A foreign brand owner may need to stop allegedly infringing sales, advertisements or use of a business name in Israel before a final judgment. A preliminary injunction can preserve the effectiveness of a future decision, but it may also force a distributor to withdraw products, replace packaging or suspend an established business while liability is still disputed.
Under Israeli law, registration and apparent similarity are not enough by themselves. The court assesses prima facie rights and infringement, necessity, balance of convenience, the parties’ conduct, urgency and the availability of a narrower order. The procedural rules for temporary remedies are in Chapter XV of Israel’s Civil Procedure Regulations, 5779-2018, particularly Regulations 94–100 and 109; Section 59 of the Trademarks Ordinance provides the underlying statutory basis for injunctive relief in trademark infringement.
What Does a Preliminary Trademark Injunction Accomplish?
An interim injunction protects a claimed right during litigation; it is not a sanction for infringement already established at trial. It may be sought against the marketing of a product bearing a disputed mark, misleading advertisements, a shop name suggesting an unauthorized association or other identified acts.
The relief can have wide commercial consequences: inventory may be stranded, planned campaigns canceled and retail operations disrupted. The court therefore considers not only the proprietor’s interest in enforcing a registered right but also the practical effects of acting before final determination.
Legal Requirements Under the Israeli Civil Procedure Regulations
Regulation 94 concerns the purpose of interim relief. Under Regulation 95, the applicant must show a sufficient prima facie basis for a claim and that provisional protection is necessary. Regulation 109 contains a specific requirement for a preliminary injunction concerning a reasonable concern that without it, proper enforcement of the judgment would be substantially hindered.
The court assesses the harm likely to arise if the order is refused against harm to the respondent if granted, relevant effects on third parties, less harmful alternatives, delay and good faith. A strong initial claim does not eliminate consideration of proportionality; equally, a serious business risk does not dispense with proof of a plausible infringement claim.
The requirements are different from the decision whether permanent injunctive relief should be granted after the main action has been tried.
Proving the Registered Trademark and the Disputed Use
The applicant should present current registration particulars, identify the legal owner, provide the exact registered representation and establish the goods and services covered. Section 64 of the Trademarks Ordinance makes registration prima facie evidence of validity, not conclusive proof of infringement.
The court must still assess the sign actually used, the manner of its presentation and the relevant goods or services. Where confusion is in issue, comparison may involve appearance and sound, the goods, customers and the surrounding market circumstances. When the parties are disputing alleged counterfeiting, the identity and authenticity of the goods may need more than a photograph bearing a brand name.
For claims based on passing off rather than a registered mark, there must be an initial evidentiary basis for goodwill and likely misrepresentation. The distinction is explained in Passing Off Lawsuits in Israel.
The Balance of Convenience and Potential Market Harm
Continued use of a confusing sign can cause customers to associate the wrong business with the proprietor’s brand, weaken distribution arrangements or allow a counterfeit seller to establish a market presence. Evidence of expanding sales, new outlets, impending launches or an inability to repair harm after judgment can support a request for interim protection.
The respondent may show investments, signed contracts, existing inventory and the costs of replacing packaging or trading under another name. Where the dispute concerns a limited visual feature in an advertisement, shutting down all of the defendant’s operations may be disproportionate.
A tailored order directed at the relevant logo, advertisement or product may be less harmful than a blanket prohibition. An application should explain why the particular scope of relief sought is necessary.
Delay, Cease-and-Desist Letters and Urgency
Delay may weaken an assertion that the proprietor cannot await final judgment. A claimant aware of commercial use for months should explain what happened during the interval and whether there was investigation, evidence collection or meaningful settlement negotiation.
A warning letter may provide an opportunity to stop the use voluntarily, but Israeli law has no general requirement that one be sent before every infringement claim. Where warning would risk concealment of inventory or evidence, the timing requires different consideration.
An applicant should disclose relevant correspondence, earlier use by the defendant, disputes over the validity of the registration and other material facts that could affect the court’s assessment. Especially where relief is sought without notice, withholding unfavorable information may jeopardize the application.
For pre-litigation strategy see Trademark Cease-and-Desist Letters in Israel.
Can an Injunction Be Granted Without Hearing the Defendant?
Under Regulation 97, an application is ordinarily considered with both sides participating. An ex parte temporary order is exceptional and requires special reasons and adequate evidence that delay or advance notice would frustrate the order’s purpose or cause serious harm.
An applicant should identify the specific risk, its immediacy and why an ordinary adversarial hearing cannot provide effective protection. The mere possibility that the seller will continue doing business is not necessarily enough.
Where an ex parte order is issued, the Regulations require prompt service of the order and supporting materials, generally within three days under Regulation 97(d) unless a court sets a different period for special reasons, as well as the requisite subsequent adversarial hearing.
