Trademark Enforcement

What are the Remedies?

What are the remedies available to you by law, if someone infringes your registered trademark?

The main remedies which are requested in these kinds of proceedings are injunctions and damages.

The purpose of an injunction is to stop the infringer from using your trademark without your permission.

The purpose of an award of damages is to compensate you for the commercial damage you have incurred as a result of the infringement, or to make sure that the infringer does not benefit from the infringement. In some cases, it is possible to receive damages (up to NIS 100,000 [around 26,000 Euros] even without needing to prove that you have incurred commercial damage, or that the infringer has profited from the infringement. Liquidated Damages, as these damages are known, can also serve as a useful deterrent against small-time infringers.

If the court rules in your favor, then it will usually also award costs against the infringer. It would be very unusual for such an award to cover all of your legal fees, but it may amount to a useful contribution, depending on the circumstances.

The Rights of a Trademark Holder

As soon as you have registered your trademark, you have the right to stop anyone else in Israel from starting to use your trademark, or a mark that is very similar to your trademark, in your general area of activity.

Trademark protection is very broad – it is one of the most robust commercial rights granted by law.

If you notice that a competitor has opened a business, or set up a website, or is selling products, or providing services, under a name that is identical or confusingly similar to your registered trademark, then you are entitled by law to prevent this, and to demand that they immediately refrain from such actions.

The law does not require that you prove that consumers are actually being misled, nor does it require you to prove that you have actually incurred damage.

Procedure

Clearly, each case needs to be considered on its merits, in light of the particular commercial and legal circumstances.

There are some instances where it will be a good idea to commence legal proceedings immediately and without warning against a party who is infringing your rights.

In many other cases, we will recommend, as a first step, sending a Cease & Desist letter to the infringer. Thanks to the strong legal position of a registered trademark owner, and to our considerable experience, it is very often possible to put a stop to the infringement, even without the need to commence court action, and even receive payment from the infringer.

Even if it proves necessary to prepare and file a claim with court, there is still a reasonable chance that we will be able to settle the matter, to your satisfaction, during the early stages of the proceedings, thereby saving the costs and avoiding the risks of conducting the legal proceedings through to the end.

And if there is no alternative but to conduct the proceedings, then we will be at your side, every step of the way, doing our best to achieve a positive outcome for you. In such proceedings, each side will need to present witnesses and evidence, and will have the opportunity to examine the other side's evidence, and cross-examine the other side's witnesses. After the lawyers on both sides present their closing arguments, the court will review the file, and issue its written ruling.

Interim Relief

This is a term used to describe an urgent ruling that may be issued by the court, even at the early stages of proceedings, if needed in order to prevent irreversible damage being done, or evidence being destroyed. Such relief will be granted for the interim period (which can be several years, in some cases), while the case is being heard, before a final ruling is delivered.

In the modern era, courts are reluctant to grant interim relief in anything but the most extreme cases, so as to avoid situations where a party would sustain very considerable damage, even before it has the opportunity to explain its case in detail.

Defending an Infringement Claim

Naturally, we specialize not only in trademark protection, protecting and enforcing the rights of trademark owners, but also in representing innocent businesses who are wrongly accused of infringing the rights of others.

Sometimes, the owners of registered trademarks may try to exploit the rights granted to them, and their powerful economic position, in an attempt to commercially destroy their competitors, even if these are competing with them fairly and within the bounds of the law.

In cases like this, we will defend you against the claim, and seek to dismiss any unjustified action that has been brought against you, and order the plaintiff to pay costs.