement

In trade mark infringement cases, the damages awarded to a trade mark registration owner may be calculated according to the damages caused, or to the profits gained, by the defendant. The complexity to prove and calculate the exact damages has led the courts to stipulate sums through approximate assessments.

The list of relevant factors when determining the sums awarded is open and includes the scope, nature and duration of the infringement, the proof of actual damages, the intention and bad faith of the infringer, the actual confusion, the relevant industry, the impact on the market and the public interest in preventing future infringement cases.

Calculating Damages in Copyright Infringement

The owner of rights may apply for actual damages (including loss of profits) or for statutory damages. According to the Copyright Act, when an infringement is conducted, the court may award the plaintiff, with respect to each infringement, damages without proof of actual damage, in an amount not exceeding ILS100,000. In awarding damages, the court may take into account, among other things, the scope of the infringement; the duration of it; the severity of it; the actual damage caused; the benefit derived by the defendant from the infringement and the characteristics of the defendant’s activity; the nature of the relationship between the parties and the good faith of the defendant. The Act further stipulates that for the purpose of granting statutory damages, infringements carried out as part of a set of activities will be deemed a single infringement.

Statutory Damages

Since most of the time it is difficult to prove actual damages, it is common to apply for statutory damages.

The Act states that statutory damages will not apply to a person who has made available to the public on the internet an artistic work that was previously made available to the public, provided that:

• the infringer ceases the infringement within a reasonable time after receiving notice from the owner;
• the work was not copied from a catalogue; and
• the use was not for commercial purpose.

In addition, the statutory compensation clause does not apply to non-profit institutions and similar institutions, and does not apply to educational institutions or libraries that use the materials as part of their usual activities, and not for commercial purposes.

The losing party is obliged to pay the other party’s attorney’s fees and costs awarded by the court.

However, in practice, the courts do not usually order the real fees and costs, and use their discretion to decide according to several circumstances.

Copyright and trade mark owners may seek ex parte relief without notice to the defendant in cases where there is a reasonable fear that giving notice to the defendant will circumvent the purpose of the temporary relief or cause serious damage to the applicant (usually when there is a reason to believe that the infringer will destroy evidence).

The Israeli legal system provides customs seizure of counterfeits infringing copyright and trade marks.

The rights owner may send customs a complaint requesting that allegedly infringing goods be detained. The owner must provide primary evidence regarding the infringement, and a personal guarantee.

After the detention of the goods, the rights owner needs to file a lawsuit and deposit a bond. The customs authority is also authorised to undertake the seizure on its own initiative.

Parallel imports are permitted in Israel.

The losing party has the right to file the first appeal to the higher instance. Magistrate’s court decisions are appealed before a district court, and district court decisions are appealed before the Supreme Court. Additional appeals may be allowed subject to permission. There is no specific rule concerning copyright or trade mark infringement in this matter.

The losing party can appeal to a higher court no later than 60 days after the decision was issued and served. It usually takes between two to three years until the appellate court issues its decision.

There have not yet been any copyright or trade mark decisions or pending litigations pertaining to artificial intelligence. However, in December 2022, the Ministry of Justice published an opinion on whether machine learning enterprises can use copyrighted material to train AI systems without the permission of the owners of the works.

The published opinion stipulates that, in general, notwithstanding exceptional cases, the use of copyright-protected content for the purpose of machine training will be permissible even without obtaining the approval of the rights owners, based on the “fair use” exception recognised under the Act.

It should be noted that the opinion was provided only for the learning process carried out by the machine, but did not provide an answer as to the legality of the output of AI systems based on such machine learning, and it was determined that the question of whether the product constitutes a violation of the creators’ rights would be decided in accordance with the Act.

The unauthorised use of a registered trade mark or a confusing trade mark online, including domain names, constitutes trade mark infringement.

Trade mark owners may enforce their rights against infringing domain names with the court or request the Israel Internet Association (“ISOC-IL”) to provide an expedited resolution for disputes regarding the allocation of domain names under the .IL ccTLD.

According to recent case law, the use of a third party’s trade mark in Google AdWords does not constitute trade mark infringement, but the issue has not yet been addressed by the Supreme Court.

Regarding copyright infringement on the internet, the court may issue an order directed at an “access provider” on the internet, instructing it to limit access to a content source, in whole or in part, if the court is convinced that the content constitutes a violation of copyright when it is made available to the public.

In addition, if a person claims there has been copyright violation through an electronic communication network, and the identity of the person who committed the alleged violation is unknown, the former person may submit a motion to the court for the disclosure of the identity of the alleged infringer.

Regarding statutory damages related to infringement on the internet, the Act states that statutory damages will not apply where a work that was previously made available to the public, is made available to the public on the internet, but not by the owner, provided that:

• the infringer ceases the infringement within a reasonable time after receiving notice from the owner;
• the work was not copied from a catalogue making the work available to the public for sale or licensing purposes; and
• the infringement was not for a commercial purpose.