An injunction against sales should be distinguished from a separate request to seize goods, preserve evidence or appoint a receiver. Those remedies are subject to distinct legal conditions.
Can the Court Order Withdrawal of Products Already Distributed?
An injunction can prohibit identified future acts. A request requiring affirmative steps, such as recalling goods, may be more intrusive and demand specific justification, including whether such relief is necessary and proportionate.
In Israeli Diesel litigation involving jeans and registered marks, interim relief restrained further marketing of allegedly infringing clothing and extended to steps concerning goods already distributed. The court examined the relevant evidence and the scope of relief; the case does not mean a recall follows automatically whenever a trademark injunction is requested.
The proposed order should be drafted with precision. A prohibition concerning a particular logo on specified goods is different from a requirement to stop all use of a descriptive word or close the defendant’s business entirely.
Undertakings, Security and Compensation for an Unjustified Order
Regulation 96 generally requires an applicant’s undertaking to compensate harm caused by interim relief if the order later lapses or is restricted, together with security as directed by the court. The undertaking may be substantial and does not necessarily have a fixed ceiling. A court may require a deposit, guarantee or another form of security before the order takes effect.
In Brill Outlet Eilat Ltd. v. BIG Shopping Centers, Israeli Supreme Court, Civil Leave to Appeal 1598/16, concerning the name BIG OUTLET, the Supreme Court maintained the interim injunction but required a further NIS 150,000 in security beyond NIS 100,000 required at the earlier stage. These were case-specific amounts, not a standard bond applicable to future trademark claims.
The possibility that a claimant may later owe compensation under its undertaking should form part of the decision whether to request a broad order and how much protection it is intended to provide.
Defending an Application for a Trademark Injunction
The respondent may dispute the alleged similarity or use, the registered scope, the existence of a licence, genuine products sold through parallel importation, permitted truthful use or the prima facie validity of the registration. Defenses supported by contracts, packaging, evidence of market use or earlier trademark rights may be particularly relevant.
A challenge to registration does not remove it automatically. A substantiated validity issue can affect the court’s initial assessment but may need separate proceedings before the Registrar of Trademarks. In ROSHEN litigation, Israeli courts considered asserted registration rights alongside disputes about validity and delay when evaluating temporary relief.
The defendant may also contest the proposed order’s breadth and suggest a less disruptive measure, supported by records of inventory, planned sales and the practical cost of changing the relevant branding.
Three Israeli Cases: BIG, Diesel and Scholl
The BIG and Diesel proceedings illustrate circumstances in which interim restraint of disputed trademark use was accepted, while the applicant was required to address the possible harm to the defendant. The BIG proceedings also show how security may be increased while an order remains in force.
In Reckitt Benckiser v. Neopharm, Tel Aviv District Court, Civil Case 2398-08-15, involving the Scholl electric foot file and a competing Dr. Or product, the court refused interim relief after examining the product packaging and marks and finding the likelihood of confusion low on the available record. The dispute was not decided solely by the fact that the products belonged to the same category.
These decisions were made on their respective records, and some precede the current Civil Procedure Regulations. They illuminate substantive questions but should not be treated as substitutes for the procedural rules applicable to an application filed today.
What Evidence Should Be Prepared Before Filing?
The claimant should assemble current trademark registrations, the complete registered mark, reliable evidence of the accused use, test purchases where appropriate, advertisements, website captures with dates and identification of the seller or importer. The evidence should support both the merits and the separate need for interim action.
Where potential confusion is central, records of complaints or misdirected inquiries may help, but a consumer survey is not invariably necessary. Where urgency arises from expanding distribution, the filing should address sales channels, openings, future advertising and the likely harm during proceedings.
The defendant’s response should be similarly fact-based. Disputed permissions, prior dealings, authentic goods, technical differences and foreseeable damage from the order are more useful than a generic denial.
Filing Before the Principal Lawsuit and Later Modification
Regulation 95(c) permits interim relief before the principal claim is filed where appropriate. If an order is made, the main claim generally must be filed within seven days unless the court sets a different period. Counsel should prepare the underlying case before seeking extraordinary protection.
Regulation 98 permits reconsideration of interim measures in circumstances defined by the Rules, such as material changed circumstances or newly discovered relevant facts. Regulation 100 regulates expiry of interim relief. An interim order is not a final judgment that trademark infringement occurred.
For a full procedural guide see Trademark Infringement Lawsuits in Israel and Drori Stav IP’s Trademark Litigation Practice. The principal statutory reference is the Israeli Trademarks Ordinance, Section 59. See also Yonatan Drori and Yotam Werzansky-Orland, Intellectual Property Law in Israel (2019), Chapter 2, Section 9.1.2.2, read with the current procedural regulations.
